Appeal

1201		Introduction  

1203	Composition of Board   

1204	Administrative Handling   

1205	Notice of Appeal  

1206	Appeal Brief  

1207	Amendment Filed With or After Appeal   

1208	Examiner's Answer  

1208.01	Prohibition Against Entry of New Ground of 
Rejection in Examiner's Answer   

1208.02	Reopening of Prosecution After Appeal   

1208.03	Reply Brief   

1209	Oral Hearing   

1210	Actions Subsequent to Examiner's Answer but 
Before Board's Decision  

1210.01	Order for Compliance  

1211	Remand by Board   

1211.01	Remand by Board To Consider Amendment    

1211.02	Remand by Board To Consider  Affidavits or 
Declarations   

1212	Board Requires Appellant  to Address Matter  

1213	Decision by Board   

1213.01	Statement of Allowability by Board   

1213.02	New Grounds of Rejection by Board  

1213.03	Publication of Board Decision   

1214	Procedure Following Decision by Board   

1214.01	Procedure Following New Ground of Rejection 
by Board 

1214.03	Rehearing  

1214.04	Examiner Reversed   

1214.05	Cancellation of Withdrawn Claims  

1214.06	Examiner Sustained in Whole or in Part  

1214.07	Reopening of Prosecution   

1215	Withdrawal or Dismissal of Appeal  

1215.01	Withdrawal of Appeal   

1215.02	Claims Standing Allowed  

1215.03	Partial Withdrawal  

1215.04	Dismissal of Appeal  

1216	Judicial Review    

1216.01	Appeals to the Federal Circuit   

1216.02	Civil Suits Under 35 U.S.C. 145  

  

1201	Introduction

The Patent and Trademark Office in administering the 
Patent Laws makes many decisions of a discretionary 
nature which the applicant may feel deny him or her the 
patent protection to which he or she is entitled.  The differ-
ences of opinion on such matters can be justly resolved 
only by prescribing and following judicial procedures. 
Where the differences of opinion concern the denial of 
patent claims because of prior art or material deficiencies in 
the disclosure set forth in the application, the questions 
thereby raised are said to relate to the merits, and appeal 
procedure within the Patent and Trademark Office and to 
the courts has long been provided by statute.

The line of demarcation between appealable matters for 
the Board of Patent Appeals and Interferences (Board) and 
petitionable matters for the Commissioner of Patents and 
Trademarks should be carefully observed. The Board will 
not ordinarily hear a question which it believes should be 
decided by the Commissioner, and the Commissioner will 
not ordinarily entertain a petition where the question pre-
sented is an appealable matter. However, since 37 CFR 
1.181(f) states that any petition not filed within 2 months 
from the action complained of may be dismissed as 
untimely and since  37 CFR 1.144 states that petitions from 
restriction requirements must be filed no later than appeal, 
petitionable matters will rarely be present in a case by the 
time it is before the Board for a decision. In re Watkinson, 
900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir.  1990).

1203	Composition of Board 

35 U.S.C. 7 provides for a Board of Patent Appeals and 
Interferences as follows:

35 U.S.C. 7.  Board of Patent Appeals and Interferences.

(a)	The examiners-in-chief shall be persons of competent legal 
knowledge and scientific ability, who shall be appointed to the competitive 
service. The Commissioner, the Deputy Commissioner, the Assistant 
Commissioners, and the examiners-in-chief shall constitute the Board of 
Patent Appeals and Interferences.

(b)	The Board of Patent Appeals and Interferences shall, on written 
appeal of an applicant, review adverse decisions of examiners upon appli-
cations for patents and shall determine priority and patentability of inven-
tion in interference declared under section 135(a) of this title. Each appeal 
and interference shall be heard by at least three members of the Board of 
Patent Appeals and Interferences, who shall be designated by the Com-
missioner. Only the Board of Patent Appeals and Interferences has the 
authority to grant rehearings.

(c)	Whenever the Commissioner considers it necessary, in order to 
keep current the work of the Board of Patent Appeals and Interferences, 
the Commissioner may designate any patent examiner of the primary 
examiner grade or higher, having the requisite ability, to serve as exam-
iner-in-chief for periods not exceeding six months each. An examiner so 
designated shall be qualified to act as a member of the Board of Patent 
Appeals and Interferences. Not more than one of the members of the 
Board of Patent Appeals and Interferences hearing an appeal or determin-
ing an interference may be an examiner so designated. The Secretary of 
Commerce is authorized to fix the pay of each designated examiner-in-
chief in the Patent and Trademark Office at not to exceed the maximum 
rate of basic pay payable for grade GS-16 of the General Schedule under 
section 5332 of title 5. The rate of basic pay of each individual designated 
examiner-in-chief shall be adjusted, at the close of the period for which 
that individual was designated to act examiner-in-chief, to the rate of basic 
pay that individual would have been receiving at the close of such period 
if such designation had not been made.

The Commissioner's Notice of October 15, 1993  (1156 
O.G. 32,  Nov. 9, 1993) authorizes the Chairman, Vice 
Chairman and Examiners-in-Chief of the Board to use the 
respective titles Chief Administrative Patent Judge, Vice 
Chief Administrative Patent Judge, and Administrative 
Patent Judge for signing all correspondence and decisions, 
and for other business-related activities.

If subsequent to the hearing, but prior to the decision, an 
administrative patent judge (referred to as an "examiner-in-
chief" in  35 U.S.C. 7) who heard the appeal becomes 
unable to participate in the decision or any subsequent 
action for some reason, the Chief Administrative Patent 
Judge of the Board, at his or her discretion, may without a 
rehearing substitute a different Board member for the one 
who is unavailable, or may offer the appellant the opportu-
nity for a rehearing. See In re Bose Corp., 772 F.2d 866, 
227 USPQ 1 (Fed. Cir. 1985).

Should a member die or otherwise become unavailable 
(for example, retirement) to reconsider a decision, normally 
another member will be designated by the Chief Adminis-
trative Patent Judge as a substitute for the absent member.

1204	Administrative Handling 

Ex parte appeals to the Board, and all papers relating 
thereto, are forwarded to the examining group for docket-
ing. All appeal papers, such as the notice of appeal, appeal 
brief, and request for extension of time to file the brief, are 
processed by the appropriate examining group.

To ensure that all records are current, memorandum 
form PTO-262 is attached to the file wrapper when it is 
remanded by the Board. It is important that this memoran-
dum be promptly completed and forwarded by the group if 
the application is allowed, the prosecution is reopened, a 
continuation application is filed, or if the appeal is discon-
tinued for any other reason.

If the brief is not filed within the time designated by 
37 CFR 1.192, the applicant will be notified that the appeal 
stands dismissed.

 "SPECIAL CASE" 

Subject alone to diligent prosecution by the applicant, an 
application for patent that once has been made special and 
advanced out of turn by the Office for examination will 
continue to be special throughout its entire course of prose-
cution in the Patent and Trademark Office, including 
appeal, if any, to the Board. See  MPEP ? 708.02.

A petition to make an application special after the appeal 
has been forwarded to the Board may be addressed to the 
Board. However, no such petition will be granted unless the 
brief has been filed and applicant has made the same type 
of showing required by the Commissioner under 37 CFR 
1.102. Therefore, diligent prosecution is essential to a 
favorable decision on a petition to make special.

1205	Notice of Appeal  [R-1]

35 U.S.C. 134.  Appeal to the Board of Patent Appeals and 
Interferences.

**>

(a)	PATENT APPLICANT.-  An applicant for a patent, any of 
whose claims has been twice rejected, may appeal from the decision of the 
administrative patent judge to the Board of Patent Appeals and Interfer-
ences, having once paid the fee for such appeal.

(b)	PATENT OWNER.- A patent owner in any reexamination pro-
ceeding may appeal from the final rejection of any claim by the adminis-
trative patent judge to the Board of Patent Appeals and Interferences, 
having once paid the fee for such appeal.

(c)	THIRD-PARTY.-  A third-party requester in an inter partes 
proceeding may appeal to the Board of Patent Appeals and Interferences 
from the final decision of the administrative patent judge favorable to the 
patentability of any original or proposed amended or new claim of a 
patent, having once paid the fee for such appeal. The third-party requester 
may not appeal the decision of the Board of Patent Appeals and Interfer-
ences.<

35 U.S.C. 41.  Patent fees

(a)	The Commissioner shall charge the following fees:

*****

**>

(6)(A)	On filing an appeal from the examiner to the Board of Patent 
Appeals and Interferences, $300. 

(B)	In addition, on filing a brief in support of the appeal, 
$300, and on requesting an oral hearing in the appeal before the Board of 
Patent Appeals and Interferences, $260.<

*****

**

37 CFR 1.191.  Appeal to Board of Patent Appeals and 
Interferences.

(a)	Every applicant for a patent or for reissue of a patent, and every 
owner of a patent under reexamination, any of whose claims has been 
twice or finally (? 1.113) rejected, may appeal from the decision of the 
examiner to the Board of Patent Appeals and Interferences by filing a 
notice of appeal and the fee set forth in ? 1.17(b) within the time period 
provided under ?? 1.134 and 1.136 for reply.

(b)	The signature requirement of ? 1.33 does not apply to a notice 
of appeal filed under this section. 

(c)	An appeal when taken must be taken from the rejection of all 
claims under rejection which applicant or patent owner proposes to con-
test. Questions relating to matters not affecting the merits of the invention 
may be required to be settled before an appeal can be considered.

(d)	The time periods set forth in ??  1.191 and 1.192 are subject to 
the provisions of ? 1.136 for patent applications and ? 1.550(c) for reex-
amination proceedings. The time periods set forth in ?? 1.193, 1.194, 
1.196, and 1.197 are subject to the provisions of ? 1.136(b) for patent 
applications or ? 1.550(c) for reexamination proceedings. See ? 1.304(a) 
for extensions of time for filing a notice of appeal to the U.S. Court of 
Appeals for the Federal Circuit or for commencing a civil action.

(e)	Jurisdiction over the application or patent under reexamination 
passes to the Board of Patent Appeals and Interferences upon transmittal 
of the file, including all  briefs and examiner's answers, to the Board. Prior 
to the entry of a decision on the appeal, the Commissioner may sua sponte 
order the application remanded to the examiner.

Under  37 CFR 1.191(a), an applicant or patent owner in 
a reexamination proceeding dissatisfied with the primary 
examiner's decision in the second or final rejection of his or 
her claims may appeal to the Board for review of the exam-
iner's rejection by filing a notice of appeal and the required 
fee set forth in  37 CFR 1.17(b) within the time period pro-
vided under  37 CFR 1.134 and 1.136.  A notice of appeal 
may be filed after any of the claims has been twice rejected, 
regardless of whether the claim(s) has/have been finally 
rejected. The limitation of "twice or finally...rejected" does 
not have to be related to a particular application.  For exam-
ple, if any claim was rejected in a parent application, and 
the claim is again rejected in a continuing application, then 
applicant will be entitled to file an appeal in the continuing 
application, even if the claim was rejected only once in the 
continuing application.

Although the rules no longer require that the notice of 
appeal identify the rejected claim(s) appealed, or be signed, 
applicants should * continue to file notices of appeal which 
identify the appealed claims and are signed. The require-
ment was eliminated from  37 CFR 1.191 as being redun-
dant of the requirements of  37 CFR 1.192 and to avoid the 
delay and expense to both applicant and the PTO which is 
involved in treating a defective notice of appeal. It should 
be noted that the elimination of the requirement to sign a 
notice of appeal does not affect the requirements for other 
papers (such as an amendment under  37 CFR 1.116) sub-
mitted with the notice, or for other actions contained within 
the notice, e.g., an authorization to charge fees to a deposit 
account. Thus, failure to sign the notice of appeal may have 
unintended adverse consequences; for example, if an 
unsigned notice of appeal contains an (unsigned) authoriza-
tion to charge the appeal fee to a deposit account, the notice 
of appeal will be unacceptable because the appeal fee is 
lacking.

The notice of appeal must be filed within the period for 
reply set in the last Office action, which is normally 
3 months for applications.  See  MPEP ? 714.13.  Failure to 
remove all grounds of rejection and otherwise place an 
application in condition for allowance or to file an appeal 
after final rejection will result in the application becoming 
abandoned, even if one or more claims have been allowed, 
except where claims suggested for interference have been 
copied. The notice of appeal and appropriate fee may be 
filed up to 6 months from the date of the final rejection, so 
long as an appropriate petition and fee for an extension of 
time is filed either prior to or with the notice of appeal.  
Failure to file an appeal in a reexamination proceeding will 
result in issuance of the certificate under  37 CFR 1.570.

37 CFR 1.191 provides for appeal to the Board by the 
patent owner from any decision in a reexamination pro-
ceeding adverse to patentability, in accordance with 
35 U.S.C. 306.  See also  MPEP ? 2273.

The use of a separate letter containing the notice of 
appeal is strongly recommended. Form PTO/SB/31 may be 
used for filing a notice of appeal.

Form PTO/SB/31. Notice of Appeal from the Examiner to the Board of Patent Appeals and Interferences

MATTERS HANDLED CONCURRENTLY WITH 
APPEAL

The Patent and Trademark Office does not acknowledge 
receipt of a Notice of Appeal by separate letter. However, if 
a self-addressed postcard is included with the Notice of 
Appeal, it will be date stamped and mailed.

Form paragraphs 12.01-12.04 may be used to indicate 
defects in a Notice of Appeal.

?  12.01 Notice of Appeal Unacceptable - Fee Unpaid

The notice of appeal filed on [1] is not acceptable because the appeal 
fee required under  37 CFR  1.17(b) was not filed, or was not timely filed. 

Applicant may obtain an extension of time under  37 CFR 1.136(a) to 
file the  appropriate appeal fee. The date on which the notice of appeal, the 
appeal fee, the petition under 37 CFR 1.136(a), and the petition fee are 
filed will be the date of the reply and also the date for determining the 
period of extension and the corresponding amount of the fee. In no case 
may an applicant reply later than the maximum SIX MONTH statutory 
period or obtain an extension pursuant to  37 CFR 1.136(a) for more than  
FIVE MONTHS beyond the date of  reply set in an Office action.

?  12.02 Notice of Appeal Unacceptable - No 2nd Rejection

The notice of appeal filed on   [1] is not acceptable because there has 
been no second or final rejection in this application, as required under 
37 CFR 1.191(a).

?  12.03 Notice of Appeal Unacceptable - Not Timely Filed

The notice of appeal filed on   [1] is not acceptable because it was filed 
after the expiration of the period set in the prior Office action.  This appli-
cation will become abandoned unless applicant obtains an extension under  
37 CFR 1.136(a).  The date on which the notice of appeal, the appeal fee, 
the petition under  37 CFR 1.136(a), and the petition fee under  37 CFR 
1.17(a) are filed will be the date of the  reply and also the date for deter-
mining the period of extension and the corresponding amount of the fee.  
In no case may an applicant  reply later than the maximum SIX MONTH 
statutory period or obtain an extension pursuant to  37 CFR 1.136(a) for 
more than  FIVE MONTHS beyond the date of  reply set in an Office 
action.

?  12.04 Notice of Appeal Unacceptable - Claims Allowed

The notice of appeal filed on   [1] is not acceptable because a  notice of 
allowability was mailed by the Office on [2].

1206	Appeal Brief  [R-1]

37 CFR 1.192.  Appellant's brief.

(a)	Appellant must, within two months from the date of the notice 
of appeal under ? 1.191 or within the time allowed for reply to the action 
from which the appeal was taken, if such time is later, file a brief in tripli-
cate.  The brief must be accompanied by the fee set forth in ? 1.17(c) and 
must set forth the authorities and arguments on which appellant will rely 
to maintain the appeal.  Any arguments or authorities not included in the 
brief will be refused consideration by the Board of Patent Appeals and 
Interferences, unless good cause is shown.

(b)	On failure to file the brief, accompanied by the requisite fee, 
within the time allowed, the appeal shall stand dismissed.

(c)	The brief shall contain the following items under appropriate 
headings and in the order indicated below unless the brief is filed by an 
applicant who is not represented by a registered practitioner:

(1)	Real party in interest. A statement identifying the real party 
in interest, if the party named in the caption of the brief is not the real 
party in interest.

(2)	Related appeals and interferences. A statement identifying 
by number and filing date all other appeals or interferences known to 
appellant, the appellant's legal representative, or assignee which will 
directly affect or be directly affected by or have a bearing on the Board's 
decision in the pending appeal.

(3)	Status of claims.  A statement of the status of all the claims, 
pending or canceled, and identifying the claims appealed.

(4)	Status of amendments. A statement of the status of any 
amendment filed subsequent to final rejection.

(5)	Summary of invention. A concise explanation of the inven-
tion defined in the claims involved in the appeal, which shall refer to the 
specification by page and line number, and to the drawing, if any, by refer-
ence characters.

(6)	Issues. A concise statement of the issues presented for 
review.

(7)	Grouping of claims. For each ground of rejection which 
appellant contests and which applies to a group of two or more claims, the 
Board shall select a single claim from the group and shall decide the 
appeal as to the ground of rejection on the basis of that claim alone unless 
a statement is included that the claims of the group do not stand or fall 
together and, in the argument under paragraph (c)(8) of this section, appel-
lant explains why the claims of the group are believed to be separately pat-
entable. Merely pointing out differences in what the claims cover is not an 
argument as to why the claims are separately patentable.

(8)	Argument. The contentions of appellant with respect to each 
of the issues presented for review in paragraph (c)(6) of this section, and 
the basis therefor, with citations of the authorities, statutes, and parts of the 
record relied on. Each issue should be treated under a separate heading.

(i)	For each rejection under  35 U.S.C. 112, first paragraph, 
the argument shall specify the errors in the rejection and how the first 
paragraph of  35 U.S.C. 112 is complied with, including, as appropriate, 
how the specification and drawings, if any,

(A)	describe the subject matter defined by each of the 
rejected claims,

(B)	enable any person skilled in the art to make and use 
the subject matter defined by each of the rejected claims, and

(C)	set forth the best mode contemplated by the inventor 
of carrying out his or her invention.

(ii)	For each rejection under  35 U.S.C. 112, second para-
graph, the argument shall specify the errors in the rejection and how the 
claims particularly point out and distinctly claim the subject matter which 
applicant regards as the invention.

(iii)	For each rejection under  35 U.S.C. 102, the argument 
shall specify the errors in the rejection and why the rejected claims are pat-
entable under  35 U.S.C. 102, including any specific limitations in the 
rejected claims which are not described in the prior art relied upon in the 
rejection.

(iv)	For each rejection under  35 U.S.C. 103, the argument 
shall specify the errors in the rejection and, if appropriate, the specific lim-
itations in the rejected claims which are not described in the prior art relied 
on in the rejection, and shall explain how such limitations render the 
claimed subject matter unobvious over the prior art. If the rejection is 
based upon a combination of references, the argument shall explain why 
the references, taken as a whole, do not suggest the claimed subject matter, 
and shall include, as may be appropriate, an explanation of why features 
disclosed in one reference may not properly be combined with features 
disclosed in another reference. A general argument that all the limitations 
are not described in a single reference does not satisfy the requirements of 
this paragraph.

(v)	For any rejection other than those referred to in para-
graphs (c)(8)(i) to (iv) of this section, the argument shall specify the errors 
in the rejection and the specific limitations in the rejected claims, if appro-
priate, or other reasons, which cause the rejection to be in error.

(9)	Appendix. An appendix containing a copy of the claims 
involved in the appeal.  

(d)	If a brief is filed which does not comply with all the require-
ments of paragraph (c) of this section, appellant will be notified of the rea-
sons for non-compliance and provided with a period of one month within 
which to file an amended brief. If appellant does not file an amended brief 
during the one-month period, or files an amended brief which does not 
overcome all the reasons for non-compliance stated in the notification, the 
appeal will stand dismissed.

Where the brief is not filed, but within the period 
allowed for filing the brief an amendment is presented 
which places the application in condition for allowance, the 
amendment may be entered since the application retains its 
pending status during said period. Amendments should not 
be included in the appeal brief. Amendments should be 
filed as separate papers. See  MPEP ? 1207,  ? 1215.01, and  
? 1215.02.

TIME FOR FILING APPEAL BRIEF

37 CFR 1.192(a) provides 2 months from the date of the 
Notice of Appeal for the appellant to file an appeal brief. In 
a reexamination proceeding, the time period can be 
extended only under the provisions of  37 CFR 1.550(c). 
See also  MPEP ? 2274.

The usual period of time in which appellant must file his  
or her brief is 2 months from the date of appeal. The Office 
date of receipt of the Notice of Appeal (and not the date 
indicated on any Certificate of Mailing under  37 CFR 1.8) 
is the date from which this 2 month time period is mea-
sured. See  MPEP ? 512. However,  37 CFR 1.192(a) alter-
natively permits the brief to be filed "within the time 
allowed for reply to the action from which the appeal was 
taken, if such time is later." These time periods may be 
extended under  37 CFR 1.136(a), and if  37 CFR 1.136(a) 
is not available, under  37 CFR 1.136(b) for extraordinary 
circumstances.

In the event that the appellant finds that he or she is 
unable to file a brief within the time period allotted by the 
rules, he or she may file a petition, with fee, to the examin-
ing group, requesting additional time under 37 CFR 
1.136(a).  Additional time in excess of 5 months will not be 
granted unless extraordinary circumstances are involved 
under  37 CFR 1.136(b). The time extended is added to the 
calendar day of the original period, as opposed to being 
added to the day it would have been due when said last day 
is a Saturday, Sunday, or Federal holiday.

If after an appeal has been filed, but prior to the date for 
submitting a brief, an interference is declared, appellant's 
brief need not be filed while the interference is pending, 
unless the administrative patent judge has consented to 
prosecution of the application concurrently with the inter-
ference.  See  MPEP ? 2315. Absent such concurrent prose-
cution, the examiner may, after the interference has 
terminated and the files have been returned to him or her, 
(A) set a 2-month period for filing the brief, or (B) with-
draw the final rejection of the appealed claims in order to 
enter an additional rejection on a ground arising out of the 
interference. See, for example, MPEP ? 2363.03. Also, if 
the appellant was the losing party in the interference, 
claims which were designated as corresponding to the lost 
count or counts will stand finally disposed of under 37 CFR 
1.663.

When an application is revived after abandonment for 
failure on the part of the appellant to take appropriate 
action after final rejection, and the petition to revive was 
accompanied by a Notice of Appeal, appellant has 
2 months, from the mailing date of the Commissioner's 
affirmative decision on the petition, in which to file the 
appeal brief. The time period for filing the appeal brief may 
be extended under  37 CFR 1.136.

With the exception of a declaration of an interference or 
suggestion of claims for an interference and timely copying 
of claims for an interference, the appeal ordinarily will be 
dismissed if the brief is not filed within the period provided 
by  37 CFR 1.192(a) or within such additional time as may 
be properly extended.

A brief must be filed to preserve appellant's right to the 
appealed claims, notwithstanding circumstances such as:

(A)	the possibility or imminence of an interference 
involving the subject application, but not resulting in with-
drawal of the final rejection prior to the brief's due date;

(B)	the filing of a petition for supervisory action under  
37 CFR 1.181;

(C)	the filing of an amendment, even if it is one which  
the examiner previously has indicated may place one or 
more claims in condition for allowance, unless the exam-
iner, in acting on the amendment, disposes of all issues on 
appeal;

(D)	the receipt of a letter from the examiner stating 
that prosecution is suspended, without the examiner with-
drawing the final rejection from which appeal has been 
taken or suggesting claims for an interference, and without 
an administrative patent judge declaring an interference 
with the subject application.

Although failure to file the brief within the permissible 
time will result in dismissal of the appeal, if any claims 
stand allowed, the application does not become abandoned 
by the dismissal, but is returned to the examiner for action 
on the allowed claims. See MPEP ? 1215.04. If there are no 
allowed claims, the application is abandoned as of the date 
the brief was due. Claims which have been objected to as 
dependent from a rejected claim do not stand allowed. In a 
reexamination proceeding failure to file the brief will result 
in the issuance of the certificate under  37 CFR 1.570.

If the time for filing a brief has passed and the applica-
tion has consequently become abandoned, the applicant 
may petition to revive the application, as in other cases of 
abandonment, and to reinstate the appeal; if the appeal is 
dismissed, but the application is not abandoned, the petition 
would be to reinstate the claims and the appeal, but a show-
ing equivalent to that in a petition to revive under  37 CFR 
1.137 is required.  In either event, a proper brief must be 
filed before the petition will be considered on its merits.

Where the dismissal of the appeal is believed to be in 
error, filing a petition, pointing out the error, may be suffi-
cient.

A fee under  37 CFR 1.17(c) is required when the brief is 
filed.  37 CFR 1.192(a) requires the submission of three 
copies of the appeal brief.

APPEAL BRIEF CONTENT

The brief, as well as every other paper relating to an 
appeal, should indicate the number of the examining group 
to which the application or patent under reexamination is 
assigned and the application or reexamination control num-
ber. When the brief is received, it is forwarded to the group 
where it is entered in the file, and referred to the examiner.

An appellant's brief must be responsive to every ground 
of rejection stated by the examiner.

Where an appeal brief fails to address any ground of 
rejection, appellant shall be notified by the examiner that he 
or she must correct the defect by filing a brief (in triplicate) 
in compliance with  37 CFR 1.192(c).  See  37 CFR 
1.192(d).  Form paragraphs 12.76-12.76.06 and 12.78, or 
form PTOL-462, "Notification of Non-Compliance with  
37 CFR 1.192(c)," may be used to notify the appellant of 
the deficiency. Oral argument at a hearing will not remedy 
such deficiency of a brief. The fact that appellant may con-
sider a ground to be clearly improper does not justify a fail-
ure to point out to  the Board the reasons for that belief.

The mere filing of paper entitled as a brief will not nec-
essarily be considered to be in compliance with 37 CFR 
1.192(c). The rule requires that the brief must set forth the 
authorities and arguments relied upon. Since it is essential 
that the Board should be provided with a brief fully stating 
the position of the appellant with respect to each issue 
involved in the appeal so that no search of the record is 
required in order to determine that position, 37 CFR 
1.192(c) requires that the brief contain specific items, as 
discussed below.

An exception to the requirement that all the items speci-
fied in  37 CFR 1.192(c) be included in the brief is made if 
the application or reexamination proceeding is being prose-
cuted by the appellant pro se, i.e., there is no attorney or 
agent of record, and the brief was neither prepared nor 
signed by a registered attorney or agent.  The brief of a pro 
se appellant which does not contain all of the items, (1) to 
(9), specified in  37 CFR 1.192(c) will be accepted as long 
as it substantially complies with the requirements of items 
(1), (2), and (8). If the brief of a pro se appellant is 
accepted, it will be presumed that all the claims of a 
rejected group of claims stand or fall together unless an 
argument is included in the brief that presents reasons as to 
why the appellant considers one or more of the claims in 
the rejected group to be separately patentable from the 
other claims in the group.   

A distinction must be made between the lack of any 
argument and the presentation of arguments which carry 
no conviction.  In the former case, notification of a defec-
tive appeal brief is in order, while in the latter case, the 
application or reexamination is forwarded to the Board 
for a decision on the merits.  As noted above, the exami-
 ner may use form paragraphs 12.76-12.76.06 and 12.78, or 
form PTOL-462, "Notification of Non-Compliance with 
37 CFR 1.192(c)," to notify appellant that the appeal brief 
is defective. 

If in his or her brief, appellant relies on some reference, 
he or she is expected to provide the Board with three copies 
of it.

The specific items required by  37 CFR 1.192(c) are:

(1) Real party in interest. A statement identifying the 
real party in interest, if the party named in the caption of 
the brief is not the real party in interest. If appellant does 
not name a real party in interest, the examiner will assume 
that the party named in the caption of the brief is the real 
party in interest, i.e., the owner at the time the brief is being 
filed.

The identification of the real party in interest will allow 
members of the Board to comply with ethics regulations 
associated with working in matters in which the member 
has a financial interest to avoid any potential conflict of 
interest. While the examiner will assume that the real party 
in interest is the individual or individuals identified in the 
caption when the real party in interest is not explicitly set 
out in the brief, nevertheless, the Board may require the 
appellant to explicitly name the real party in interest. See  
MPEP ? 1210.01.

(2) Related appeals and interferences. A statement iden-
tifying by application number and filing date all other 
appeals or interferences known to appellant, the appellant's 
legal representative, or assignee which will directly affect 
or be directly affected by or have a bearing on the Board's 
decision in the pending appeal.  The appeal or interference 
number should also be listed.  The statement is not limited 
to copending applications. If appellant does not identify 
any other appeals or interferences, the examiner will pre-
sume that there are none. While the examiner will assume 
that there are no related cases when no related case is 
explicitly set out in the brief, nevertheless, the Board may 
require the appellant to explicitly identify any related case. 
See  MPEP ? 1210.01.

(3) Status of Claims.  A statement of the status of all the 
claims in the application, or patent under reexamination, 
i.e., for each claim in the case, appellant must state whether 
it is cancelled, allowed, rejected, etc. Each claim on appeal 
must be identified.

(4) Status of Amendments. A statement of the status of 
any amendment filed subsequent to final rejection, i.e., 
whether or not the amendment has been acted upon by the 
examiner, and if so, whether it was entered, denied entry, or 
entered in part. This statement should be of the status of the 
amendment as understood by the appellant.

Items (3) and (4) are included in  37 CFR 1.192(c) to 
avoid confusion as to which claims are on appeal, and the 
precise wording of those claims, particularly where the 
appellant has sought to amend claims after final rejection. 
The inclusion of items (3) and (4) in the brief will advise 
the examiner of what the appellant considers the status of 
the claims and post-final rejection amendments to be, 
allowing any disagreement on these questions to be 
resolved before the appeal is taken up for decision by the 
Board.

(5) Summary of Invention. A concise explanation of the  
invention defined in the claims involved in the appeal. This 
explanation is required to refer to the specification by page 
and line number, and, if there is a drawing, to the drawing 
by reference characters. Where applicable, it is preferable 
to read the appealed claims on the specification and any 
drawing. While reference to page and line number of the 
specification may require somewhat more detail than sim-
ply summarizing the invention, it is considered important to 
enable the Board to more quickly determine where the 
claimed subject matter is described in the application. 

(6) Issues. A concise statement of the issues presented 
for review. Each stated issue should correspond to a sepa-
rate ground of rejection which appellant wishes the Board 
of Patent Appeals and Interferences to  review.  While the 
statement of the issues must be concise, it should not be so 
concise as to omit the basis of each issue. For example, the 
statement of an issue as "Whether claims 1 and 2 are unpat-
entable" would not comply with 37 CFR 1.192(c)(6). 
Rather, the basis of the alleged unpatentability would have 
to be stated, e.g., "Whether claims 1 and 2 are unpatentable 
under  35 U.S.C. 103 over Smith in view of Jones," or 
"Whether claims 1 and 2 are unpatentable under  35 U.S.C. 
112, first paragraph, as being based on a nonenabling dis-
closure." The statement would be limited to the issues pre-
sented, and should not include any argument concerning 
the merits of those issues.

(7) Grouping of Claims. For each ground of rejection 
which appellant contests and which applies to a group of 
two or more claims, the Board shall select a single claim 
from the group and shall decide the appeal as to the ground 
of rejection on the basis of that claim alone, unless a state-
ment is included that the claims of the group do not stand or 
fall together and, in the argument section of the brief 
(37 CFR 1.192(c)(8)), appellant explains why the claims of 
the group are believed to be separately patentable. Merely 
pointing out differences in what the claims cover is not an 
argument as to why the claims are separately patentable. If 
an appealed ground of rejection applies to more than one 
claim and appellant considers the rejected claims to be sep-
arately patentable, 37 CFR 1.192(c)(7) requires appellant to 
state that the claims do not stand or fall together, and to 
present in the appropriate part or parts of the argument 
under  37 CFR 1.192(c)(8) the reasons why they are consid-
ered separately patentable. 

The absence of such a statement and argument is a con-
cession by the applicant that, if the ground of rejection were 
sustained as to any one of the rejected claims, it will be 
equally applicable to all of them. 37 CFR 1.192(c)(7) is 
consistent with the practice of the Court of Appeals for the 
Federal Circuit indicated in such cases as In re Young, 927 
F.2d 588, 18 USPQ2d 1089 (Fed. Cir. 1991); In re Nielson, 
816 F.2d 1567, 2 USPQ2d 1525 (Fed. Cir. 1987); In re 
King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986); and 
In re Sernaker, 702 F.2d 989, 217 USPQ 1 (Fed. Cir. 1983).  
37 CFR 1.192(c)(7) requires the inclusion of reasons in 
order to avoid unsupported assertions of separate patent-
ability. The reasons may be included in the appropriate por-
tion of the "Argument" section of the brief. For example, if 
claims 1 to 4 are rejected under  35 U.S.C. 102 and appel-
lant considers claim 4 to be separately patentable from 
claims 1 to 3, he or she should so state in the "Grouping of 
claims" section of the brief, and then give the reasons for 
separate patentability in the  35 U.S.C. 102 portion of the 
"Argument" section (i.e., under  37 CFR 1.192(c) (8) (iii)).

In the absence of a separate statement that the claims do 
not stand or fall together, the Board panel assigned to the 
case will normally select the broadest claim in a group and 
will consider only that claim, even though the group may 
contain two broad claims, such as "ABCDE" and 
"ABCDF.". The same would be true in a case where there 
are both broad method and apparatus claims on appeal in 
the same group. The rationale behind the rule, as amended, 
is to make the appeal process as efficient as possible. Thus, 
while the Board will consider each separately argued claim, 
the work of the Board can be done in a more efficient man-
ner by selecting a single claim from a group of claims when 
the appellant does not meet the requirements of  37 CFR 
1.192(c)(7).

It should be noted that  37 CFR 1.192(c)(7) requires the 
appellant to perform two affirmative acts in his or her brief 
in order to have the separate patentability of a plurality of 
claims subject to the same rejection considered. The appel-
lant must (A) state that the claims do not stand or fall 
together and (B) present arguments why the claims subject 
to the same rejection are separately patentable. Where the 
appellant does neither, the claims will be treated as stand-
ing or falling together. Where, however, the appellant (A) 
omits the statement required by  37 CFR 1.192(c)(7) yet 
presents arguments in the argument section of the brief, or 
(B) includes the statement required by  37 CFR 1.192(c)(7) 
to the effect that one or more claims do not stand or fall 
together (i.e., that they are separately patentable) yet does 
not offer argument in support thereof in the "Argument" 
section of the brief, the appellant should be notified of the 
noncompliance as per  37 CFR 1.192(d).  Ex parte Schier, 
21 USPQ2d 1016 (Bd. Pat. App. & Int. 1991); Ex parte 
Ohsumi, 21 USPQ2d 1020 (Bd. Pat. App. & Int. 1991).

(8) Argument. The appellant's contentions with respect to 
each of the issues presented for review in  37 CFR 1.192(c) 
(6), and the basis for those contentions, including citations 
of authorities, statutes, and parts of the record relied on, 
should be presented in this section.

Included in this paragraph are five subparagraphs, (i) to 
(v).  Subparagraphs (i) to (iv) concern the grounds of rejec-
tion most commonly involved in ex parte appeals, namely,  
35 U.S.C. 112, first and second paragraphs, 35 U.S.C. 102, 
and  35 U.S.C. 103. Subparagraph (v) is a general provision 
concerning grounds of rejection not covered by subpara-
graphs (i) to (iv).

The purpose of subparagraphs (i) to (iv) is to ensure that 
the appellant's argument concerning each appealed ground 
of rejection will include a discussion of the questions rele-
vant to that ground. Compliance with the requirements of 
the particular subparagraphs which are pertinent to the 
grounds of rejection involved in an appeal will be benefi-
cial both to the Patent and Trademark Office and appel-
lants. It will not only facilitate a decision by the Board of 
Patent Appeals and Interferences by enabling the Board to 
determine more quickly and precisely the appellant's posi-
tion on the relevant issues, but also will help appellants to 
focus their arguments on those issues.

For each rejection not falling under subparagraphs (i) to 
(iv), subparagraph (v) provides that the argument should 
specify the specific limitations in the rejected claims, if 
appropriate, or other reasons, which cause the rejection to 
be in error. This language recognizes that for some grounds 
of rejection, it may not be necessary to specify particular 
claim limitations, for example, a rejection under  35 U.S.C. 
101, on the ground that the claims are directed to nonstatu-
tory subject matter, as in Ex parte Hibberd, 227 USPQ 443 
(Bd. Pat. App. & Inter. 1985).

37 CFR 1.192(a) contains the following sentence: 

Any argument or authorities not included in the brief  will be 
refused consideration by the Board of Patent Appeals and Interfer-
ences, unless good cause is shown.

This sentence emphasizes that all arguments and authorities 
which an appellant wishes the Board to consider should be 
included in the brief. It should be noted that arguments not 
presented in the brief and made for the first time at the oral 
hearing are not normally entitled to consideration. In re 
Chiddix, 209 USPQ 78 (Comm'r Pat. 1980); Rosenblum v. 
Hiroshima, 220 USPQ 383 (Comm'r Pat. 1983).

37 CFR 1.192(a) is not intended to preclude the filing of 
a supplemental paper if new authority should become avail-
able or relevant after the brief was filed. An example of 
such circumstances would be where a pertinent decision of 
a court or other tribunal was not published until after the 
brief was filed.

(9) Appendix. An appendix containing a copy of the 
claims involved in the appeal.

The copy of the claims required in the brief Appendix by  
37 CFR 1.192(c) (9) should be a clean copy and should not 
include any brackets or underlining as required by  37 CFR 
1.121(a)(2).  See  MPEP  ?  1454 for the presentation of the 
copy of the claims in a reissue application.

For sake of convenience, the copy of the claims involved 
should be double spaced and the appendix should start on  a 
new page.

37 CFR 1.192(c) merely specifies the minimum require-
ments for a brief, and does not prohibit the inclusion of any 
other material which an appellant may consider necessary 
or desirable, for example, a list of references, table of con-
tents, table of cases, etc. A brief is in compliance with 
37 CFR 1.192(c) as long as it includes items (1) to (9) in 
the order set forth (with the appendix, item (9), at the end). 

REVIEW OF BRIEF BY EXAMINER

The question of whether a brief complies with the rule is 
a matter within the jurisdiction of the examiner.  37 CFR 
1.192(d) provides that if a brief is filed which does not 
comply with all the requirements of paragraph (c), the 
appellant will be notified of the reasons for noncompliance. 
Appellant will be given the longest of any of the following 
time periods to correct the defect(s): 

(A)	1 month or 30 days from the mailing of the notifi-
cation of non-compliance, whichever is longer; 

(B)	within the time period for reply to the action from 
which appeal has been taken; or 

(C)	within 2 months from the date of the notice of 
appeal under  37 CFR 1.191.  

Extensions of time may be granted under  37 CFR 1.136(a) 
or 1.136(b). The examiner may use the form paragraphs set 
forth below or form PTOL-462, "Notification of Non-Com-
pliance with  37 CFR 1.192(c)," to notify appellant that the 
appeal brief is defective.  The appeal will be dismissed if 
the appellant does not timely file an amended brief, or files 
an amended brief which does not overcome all the reasons 
for noncompliance of which the appellant was notified. 

Under  37 CFR 1.192(d), the appellant may file an 
amended brief to correct any deficiencies in the original 
brief. Moreover, if appellant disagrees with the examiner's 
holding of noncompliance, a petition under  37 CFR 1.181 
may be filed.

Once the brief has been filed, a petition to suspend pro-
ceedings may be considered on its merits, but will be 
granted only in exceptional cases, such as where the writing 
of the examiner's answer would be fruitless or the proceed-
ings would work an unusual hardship on the appellant.

For a reply brief, see  MPEP ? 1208.03.

Form paragraphs 12.08-12.13, 12.16, 12.17, and 12.69-
12.78, or Form PTOL-462, "Notification of Non-Compli-
ance with  37 CFR 1.192(c)," may be used concerning the 
appeal brief.

?  12.08 Appeal Dismissed - Brief Fee Unpaid, No Allowed 
Claims

The appeal under  37 CFR 1.191 is dismissed because the fee for filing 
the brief, as required under  37 CFR  1.17(c) was not submitted or timely 
submitted and the period for obtaining an extension of time to file the brief 
under  37 CFR 1.136(a) has expired.

As a result of this dismissal, the application is ABANDONED since 
there are no allowed claims.

Examiner Note:

Claims which have been indicated as containing allowable subject mat-
ter, but are objected to as being dependent upon a rejected claim, are to be 
considered as if they were rejected.  See  MPEP ? 1215.04.

?  12.09 Appeal Dismissed - Brief Fee Unpaid, Allowed Claims

The appeal under  37 CFR 1.191 is dismissed because the fee for filing 
the appeal brief, as required under  37 CFR  1.17(c), was not submitted or 
timely submitted and the period for obtaining an extension of time to file 
the brief under  37 CFR 1.136(a) has expired.

As a result of this dismissal, the application will be further processed 
by the examiner since it contains allowed claims.  Prosecution on the mer-
its remains CLOSED.

Examiner Note:

Claims which have been indicated as containing allowable subject mat-
ter, but are objected to as being dependent upon a rejected claim, are to be 
considered as if they were rejected.  See  MPEP ? 1215.04.

?  12.09.01 Appeal Dismissed - Allowed Claims, Formal Matters 
Remaining

In view of applicant's failure to file a brief within the time prescribed 
by  37 CFR 1.192(a), the appeal stands dismissed and the proceedings as 
to the rejected claims are considered terminated.  See  37 CFR 1.197(c).

This application will be passed to issue on allowed claim  [1] provided 
the following formal matters are corrected.  Prosecution is otherwise 
closed.

[2]

Applicant is required to make the necessary corrections within a short-
ened statutory period set to expire ONE MONTH or THIRTY DAYS, 
whichever is longer, from the mailing date of this letter.  Extensions of 
time may be granted under  37 CFR 1.136. 

Examiner Note:

1.	This paragraph should only be used if the formal matters cannot  be 
handled by examiner's amendment.  See  MPEP ? 1215.04.

2.	In bracket 2, insert a description of the formal matters to be cor-
rected.

3.	Claims which have been indicated as containing allowable subject 
matter but are objected to as being dependent upon a rejected claim are to 
be considered as if they were rejected.  See  MPEP ? 1215.04.

?  12.10 Extension To File Brief - Granted

The request for an extension of time under  37 CFR 1.136(b) for filing 
the appeal brief under  37 CFR 1.192 filed on   [1] has been approved for 
[2].

Examiner Note:

This paragraph should only be used when  37 CFR 1.136(a) is not 
available or has been exhausted, such as in litigation reissues.

?  12.11 Extension To File Brief - Denied

The request for an extension of time under  37 CFR 1.136(b) for filing 
the appeal brief under  37 CFR 1.192 filed on   [1] has been disapproved 
because no sufficient cause for the extension has been shown.

Examiner Note:

This paragraph should only be used when  37 CFR 1.136(a) is not 
available or has been exhausted, such as in litigation reissues.

?  12.12 Brief Defective - Unsigned

The appeal brief filed on   [1] is defective because it is unsigned.  37 
CFR 1.33.  A ratification properly signed is required.

To avoid dismissal of the appeal, appellant must ratify the appeal brief 
within the longest of any of the following TIME PERIODS: (1) ONE 
MONTH or THIRTY DAYS from the mailing of this communication, 
whichever is longer; (2) within the time period for reply to the action from 
which appeal has been taken; or (3) within two months from the date of 
the notice of appeal under  37 CFR 1.191.  Extensions of these time peri-
ods may be granted under  37 CFR 1.136.

?  12.13 Brief Defective - Three Copies Lacking

The appeal brief filed on   [1] is defective because the three copies of 
the Brief required under  37 CFR 1.192(a) have not been submitted.

To avoid dismissal of the appeal, appellant must submit the necessary 
additional copies of the appeal brief within the longest of any of the fol-
lowing TIME PERIODS: (1) ONE MONTH or THIRTY DAYS, which-
ever is longer, from the mailing of this communication; (2) within the time 
period for reply to the action from which appeal has been taken; or, (3) 
within two months from the date of the notice of appeal under 37 CFR 
1.191.  Extensions of these time periods may be granted under 37 CFR 
1.136.

?  12.16 Brief Unacceptable - Fee Unpaid

The appeal brief filed on [1] is unacceptable because the fee required 
under  37 CFR  1.17(c) was not timely filed.

This application will become abandoned unless  appellant obtains an 
extension of time under  37 CFR 1.136(a)  and files the required appeal 
brief fee.  The date on which the brief, the fee for filing the brief, the peti-
tion under  37 CFR 1.136(a), and the petition fee under  37 CFR 1.17(a) 
are filed will be the date of the  reply and also the date for determining the 
period of extension and the corresponding amount of the fee.  In no case 
may an appellant obtain an extension for more than  FIVE MONTHS 
under  37 CFR 1.136(a) beyond the TWO MONTH period for filing the 
appeal brief.

?  12.17 Brief Unacceptable - Not Timely Filed

The appeal brief filed on [1] is unacceptable because it was filed after 
the expiration of the required period for  reply.

This application will become abandoned unless  appellant obtains an 
extension of time under  37 CFR 1.136(a).  The date on which the appeal 
brief, the fee for filing the brief, the petition under  37 CFR 1.136(a), and 
the petition fee under  37 CFR 1.17(a) are filed will be the date of the  
reply and also the date for determining the period of extension and the cor-
responding amount of the fee.  In no case may an appellant obtain an 
extension for more than  FIVE MONTHS under  37 CFR 1.136(a) beyond 
the TWO MONTH period for filing the appeal brief.

Form paragraph 12.69, followed by one or more of from 
paragraphs 12.69.01-12.78 may be used for noting non-
compliance with  37 CFR 1.192(c)

?  12.69 Heading for Notice Under 37 CFR 1.192(c)

NOTIFICATION OF NON-COMPLIANCE WITH THE REQUIRE-
MENTS OF 37 CFR 1.192(c)

Examiner Note:

Use form PTOL-90 and follow with one or more of form paragraphs 
12.69.01 to 12.77 and conclude with paragraph 12.78.

?  12.69.01 Statement in Brief That Claims Do Not Stand or Fall 
Together - Supporting Reasons Lacking

The brief includes a statement that claims [1] do not stand or fall 
together, but fails to present reasons in support thereof as required under  
37 CFR 1.192(c)(>7<). MPEP ? 1206.

Examiner Note:

1.	This paragraph should be used only when no supporting reasons are 
presented in the brief.  If reasons are presented, even if they are not agreed 
with, use form paragraph 12.55.02 instead of this form paragraph.  Rea-
sons for disagreement are discussed in either the "Grounds of Rejection" 
or in the "Response to Argument" portion of the Examiner's Answer.

2.	If the brief contains neither a statement that claims do not stand or 
fall together nor reasons in support thereof, use paragraph 12.55.01 in the 
Examiner's Answer.

?  12.70 Missing Section Headings

The brief does not contain the items of the brief required by 37 CFR 
1.192(c) under the appropriate headings and/or in the order indicated.  [1]

Examiner Note:

In bracket 1, insert an indication of the missing headings or errors in 
the order of items.

?  12.70.01 Defect in Statement of Real Party in Interest

The brief does not contain a heading identifying the real party in inter-
est as required by  37 CFR 1.192(c)(1).

?  12.70.02 Defect in Statement of Related Appeals and 
Interferences

The brief does not contain a heading identifying the related appeals and 
interferences directly affected by or having a bearing on the decision in the 
pending appeal as required by  37 CFR 1.192(c)(2).

?  12.71 Defect in Statement of Status of Claims

The brief does not contain a statement of the status of all the claims, 
pending or canceled, and identify the claims appealed as required by 
37 CFR 1.192(c)(3).  [1]

Examiner Note:

In bracket 1, insert an indication of the missing claim status informa-
tion.

?  12.72 Defect in Statement of Status of Amendment Filed After 
Final Rejection

The brief does not contain a statement of the status of an amendment 
filed subsequent to the final rejection as required by  37 CFR 1.192(c)(4). 
[1]

Examiner Note:

In bracket 1, insert an identification of the amendment for which the 
status is missing.

?  12.73 Defect in Explanation of the Invention

The brief does not contain a concise explanation of the invention 
defined in the claims involved in the appeal, which refers to the specifica-
tion by page and line number, and to the drawing, if any, by reference 
characters as required by  37 CFR 1.192(c)(5).  [1]

Examiner Note:

In bracket 1, insert an indication of the missing explanation.

?  12.74 Defect in Statement of the Issues

The brief does not contain a concise statement of the issues presented 
for review as required by  37 CFR 1.192(c)(6).  [1]

Examiner Note:

In bracket 1, insert an indication of the missing concise statement of 
the issues presented for review.

?  12.76 Defect in the Arguments of the Appellant

The brief does not contain arguments of the appellant with respect to 
each of the issues presented for review in  37 CFR 1.192(c)(6), and the 
basis therefor, with citations of the authorities, statutes, and parts of the 
record relied on as required by  37 CFR 1.192(c)(8).

Examiner Note:

Include one or more of form paragraphs 12.76.01 to 12.76.06 which 
apply.

?  12.76.01 Separate Heading for Each Issue

Each issue should be treated under a separate heading.

?  12.76.02 Defect in 112, First Paragraph, Rejection  Argument

The brief does not contain, for each rejection under 35 U.S.C. 112 (first 
paragraph), an argument which specifies the errors in the rejection and 
how the first paragraph of  35 U.S.C. 112 is complied with, including how 
the specification and drawings, if any,   [1].

Examiner Note:

In bracket 1, insert the following wording, as appropriate:

	(a)--describe the subject matter defined by each of the 
rejected claims--,

	(b)--enable any person skilled in the art to make and use the 
subject matter defined by each of the rejected claims--, or

	(c)--set forth the best mode contemplated by the inventor of 
carrying out his/her invention--.

?  12.76.03 Defect in 112, Second Paragraph, Rejection Argument

The brief does not contain, for each rejection under 35 U.S.C. 112 (sec-
ond paragraph), an argument which specifies the errors in the rejection and 
how the claims particularly point out and distinctly claim the subject mat-
ter which applicant regards as the invention.

?  12.76.04 Defect in 102 Rejection Argument

The brief does not contain, for each rejection under  35 U.S.C. 102, an 
argument which specifies the errors in the rejection and why the rejected 
claims are patentable under  35 U.S.C. 102, including any specific limita-
tions in the rejected claims which are not described in the prior art relied 
upon in the rejection.

Examiner Note:

Specify claim(s) for which no argument of error was specified.

?  12.76.05 Defect in 103 Rejection Argument

The brief does not contain, for each rejection under  35 U.S.C. 103, an 
argument which specifies the errors in the rejection and, if appropriate, the 
specific limitations in the rejected claims which are not described in the 
prior art relied upon in the rejection, and an explanation how such limita-
tions render the claimed subject matter unobvious over the prior art.  If the 
rejection is based upon a combination of references, the argument must 
explain why the references, taken as a whole do not suggest the claimed 
subject matter, and shall include, as may be appropriate, an explanation of 
why features disclosed in one reference may not be properly combined 
with features disclosed in another reference. A general argument that all 
the limitations are not described in a single reference does not satisfy the 
requirements of  37 CFR 1.192(c)(8)(iv).

Examiner Note:

Specify claim(s) for which no argument of error was specified.

?  12.76.06 For Any Rejection Other Than Those Referred to in 
Paragraphs (c)(8)(i) to (iv) of 37 CFR 1.192 for Which No 
Argument or Error Was Specified

The brief does not contain an argument which specifies the errors in 
the rejection and the specific limitations in the rejected claims, if appropri-
ate, or other reasons, which cause the rejection to be in error.

Examiner Note:

Specify claim(s) for which for which no argument of error was speci-
fied.

?  12.77 No Copy of Appealed Claims in Appendix

The brief does not contain a copy of the claims involved in the appeal 
in the Appendix.

?  12.78 Period For Response Under 37 CFR 1.192(d)

Appellant is required to comply with provisions of  37 CFR 1.192(c). 
To avoid dismissal of the appeal, Appellant must comply with the provi-
sions of  37 CFR 1.192(c) within  the longest of any of the following 
TIME PERIODS: (1) ONE MONTH or THIRTY DAYS, whichever is 
longer, from the mailing of this communication; (2) within the time period 
for reply to the action from which appeal has been taken; or (3) within two 
months from the date of the notice of appeal under  37 CFR 1.191.  Exten-
sions of these time periods may be granted under  37 CFR 1.136. 

Examiner Note:

This paragraph has limited application.  To notify applicant of non-
compliance with  37 CFR 1.192(c) examiner must use form PTOL-462.

1207	Amendment Filed With or After 
Appeal 

To expedite the resolution of cases under final rejection, 
an amendment filed at any time after final rejection, 
but before jurisdiction has passed to the Board (see  MPEP 
? 1210), may be entered upon or after filing of an appeal 
brief provided that the amendment conforms to the require-
ments of  37 CFR 1.116. For example, if the amendment 
necessitates a new search, raises the issue of new matter, 
presents additional claims without cancelling a correspond-
ing number of finally rejected claims, or otherwise intro-
duces new issues, it will not be entered. A new amendment, 
new affidavit, or other new evidence must be submitted in a 
paper separate from the appeal brief. Entry of a new 
amendment, new affidavit, or other new evidence in an 
application on appeal is not a matter of right.  The entry of 
an amendment (which may or may not include a new affi-
davit, declaration, or exhibit) submitted in an application 
on appeal continues to be governed by  37 CFR 1.116, and 
the entry of a new affidavit or other new evidence in an 
application on appeal is governed by 37 CFR 1.195.  Exam-
iners must respond to all nonentered amendments after 
final rejection, and indicate the status of each claim of 
record or proposed, including the designation of claims that 
would be entered on the filing of an appeal if filed in a sep-
arate paper. If the examiner indicates (in the advisory 
action) that a proposed amendment of the claim(s) would 
be entered for purposes of appeal, it is imperative for the 
examiner to also state (in the same advisory action) how the 
individual rejection(s) set forth in the final Office action 
will be used to reject the added or amended claim(s) in the 
examiner's answer.  See  37 CFR 1.193(a)(2) and  MPEP 
? 1208.01. Except where an amendment merely cancels 
claims and/or adopts examiner suggestions, removes issues 
from appeal, or in some other way requires only a cursory 
review by the examiner, compliance with the requirement 
of a showing under  37 CFR 1.116 will be expected of all 
amendments after final rejection.

If, after appeal has been taken, a paper is presented 
which on its face clearly places the application in condition 
for allowance, such paper should be entered and a Notice of 
Allowability form PTOL-37 promptly sent to applicant.

In accordance with the above, the brief must be directed 
to the claims and to the record of the case as they appeared 
at the time of the appeal, but it may, of course, withdraw 
from consideration on appeal any claims or issues as 
desired by appellant.  Even if the appeal brief withdraws 
from consideration any claims or issues (i.e., appellant 
acquiesces to any rejection), the examiner must continue to 
make the rejection in the examiner's answer, unless an 
amendment obviating the rejection has been previously 
proposed and entered. 

A timely filed brief will be referred to the examiner for 
consideration of its propriety as to the appeal issues and for 
preparation of an examiner's answer if the brief is proper 
and the application is not allowable. The examiner's answer 
may withdraw the rejection of claims, if appropriate. The 
examiner may also determine that it is necessary to reopen 
prosecution to enter a new ground of rejection. Note  
MPEP ? 1208.02. No new ground of rejection, however, is 
permitted in an examiner's answer. 37 CFR 1.193(a)(2).  
See MPEP ? 714.13 for procedure on handling amend-
ments filed after final action and before appeal.

An amendment received after jurisdiction has passed to 
the Board should not be considered by the examiner unless 
remanded by the Board for such purpose. See MPEP 
? 1210 and  ? 1211.01.

Note that  37 CFR 1.192(c)(4) requires a statement as to 
the status of any amendment filed subsequent to the final 
rejection. See also  MPEP ? 1206.

1208	Examiner's Answer

37 CFR 1.193.  Examiner's answer and reply brief.

(a)(1)	The primary examiner may, within such time as may be 
directed by the Commissioner, furnish a written statement in answer to 
appellant's brief including such explanation of the invention claimed and 
of the references and grounds of rejection as may be necessary, supplying 
a copy to appellant.  If the primary examiner finds that the appeal is not 
regular in form or does not relate to an appealable action, the primary 
examiner shall so state.

(2)	An examiner's answer must not include a new ground of 
rejection, but if an amendment under ? 1.116 proposes to add or amend 
one or more claims and appellant was advised that the amendment under 
? 1.116 would be entered for purposes of appeal and which individual 
rejection(s) set forth in the action from which the appeal was taken would 
be used to reject the added or amended claim(s), then the appeal brief must 
address the rejection(s) of the claim(s) added or amended by the amend-
ment under ? 1.116 as appellant was so advised and the examiner's answer 
may include the rejection(s) of the claim(s) added or amended by the 
amendment under ? 1.116 as appellant was so advised. The filing of an 
amendment under ? 1.116 which is entered for purposes of appeal repre-
sents appellant's consent that when so advised any appeal proceed on those 
claim(s) added or amended by the amendment under ? 1.116 subject to 
any rejection set forth in the action from which the appeal was taken.

(b)(1)	Appellant may file a reply brief to an examiner's answer 
within two months from the date of such examiner's answer. See 
? 1.136(b) for extensions of time for filing a reply brief in a patent applica-
tion and ? 1.550(c) for extensions of time for filing a reply brief in a reex-
amination proceeding. The primary examiner must either acknowledge 
receipt and entry of the reply brief or withdraw the final rejection and 
reopen prosecution to respond to the reply brief. A supplemental exam-
iner's answer is not permitted, unless the application has been remanded 
by the Board of Patent Appeals and Interferences for such purpose.

(2)	Where prosecution is reopened by the primary examiner 
after an appeal or reply brief has been filed, appellant must exercise one of 
the following two options to avoid abandonment of the application:

(i)	File a reply under ? 1.111, if the Office action is not 
final, or a reply under ? 1.113, if the Office action is final; or 

(ii)	Request reinstatement of the appeal. If reinstatement of 
the appeal is requested, such request must be accompanied by a supple-
mental appeal brief, but no new amendments, affidavits (?? 1.130, 1.131 
or 1.132) or other evidence are permitted.

APPEAL CONFERENCE

Appealed cases in which the brief has been filed may be 
reviewed by conference in the group, in a manner deemed 
appropriate by the Group Director. For example, those par-
ticipating in the conference may include (1) a primary 
examiner, (2) the examiner charged with preparation of the 
examiner's answer, and (3) another examiner, known as the 
conferee, having sufficient experience to be of assistance in 
the consideration of the merits of the issues on appeal.

The Group Director has the discretion as to whether or 
not appeal conferences are necessary in the examining 
group and, if so, in which instances they are to be held. If 
an appeal conference is held, the Supervisory Patent Exam-
iner should be informed thereof.

If a conference is held, the primary examiner responsible 
for signing the examiner's answer should weigh the argu-
ments of the other examiners. If it is determined that the 
rejection(s) should be maintained, the examiner will then 
prepare his or her examiner's answer. During the confer-
ence, consideration should be given to the possibility of 
dropping cumulative art rejections and eliminating techni-
cal rejections of doubtful value.

On the examiner's answer, the third person (conferee) 
should place his or her initials below those of the examiner 
who prepared the answer, thus: ABC (conf.). This does not 
indicate, necessarily, concurrence with the position taken in 
the answer.

If the examiner charged with the responsibility of pre-
paring the answer reaches the conclusion that the appeal 
should not be forwarded and the primary examiner 
approves, no conference is held.

Before preparing the answer, the examiner should make 
certain that all amendments approved for entry have in fact 
been physically entered. The Clerk of the Board will return 
to the group any application in which approved amend-
ments have not been entered.

ANSWER

The examiner should furnish the appellant with a written  
statement in answer to the appellant's brief within 2 months 
after the receipt of the brief by the examiner.

The answer should contain a response to the allegations 
or arguments in the brief and should call attention to any 
errors in appellant's copy of the claims. If any rejection is 
withdrawn, the withdrawal should be clearly stated in the 
examiner's answer under "Issues." Grounds of rejection not 
argued in the examiner's answer are usually treated as hav-
ing been dropped, but may be considered by the Board if it 
desires to do so. The examiner should treat affidavits, dec-
larations, or exhibits filed with or after the notice of appeal 
in accordance with  37 CFR 1.195. If an affidavit, declara-
tion, or exhibit was refused entry under  37 CFR 1.195, the 
examiner should not comment on it in the examiner's 
answer.  Likewise, it would be improper for appellant to 
rely on an affidavit, declaration, or exhibit, which was 
refused entry, in an appeal brief.  If appellant has grounds 
for challenging the non-entry of an affidavit, declaration, or 
exhibit, he or she should file a timely petition seeking 
supervisory review of the non-entry. Any affidavits or dec-
larations in the file swearing behind a patent should be 
clearly identified by the examiner as being considered 
under either  37 CFR 1.131 or  37 CFR 1.608(b). 

If the brief fails to address any or all grounds of rejection 
advanced by the examiner, or comply with 37 CFR 
1.192(c), the indicated procedure for handling such briefs 
set forth in  MPEP ? 1206 under "Review of Brief by 
Examiner" should be followed.

Because of the practice of the Patent and Trademark 
Office in entering amendments after final action under jus-
tifiable circumstances for purposes of appeal, many cases 
coming before the Board  for consideration contain claims 
which are not the claims treated in the examiner's final 
rejection. They are either entirely new claims or amended 
versions of the finally rejected claims or both. Where an 
amendment under 37 CFR 1.116 would be entered for 
appeal purposes, the examiner must identify (in an advisory 
action) how one or more individual rejections set forth 
in the final rejection would be used to reject the added 
or amended claim(s).  See  37 CFR 1.193(a)(2) and  MPEP 
? 1208.01.  It is important to note that if more than a mere 
reference to one or more individual rejections set forth in 
the final rejection is necessary to explain how the added or 
amended claims would be rejected, then the amendment 
should not be entered because it raises new issues requiring 
further consideration and/or search.  Furthermore, the mere 
fact that an amendment under 37 CFR 1.116 could fall 
within the operation of  37 CFR 1.193(a)(2) does not mean 
that the amendment must be entered by the examiner.  That 
is, the provisions of  37 CFR 1.116 (and not 37 CFR 
1.193(a)(2)) control as to whether an amendment under  
37 CFR 1.116 is entitled to entry. 

It also frequently happens that an examiner will state a 
position in the answer in a manner that represents a shift 
from the position stated in the final rejection without indi-
cating that the last stated position supersedes the former. 
Such a situation confuses the issue and likewise poses diffi-
culties for the Board since it is not clear exactly what the 
examiner's ultimate position is.

If there is a complete and thorough development of the 
issues at the time of final rejection, it is possible to save 
time in preparing the examiner's answer required by 
37 CFR 1.193 by taking any of the following steps:

(A)	Examiners may incorporate in the answer their 
statement of the grounds of rejection merely by reference to 
the final rejection (or a single other action on which it is 
based,  MPEP ? 706.07).  Only those statements of grounds 
of rejection appearing in a single prior action may be incor-
porated by  reference. An examiner's answer should not 
refer, either directly or indirectly, to more than one prior 
Office action. Statements of grounds of rejection appearing 
in actions other than the aforementioned single prior action 
should be quoted in the answer. The page and paragraph of 
the final action or other single prior action which it is 
desired to incorporate by reference should be explicitly 
identified. Of course, if the examiner feels that some fur-
ther explanation of the rejection is necessary, he or she 
should include it in the answer but ordinarily he or she may 
avoid another recital of the issues and another elaboration 
of the grounds of rejection. The answer should also include 
any necessary rebuttal of arguments presented in the appel-
lant's brief if the final action does not adequately meet the 
arguments.

(B)	If the appellant fails to describe the invention, as 
required by  37 CFR 1.192, the examiner is not required to 
provide these omissions under 37 CFR 1.192(d). The 
examiner should, however, clarify the description and 
explanation in the answer if he or she feels it necessary to 
present properly and effectively his or her case to the 
Board.

The examiner should reevaluate his or her position in the 
light of the arguments presented in the brief, and should 
expressly withdraw any rejections not adhered to, espe-
cially if the rejection was made in an action which is incor-
porated by reference. This should be done even though any 
rejection not repeated and discussed in the answer may be 
taken by the Board as having been withdrawn. Ex parte 
Emm, 118 USPQ 180 (Bd. App. 1957).

A new ground of rejection is no longer permitted in an 
examiner's answer.  For a discussion of what constitutes a 
new ground of rejection, see MPEP ? 1208.01. If a new 
ground of rejection is necessary, prosecution must be 
reopened.  The examiner must obtain approval from the 
Supervisory Patent Examiner prior to reopening prosecu-
tion after an appeal.  See  MPEP ? 1002.02(d).

All correspondence with the Board, whether by the 
examiner or the appellant, must be on the record. No 
unpublished decisions which are unavailable to the general 
public by reason of  35 U.S.C. 122 can be cited by the 
examiner or the appellant except that either the examiner or 
the appellant has the right to cite an unpublished decision in 
an application having common ownership with the applica-
tion on appeal.

When files are forwarded, soft copies and prints of refer-
ences therein should remain in the file wrapper.

If an examiner's answer is believed to contain a new 
interpretation or application of the existing patent law, the 
examiner's answer, application file, and an explanatory 
memorandum should be forwarded to the Group Director 
for consideration.  See  MPEP ? 1003.  If approved by the 
Group Director, the examiner's answer should be forwarded 
to the Office of the Deputy Assistant Commissioner for 
Patent Policy and Projects for final approval.

Briefs must comply with  37 CFR 1.192, and all exam-
iner's answers filed in response to such briefs must comply 
with the guidelines set forth below.

(A)	REQUIREMENTS FOR EXAMINER'S ANS- 
WER.  The examiner's answer is required to include, under 
appropriate headings, in the order indicated, the following 
items:

(1)	Real Party in Interest.  A statement acknowl-
edging the identification of the real party in financial inter-
est or indicating that the party named in the caption of the 
brief is the real party in interest, or if the brief contains a 
proper heading but no real party in interest is identified, a 
statement that it is presumed that the party named in the 
caption of the brief is the real party in interest. While the 
examiner will make this presumption, the Board has discre-
tion to require an explicit statement on this item from 
appellant.

(2)	Related Appeals and Interferences. A statement 
acknowledging appellant's identification of related cases 
which will directly affect or be directly affected by or have 
a bearing on the decision in the pending appeal, or if the 
appellant sets forth the required heading but does not iden-
tify any related appeals or interferences, a statement that it 
is presumed that there are none. While the examiner will 
make this presumption, the Board has discretion to require 
an explicit statement on this item from appellant.

(3)	Status of Claims.  A statement of whether the 
examiner agrees or disagrees with the statement of the sta-
tus of claims contained in the brief and a correct statement 
of the status of all the claims pending or cancelled, if neces-
sary.  If the examiner considers that some or all of the 
finally rejected claims are allowable, see  MPEP ? 1208.02.

(4)	Status of Amendments. A statement of whether 
the examiner disagrees with the statement of the status of 
amendments contained in the brief, and an explanation of 
any disagreement.

(5)	Summary of Invention. A statement of whether 
the examiner disagrees with the summary of invention con-
tained in the brief, an explanation of why the examiner dis-
agrees, and a correct summary of invention, if necessary.

(6)	Issues. A statement of whether the examiner 
disagrees with the statement of the issues in the brief and an 
explanation of why the examiner disagrees, including:

(a)	identification of any issues which are peti-
tionable rather than appealable, and 

(b)	identification of any issues or grounds of 
rejection on appeal which the examiner no longer considers 
applicable.

(7)	Grouping of Claims.  A statement of whether 
the examiner disagrees with any statement in the brief that 
certain claims do not stand or fall together, and, if the 
examiner disagrees, an explanation as to why those claims 
are not separately patentable.

(8)	Claims Appealed.  A statement of whether the 
copy of the appealed claims contained in the appendix to 
the brief is correct and, if not, a correct copy of any incor-
rect claim.

(9)	References of Record. A listing of the refer-
ences of record relied on, and, in the case of nonpatent ref-
erences, the relevant page or pages.

(10)	Grounds of Rejection.  For each ground of 
rejection applicable to the appealed claims, an explanation 
of the ground of rejection, or reference to a final rejection 
or other single prior action for a clear exposition of the 
rejection.

(a)	For each rejection under  35 U.S.C. 112, first 
paragraph, the examiner's answer, or the single prior action, 
shall explain how the first paragraph of  35 U.S.C. 112 is 
not complied with, including, as appropriate, how the spec-
ification and drawings, if any, 

(i)	do not describe the subject matter defined 
by each of the rejected claims, 

(ii)	would not enable any person skilled in the 
art to make and use the subject matter defined by each of 
the rejected claims without undue experimentation, and (c) 
do not set forth the best mode contemplated by the appel-
lant of carrying out his or her invention. 

(b)	For each rejection under  35 U.S.C. 112, sec-
ond paragraph, the examiner's answer, or single prior 
action, shall explain how the claims do not particularly 
point out and distinctly claim the subject matter which 
applicant regards as the invention.

(c)	For each rejection under  35 U.S.C. 102, the 
examiner's answer, or single prior action, shall explain why 
the rejected claims are anticipated or not patentable under  
35 U.S.C. 102, pointing out where all of the specific limita-
tions recited in the rejected claims are found in the prior art 
relied upon in the rejection.

(d)	For each rejection under  35 U.S.C. 103, the 
examiner's answer, or single prior action, shall:

(i)	state the ground of rejection and point out 
where each of the specific limitations recited in the rejected 
claims is found in the prior art relied on in the rejection, 

(ii)	identify any difference between the 
rejected claims and the prior art relied on, and

(iii)	explain how and why the claimed subject 
matter is rendered unpatentable over the prior art. If the 
rejection is based upon a combination of references, the 
examiner's answer, or single prior action, shall explain the 
rationale for making the combination.

(e)	For each rejection under  35 U.S.C. 102 or 
103 where there are questions as to how limitations in the 
claims correspond to features in the prior art even after the 
examiner complies with the requirements of paragraphs (c) 
and (d) of this section, the examiner shall compare at least 
one of the rejected claims feature by feature with the prior 
art relied on in the rejection. The comparison shall align the 
language of the claim side-by- side with a reference to the 
specific page, line number, drawing reference number, and 
quotation from the prior art, as appropriate.

(f)	For each rejection, other than those referred 
to in paragraphs (a) to (e) of this section, the examiner's 
answer, or single prior action, shall specifically explain the 
basis for the particular rejection.

(11)	Response to Argument. A statement of whether 
the examiner disagrees with each of the contentions of 
appellant in the brief with respect to the issues presented 
and an explanation of the reasons for disagreement with 
any such contention. If any ground of rejection is not 
argued and replied to by appellant, the response shall point 
out each claim affected.

(B)	FORM PARAGRAPHS.  A form suitable for the 
examiner's answer is as follows:

?  12.49 Examiner's Answer Cover Sheet  

BEFORE THE BOARD OF PATENT APPEALS

AND INTERFERENCES

Paper No. [1]

Application Number:   [2]

Filing Date:   [3]

Appellant(s): [4] 

__________________

[5]

For Appellant  

EXAMINER'S ANSWER

This is in response to the appeal brief filed [6].

Examiner Note:

1.	This form paragraph includes the PTO Letterhead and should be 
used only if typing your own action. Answers prepared in draft form for 
typing by a typist should use form paragraph 12.50.

2.	In bracket 1, insert the Paper No. of the examiner's answer.

3.	In bracket 2, insert the application number of the appealed applica-
tion.

4.	In bracket 3, insert the filing date of the appealed application.

5.	In bracket 4, insert the name(s) of the appellant.

6.	In bracket 5, insert the name of the registered representative of the 
appellant.

7.	In bracket 6, indicate the date on which the brief was filed, and also 
indicate if any supplemental appeal brief was filed, as well as the date on 
which the supplemental appeal brief was filed. 

8.	Form paragraph 12.50 should NOT follow use of this paragraph as it 
is already incorporated herein.

?  12.50 Heading For Examiner's Answer

This is in response to the brief on appeal filed [1].

Examiner Note:

1.	Use this form paragraph only when having the Examiner's Answer 
prepared by a typist without using form paragraph 12.49.

2.	In bracket 1, indicate the date on which the brief was filed, and also 
indicate if any supplemental appeal brief was filed, as well as the date on 
which the supplemental appeal brief was filed.

?  12.50.01 Real Party in Interest

 (1) Real Party in Interest

Examiner Note:

Follow this paragraph with paragraph 12.50.02 or 12.50.03.   

?  12.50.02 Acknowledgment of Appellant's Identification of a 
Real Party in Interest in the Brief

A statement identifying the real party in interest is contained in the 
brief.

?  12.50.03 No Identification of a Real Party in Interest in the 
Brief

The brief does not contain a statement identifying the Real Party in 
Interest.  Therefore, it is presumed that the party named in the caption of 
the brief is the Real Party in Interest, i.e., the owner at the time the brief 
was filed.  The Board, however, may exercise its discretion to require an 
explicit statement as to the Real Party in Interest.

?  12.50.04 Related Appeals and Interferences 

(2) Related Appeals and Interferences

Examiner Note:

Follow this paragraph with paragraph 12.50.05 or 12.50.06.   

?  12.50.05 Acknowledgment of Appellant's Statement Identifying 
the Related Appeals and Interferences

A statement identifying the related appeals and interferences which 
will directly affect or be directly affected by or have a bearing on the deci-
sion in the pending appeal is contained in the brief.

?  12.50.06 No Related Appeals and Interferences Identified

The brief does not contain a statement identifying the related appeals 
and interferences which will directly affect or be directly affected by or 
have a bearing on the decision in the pending appeal.  Therefore, it is pre-
sumed that there are none.  The Board may, however, exercise its discre-
tion to require an explicit statement as to the existence of any related 
appeals and interferences.

?  12.51 Status of Claims

(3)	Status of Claims

Examiner Note:

Follow this paragraph with one or more of paragraphs 12.51.01 to 
12.51.10.

?  12.51.01 Agreement With Statement of Status of Claims

The statement of the status of claims contained in the brief is correct.

?  12.51.02 Disagreement With Statement of Status of Claims

The statement of the status of claims contained in the brief is incorrect.  
A correct statement of the status of the claims is as follows: 

Examiner Note:

1.	Indicate the area of disagreement and the reasons for the disagree-
ment.

2.	One or more of paragraphs 12.51.03 to 12.51.10 must follow this 
paragraph.

?  12.51.03 Claims On Appeal

This appeal involves claim  [1].

Examiner Note:

1.	In bracket 1, all the claims still on appeal should be specified.  Do 
not list claims which are no longer rejected.

2.	Also use form paragraphs 12.51.04 to 12.51.06 when appropriate to 
clarify the status of the claims on appeal that were incorrectly listed in the 
brief.

?  12.51.04 Status of Claims on Appeal - Substituted

Claim  [1] been substituted for the finally rejected claims.

Examiner Note:

	All substituted claims on appeal must be identified if the brief incor-
rectly lists any substituted claims.  In bracket 1, insert the claim number(s) 
corresponding to the substitute claims, followed by --has-- or --have--, as 
appropriate.

?  12.51.05 Status of Claims on Appeal - Amended

Claim  [1] been amended subsequent to the final rejection.

Examiner Note:

All claims amended after final rejection must be identified if the brief 
incorrectly lists any claims amended after final rejection.  In bracket 1, 
identify the claim number(s) corresponding to the claim(s) which have 
been amended, followed by --has-- or --have--, as appropriate.

?  12.51.07 Claims Allowed

Claim  [1] allowed.

Examiner Note:

All allowed claims must be identified if the brief incorrectly lists any 
allowed claims.

?  12.51.08 Claims Objected To

Claim  [1] objected to as being dependent upon a rejected base claim, 
but would be allowable if rewritten in independent form including all of 
the limitations of the base claim and any intervening claims.

Examiner Note:

All objected to claims must be identified if the brief incorrectly lists 
any claims objected to.

?  12.51.09 Claims Withdrawn From Consideration

Claim  [1] withdrawn from consideration as not directed to the elected   
[2].

Examiner Note:

All withdrawn claims must be identified if the brief incorrectly lists 
any withdrawn claims.

?  12.51.10 Claims Canceled

Claim  [1] been canceled.

Examiner Note:

All canceled claims must be identified if the brief incorrectly lists any 
canceled claims.

?  12.52 Status of Amendments After Final

(4)	Status of Amendments After Final

Examiner Note:

Identify status of all amendments submitted after final rejection.  Use 
one or more of paragraphs 12.52.01 to 12.52.04, if appropriate.

?  12.52.01 Agreement With Appellant's Statement of the Status of 
Amendments After Final

The appellant's statement of the status of amendments after final rejec-
tion contained in the brief is correct.

?  12.52.02 Disagreement With Appellant's Statement of the Status 
of Amendments After Final

The appellant's statement of the status of amendments after final rejec-
tion contained in the brief is incorrect.

Examiner Note:

Form paragraphs 12.52.03 and/or 12.52.04 must follow this paragraph 
to explain the reasons for disagreeing with appellant's statement of the sta-
tus of the amendments.

?  12.52.03 Amendment After Final Entered

The amendment after final rejection filed on   [1] has been entered.

Examiner Note:

1.	In bracket 1, insert the filing date of any entered after final amend-
ment.

2.	Use this form paragraph for each after final amendment which has 
been entered.

?  12.52.04 Amendment After Final Not Entered

The amendment after final rejection filed on   [1] has not been entered.

Examiner Note:

1.	In bracket 1, insert the date of any after final amendment denied 
entry.

2.	Use this form paragraph for each after final amendment which has 
been denied entry. 

?  12.52.05 No Amendments After Final

No amendment after final has been filed.

?  12.53 Summary of Invention

(5)	Summary of Invention

Examiner Note:

Follow this paragraph with either of paragraphs 12.53.01 or 12.53.02.

?  12.53.01 Agreement With the Summary of Invention

The summary of invention contained in the brief is correct.

?  12.53.02 Disagreement With the Summary of Invention

The summary of invention contained in the brief is deficient because   
[1].

Examiner Note:

In bracket 1, explain the deficiency of the appellant's summary of the 
invention.  Include a correct summary of the invention if necessary for a 
clear understanding of the claimed invention.

?  12.54 Issues

(6)	Issues

Examiner Note:

Follow this paragraph with paragraphs 12.54.01, 12.54.02, or 12.54.03.

?  12.54.01 Agreement With Appellant's Statement of the Issues

The appellant's statement of the issues in the brief is correct.

?  12.54.02 Disagreement With Appellant's Statement of the Issues

The appellant's statement of the issues in the brief is substantially cor-
rect.  The changes are as follows: [1]

Examiner Note:

In bracket 1, explain the changes with respect to the appellant's state-
ment of the issues in the brief including:

(i)	an identification of any issues which are petitionable rather 
than appealable, and/or

(ii)	an identification of any issues or grounds of rejection on 
appeal which the examiner no longer considers applicable, and/or

(iii)	any change not covered in (i) or (ii).

?  12.54.03 Non-Appealable Issue in Brief

Appellant's brief presents arguments relating to [1]. This issue relates 
to petitionable subject matter under  37 CFR 1.181 and not to appealable 
subject matter.  See  MPEP ?? 1002 and  1201.

?  12.55 Grouping of Claims

(7)	Grouping of Claims

Examiner Note:

Follow this paragraph with either paragraph 12.55.01, 12.55.02 or 
12.55.04 for each grouping of claims (i.e., each ground of rejection which 
appellant contests).

?  12.55.01 No Statement and Reasons in Brief That Claims Do 
Not Stand or Fall Together

The rejection of claims   [1] stand or fall together because appellant's 
brief does not include a statement that this grouping of claims does not 
stand or fall together and reasons in support thereof.  See  37 CFR 
1.192(c)(7).

Examiner Note:

1.	Use this paragraph for each grouping of claims (i.e., ground of rejec-
tion which appellant contests) wherein the brief includes neither a state-
ment that a grouping of claims does not stand or fall together nor reasons 
in support thereof.

2.	If the brief includes a statement that a grouping of claims does not 
stand or fall together but does not provide reasons, as set forth in  37 CFR 
1.192(c)(7), notify appellant of the non-compliance using form paragraphs 
12.69, 12.69.01 and 12.78.

?  12.55.02 No Agreement With Brief Why Claims Do Not Stand or 
Fall Together

The appellant's statement in the brief that certain claims do not stand or 
fall together is not agreed with because   [1].

Examiner Note:

In bracket 1, explain why the claim grouping listed in the brief is not 
agreed with by the examiner and why, if appropriate, e.g., the claims as 
listed by the appellant are not separately patentable.

?  12.55.04 Brief Gives Reasons Why Claims Do Not Stand or Fall 
Together

Appellant's brief includes a statement that claims [1] do not stand or 
fall together and provides reasons as set forth in  37 CFR 1.192(c)(7) and 
(c)(8).

?  12.56 Claims Appealed

(8)	Claims Appealed

Examiner Note:

Follow this paragraph with paragraph 12.56.01, 12.56.02 or 12.56.03.

?  12.56.01 Copy of the Appealed Claims in Appendix Is Correct

The copy of the appealed claims contained in the Appendix to the brief 
is correct.

?  12.56.02 Copy of the Appealed Claims in Appendix Is 
Substantially Correct

A substantially correct copy of appealed claim  [1] appears on page  [2] 
of the Appendix to the appellant's brief. The minor errors are as follows:   
[3]

Examiner Note:

1.	In bracket 1, indicate the claim or claims with small errors.

2.	In bracket 3, indicate the nature of the errors.

?  12.56.03 Copy of the Appealed Claims in Appendix Contain 
Substantial Errors

Claim  [1] contain(s) substantial errors as presented in the Appendix to 
the brief.  Accordingly, claim  [2] correctly written in the Appendix to the 
Examiner's Answer.

Examiner Note:

1.	Appellant should include a correct copy of all appealed claims in the 
Appendix to the brief.  See  37 CFR 1.192(c)(9).

2.	Attach a correct copy of any incorrect claims as an Appendix to the 
Examiner's Answer and draw a diagonal line in pencil through the incor-
rect claim in the Appendix of the appellant's appeal brief.

3.	Rather than using this form paragraph, if the errors in the claim(s) 
are significant, appellant should be required to submit a corrected brief 
using form paragraphs 12.69, 12.77 and 12.78, as well as any other para-
graphs 12.70 to 12.76 as may be appropriate.  Where the brief includes 
arguments directed toward the errors, a corrected brief should always be 
required.

?  12.57 Prior Art of Record

(9)	Prior Art of Record

Examiner Note:

Follow this paragraph with either paragraph 12.57.01 or 12.57.02.

?  12.57.01 No Prior Art Relied Upon

No prior art is relied upon by the examiner in the rejection of the 
claims under appeal.

?  12.57.02 Listing of the Prior Art of Record Relied Upon

The following is a listing of the prior art of record relied upon in the 
rejection of claims under appeal.

Examiner Note:

1.	Use the following format for providing information on each refer-
ence cited:

Number Name Date

2.	The following are example formats for listing reference citations:

2,717,847 VERAIN 9-1955

1,345,890 MUTHER (Fed. Rep. of Germany)  7-1963

(Figure 2 labeled as Prior Art in this document)

3.	See  MPEP ? 707.05(e) for additional examples.

?  12.59 Grounds of Rejection

 (10)	Grounds of Rejection

The following ground(s) of rejection are applicable to the appealed 
claims:

Examiner Note:

Explain each ground of rejection or refer to the single prior Office 
action which clearly sets forth the rejection and complies with appropriate 
paragraphs i - vi  below:

(i)	For each rejection under  35 U.S.C. 112, first paragraph, the 
Examiner's Answer or a single prior action, shall explain how the 
first paragraph of  35 U.S.C. 112 is not complied with, including, as 
appropriate, how the specification and drawings, if any, (a) do not 
describe the subject matter defined by each of the rejected claims, 
(b) would not enable any person skilled in the art to make and use 
the subject matter defined by each of the rejected claims, and (c) do 
not set forth the best mode contemplated by the appellant of carry-
ing out his/her invention.

(ii)	For each rejection under  35 U.S.C. 112, second paragraph, 
the Examiner's Answer or single prior action, shall explain how the 
claims do not particularly point out and distinctly claim the subject 
matter which appellant regards as the invention.

(iii)	For each rejection under  35 U.S.C. 102, the Examiner's 
Answer or single prior action, shall explain why the rejected claims 
are anticipated or not patentable under 35 U.S.C. 102, pointing out 
where all of the specific limitations recited in the rejected claims 
are found in the prior art relied upon in the rejection.

(iv)	For each rejection under  35 U.S.C. 103, the Examiner's 
Answer or single prior action, shall state the ground of rejection and 
point out where each of the specific limitations recited in the 
rejected claims is found in the prior art relied upon in the rejection, 
shall identify any difference between the rejected claims and the 
prior art relied on and shall explain how the claimed subject matter 
is rendered unpatentable over the prior art.  If the rejection is based 
upon a combination of references, the Examiner's Answer, or single 
prior action, shall explain the rationale for making the combination.

(v)	For each rejection under  35 U.S.C. 102 or 103 where there 
may be questions as to how limitations in the claims correspond to 
features in the prior art, the examiner, in addition to the require-
ments of (ii), (iii) and (iv) above, should compare at least one of the 
rejected claims feature by feature with the prior art relied on in the 
rejection.  The comparison shall align the language of the claim 
side by side with a reference to the specific page, line number, 
drawing reference number and quotation from the prior art, as 
appropriate.

(vi)	For each rejection, other than those referred to in paragraphs 
(i) to (v) for this section, the Examiner's Answer, or single prior 
action, shall specifically explain the basis for the particular rejec-
tion.

?  12.59.01 Reference to Rejection in Prior Office Action

Claim  [1] rejected under 35 U.S.C. [2].  This rejection is fully set forth 
in prior Office action, Paper No. [3].

Examiner Note:

1.	In bracket 1, insert the claims subject to this ground of rejection.

2.	In bracket 2, insert the section of 35 U.S.C. under which the claims 
are rejected.

3.	In bracket 3, insert the Paper No. of the Office action in which the 
rejection is set forth in detail.

?  12.61 Response to Argument

 (11)	Response to Argument

Examiner Note:

1.	If an issue raised by appellant was fully responded to under the 
"Grounds of Rejection" portion, no additional response is required here.

2.	If an issue has been raised by appellant that was not fully responded 
to under "Grounds of Rejection," a full response must be provided after 
this paragraph.

?  12.63 Request to Present Oral Arguments

The examiner requests the opportunity to present arguments at the oral 
hearing.

Examiner Note:

1.	Use this paragraph only if an oral hearing has been requested by 
appellant and the primary examiner intends to present an oral argument.

2.	If appellant's request for an oral hearing has been made before or 
with the brief, this form paragraph may be included at the end of the 
Examiner's Answer.

3.	If appellant's request for an oral hearing has been made after the 
Examiner's Answer, this form paragraph may be included in an  acknowl-
edgment of reply brief (see form paragraph 12.47), or in a separate letter 
on a form PTOL-90.

?  12.79 Examiner's Answer, Conclusion

For the above reasons, it is believed that the rejections should be sus-
tained.

Respectfully submitted,

[1]

[2]

Examiner Note:

1.	In bracket 1, insert examiner or typist initials and date.

2.	In bracket 2, insert correspondence address of record.

For a case having a patentability report, see  MPEP 
? 705.01(a). 

If the examiner requests an oral hearing, the request 
should appear in the last paragraph of the examiner's 
answer. See the "Participation by Examiner" discussion in  
MPEP ? 1209.

Up to two examiners are permitted to attend any one 
hearing as observers, where the case is related to the exam-
iners' field of technology.  Such attendance by examiners is 
considered to be desirable for the experience and educa-
tional benefits to the examiners.

If the appellant has requested an oral hearing, and the 
examiner wishes to attend as an observer, the examiner 
should include a statement that he/she will attend the hear-
ing: (A) as the last paragraph of the examiner's answer, if 
appellant's request for an oral hearing has been made before 
or with the brief, or (B) in an acknowledgement of the reply 
brief or in a separate letter on form PTOL-90, if appellant's 
request for an oral hearing has been made after the exam-
iner's answer.  Also, the examiner should make a notation 
"Examiner will attend (but not participate in) hearing" on 
the face of the file wrapper below the box for the exam-
iner's name.

1208.01	Prohibition Against Entry of New 
Ground of Rejection in Examiner's 
Answer  [R-1]

37 CFR 1.193(a)(2) prohibits the entry of a new ground 
of rejection in an examiner's answer.  At the time of prepar-
ing the answer to an appeal brief, however, the examiner 
may decide that he or she should apply a new ground of 
rejection against some or all of the appealed claims. In such 
an instance where a new ground of rejection is necessary, 
the examiner should reopen prosecution. The examiner 
must obtain supervisory approval in order to reopen prose-
cution after an appeal.  See  MPEP ? 1002.02(d). 

There is no new ground of rejection when the basic 
thrust of the rejection remains the same such that an appel-
lant has been given a fair opportunity to react to the rejec-
tion. See   In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 
425, 426-27 (CCPA 1976). Where the statutory basis for 
the rejection remains the same, and the evidence relied 
upon in support of the rejection remains the same, a change 
in the discussion of, or rationale in support of, the rejection 
does not necessarily constitute a new ground of rejection. 
Id. at 1303, 190 USPQ at 427 (reliance upon fewer refer-
ences in affirming a rejection under  35 U.S.C. 103 does not 
constitute a new ground of rejection). **

37 CFR 1.193(a)(2) also provides that if: 

(A)	an amendment under  37 CFR 1.116 proposes to 
add or amend one or more claims; 

(B)	appellant was advised (through an advisory 
action) that the amendment would be entered for purposes 
of appeal; and 

(C)	the advisory action indicates which individual 
rejection(s) set forth in the action from which appeal has 
been taken would be used to reject the added or amended 
claims, the

(1)	the appeal brief must address the rejection(s) of 
the added or amended claim(s) and 

(2)	the examiner's answer may include the rejec-
tion(s) of the added or amended claims.  

The filing of such an amendment represents appellant's 
consent to proceed with the appeal process.  For example, 
when an amendment under  37 CFR 1.116 cancels a claim 
(the "canceled claim") and incorporates its limitations into 
the claim upon which it depends or rewrites the claim as a 
new independent claim (the "appealed claim"), the 
appealed claim contains the limitations of the canceled 
claim (i.e., the only difference between the appealed claim 
and the canceled claim is the claim number).  In such situa-
tions, the appellant has been given a fair opportunity to 
react to the ground of rejection (albeit to a claim having a 
different claim number).  Thus, such a rejection does not 
constitute a "new ground of rejection" within the meaning 
of  37 CFR 1.193(a)(2).

 **>The phrase "individual rejections" in 37 CFR  
1.193(a)(2) addresses situations such as the following: the 
action contains a rejection of claim 1 under 35 U.S.C.  102 
on the basis of Reference A, a rejection of claim 2 (which 
depends upon claim 1) under 35 U.S.C. 103 on the basis of 
Reference A in view of Reference B and a rejection of 
claim 3 (which depends upon claim 1) under 35 U.S.C.  
103 on the basis of Reference A in view of Reference C. In 
this situation, the action contains the following "individual 
rejections": (1) 35 U.S.C. 102 on the basis of Reference A; 
(2) 35 U.S.C. 103 on the basis of Reference A in view of 
Reference B; and (3) 35 U.S.C. 103 on the basis of Refer-
ence A in view of Reference C.  The action, however, does 
not contain any rejection on the basis of A in view of B and 
C. If an amendment under 37 CFR 1.116 proposes to com-
bine the limitations of claims 1 and 2 together into new 
claim 4 (or add the limitations of claim 2 to claim 1), 
37 CFR 1.193(a)(2) would authorize a rejection of claim 4 
(or amended claim 1) under 35 U.S.C. 103 on the basis of 
Reference A in view of Reference B, provided the applicant 
was advised that this rejection would be applied to claim 4 
(or amended claim 1). Likewise, if an amendment under 
37 CFR 1.116 proposes to combine the limitations of 
claims 1 and 3 together into new claim 4 (or add the limita-
tions of claim 3 to claim 1), 37 CFR  1.193(a)(2) would 
authorize a rejection of claim 4 (or amended claim 1) under 
35 U.S.C. 103 on the basis of Reference A in view of Ref-
erence C, provided the applicant was advised that this 
rejection would be applied to claim 4 (or amended claim 1). 
If, however, an amendment under 37 CFR 1.116 proposes 
to combine the limitations of claims 1, 2, and 3 together 
into new claim 4 (or add the limitations of claims 2 and 3 to 
claim 1), 37 CFR 1.193(a)(2) would not authorize a rejec-
tion of claim 4 (or amended claim 1) under 35 U.S.C. 103 
on the basis of Reference A in view of Reference B and 
Reference C, even if the applicant is advised that this rejec-
tion would be applied to claim 4 (or amended claim 1). Of 
course, as a claim including the limitations of both claim 2 
and claim 3 is a newly proposed claim in the application 
raising a new issue (i.e., a new ground of rejection), such an 
amendment under 37 CFR 1.116 may properly be refused 
entry as raising new issues.<

It must be emphasized that amended 37 CFR 1.193(a)(2) 
does not change the existing practice with respect to 
amendment after final rejection practice (37 CFR 1.116).  
The fact that  37 CFR 1.193(a)(2) would authorize the 
rejection in an examiner's answer of a claim sought to be 
added or amended in an amendment under  37 CFR 1.116 
has no effect on whether the amendment under  37 CFR 
1.116 is entitled to entry.  The provisions of  37 CFR 1.116 
control whether an amendment under  37 CFR 1.116 is 
entitled to entry; the provisions of  37 CFR 1.193(a)(2) 
control the rejections to which a claim added or amended in 
an amendment under  37 CFR 1.116 may be subject in an 
examiner's answer.  

A new prior art reference cited for the first time in an 
examiner's answer generally will constitute a new ground 
of rejection.  If the citation of a new prior art reference is 
necessary to support a rejection, it must be included in the 
statement of rejection, which would be considered to intro-
duce a new ground of rejection.  Even if the prior art refer-
ence is cited to support the rejection in a minor capacity, it 
should be positively included in the statement of rejection. 
In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 
407 n. 3 (CCPA 1970).  However, where a newly cited ref-
erence is added merely as evidence of the prior well known 
statement made by the examiner, the citation of the refer-
ence in the examiner's answer would not constitute a new 
ground of rejection within the meaning of 37 CFR 
1.192(a)(2).  See also  MPEP ? 2144.03.

Any allegation that an examiner's answer contains an 
impermissible new ground of rejection is waived if not 
timely (37 CFR 1.181(f)) raised by way of a petition under  
37 CFR 1.181(a). 

1208.02	Reopening of Prosecution After 
Appeal [R-1]

The examiner may, with approval from the supervisory 
patent examiner, reopen prosecution to enter a new ground 
of rejection after appellant's brief or reply brief has been 
filed.  The Office action containing a new ground of rejec-
tion may be made final if the new ground of rejection was 
(A) necessitated by amendment, or (B) based on informa-
tion presented in an information disclosure statement under  
37 CFR 1.97(c) where no certification was filed. See  
MPEP ? 706.07(a). 

Form paragraph 12.81 may be used when reopening 
prosecution:

?  12.81 Reopening of Prosecution - New Ground of Rejection 
After Appeal or Examiner's Rebuttal of Reply Brief

In view of the [1] filed on [2], PROSECUTION IS HEREBY 
REOPENED. [3] set forth below.

To avoid abandonment of the application, appellant must exercise one 
of the following two options:

file a reply under  37 CFR 1.111 (if this Office action is non-
final) or a reply under  37 CFR 1.113 (if this Office action is final); 
or,

request reinstatement of the appeal.  

If reinstatement of the appeal is requested, such request must be 
accompanied by a supplemental appeal brief, but no new amendments, 
affidavits (37 CFR 1.130, 1.131 or 1.132) or other evidence are permitted.  
See  37 CFR 1.193(b)(2).

Examiner Note:

Use this form paragraph to reopen prosecution in order to make a new 
ground of rejection of claims or to enter a rebuttal to the reply brief.  The 
finality or non-finality of an Office action following a reopening of prose-
cution depends on whether the action could have been properly made final 
had it been entered prior to the appeal.  

1.	In bracket 1, insert --appeal brief--, --supplemental appeal brief--, --
reply brief-- or --supplemental reply brief--.

2.	In bracket 2, insert the date on which the brief was filed.

3.	In bracket 3, insert --A new ground of rejection is--, --New grounds 
of rejection are-- or --A rebuttal to the Reply Brief is--.

After reopening of prosecution, appellant must exercise 
one of the following options to avoid abandonment of the 
application: 

(A)	file a reply under  37 CFR 1.111, if the Office 
action is non-final; 

(B)	file a reply under  37 CFR 1.113, if the Office 
action is final; or 

(C)	request reinstatement of the appeal.  

See  37 CFR 1.193(b)(2). >Whether appellant elects to  
continue prosecution or to request reinstatement of the 
appeal, if prosecution was reopened prior to a decision on 
the merits by the Board of Patent Appeals and Interfer-
ences, the fee paid for the notice of appeal, appeal brief, 
and request for oral hearing (if applicable) will be applied 
to a later appeal on the same application.< 

If reinstatement of the appeal is requested, the request 
must be accompanied by a supplemental appeal brief; how-
ever, no new amendments, affidavits (37 CFR 1.130, 1.131, 
or 1.132), or other evidence is permitted.  The supplemental 
appeal brief must comply with the requirements of  37 CFR 
1.192(c), but in doing so may incorporate by reference such 
parts of the previously-filed brief as may still be applicable. 
The arguments presented in the supplemental appeal brief 
need only be those relevant to the new ground(s) of rejec-
tion raised in the Office action that reopened prosecution, 
but the appellant should also identify all previously-raised 
issues and/or arguments which are still considered to be rel-
evant. If the examiner does not consider that the supple-
mental appeal brief complies with the foregoing 
requirements, appellant should be given a 1-month time 
period within which to file an amended supplemental brief 
under  37 CFR 1.192(d).  See  MPEP ? 1206. 

After the supplemental appeal brief is filed, the examiner 
may issue an answer thereto, and appellant may file a reply 
brief. It is also possible that, after reading the brief, the 
examiner may be convinced that some or all of the finally 
rejected claims are allowable. Where the examiner is of the 
opinion that some of the claims are allowable, he or she 
should so specify in the examiner's answer and confine the 
arguments to the remaining rejected claims. If the examiner 
finds, upon reconsideration, that all the rejected claims are 
allowable, or where the appellant in the brief withdraws the 
appeal as to some of the rejected claims by submitting an 
appropriate amendment and the examiner finds the remain-
ing claims to be allowable, the examiner should allow the 
application.

In applications where an interference has resulted from  
the applicant provoking an interference with the patent 
which provided the basis for final rejection, the rejection 
based on that patent should be withdrawn and the appeal 
dismissed as to the involved claims.

 

1208.03	Reply Brief 

37 CFR 1.193.  Examiner's answer and reply brief.

*****

(b)(1)	Appellant may file a reply brief to an examiner's answer within 
two months from the date of such examiner's answer.  See ? 1.136(b) for 
extensions of time for filing a reply brief in a patent application and 
? 1.550(c) for extensions of time for filing a reply brief in a reexamination 
proceeding. The primary examiner must either acknowledge receipt and 
entry of the reply brief or withdraw the final rejection and reopen prosecu-
tion to respond to the reply brief. A supplemental examiner's answer is not 
permitted, unless the application has been remanded by the Board of 
Patent Appeals and Interferences for such purpose.

(2)	Where prosecution is reopened by the primary examiner 
after an appeal or reply brief has been filed, appellant must exercise one of 
the following two options to avoid abandonment of the application:

(i)	File a reply under ? 1.111, if the Office action is not 
final, or a reply under ? 1.113, if the Office action is final; or 

(ii)	Request reinstatement of the appeal. If reinstatement of 
the appeal is requested, such request must be accompanied by a supple-
mental appeal brief, but no new amendments, affidavits (?? 1.130, 1.131 
or 1.132) or other evidence are permitted.

*****

Under  37 CFR 1.193(b)(1), appellant may file a reply 
brief as a matter of right within 2 months from the mailing 
date of the examiner's answer.  Extensions of time to file 
the reply brief may be granted pursuant to  37 CFR 
1.136(b) or 1.550(c).  The primary examiner must then 
either: (A) acknowledge receipt and entry of the reply brief 
by using form paragraph 12.47 on form PTOL-90; or (B) 
reopen prosecution to respond to the reply brief.  See  
MPEP ? 1208.02.  A supplemental examiner's answer is not 
permitted unless the application has been remanded by the 
Board for such purpose.

Amendments, affidavits, and/or other evidence must be 
submitted in papers separate from the reply brief, and the 
entry of such papers is subject to the provisions of  37 CFR 
1.116 and  37 CFR 1.195. A paper that contains an amend-
ment (or evidence) is not a reply brief within the meaning 
of  37 CFR 1.193(b).  Such a paper will not be entitled to 
entry simply because it is characterized as a reply brief.

While  37 CFR 1.193(b)(1) prohibits a supplemental 
examiner's answer (in the absence of a remand from the 
Board of Patent Appeals and Interference for such pur-
pose), an examiner may (with Supervisory Patent Examiner 
approval) respond to a reply brief by reopening prosecu-
tion.  The acknowledgment of receipt and entry of a reply 
brief under  37 CFR 1.193(b)(1) is an indication by the 
examiner that no further response by the examiner is 
deemed necessary.  Thus, a remand by the Board of Patent 
Appeals and Interference under  37 CFR 1.193(b)(1) in an 
application containing an acknowledgment of receipt and 
entry of a reply brief under  37 CFR 1.193(b)(1) for the 
express purpose of a response by the examiner to the reply 
brief (a supplemental examiner's answer) should rarely, if 
ever, be necessary.

It should also be noted that an indication of a change in 
status of claims (e.g., that certain rejections have been with-
drawn as a result of the reply brief) is not a supplemental 
examiner's answer and is of course permitted.  Such an 
indication of a change in status of claims may be made on 
form PTOL-90.  

For procedure where prosecution is reopened after a 
reply brief has been filed, see  MPEP ? 1208.02.

Form paragraph 12.47 may be used to acknowledge 
receipt and entry of a reply brief.

?  12.47 Acknowledgment of Reply Brief

Application No. [1]

Art Unit [2]

The reply brief filed   [3] has been entered and considered.  The appli-
cation has been forwarded to the Board of Patent Appeals and Interfer-
ences for decision on the appeal.

Examiner Note:

1.	This form paragraph is to be printed on a blank page for attachment 
to a PTOL-90 or PTO-90C.

2.	If an amendment, an affidavit and/or a declaration  has/have been 
filed with the reply brief, the examiner must notify the appellant in writing 
whether it has been entered.  Unless the amendment, affidavit, and/or dec-
laration place(s) the application in condition for allowance, entry should 
not be permitted.  See  37 CFR 1.116 and  37 CFR 1.195.  This is particu-
larly important since a supplemental examiner's answer is not permitted, 
unless the application has been remanded by the Board of Patent Appeals 
and Interferences for such purpose.  See  37 CFR 1.193(b)(1).

1209	Oral Hearing 

37 CFR 1.194.  Oral hearing.

(a)	An oral hearing should be requested only in those circumstances 
in which appellant considers such a hearing necessary or desirable for a 
proper presentation of the appeal. An appeal decided without an oral hear-
ing will receive the same consideration by the Board of Patent Appeals 
and Interferences as appeals decided after oral hearing.

(b)	If appellant desires an oral hearing, appellant must file, in a sep-
arate paper, a written request for such hearing accompanied by the fee set 
forth in ? 1.17(d) within two months from the date of the examiner's 
answer. If appellant requests an oral hearing and submits therewith the fee 
set forth in ? 1.17(d), an oral argument may be presented by, or on behalf 
of, the primary examiner if considered desirable by either the primary 
examiner or the Board.  See ? 1.136(b) for extensions of time for request-
ing an oral hearing in a patent application and ? 1.550(c) for extensions of 
time for requesting an oral hearing in a reexamination proceeding.

(c)	If no request and fee for oral hearing have been timely filed by 
appellant, the appeal will be assigned for consideration and decision. If 
appellant has requested an oral hearing and has submitted the fee set forth 
in ? 1.17(d), a day of hearing will be set, and due notice thereof given to 
appellant and to the primary examiner.  A hearing will be held as stated in 
the notice, and oral argument will be limited to twenty minutes for appel-
lant and fifteen minutes for the primary examiner unless otherwise ordered 
before the hearing begins. If the Board decides that a hearing is not neces-
sary, the Board will so notify appellant.

37 CFR 1.194(b) provides that an appellant who desires 
an oral hearing before the Board must request the hearing 
by filing, in a separate paper, a written request therefor, 
accompanied by the appropriate fee set forth in  37 CFR 
1.17(d), within 2 months after the date of the examiner's 
answer. This time period may only be extended by filing a 
request under either 37 CFR 1.136(b) or, if the appeal 
involves a reexamination proceeding, under 37 CFR 
1.550(c).

A notice of hearing, stating the date, the time, and the 
docket, is forwarded to the appellant in due course. If 
appellant fails to confirm within the  time required in the 
notice of hearing, the appeal will be removed from the 
hearing docket and assigned on brief in due course.  No 
refund of the fee for requesting an oral hearing will be 
made.  Similarly, after confirmation, if no appearance is 
made at the scheduled hearing, the appeal will be decided 
on brief. Since failure to notify the Board of waiver of hear-
ing in advance of the assigned date results in a waste of the 
Board's resources, appellant should inform the Board of a 
change in plans at the earliest possible opportunity. If the 
Board determines that a hearing is not necessary (e.g., a 
remand to the examiner is necessary or it is clear that the 
rejection(s) cannot be sustained), appellant will be notified.

If appellant has any special request, such as for a particu-
lar date or day of the week, this will be taken into consider-
ation in setting the hearing, if made known to the Board in 
advance, as long as such request does not unduly delay a 
decision in the case and does not place an undue adminis-
trative burden on the Board.

The appellant may also file a request, in a paper 
addressed to the Chief Clerk of the Board, to present his/
her arguments via telephone. The appellant making the 
request will be required to bear the cost of the telephone 
call. 

If the time set in the notice of hearing conflicts with 
prior commitments or if subsequent events make appear-
ance impossible, the hearing may be rescheduled on written 
request. However, in view of the administrative burden 
involved in rescheduling hearings and the potential delay 
which may result in the issuance of any patent based on the 
application on appeal, postponements are discouraged and 
will not be granted in the absence of convincing reasons in 
support of the requested change.

Normally, 20 minutes are allowed for appellant to 
explain his or her position. If appellant believes that addi-
tional time will be necessary, a request for such time should 
be made well in advance and will be taken into consider-
ation in assigning the hearing date. The final decision on 
whether additional time is to be granted rests within the dis-
cretion of the senior member of the panel hearing the case.

PARTICIPATION BY EXAMINER

If the appellant has requested an oral hearing and the pri-
mary examiner wishes to appear and present an oral argu-
ment before the Board, a request to present oral argument 
must be included as the last paragraph of the examiners' 
answer, using form paragraph 12.63.  See  MPEP ? 1208.  
If the appellant's request for a hearing is filed after the 
examiner's answer, then the examiner's request must be in 
an acknowledgement of reply brief, if applicable, or in a 
separate letter on form PTOL-90.  In either case, the exam-
iner should also make a notation "Examiner Requests an 
Oral Hearing" on the face of the file wrapper below the box 
for the examiner's name. 

In those appeals in which an oral hearing has been con-
firmed and either the primary examiner or the Board has 
indicated a desire for the examiner to participate in the oral 
argument, oral argument may be presented by the examiner 
whether or not appellant appears. 

After the oral hearing has been confirmed and the date 
set as provided in  37 CFR 1.194(c), the application file 
will be delivered to the examiner via the appropriate Group 
Director at least 2 weeks prior to the date of the hearing and 
the examiner will be notified of the date of the hearing.  In 
those cases where the Board requests the presentation of an 
oral argument by or on behalf of the primary examiner, the 
Board's request may, where appropriate, indicate specific 
points or questions to which the argument should be partic-
ularly directed. The application file must be returned to the 
Board at least 2 working days before the hearing.

In any appeal where oral argument is to be presented by, 
or on behalf of, the primary examiner, the appellant will be 
given due notice of that fact.

At the hearing, after the appellant has made his or her 
presentation, the examiner will be allowed 15 minutes to 
reply as well as to present a statement which clearly sets 
forth his or her position with respect to the issues and rejec-
tions of record. Appellant may utilize any allotted time not 
used in the initial presentation for rebuttal. 

If the examiner wishes to attend the oral hearing as an 
observer but not to present oral argument, see MPEP 
? 1208. 

1210	Actions Subsequent to Examiner's 
Answer but Before Board's Decision

JURISDICTION OF BOARD

The application file and jurisdiction of the application 
are normally transferred from the examining groups to the 
Board  at one of the following times:

(A)	After 2 months from the examiner's answer, plus 
mail room time, if no reply brief has been timely filed.

(B)	After a supplemental examiner's answer, pursuant 
to a remand from the Board, has been mailed.

(C)	After the examiner has notified the appellant by 
written communication that the reply brief has been entered 
and considered and that the application will be forwarded 
to the Board (for example, by mailing a PTOL-90 with 
form paragraph 12.47, as described in  MPEP ? 1208.03).  

Any amendment, affidavit, or other paper relating to the 
appeal, filed thereafter but prior to the decision of the 
Board, may be considered by the examiner only in the 
event the case is remanded by the Board for that purpose.

DIVIDED JURISDICTION

Where appeal is taken from the second or final rejection 
only of one or more claims presented for the purpose of 
provoking an interference, jurisdiction of the rest of the 
case remains with the examiner, and prosecution of the 
remaining claims may proceed as though the entire case 
was under his or her jurisdiction. Also, where the examiner 
certifies in writing that there is no conflict of subject matter 
and the administrative patent judge in charge of the inter-
ference approves, an appeal to the Board may proceed con-
currently with an interference.  See  MPEP ? 2315.

ABANDONMENT OF APPEAL: APPLICATION  
REFILED OR ABANDONED

To avoid the rendering of decisions by the Board in 
applications which have already been refiled as continua-
tions, appellants should promptly inform the clerk of the 
Board in writing as soon as they have positively decided to 
refile or to abandon an application containing an appeal 
awaiting a decision. Failure to exercise appropriate dili-
gence in this matter may result in the Board's refusing an 
otherwise proper request to vacate its decision.

See  MPEP ? 1215.01 -  ? 1215.03 concerning the with-
drawal of appeals.

1210.01	Order for Compliance

While the examiner will assume that the real party in 
interest is the individual or individuals identified in the cap-
tion when the real party in interest is not explicitly set out 
in the brief, the Board may require the appellant to explic-
itly name the real party in interest. Likewise, while the 
examiner will assume that there are no related cases when 
no related case is explicitly set out in the brief, the Board 
may require the appellant to explicitly identify any related 
case.  When the Board elects to require an explicit state-
ment, an order for compliance with the rule will be entered 
setting a 1 - month period for reply to the Board's require-
ment (37 CFR 1.192(d)). Extensions of time are only avail-
able under  37 CFR 1.136(b).  An entire new brief need not, 
and should not, be filed.  Rather, a simple paper identifying 
the real party in interest or explicitly stating that the appel-
lant is the real party in interest will suffice. Failure to 
timely respond to the Board's requirement may result in 
dismissal of the appeal. See  MPEP ? 1215.04 and  MPEP 
? 711.02(b).

1211	Remand by Board 

The Board has authority to remand a case to the exam-
iner when it deems it necessary. For example, the Board 
may remand for a fuller description of the claimed inven-
tion and, in the case of a machine, a statement of its mode 
of operation.  In certain cases where the pertinence of the 
references is not clear, the Board may call upon the exam-
iner for a further explanation.  In the case of multiple rejec-
tions of a cumulative nature, the Board may also remand 
for selection of the preferred or best ground.  The Board 
may also remand a case to the examiner for further search 
where it feels that the most pertinent art has not been cited, 
or to consider an amendment, affidavit, or declaration. See  
MPEP ? 1211.01 and ? 1211.02. Furthermore, the Board 
may remand an application to the examiner to prepare a 
supplemental examiner's answer in response to a reply 
brief. The following form paragraph may be used in prepar-
ing the supplemental examiner's answer after a remand 
from the Board:

?  12.80 Supplemental Examiner's Answer - On Remand 

Pursuant to the Remand under  37 CFR 1.193(b)(1) by the Board of 
Patent Appeals and Interferences on [1], a supplemental Examiner's 
Answer is set forth below: [2].

Examiner Note:

1.	Insert the date of the Remand.

2.	Provide reasons supporting the rejections set forth in the supplemen-
tal Examiner's Answer.

The Supervisory Patent Examiner should approve and 
the Board should be notified whenever a remanded applica-
tion is withdrawn from appeal under any circumstance. See  
MPEP  ? 706.07(e) and  ? 1002.02(d).

1211.01	Remand by Board To Consider 
Amendment  

While there is no obligation resting on the Board 
to consider new or amended claims submitted while it has 
jurisdiction of the appeal. In re Sweet, 136 F.2d 722, 
58 USPQ 327 (CCPA 1943), a proposed amendment, affi-
davit, declaration, or other paper may be remanded for such 
consideration as the examiner may see fit to give. Such an 
amendment will be treated as an amendment filed after 
appeal.  See  MPEP ? 1207.

If the proposed amendment is in effect an abandonment 
of the appeal, e.g., by canceling the appealed claims, the 
amendment should be entered and the clerk of the Board 
notified in order that the case may be removed from the 
Board's docket.

1211.02	Remand by Board To Consider  
Affidavits or Declarations 

37 CFR 1.195.  Affidavits or declarations after appeal.

Affidavits, declarations, or exhibits submitted after the case has been 
appealed will not be admitted without a showing of good and sufficient 
reasons why they were not earlier presented.

Affidavits or declarations filed with or after the filing of 
a notice of appeal but before jurisdiction passes to the 
Board (see  MPEP ? 1210) will be  considered for entry 
only if the appellant makes the necessary showing under  
37 CFR 1.195 as to why they were not earlier presented. 
Authority from the Board is not necessary to consider such 
affidavits or declarations. Affidavits or declarations filed 
after a final rejection and prior to a notice of appeal 
are handled as provided in MPEP ? 715.09, ? 716, and  
? 716.01.

In the case of affidavits or declarations filed after the 
application has been forwarded to the Board, but before a 
decision thereon by the Board, the examiner is without 
authority to consider the same in the absence of a remand 
by the Board. When an application is remanded to the 
examiner for the consideration of such affidavits or decla-
rations, the examiner, after having given such consideration 
as the facts in the case require, will return the application to 
the Board with his or her supplemental examiner's answer 
on remand, a copy of which should be forwarded to the 
appellant. If such an affidavit or declaration is not accom-
panied by the showing required under 37 CFR 1.195, the 
examiner will not consider its merits. If the delay in filing 
such affidavit or declaration is satisfactorily explained, the 
examiner will admit the same and consider its merits.

It is not the custom of the Board to remand affidavits or 
declarations offered in connection with a request for 
rehearing of its decision where no rejection has been made 
under  37 CFR 1.196(b). Affidavits or declarations submit-
ted for this purpose, not remanded to the examiner, are con-
sidered only as arguments. In re Martin, 154 F.2d 126, 
69 USPQ 75 (CCPA 1946).

For remand to the examiner to consider appellant's 
remarks relating to a  37 CFR 1.196(b) rejection, see  
MPEP ? 1214.01.

1212	Board Requires Appellant  to Address 
Matter

37 CFR 1.196.  Decision by the Board of Patent Appeals and 
Interferences.

*****

(d)	The Board of Patent Appeals and Interferences may require 
appellant to address any matter that is deemed appropriate for a reasoned 
decision on the pending appeal. Appellant will be given a non-extendable 
time period within which to respond to such a requirement.

*****

37 CFR 1.196(d) authorizes the Board to require an 
appellant to clarify the record by addressing any matter 
deemed appropriate for a reasoned decision on the appeal. 
This may include, for example: (A) the applicability of par-
ticular case law that has not been previously identified as 
relevant to an issue in the appeal; or (B) the applicability of 
prior art that has not been made of record.

The rule further provides that the appellant will be given 
a non-extendable time period within which to respond to 
the requirement. Failure to respond within the time period 
set by the Board will result in dismissal of the appeal.

The making of a requirement under  37 CFR 1.196(d) is 
discretionary with the Board. The authority granted in  
37 CFR 1.196(d) does not affect the Board's authority to 
remand a case to the examiner in a situation where the 
Board considers action by the examiner in the first instance 
to be necessary or desirable.  See  MPEP ? 1211.  Also, 
after an appellant has replied to a requirement under 
37 CFR 1.196(d), a remand to the examiner may be deemed 
to be appropriate.

1213	Decision by Board 

37 CFR 1.196.  Decision by the Board of Patent Appeals and 
Interferences.

(a)	The Board of Patent Appeals and Interferences, in its decision, 
may affirm or reverse the decision of the examiner in whole or in part on 
the grounds and on the claims specified by the examiner or remand the 
application to the examiner for further consideration. The affirmance of 
the rejection of a claim on any of the grounds specified constitutes a gen-
eral affirmance of the decision of the  examiner on that claim, except as to 
any ground specifically reversed.

*****

(e)	Whenever a decision of the Board of Patent Appeals and Inter-
ferences includes or allows a remand, that decision shall not be considered 
a final decision. When appropriate, upon conclusion of proceedings on 
remand before the examiner, the Board of Patent Appeals and Interfer-
ences may enter an order otherwise making its decision final.

*****

After consideration of the record including appellant's 
brief and the examiner's answer, the Board writes its deci-
sion, affirming the examiner in whole or in part, or revers-
ing the examiner's decision, sometimes also setting forth a 
new ground of rejection.

37 CFR 1.196(e) provides that a decision of the Board 
which includes a remand will not be considered as a final 
decision in the case. The Board, following conclusion of 
the proceedings before the examiner, will either adopt its 
earlier decision as final or will render a new decision based 
on all appealed claims, as it considers appropriate. In either 
case, final action by the Board will give rise to the alterna-
tives available to an appellant following a decision by the 
Board.

On occasion, the Board has refused to consider an appeal 
until after the conclusion of a pending civil action or appeal 
to the Court of Appeals for the Federal Circuit involving 
issues identical with  and/or similar to those presented in 
the later appeal. Such suspension of action, postponing 
consideration of the appeal until the Board has the benefit 
of a court decision which may be determinative of the 
issues involved, has been recognized as sound practice. An 
appellant is not entitled, after obtaining a final decision by 
the Patent and Trademark Office on an issue in a case, to 
utilize the prolonged pendency of a court proceeding as a 
means for avoiding res judicata while relitigating the same 
or substantially the same issue in another application.

An applicant may request that the decision be withheld 
to permit the refiling of the application at any time prior to 
the mailing of the decision. Up to 30 days may be granted, 
although the time is usually limited as much as possible. 
The Board will be more prone to entertain the applicant's 
request where the request is filed early, obviating the neces-
sity for an oral hearing or even for the setting of the oral 
hearing date. If the case has already been set for oral hear-
ing, the petition should include a request to vacate the hear-
ing date, not to postpone it.

In a situation where a withdrawal of the appeal is filed 
on the same day that the decision is mailed, a petition to 
vacate the decision will be denied.

See  MPEP ? 1214.01 concerning the procedure follow-
ing a new ground of rejection by the Board under  37 CFR 
1.196(b). 

1213.01	Statement of Allowability by Board 

37 CFR 1.196.  Decision by the Board of Patent Appeals and 
Interferences.

*****

(c)	Should the decision of the Board of Patent Appeals and Interfer-
ences include an explicit statement that a claim may be allowed in 
amended form, appellant shall have the right to amend in conformity with 
such statement, which shall be binding on the examiner in the absence of 
new references or grounds of rejection.

*****

If the Board's decision includes an explicit statement that 
a claim may be allowed in amended form, appellant may 
amend the claim in conformity with the statement and the 
statement would be binding on the examiner in the absence 
of new prior art references or grounds of rejection. The 
examiner should make certain that the amendment does in 
fact conform to the statement in the Board's decision.

The making of a statement under 37 CFR 1.196(c) is dis-
cretionary with the Board. In the absence of an express 
statement, a remark by the Board that a certain feature does 
not appear in a claim  is not to be taken as a statement that 
the claim may be allowed if the feature is supplied by 
amendment. Ex parte No  rlund, 1913 C.D. 161, 192 O.G. 
989 (Comm'r Pat. 1913).

Appellant's right to amend in conformity with the state-
ment under  37 CFR 1.196(c)  may only be exercised 
within the period allowed for seeking court review under  
37 CFR 1.304.  See  MPEP ? 1216.

1213.02	New Grounds of Rejection by 
Board

37 CFR 1.196.  Decision by the Board of Patent Appeals and 
Interferences.

*****

(b)	Should the Board of Patent Appeals and Interferences have 
knowledge of any grounds not involved in the appeal for rejecting any 
pending claim, it may include in the decision a statement to that effect 
with its reasons for so holding, which statement constitutes a new ground 
of rejection of the claim. A new ground of rejection shall not be consid-
ered final for purposes of judicial review. When the Board of Patent 
Appeals and Interferences makes a new ground of rejection, the appellant, 
within two months from the date of the decision, must exercise one of the 
following two options with respect to the new ground of rejection to avoid 
termination of proceedings (? 1.197(c)) as to the rejected claims:

(1)	Submit an appropriate amendment of the claims so rejected 
or a showing of facts relating to the claims so rejected, or both, and have 
the matter reconsidered by the examiner, in which event the application 
will be remanded to the examiner. The new ground of rejection is binding 
upon the examiner unless an amendment or showing of facts not previ-
ously of record be made which, in the opinion of the examiner, overcomes 
the new ground of rejection stated in the decision. Should the examiner 
reject the claims, appellant may again appeal pursuant to ?? 1.191 through 
1.195 to the Board of Patent Appeals and Interferences.

(2)	Request that the application be reheard under ? 1.197(b) by 
the Board of Patent Appeals and Interferences upon the same record. The 
request for rehearing must address the new ground of rejection and state 
with particularity the points believed to have been misapprehended or 
overlooked in rendering the decision and also state all other grounds upon 
which rehearing is sought.  Where request for such rehearing is made, the 
Board of Patent Appeals and Interferences shall rehear the new ground of 
rejection and, if necessary, render a new decision which shall include all 
grounds of rejection upon which a patent is refused.  The decision on 
rehearing is deemed to incorporate the earlier decision for purposes of 
appeal, except for those portions specifically withdrawn on rehearing, and 
is final for the purpose of judicial review, except when noted otherwise in 
the decision.

*****

(f)	See ? 1.136(b) for extensions of time to take action under this 
section in a patent application and ? 1.550(c) for extensions of time in a 
reexamination proceeding.

Under  37 CFR 1.196(b), the Board may, in its decision, 
make a new rejection of one or more of any of the claims 
pending in the case, including claims which have been 
allowed by the examiner.

While  37 CFR 1.196(b) now authorizes the Board to 
reject allowed claims, this authorization is not intended as 
an instruction to the Board to reexamine every allowed 
claim in every appealed application. It is, rather, intended 
to give the Board express authority to act when it becomes 
apparent, during the consideration of rejected claims, that 
one or more allowed claims may be subject to rejection on 
either the same or on different grounds from those applied 
against the rejected claims. Since the exercise of authority 
under  37 CFR 1.196(b) is discretionary, no inference 
should be drawn from a failure to exercise that discretion.

See  MPEP ? 1214.01 for the procedure following a new 
ground of rejection under  37 CFR 1.196(b).

1213.03	Publication of Board Decision 

Decisions  of the Board may be published at the discre-
tion of the Commissioner. Requests by members of the 
public or applicants to publish a decision of the Board 
should be referred to the Office of the Solicitor. A decision 
in a pending or abandoned application will be published in 
accordance with  37 CFR 1.14(d).

Decisions of the Board which are open to the public are 
being made available in electronic form on the PTO web-
site (http://www.uspto.gov).

1214	Procedure Following Decision by 
Board 

37 CFR 1.197.  Action following decision.

(a)	After decision by the Board of Patent Appeals and Interferences, 
the application will be returned to the examiner, subject to appellant's right 
of appeal or other review, for such further action by appellant or by the 
examiner, as the condition of the application may require, to carry into 
effect the decision.

*****

After an appeal to the Board has been decided, a copy of 
the decision is mailed to the appellant and the original 
placed in the file. The clerk of the Board notes the decision 
on the file wrapper and in the record of appeals, and then 
forwards the file to the  examiner through the office of the 
Group Director immediately if all rejections are reversed, 
and after about 10 weeks if any rejection is affirmed or 
after a decision on a request for rehearing is rendered.

1214.01	Procedure Following New Ground 
of Rejection by Board

When the Board makes a new rejection under  37 CFR 
1.196(b), the appellant has the option of:

(A)	requesting rehearing; or 

(B)	submitting an appropriate amendment of the 
rejected claims, and/or a showing of facts relating to the 
claims so rejected.

I.	REQUEST FOR REHEARING

A request for rehearing by the Board of the rejection 
under  37 CFR 1.196(b) must be filed within 2 months from 
the date of the decision.  Extensions of time are governed 
by  37 CFR 1.196(f). By proceeding in this manner, the 
appellant waives his or her right to further prosecution 
before the examiner. In re Greenfield, 40 F.2d 775, 5 USPQ 
474 (CCPA 1930). If the Board's decision also includes an 
affirmance of the examiner's rejection, a request for rehear-
ing of the affirmance (see  MPEP ? 1214.03 and  MPEP 
? 1214.06, paragraph IV) should be filed in a separate 
paper to facilitate consideration.

However, an appellant's request for rehearing accompa-
nied by an affidavit containing a showing of facts to be 
added to the record does not afford rehearing by the Board 
as a matter of right under  37 CFR 1.196(b). The Board has 
authority to remand the application to the examiner and the 
examiner has authority to consider a new showing of facts 
following a new rejection by the Board and withdraw the 
Board's rejection based on the appellant's affidavit and 
accompanying remarks.  In such an instance, the examiner 
also has authority to make any appropriate new rejection 
under  37 CFR 1.198 with the Group Director's approval.

II.	SUBMISSION OF AMENDMENT OR  
SHOWING OF FACTS

If the appellant elects to proceed before the examiner, he 
or she must take such action within the 2 month period for 
reply set forth in the rule. An extension under  37 CFR 
1.136(a) is not available to extend the period.  37 CFR 
1.196(f).  A rejection under  37 CFR 1.196(b) in effect nul-
lifies the final rejection or indication of allowability and 
reopens prosecution of the subject matter of the claims so 
rejected by the Board.

The appellant may amend the claims involved, or substi-
tute new claims to avoid the art or reasons adduced by the 
Board. Ex parte Burrowes, 110 O.G. 599,1904 C.D. 155 
(Comm'r Pat. 1904).  Such amended or new claims must be 
directed to the same subject matter as the appealed claims. 
Ex parte Comstock, 317 O.G. 4,1923 C.D. 82 (Comm'r Pat. 
1923). The appellant may also submit a showing of facts 
under  37 CFR 1.131 or 1.132, as may be appropriate.

Argument without either amendment of the claims so 
rejected or the submission of a showing of facts can result 
only in a final rejection of the claims, since the examiner is 
without authority to allow the claims unless amended or 
unless the rejection is overcome by a showing of facts not 
before the Board. The new ground of rejection raised by the 
Board does not reopen the prosecution except as to that 
subject matter to which the new rejection was applied. If 
the Board's decision in which the rejection under  37 CFR 
1.196(b) was made includes an affirmance of the exam-
iner's rejection, the basis of the affirmed rejection is not 
open to further prosecution. If the appellant elects to pro-
ceed before the examiner with regard to the new rejection, 
the Board's affirmance will be treated as nonfinal for pur-
poses of seeking judicial review, and no request for rehear-
ing of the affirmance need be filed at that time. Prosecution 
before the examiner of the 37 CFR 1.196(b) rejection can 
incidentally result in overcoming the affirmed rejection 
even though the affirmed rejection is not open to further 
prosecution.  Therefore, it is possible for the application to 
be allowed as a result of the limited prosecution before the 
examiner of the  37 CFR 1.196(b) rejection. If the applica-
tion becomes allowed, the application should not be 
returned to the Board.  Likewise, if the application is aban-
doned for any reason, the application should not be 
returned to the Board.  If the rejection under 37 CFR 
1.196(b) is not overcome, the applicant can file a second 
appeal (as discussed below). Such appeal must be limited to 
the  37 CFR 1.196(b) rejection and may not include the 
affirmed rejection. If the application does not become 
allowed or abandoned as discussed above, once prosecution 
of the claims which were rejected under 37 CFR 1.196(b) is 
terminated before the examiner, the application file must be 
returned to the Board so that a decision making the original 
affirmance final can be entered. The time for filing a 
request for rehearing on the affirmance or seeking court 
review runs from the date of the decision by the 
Board making the original affirmance final.  See  MPEP 
? 1214.03 and  ? 1216.

If the examiner does not consider that the amendment 
and/or showing of facts overcome the rejection, he or she 
will again reject the claims; if appropriate, the rejection will 
be made final.

An applicant in whose application such a final rejection 
has been made by the examiner may mistakenly believe 
that he or she is entitled to review by the Board of the rejec-
tion by virtue of the fact that the application was previously 
on appeal, but under the provisions of  37 CFR 1.196(b)(1), 
after such a final rejection, an applicant who desires further 
review of the matter must file a new appeal to the Board. 
Such an appeal from the subsequent rejection by the exam-
iner will be an entirely new appeal involving a different 
ground and will require a new notice of appeal and the pay-
ment of another fee.

In accordance with  37 CFR 1.196(f), the time periods 
for requesting rehearing of the Board's new rejection under  
37 CFR 1.196(b), or for submitting an amendment or show-
ing of facts, may not be extended by the filing of a petition 
and fee under  37 CFR 1.136(a), but only under the provi-
sions of  37 CFR 1.136(b) or under  37 CFR 1.550(c) if the 
appeal involves a reexamination proceeding.

1214.03	Rehearing

37 CFR 1.197.  Action following decision.

*****

(b)	Appellant may file a single request for rehearing within two 
months from the date of the original decision, unless the original decision 
is so modified by the decision on rehearing as to become, in effect, a new 
decision, and the Board of Patent Appeals and Interferences so states. The 
request for rehearing must state with particularity the points believed to 
have been misapprehended or overlooked in rendering the decision and 
also state all other grounds upon which rehearing is sought. See ? 1.136(b) 
for extensions of time for seeking rehearing in a patent application and 
? 1.550(c) for extensions of time for seeking rehearing in a reexamination 
proceeding.

*****

The term "rehearing" is used in  37 CFR 1.197(b) for 
consistency with the language of  35 U.S.C. 7(b). It should 
not be interpreted as meaning that an appellant is entitled to 
an oral hearing on the request for rehearing, but only to a 
rehearing on the written record. It is not the normal practice 
of the Board to grant rehearings in the sense of another oral 
hearing. Ex parte Argoudelis, 157 USPQ 437, 441 (Bd. 
App. 1967), rev'd. on other grounds, 434 F.2d 1390, 
168 USPQ 99 (CCPA 1970).

37 CFR 1.197(b) provides that any request for rehearing 
must specifically state the points believed to have been 
misapprehended or overlooked in the Board's decision. 
Experience has shown that many requests for rehearing are 
nothing more than reargument of appellant's position on 
appeal.  In response, the rule was revised to limit requests 
to the points of law or fact which appellant feels were over-
looked or misapprehended by the Board.

The 2-month period provided by  37 CFR 1.197(b) for 
filing a request for rehearing can only be extended under 
the provisions of  37 CFR 1.136(b) or under  37 CFR 
1.550(c) if the appeal involves a reexamination proceeding.

All copies of references in the file wrapper should be 
retained therein.

For extension of time to appeal to the Court of Appeals 
for the Federal Circuit or commence a civil action under 
37 CFR 1.304(a), see  MPEP ? 1216 and  ? 1002.02(o).

For requests for reconsideration by the examiner, see  
MPEP ? 1214.04.  

1214.04	Examiner Reversed 

A complete reversal of the examiner's rejection brings 
the case up for immediate action by the examiner. If the 
reversal does not place the application in condition for 
immediate allowance (e.g., the Board has entered a new 
ground of rejection under  37 CFR 1.196(b)), the examiner 
should refer to the situations outlined in  MPEP ? 1214.06 
for appropriate guidance.

The examiner should never regard such a reversal as a 
challenge to make a new search to uncover other and better 
references. This is particularly so where the application has 
meanwhile been transferred or assigned to an examiner 
other than the one who rejected the claims leading to the 
appeal. The second examiner should give full faith and 
credit to the prior examiner's search.

If the examiner has specific knowledge of the existence 
of a particular reference or references which indicate non-
patentability of any of the appealed claims as to which the 
examiner was reversed, he or she should submit the matter 
to the Group Director for authorization to reopen prosecu-
tion under  37 CFR 1.198 for the purpose of entering the 
new rejection.  See  MPEP ? 1002.02(c) and  MPEP 
? 1214.07. The Group Director's approval is placed on the 
action reopening prosecution.

The examiner may request rehearing of the Board deci-
sion.  Such a request should normally be made within 
2 months of the receipt of the Board decision in the group. 
The Group Director's secretary should therefore date stamp 
all Board decisions upon receipt in the group.

All requests by the examiner to the Board for rehearing 
of a decision must be approved by the Group Director and 
must also be forwarded to the Office of the Deputy Assis-
tant Commissioner for Patent Policy and Projects for 
approval before mailing.

The request should set a period of 1 month for the appel-
lant to file a reply.

If approved, the Office of the Deputy Assistant Commis-
sioner for Patent Policy and Projects will mail a copy of the 
request for rehearing to the appellant. After the period set 
for appellant to file a reply (plus mailing time) has expired,  
the application file will be forwarded to the Board. 

1214.05	Cancellation of Withdrawn Claims

Where an appellant withdraws some of the appealed 
claims, and the Board reverses the examiner on the remain-
ing appealed claims, the withdrawal is treated as an authori-
zation to cancel the withdrawn claims. It is not necessary to 
notify the appellant of the cancellation of the withdrawn 
claims. 

1214.06	Examiner Sustained in Whole or in 
Part

37 CFR 1.197.  Action following decision.

*****

	(c)  	Termination of proceedings. Proceedings are considered ter-
minated by the dismissal of an appeal or the failure to timely file an appeal 
to the court or a civil action (? 1.304) except: (1) where claims stand 
allowed in an application or (2) where the nature of the decision requires 
further action by the examiner. The date of termination of proceedings is 
the date on which the appeal is dismissed or the date on which the time for 
appeal to the court or review by civil action (? 1.304) expires. If an appeal 
to the court or a civil action has been filed, proceedings are considered ter-
minated when the appeal or civil action is terminated. An appeal to the 
U.S. Court of Appeals for the Federal Circuit is terminated when the man-
date is received by the Office. A civil action is terminated when the time to 
appeal the judgment expires. 

The time for seeking review of a decision of the Board 
by the Court of Appeals for the Federal Circuit or the U.S. 
District Court for the District of Columbia is the same for 
both tribunals, that is, 2 months, or 2 months with the 
extension provided by  37 CFR 1.304 in the event a request 
for rehearing is timely filed before the Board, or as 
extended by the Commissioner. See  MPEP ? 1216. When 
the time for seeking court review (plus 2 weeks to allow for 
information as to the filing of an appeal or civil action, if 
any, to reach the examiner) has passed without such review 
being sought, the examiner must take up the application for 
consideration. The situations which can arise will involve 
one or more of the following circumstances:

I.	NO CLAIMS STAND ALLOWED

The proceedings in the application are terminated as of 
the date of the expiration of the time for filing court action. 
The application is no longer considered as pending. It is to 
be stamped abandoned and sent to abandoned files.

Claims indicated as allowable prior to appeal except for 
their dependency from rejected claims will be treated as if 
they were rejected. The following examples illustrate the 
appropriate approach to be taken by the examiner in vari-
ous situations:

(A)	If claims 1-2 are pending, and the Board affirms a 
rejection of claim 1 and claim 2 was objected to prior to 
appeal as being allowable except for its dependency from 
claim 1, the examiner should hold the application aban-
doned.

(B)	If the Board or court affirms a rejection against an 
independent claim and reverses all rejections against a 
claim dependent thereon, the examiner, after expiration of 
the period for further appeal, should proceed in one of two 
ways:

(1)	Convert the dependent claim into independent 
form by examiner's amendment, cancel all claims in which 
the  rejection was affirmed, and issue the application; or

(2)	Set a 1-month time limit in which appellant 
may rewrite the dependent claim(s) in independent form. 
Extensions of time under  37 CFR 1.136(a) will not be per-
mitted. If no timely reply is received, the examiner will 
cancel all rejected and objected to claims and issue the 
application with the allowed claims only.

The following language may be used where appropriate:

Claim(s) ______ is/are incomplete because the claim(s) on 
which it/they depend(s) from has/have been cancelled by the 
examiner in accordance with MPEP ?1214.06. Applicant is given 
a ONE MONTH TIME LIMIT from the date of this letter in 
which to present claim(s) ________ in independent form. NO 
EXTENSIONS OF TIME UNDER  37 CFR 1.136(a) WILL BE 
GRANTED. Failure to comply with this deadline will result in 
cancellation of claim(s) ________ and this application will be:

       

i.	allowed with claim(s) ______ (if other claims are allowed), 
or

       

ii.	abandoned (if there are no allowed claims).

II.	CLAIMS STAND ALLOWED

The appellant is not required to file a reply. The exam-
iner takes the application up and passes it to issue on the 
claims which stand allowed. A red-ink line should be 
drawn through the refused claims and the notion  "Board 
Decision" written in the margin in red ink.

If the Board affirms a rejection of claim 1, claim 2 was 
objected to prior to appeal as being allowable except for its 
dependency from claim 1 and independent claim 3 is 
allowed, the examiner should cancel claims 1 and 2 and 
issue the application with claim 3 only.

If uncorrected matters of form which cannot be handled 
without written correspondence remain in the application, 
the examiner should take appropriate action but prosecu-
tion is otherwise closed.  Note paragraph I of this section 
for handling of claims dependent on rejected claims.  A let-
ter such as set forth in form paragraph 12.20 is suggested:

?  12.20 Period For Seeking Court Review Has Lapsed

The period for seeking court review of the decision by the Board of 
Patent Appeals and Interferences rendered [1] has expired and no further 
action has been taken by appellant. The proceedings as to the rejected 
claims are considered terminated; see  37 CFR 1.197(c).

The application will be passed to issue on allowed claim  [2] provided 
the following formal matters are promptly corrected:  [3].  Prosecution is 
otherwise closed.  

Applicant is required to make the necessary corrections addressing the 
outstanding formal matters within a shortened statutory period set to 
expire ONE MONTH or THIRTY DAYS, whichever is longer, from the 
mailing date of this letter.  Extensions of time may be granted under 
37 CFR 1.136.  

Examiner Note:

1.	In bracket 1, enter the date of the decision.

2.	In bracket 2, identify the allowed claims.

3.	In bracket 3, identify the formal matters that need correction.

III.	CLAIMS REQUIRE ACTION 

If the decision of the Board is an affirmance in part and 
includes a reversal of a rejection  that brings certain claims 
up for action on the merits, such as a decision reversing the 
rejection of generic claims in an application containing 
claims to nonelected species not previously acted upon, the 
examiner will take the application up for appropriate action 
on the matters thus brought up, but the application is not 
considered open to further prosecution except as to such 
matters.

IV.  	37 CFR 1.196(b) REJECTION

Where the Board makes a new rejection under  37 CFR 
1.196(b) and no action is taken with reference thereto by 
appellant within 2 months, the examiner should proceed in 
the manner indicated in paragraphs I-III of this section as 
appropriate. See  MPEP ? 1214.01.

If the Board affirms the examiner's rejection, but also 
enters a new ground of rejection under  37 CFR 1.196(b), 
the subsequent procedure depends upon the action taken by 
the appellant with respect to the  37 CFR 1.196(b) rejec-
tion.

(A)	If the appellant elects to request rehearing of the 
new rejection (see  MPEP ? 1214.01, paragraph I), the 
request for rehearing of the new rejection and of the affir-
mance must be filed within 2 months from the date of the 
Board's decision.

(B)	If the appellant elects to proceed before the exam-
iner with regard to the new rejection (see  MPEP ? 1214.01, 
paragraph II) the Board's affirmance will be treated as non-
final, and no request for rehearing of the affirmance need 
be filed at that time. Prosecution before the examiner of the  
37 CFR 1.196(b) rejection can incidentally result in over-
coming the affirmed rejection even though the affirmed 
rejection is not open to further prosecution. Therefore, it is 
possible for the application to be allowed as a result of the 
limited prosecution before the examiner of the  37 CFR 
1.196(b) rejection. If the application becomes allowed, it 
should not be returned to the Board. Likewise, if the appli-
cation is abandoned for any reason, it  should not be 
returned to the Board. If the rejection under 37 CFR 
1.196(b) is not overcome, the applicant can file a second 
appeal (as discussed below).  Such appeal must be limited 
to the 37 CFR1.196(b) rejection and may not include the 
affirmed rejection. If the application does not become 
allowed or abandoned as discussed above, once prosecution 
of the claims which were rejected under 37 CFR 1.196(b) is 
terminated before the examiner, the application file must be 
returned to the Board so that a decision making the original 
affirmance final can be entered. The time for filing a 
request for rehearing on the affirmance or seeking court 
review runs from the date of the decision by the Board 
making the original affirmance final. See  MPEP ? 1214.03 
and ? 1216.

V.	APPEAL DISMISSED 

Where the appeal has been dismissed for failure to argue 
a ground of rejection involving all the appealed claims, see  
MPEP ? 1215.04.

The practice under the situations identified in paragraphs 
I-III of this section is similar to the practice after a decision 
of the court outlined in  MPEP ? 1216.01.

In view of the above practice, examiners must be very 
careful that applications which come back from the Board 
are not overlooked because every case, except those in 
which all claims stand rejected after the Board's decision, is 
up for action by the examiner in the event no court review 
has been sought. Consequently, when a file is received after 
decision by the Board, it must be examined and appropriate 
precautions taken to indicate the presence of allowed 
claims, if any. This may be done by writing the notation 
"Allowed Claims" or "Rejection Reversed" on the "Con-
tents"  page of the file wrapper immediately below the 
endorsement "Decision by Board."

See MPEP ? 1216.01 and ? 1216.02 for procedure where 
court review is sought.

1214.07	Reopening of Prosecution 

37 CFR 1.198.  Reopening after decision.

Cases which have been decided by the Board of Patent Appeals and 
Interferences will not be reopened or reconsidered by the primary exam-
iner, except under the provisions of ? 1.196, without the written authority 
of the Commissioner, and then only for the consideration of matters not 
already adjudicated, sufficient cause being shown.

Sometimes an amendment is filed after the Board's deci-
sion which does not carry into effect any recommendation 
made by the Board and which presents a new or amended 
claim or claims.  In view of the fact that the prosecution of 
the application is closed, the appellant is not entitled to 
have such amendment entered as a matter of right. How-
ever, if the amendment obviously places the application in 
condition for allowance, the primary examiner should 
endorse on the amendatory paper a recommendation that 
the amendment be admitted, and with the concurrence of 
the Supervisory Patent Examiner, the amendment will be 
entered. Note  MPEP ? 1002.02(d).

Where the amendment cannot be entered, the examiner 
should write to the appellant indicating that the amendment 
cannot be entered and stating the reason why. The refusal 
should never be made to appear arbitrary or capricious.

Form paragraph 12.19 should be used: 

?  12.19 Amendment After Board Decision, Entry Refused

The amendment filed [1] after a decision by the Board of Patent 
Appeals and Interferences is not entered because prosecution is closed and 
the proposed claim(s) raise new issues which require further consideration 
or search (37 CFR 1.116(c)).  See also  37 CFR 1.198.

[2]

Examiner Note:

1.	In bracket 2, identify the new issues.

2.	This paragraph is not to be used where a  37 CFR 1.196 (b) rejection 
has been made by the Board of Patent Appeals and Interferences.

In the event that claims stand allowed in the application 
under the conditions set forth in  MPEP ? 1214.06, para-
graph II, the application should be passed to issue.

Petitions under  37 CFR 1.198 to reopen or reconsider 
prosecution of a patent application after decision by the 
Board, where no court action has been filed, are decided by 
the Group Director,  MPEP ? 1002.02(c).

The Commissioner also entertains petitions under 37 
CFR 1.198 to reopen certain cases in which an appellant 
has sought review under  35 U.S.C. 141 or 145. This proce-
dure is restricted to cases which have been decided by the 
Board and which are amenable to settlement without the 
need for going forward with the court proceeding. Such 
petitions will ordinarily be granted only in the following 
categories of cases:

(A)	When the decision of the Board asserts that the 
rejection of the claims is proper because the claims do not 
include a disclosed limitation or because they suffer from 
some other curable defect, and the decision reasonably is 
suggestive that claims including the limitation or devoid of 
the defect will be allowable;

(B)	When the decision of the Board asserts that the 
rejection of the claims is proper because the record does not 
include evidence of a specified character, and is reasonably 
suggestive that if such evidence were presented, the 
appealed claims would be allowable, and it is demonstrated 
that such evidence presently exists and can be offered; or

(C)	When the decision of the Board is based on a prac-
tice, rule, law, or judicial precedent which, since the 
Board's decision, has been rescinded, repealed, or over-
ruled.

Such petitions will not be ordinarily entertained after the 
filing of the Commissioner's brief in cases in which review 
has been sought under  35 U.S.C. 141, or after trial in a 
35 U.S.C. 145 case.

In the case of an appeal under  35 U.S.C. 141, if the peti-
tion is granted, steps will be taken to request the court to 
remand the case to the Patent and Trademark Office. If so 
remanded, the proposed amendments, evidence, and argu-
ments will be entered of record in the application file for 
consideration, and further action will be taken by the Board 
in the first instance or by the examiner as may be appropri-
ate.  In the case of civil action under  35 U.S.C. 145, steps 
will be taken for obtaining dismissal of the action without 
prejudice to consideration of the proposals.

1215	Withdrawal or Dismissal of Appeal

1215.01	Withdrawal of Appeal 

Except in those instances where a withdrawal of an 
appeal would result in abandonment of the application, an 
attorney not of record in an application may file a paper 
under  37 CFR 1.34(a) withdrawing an appeal. In such 
instances where no allowable claims appear in the applica-
tion, the withdrawal of an appeal is in fact an express aban-
donment and does not comply with  37 CFR 1.138 except 
where a continuing application is being filed on the same 
date.

Where, after appeal has been filed and before decision 
by the Board, an applicant withdraws the appeal after the 
period for reply to the final rejection has expired, the appli-
cation is to be considered abandoned as of the date on 
which the appeal was withdrawn unless there are allowed 
claims in the case.

Where a letter abandoning the application is filed in 
accordance with  37 CFR 1.138, the effective date of aban-
donment is the date of recognition of the letter by an appro-
priate official of the Office or a different date, if so 
specified in the letter itself.  See  MPEP ? 711.01.

If a brief has been filed within the time permitted by  
37 CFR 1.192 (or any extension thereof) and an answer 
mailed and appellant withdraws the appeal, the application 
is returned to the examiner.

To avoid the rendering of decisions by the Board in 
applications which have already been refiled as continua-
tions, applicants should promptly inform the clerk of the 
Board in writing as soon as they have positively decided to 
refile or to abandon an application containing an appeal 
awaiting a decision. Failure to exercise appropriate dili-
gence in this matter may result in the Board's refusing an 
otherwise proper request to vacate its decision. 

Applications having no allowed claims will be aban-
doned.  Claims which are allowable except for their depen-
dency from rejected claims will be treated as if they were 
rejected. The following examples illustrate the appropriate 
approach to be taken by the examiner in various situations:

(A)	Claim 1 is allowed; claims 2 and 3 are rejected. 
The examiner should cancel claims 2 and 3 and issue the 
application with claim 1 only.

(B)	Claims 1 - 3 are rejected. The examiner should 
hold the application abandoned.

(C)	Claim 1 is rejected and claim 2 is objected to as 
being allowable except for its dependency from claim 1. 
The examiner should hold the application abandoned.

(D)	Claim 1 is rejected and claim 2 is objected to as 
being allowable except for its dependency from claim 1; 
independent claim 3 is allowed. The examiner should can-
cel claims 1 and 2 and issue the application with claim 
3 only.

1215.02	Claims Standing Allowed 

If the application contains allowed claims, as well as 
claims on appeal, the withdrawal of the appeal does not 
operate as an abandonment of the application, but is consid-
ered a withdrawal of the appeal as to those claims and 
authority to the examiner to cancel the same. An amend-
ment canceling the appealed claims is equivalent to a with-
drawal of the appeal.

1215.03	Partial Withdrawal

A withdrawal of the appeal as to some of the claims on 
appeal operates as an authorization to cancel those claims 
from the application and the appeal continues as to the 
remaining claims. The withdrawn claims will be canceled 
from an application by direction of the examiner at the con-
clusion of the appeal proceedings, if necessary (e.g., the 
examiner is reversed as to the rejection of the remaining 
claims on appeal), without further action by the applicant.  

1215.04	Dismissal of Appeal

If no brief is filed within the time prescribed by  37 CFR 
1.192, the appeal stands dismissed by operation of the rule. 
Form PTOL-461 "Notification of Defective Notice of 
Appeal or Defective Brief," or form paragraph 12.17 noti-
fying the appellant that the appeal stands dismissed is not 
an action in the case and does not start any period for reply. 
If no claims stand allowed, the application is considered as 
abandoned on the date the brief was due. If claims stand 
allowed in the application, the failure to file a brief and 
consequent dismissal of the appeal is to be treated as a 
withdrawal of the appeal and of any claim not standing 
allowed. The application should be passed to issue forth-
with. Unless appellant specifically withdraws the appeal as 
to rejected claims, the appeal should not be dismissed until 
the extended period (5 months under  37 CFR 1.136(a)) to 
file the brief has expired.

Applications having no allowed claims will be aban-
doned.  Claims which are allowable except for their depen-
dency from rejected claims will be treated as if they were 
rejected. The following examples illustrate the appropriate 
approach to be taken by the examiner in various situations:

(A)	Claim 1 is allowed; claims 2 and 3 are rejected. 
The examiner should cancel claims 2 and 3 and issue the 
application with claim 1 only.

(B)	Claims 1 - 3 are rejected. The examiner should 
hold the application abandoned.

(C)	Claim 1 is rejected and claim 2 is objected to as 
being allowable except for its dependency from claim 1. 
The examiner should hold the application abandoned.

(D)	Claim 1 is rejected and claim 2 is objected to as 
being allowable except for its dependency from claim 1; 
independent claim 3 is allowed. The examiner should can-
cel claims 1 and 2 and issue the application with claim 3 
only.

However, if formal matters remain to be attended to, the 
examiner should take appropriate action on such matters, 
setting a shortened period for reply, but the application is to 
be considered closed to further prosecution except as to 
such matters.  Form paragraph 12.09.01 may be used for 
this purpose. See  MPEP ? 1206.

An appeal will also be dismissed if an applicant fails 
to timely and fully reply to a notice of noncompliance with 
37 CFR 1.192(c). See MPEP ? 1206 and 37 CFR 1.192(d).  
As in examples (B)-(C) above, if no allowed claims remain 
in the application, the application is abandoned as of the 
date the reply to the notice was due.  The applicant may 
petition to revive the application as in other cases of aban-
donment, and to reinstate the appeal.  If the appeal is dis-
missed, but allowed claims remain in the application, as in 
examples (A) and (D) above, the application is not aban-
doned; to reinstate the claims cancelled by the examiner 
because of the dismissal, the applicant must petition to rein-
state the claims and the appeal, but a showing equivalent to 
a petition to revive under  37 CFR 1.137 is required.  In 
either event, a proper reply to the notice of noncompliance 
must be filed before the petition will be considered on its 
merits.

1216	Judicial Review   [R-1]

35 U.S.C. 141.  Appeal to Court of Appeals for the Federal 
Circuit.

** >An applicant dissatisfied with the decision in an appeal to the 
Board of Patent Appeals and Interferences under section 134 of this title 
may appeal the decision to the United States Court of Appeals for the Fed-
eral Circuit. By filing such an appeal the applicant waives his or her right 
to proceed under section 145 of this title. A patent owner in any reexami-
nation proceeding dissatisfied with the final decision in an appeal to the 
Board of Patent Appeals and Interferences under section 134 may appeal 
the decision only to the United States Court of Appeals for the Federal 
Circuit. A party to an interference dissatisfied with the decision of the 
Board of Patent Appeals and Interferences on the interference may appeal 
the decision to the United States Court of Appeals for the Federal Circuit, 
but such appeal shall be dismissed if any adverse party to such interfer-
ence, within twenty days after the appellant has filed notice of appeal in 
accordance with section 142 of this title, files notice with the Commis-
sioner that the party elects to have all further proceedings conducted as 
provided in section 146 of this title. If the appellant does not, within thirty 
days after filing of such notice by the adverse party, file a civil action 
under section 146, the decision appealed from shall govern the further pro-
ceedings in the case.<

35 U.S.C. 145.  Civil action to obtain patent.

An applicant dissatisfied with the decision of the Board of Patent 
Appeals and Interferences in an appeal under section *>134(a)< of this 
title, may, unless appeal has been taken to the United States Court of 
Appeals for the Federal Circuit, have remedy by civil action against the 
Commissioner in the United States District Court for the District of 
Columbia if commenced within such time after such decision, not less 
than sixty days, as the Commissioner appoints. The court may adjudge 
that such applicant is entitled to receive a patent for his invention, as spec-
ified in any of his claims involved in the decision of the Board of Patent 
Appeals and Interferences, as the facts in the case may appear and such 
adjudication shall authorize the Commissioner to issue such patent on 
compliance with the requirements of law. All the expenses of the proceed-
ings shall be paid by the applicant.

35 U.S.C. 146.  Civil action in case of interference.

Any party to an interference dissatisfied with the decision of the Board 
of Patent Appeals and Interferences, may have remedy by civil action, if 
commenced within such time after such decision, not less than sixty days, 
as the Commissioner appoints or as provided in section 141 of this title, 
unless he has appealed to the United States Court of Appeals for the Fed-
eral Circuit, and such appeal is pending or has been decided. In such suits 
the record in the Patent  and Trademark Office shall be admitted on motion 
of either party upon the terms and conditions as to costs, expenses, and the 
further cross-examination of the witnesses as the court imposes, without 
prejudice to the right of the parties to take further testimony. The testi-
mony and exhibits of the record in the Patent and Trademark Office when 
admitted shall have the same effect as if originally taken and produced in 
the suit.

Such suit may be instituted against the party in interest as shown by the 
records of the Patent and Trademark Office at the time of the decision 
complained of, but any party in interest may become a party to the action. 
If there be adverse parties residing in a plurality of districts not embraced 
within the same state, or an adverse party residing in a foreign country, the 
United States District Court for the District of Columbia shall have juris-
diction and may issue summons against the adverse parties directed to the 
marshal of any district in which any adverse party resides. Summons 
against adverse parties residing in foreign countries may be served by pub-
lication or otherwise as the court directs. The Commissioner shall not be a 
necessary party but he shall be notified of the filing of the suit by the clerk 
of the court in which it is filed and shall have the right to intervene. Judg-
ment of the court in favor of the right of an applicant to a patent shall 
authorize the Commissioner to issue such patent on the filing in the Patent 
and Trademark Office of a certified copy of the judgment and on compli-
ance with the requirements of law.

35 U.S.C. 306.  Appeal.

The patent owner involved in a reexamination proceeding under this 
chapter may appeal under the provisions of section 134 of this title, and 
may seek court review under the provisions of sections 141 to 145 of this 
title, with respect to any decision adverse to the patentability of any origi-
nal or proposed amended or new claim of the patent.

37 CFR 1.301.  Appeal to U.S. Court of Appeals for the Federal 
Circuit.

Any applicant or any owner of a patent involved in a reexamination 
proceeding dissatisfied with the decision of the Board of Patent Appeals 
and Interferences, and any party to an interference dissatisfied with the 
decision of the Board of Patent Appeals and Interferences, may appeal to 
the U.S. Court of Appeals for the Federal Circuit. The appellant must take 
the following steps in such an appeal: (a) In the Patent and Trademark 
Office file a written notice of appeal directed to the Commissioner (see ?? 
1.302 and 1.304); and (b) in the Court, file a copy of the notice of appeal 
and pay the fee for appeal, as provided by the rules of the Court.

37 CFR 1.303.  Civil action under 35 U.S.C. 145, 146, 306.

(a)	Any applicant or any owner of a patent involved in a reexamina-
tion proceeding dissatisfied with the decision of  the Board of Patent 
Appeals and Interferences, and any party dissatisfied with the decision of 
the Board of Patent Appeals and Interferences, may, instead of appealing 
to the U.S. Court of Appeals for the Federal Circuit (? 1.301), have rem-
edy by civil action under  35 U.S.C. 145 or 146, as appropriate. Such civil 
action must be commenced within the time specified in ? 1.304.

(b)	If an applicant in an ex parte case or an owner of a patent 
involved in a reexamination proceeding has taken an appeal to the U.S. 
Court of Appeals for the Federal Circuit, he or she thereby waives his or 
her right to proceed under  35 U.S.C. 145.

(c)	If any adverse party to an appeal taken to the U.S. Court of 
Appeals for the Federal Circuit by a defeated party in an interference pro-
ceeding files notice with the Commissioner within twenty days after the 
filing of the defeated party's notice of appeal to the court (? 1.302), that he 
or she elects to have all further proceedings conducted as provided in  35 
U.S.C. 146, the notice of election must be served as provided in ? 1.646.

37 CFR 1.304.  Time for appeal or civil action.

(a)(1)	The time for filing the notice of appeal to the U.S. Court of 
Appeals for the Federal Circuit (? 1.302) or for commencing a civil action 
(? 1.303) is two months from the date of the decision of the Board of 
Patent Appeals and Interferences. If a request for rehearing or reconsidera-
tion of the decision is filed within the time period provided under 
? 1.197(b) or ? 1.658(b), the time for filing an appeal or commencing a 
civil action shall expire two months after action on the request. In interfer-
ences, the time for filing a cross-appeal or cross-action expires:

(i)	14 days after service of the notice of appeal or the summons 
and complaint; or

(ii)	Two months after the date of decision of the Board of Patent 
Appeals and Interferences, whichever is later.

(2)	The time periods set forth in this section are not subject to 
the provisions of ? 1.136, ? 1.550(c) or ? 1.645 (a) or (b).

(3)	The Commissioner may extend the time for filing an appeal 
or commencing a civil action:

(i)	For good cause shown if requested in writing before the 
expiration of the period for filing an appeal or commencing a civil action, 
or

(ii)	Upon written request after the expiration of the period 
for filing an appeal or commencing a civil action upon a showing that the 
failure to act was the result of excusable neglect. 

(b)	The times specified in this section in days are calendar days. 
The time specified herein in months are calendar months except that one 
day shall be added to any two-month period which includes February 28. 
If the last day of the time specified for appeal or commencing a civil 
action falls on a Saturday, Sunday, or Federal holiday in the District of 
Columbia, the time is extended to the next day which is neither a Saturday, 
Sunday, nor a Federal holiday.

(c)	If a defeated party to an interference has taken an appeal to the 
U.S. Court of Appeals for the Federal Circuit and an adverse party has 
filed notice under  35 U.S.C. 141 electing to have all further proceedings 
conducted under  35 U.S.C. 146 (? 1.303(c)), the time for filing a civil 
action thereafter is specified in  35 U.S.C. 141. The time for filing a cross-
action expires 14 days after service of the summons and complaint. 

EX PARTE AND REEXAMINATION PROCEEDINGS

The applicant in an ex parte proceeding or the owner of a 
patent involved in a reexamination proceeding who is dis-
satisfied with a decision of the Board may seek judicial 
review either by an appeal to the U.S. Court of Appeals for 
the Federal Circuit (35 U.S.C. 141 and 306;  37 CFR 1.301) 
or by a civil action in the U.S. District Court for the District 
of Columbia (35 U.S.C. 145 and 306;  37 CFR 1.303(a)). 
By filing an appeal to the Federal Circuit, the applicant in 
an ex parte case or the owner of a patent involved in a reex-
amination proceeding waives the right to seek judicial 
review by a civil action under 35 U.S.C.145,  37 CFR 
1.303(b).

INTERFERENCE PROCEEDINGS

Any party to an interference who is dissatisfied with a 
decision of the Board may seek judicial review either by an 
appeal to the Federal Circuit (35 U.S.C. 141; 37 CFR 
1.301) or, if no  35 U.S.C. 141 appeal is pending or has 
been decided, by a civil action in an appropriate district 
court (35 U.S.C. 146;  37 CFR 1.303(a)). Furthermore, a  
35 U.S.C. 141 appeal to the Federal Circuit by a dissatis-
fied party in an interference will be dismissed if any 
adverse party in the interference, within 20 days after the 
appellant has filed a notice of appeal according to 
35 U.S.C. 142, files notice with the Commissioner that 
such adverse party elects to have all further proceedings 
conducted in accordance with 35 U.S.C.146. 35 U.S.C. 
141; 37 CFR 1.303(c). If, within 30 days after filing of such 
notice of election by an adverse party, the appellant does 
not file a civil action under 35 U.S.C.146, the decision 
appealed from shall govern the further proceedings in the 
case. 35 U.S.C. 141. Copies of such notice of election, 
which must be served as provided in  37 CFR 1.646, will be 
transmitted by the Solicitor to the Federal Circuit for such 
action as may be necessary (37 CFR 1.303(c)).

TIME FOR FILING NOTICE OF APPEAL  OR 
COMMENCING CIVIL ACTION

The time for filing a notice of a  35 U.S.C. 141 appeal to 
the Federal Circuit or for commencing a civil action under 
35 U.S.C. 145 or 146 is within 2 months of the Board's 
decision. 37 CFR 1.304(a). However, if a request for 
rehearing or reconsideration of the Board's decision is filed 
within the time provided under  37 CFR 1.197(b) (ex parte 
appeals) or  37 CFR 1.658(b) (inter partes appeals), the 
time for filing a notice of appeal to the Federal Circuit or 
for commencing a civil action expires 2 months after a 
decision on a request for rehearing or reconsideration 
(37 CFR 1.304(a)).

These 2-month periods meet the 60-day requirement of  
35 U.S.C. 142, 145, and 146 except for time periods which 
include February 28. In order to comply with the  60-day 
requirement,  37 CFR 1.304(b) provides that an additional 
day shall be added to any 2-month period for initiating 
review which includes February 28. Appeals will always be 
timely if the judicial review is initiated within 2 months of 
the final decision.

The times specified in  37 CFR 1.304 are calendar days. 
If the last day of the time specified for appeal or commenc-
ing a civil action falls on a Saturday, Sunday, or a Federal 
holiday in the District of Columbia, the time is extended to 
the next day which is neither a Saturday, Sunday, nor a Fed-
eral holiday (37 CFR 1.304(b)).

TIME FOR FILING CROSS-APPEAL  OR CROSS-
ACTION

37 CFR 1.304(a) specifies that the time for filing a cross-
appeal or a cross-action expires (A) 14 days after service of 
the notice of appeal or the summons and complaint or (B) 
2 months after the decision to be reviewed, whichever is 
later.

37 CFR 1.304(a) provides that the time for filing a cross-
action expires 14 days after service of the summons and 
complaint. The district court will determine whether any 
cross-action was timely filed since neither the complaint 
nor cross-action is filed in the Patent and Trademark Office.

EXTENSION OF TIME TO SEEK JUDICIAL 
REVIEW

In  37 CFR 1.304(a), the Office has adopted a standard 
which is similar to the standard used in the Federal courts 
for granting extensions. Under the rule, the Commissioner 
may extend the time (A) for good cause if requested before 
the expiration of the time provided for initiating judicial 
review or (B) upon a showing of excusable neglect in fail-
ing to initiate judicial review if requested after the expira-
tion of the time period. This standard is applicable once the 
"last" decision has been entered, i.e., either the decision (in 
circumstances where no timely rehearing or reconsidera-
tion is sought), the decision on rehearing of the Board in an 
ex parte appeal, or the decision on reconsideration of the 
Board in an interference. Extensions of time under  37 CFR 
1.136(b) and 1.550(c) and fee extensions under  37 CFR 
1.136(a) are not available to extend the time for the purpose 
of judicial review once a decision or a decision on rehear-
ing or reconsideration has been entered.  37 CFR 1.304(a) 
states that the provisions of  37 CFR 1.136 and 1.550(c) are 
not available to extend the time to initiate judicial review.

Requests for extension of time to seek judicial review 
under  37 CFR 1.304 should be addressed as follows:

Box 8 

Commissioner of Patents and Trademarks

Washington, D.C. 20231

Attention: Office of The Solicitor

Requests may also be hand-carried to the Office of the 
Solicitor.

APPLICATION UNDER JUDICIAL REVIEW

The administrative file of an application under judicial 
review, even though carried to a court, will not be opened 
to the public by the Patent and Trademark Office, unless it 
is otherwise available to the public under  37 CFR 1.11.

During judicial review, the involved application or reex-
amination is not under the jurisdiction of the examiner or 
the Board, unless remanded to the Patent and Trademark 
Office by the court.  Any amendment, such as one copying 
claims from a patent for interference purposes, can be 
admitted only under the provisions of  37 CFR 1.198. See  
MPEP ? 1214.07.

SERVICE OF COURT PAPERS  ON THE 
COMMISSIONER

Rule 5(b) of the Federal Rules of Civil Procedure pro-
vides in pertinent part:

Whenever under these rules service is required or permitted to 
be made upon a party represented by an attorney the service shall 
be made upon the attorney unless service upon the party himself 
is ordered by the court. Service upon the attorney . . . shall be 
made by delivering a copy to him or by mailing it to him at his 
last known address . . . .

Similarly, Rule 25(b) of the Federal Rules of Appellate 
Procedure provides that "[s]ervice on a party represented 
by counsel shall be made on counsel." 

Accordingly, all service copies of papers filed in court 
proceedings in which the Commissioner of Patents and 
Trademarks is a party must be served on the Solicitor of the 
Patent and Trademark Office. Service on the Solicitor may 
be effected in either of the following ways: 

(A)	By hand between 8:30 A.M. and 5:00 P.M. EST at 
the Office of the Solicitor 

(B)	By mail in an envelope addressed as follows:

Office of the Solicitor

P.O. Box 15667

Arlington, VA 22215

While the above mail service address may be supple-
mented to include the name of the particular attorney 
assigned to the court case, it must not be supplemented to 
refer to either the Commissioner of Patents and Trademarks 
or the U.S. Patent and Trademark Office.

Any court papers mailed to an address other than the 
above mail service address or delivered by hand to the 
Patent and Trademark Office are deemed to have been 
served on the Commissioner when actually received in the 
Office of the Solicitor.

The above mail service address should not be used for 
filing a notice of appeal to the Federal Circuit. See  MPEP 
? 1216.01. Nor should the above mail service address be 
used for noncourt papers, i.e., papers which are intended to 
be filed in the Patent and Trademark Office in connection 
with an application or other proceeding pending in the 
Patent and Trademark Office. ANY NONCOURT PAPERS 
WHICH ARE MAILED TO THE ABOVE MAIL SER-
VICE ADDRESS WILL BE RETURNED TO THE 
SENDER. NO EXCEPTIONS WILL BE MADE TO THIS 
POLICY.

1216.01	Appeals to the Federal Circuit     
[R-1]

35 U.S.C. 142.  Notice of appeal.

When an appeal is taken to the United States Court of Appeals for the 
Federal Circuit, the appellant shall file in the Patent and Trademark Office 
a written notice of appeal directed to the Commissioner,  within such time 
after the date of the decision from which the appeal is taken as the Com-
missioner prescribes, but in no case less than sixty days, after that date.

35 U.S.C. 143.  Proceedings on appeal.

With respect to an appeal described in section 142 of this title, the 
Commissioner shall transmit to the United States Court of Appeals for the 
Federal Circuit a certified list of documents comprising the record in the 
Patent and Trademark Office. The court may request that the Commis-
sioner forward the original or certified copies of such documents during 
pendency of the appeal. In ** >any reexamination< case, the * >Director< 
shall submit to the court in writing the grounds for the decision of the 
Patent and Trademark Office, addressing all the issues involved in the 
appeal. The court shall, before hearing an appeal, give notice of the time 
and place of the hearing to the Commissioner and the parties in the appeal.

35 U.S.C. 144.  Decision on appeal.

The United States Court of Appeals for the Federal Circuit shall review 
the decision from which an appeal is taken on the record before the Patent 
and Trademark Office. Upon its determination the court shall issue its 
mandate and opinion, which shall be entered of record in the Patent and 
Trademark  Office and shall govern the further proceedings in the case.

37 CFR 1.302.  Notice of appeal.

(a)	When an appeal is taken to the U.S. Court of Appeals for the 
Federal Circuit, the appellant shall give notice thereof to the Commis-
sioner within the time specified in ? 1.304.

(b)	In interferences, the notice must be served as provided in 
? 1.646.

(c)	A notice of appeal, if mailed to the Office, shall be addressed as 
follows: Box 8, Commissioner of Patents and Trademarks, Washington, 
DC 20231.

Filing an appeal to the Federal Circuit requires that the 
applicant, the owner of a patent involved in a reexamina-
tion proceeding, or a party to an interference proceeding: 
(A) file in the Patent and Trademark Office a written notice 
of appeal (35 U.S.C. 142) directed to the Commissioner 
and (B) file with the Clerk of the Federal Circuit a copy of 
the notice of appeal and pay the docket fee for the appeal, 
as provided by Federal Circuit Rule 52.  37 CFR 1.301.

For a notice of appeal to be considered timely filed in the 
Patent and Trademark Office, it must: (A) actually reach 
the Patent and Trademark Office within the time specified 
in  37 CFR 1.304 (including any extensions) or (B) be 
mailed within the time specified in  37 CFR 1.304 (includ-
ing any extensions) by "Express Mail" in accordance with  
37 CFR 1.10.

A Notice of Appeal to the Federal Circuit should not be 
mailed to the Commissioner, the Board or the examiner. 
Nor should it be mailed to the Solicitor's mail service 
address for court papers given in  MPEP ? 1216.  Instead, it 
should be filed in the Patent and Trademark Office in any 
one of the following ways:

(A)	By mail addressed as follows, in which case the  
notice of appeal must actually reach the Patent and Trade-
mark Office by the due date:

Commissioner of Patents and Trademarks

Box 8 

Washington, D.C. 20231

Attention: Office of the Solicitor

(B)	By "Express Mail"  (U.S. Postal Service only) 
under  37 CFR 1.10 addressed as follows, in which case the 
notice of  appeal is deemed filed on the "date-in" on the 
"Express Mail" mailing label:

Commissioner of Patents and Trademarks

Box 8

Washington, D.C. 20231

Attention: Office of the Solicitor

(C)	By hand to the Office of the Solicitor.

A copy of the notice of appeal and the docket fee should 
be filed with the Clerk of the Federal Circuit, whose mail-
ing and actual address is:

U.S. Court of Appeals for the Federal Circuit

717 Madison Place, N.W.

Washington, D.C.  20439

The Solicitor, prior to a decision by the Federal Circuit, 
may request that the case be remanded to the Patent and 
Trademark Office and prosecution reopened.  See  MPEP 
? 1214.07.

OFFICE PROCEDURE FOLLOWING DECISION BY 
THE FEDERAL CIRCUIT

After the Federal Circuit has heard and decided the 
appeal, an uncertified copy of the decision is sent to the 
Patent and Trademark Office and to the appellant and 
appellee (if any).

In due course, the Clerk of the Federal Circuit forwards 
to the Patent and Trademark Office a certified copy of the 
court's decision. This certified copy is known as the "man-
date." The mandate is entered in the file of the application, 
reexamination or interference which was the subject of the 
appeal. The date of receipt of the mandate by the Patent and 
Trademark Office marks the conclusion of the appeal, i.e., 
the  termination of proceedings as that term is used in  
35 U.S.C. 120. See 37 CFR 1.197(c), or "termination of the 
interference" as that term is used in  35 U.S.C. 135(c).

The Federal Circuit's opinion may or may not be prece-
dential. Whether or not the opinion is precedential, the 
Patent and Trademark Office will not give the public access 
to the administrative record of an involved application, or 
to the file of an interference, unless it is otherwise available 
to the public under  37 CFR 1.11.  However, since the court 
record in a  35 U.S.C. 141 appeal generally includes a copy 
of at least part of the application, such may be inspected at 
the Federal Circuit. In re Mosher, 248 F.2d 956, 115 USPQ 
140 (CCPA 1957).

In an ex parte appeal, after the mandate is entered in the 
application or reexamination file, the file is then returned to 
the appropriate Patent and Trademark Office official for 
further proceedings consistent with the mandate. See  
MPEP ? 1214.06 for handling of claims dependent on 
rejected claims. 

A.	All Claims Rejected

If all claims in the case stand rejected, proceedings in the 
case are considered terminated on the date of receipt of the 
Federal Circuit's mandate.  Because the case is no longer 
considered pending, it is ordinarily not open to subsequent 
amendment and prosecution by the applicant. Continental 
Can Company v. Schuyler, 326 F. Supp. 283, 168 USPQ 
625 (D.D.C. 1970). However, exceptions may occur where 
the mandate clearly indicates that further action in the 
Patent and Trademark Office is to be taken in accordance 
with the Federal Circuit's opinion.

B.	Some Claims Allowed

Where the case includes one or more allowed claims, 
including claims allowed by the examiner prior to appeal 
and claims whose rejections were reversed by either the 
Board or the court, the proceedings are considered termi-
nated only as to any claims which still stand rejected. It is 
not necessary for the applicant or patent owner to cancel 
the rejected claims, since they may be canceled by the 
examiner in an examiner's amendment or by an appropriate 
notation in the margin of the claims, to avoid confusion to 
the printer.  Thus, if no formal matters remain to be 
attended to, the examiner will pass the application to issue 
forthwith on the allowed claims or, in the case of a reexam-
ination, will issue a "Notice of Intent to Issue a Reexamina-
tion Certificate and/or Examiner's Amendment." See  
MPEP ? 2287. The examiner should set forth the reasons 
for allowance, referring to and incorporating a copy of 
the appellate brief and the court  decision.  See  MPEP 
? 1302.14. 

If formal matters remain to be attended to, the examiner 
promptly should take appropriate action on such matters, 
such as by an examiner's amendment or by an Office action 
setting a 1-month (but not less than 30-day) shortened stat-
utory period for reply. However, the application or reexam-
ination proceeding is considered closed to further 
prosecution except as to such matters.

C.	Remand 

Where the decision of the court brings up for action on 
the merits claims which were not previously considered on 
the merits, such as a decision reversing a rejection of 
generic claims in an application containing claims to non-
elected species, the examiner will take the case up for 
appropriate action on the matters thus brought up, but the 
case is not considered open to further prosecution except as 
to such matters.

D.	Reopening of Prosecution

In rare situations it may be necessary to reopen prosecu-
tion of an application after a decision by the Federal Cir-
cuit.  Any Office action proposing to reopen prosecution 
after a decision by the Federal Circuit must be forwarded to 
the Office of the Assistant Commissioner for Patents for 
written approval, which will be indicated on the Office 
action.

DISMISSAL OF APPEAL

After an appeal is docketed in the Federal Circuit, failure 
to prosecute the appeal, such as by appellant's failure to file 
a brief, may result in dismissal of the appeal by the court. 
Under particular circumstances, the appeal also may be dis-
missed by the court on motion of the appellant and/or the 
Commissioner.

The court proceedings are considered terminated as of 
the date of dismissal. After dismissal, the action taken by 
the examiner will be the same as set forth above under the 
heading "Office Procedure Following Decision by the Fed-
eral Circuit."

In the event of a dismissal for a reason other than failure 
to prosecute the appeal, the status of the application, reex-
amination proceeding or interference must be determined 
according to the circumstances leading to the dismissal.

1216.02	Civil Suits Under 35 U.S.C. 145  

A  35 U.S.C. 145 civil action is commenced by filing a 
complaint in the U.S. District Court for the District of 
Columbia within the time specified in  37 CFR 1.304 (see  
MPEP ? 1216). Furthermore, copies of the complaint and 
summons must be served in a timely manner on the Solici-
tor, the U.S. Attorney for the District of Columbia, and 
the Attorney General in the manner set forth in Rules 
4(d)(4) and 4(d)(5) of the Federal Rules of Civil 
Procedure Regarding timely service, see Walsdorf v. 
Comm'r, 229 USPQ 559 (D.D.C. 1986) and Hodge v. Rost-
ker, 501 F. Supp. 332 (D.D.C. 1980). When a  35 U.S.C. 
145 civil action is filed, a notice thereof is placed in the 
application or reexamination file, which ordinarily will be 
kept in the Solicitor's Office pending termination of the 
civil action.

In an action under 35 U.S.C. 145, the plaintiff may intro-
duce evidence not previously presented to the Patent and 
Trademark Office. However, plaintiff will be precluded 
from presenting new issues, at least in the absence of some 
reason of justice put forward for failure to present the issue 
to the Patent and Trademark Office. DeSeversky v. Brenner, 
424 F.2d 857, 858, 164 USPQ 495, 496 (D.C. Cir. 1970); 
MacKay v. Quigg, 641 F. Supp. 567, 570, 231 USPQ 907, 
908 (D.D.C. 1986). Furthermore, new evidence is not 
admissible in district court where it was available to the 
parties but was withheld from the Patent and Trademark 
Office as a result of fraud, bad faith, or gross negligence.   
DeSeversky, 424 F.2d at 858 n.5, 164 USPQ at 496 n.5; 
California Research Corp. v. Ladd, 356 F.2d 813, 821 n.18, 
148 USPQ 404, 473 n.18 (D.C. Cir. 1966); MacKay, 641 F. 
Supp. at 570, 231 USPQ at 908; Monsanto Company v. 
Kamp, 269 F. Supp. 818, 822, 154 USPQ 259, 260 (D.D.C. 
1967); Killian v. Watson, 121 USPQ 507, 507 (D.D.C. 
1958).

Upon termination of the civil action, a statement of the 
court's final disposition of the case is placed in the applica-
tion or reexamination file, which is then returned to the 
examiner for action in accordance with the same proce-
dures as follow termination of a  35 U.S.C. 141 appeal. See  
MPEP ? 1216.01. 37 CFR 1.197(c) provides that a civil 
action is terminated when the time to appeal the judgment 
expires. Where the exact date when the civil action was ter-
minated is material, the date may be ascertained from the 
Solicitor's Office.

The procedures to be followed in the Patent and Trade-
mark Office after a decision, remand, or dismissal of the 
case by the district court are the same as the procedures fol-
lowed with respect to  35 U.S.C. 141 appeals.  See  MPEP 
? 1216.01.

Where a civil action involving an application has been 
dismissed before coming to trial, the application will not be 
opened to the public unless it is otherwise available to the 
public under 37 CFR 1.11. However, the complaint and any 
other court papers not under a protective order are open to 
the public and may be inspected at the Office of the Clerk 
for the U.S. District Court for the District of Columbia, 
located in the U.S. Courthouse, Constitution and John Mar-
shall Place, N.W., Washington, D.C. 20001. The court 
papers in the Office of the Solicitor are not generally made 
available for public inspection.

Any subpoena by the district court for an application or 
reexamination file should be hand-carried to the Office of 
the Solicitor.

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