69828 Federal Register / Vol. 75, No. 219 / Monday, November 15, 2010 / Proposed Rules 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Parts 1 and 41 

[No. PTO–P–2009–0021] 

RIN 0651–AC37 

Rules of Practice Before the Board of 

Patent Appeals and Interferences in Ex 

Parte Appeals 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice of proposed rulemaking; 

request for comments. 

SUMMARY: The United States Patent and 

Trademark Office (USPTO or Office) 

proposes changes to rules governing 

practice before the Board of Patent 

Appeals and Interferences (Board or 

BPAI) in ex parte patent appeals. After 

considering public comments raised in 

response to an Advanced Notice of 

Proposed Rulemaking, which proposed 

potential modifications to the stayed 

final rule, the Office is proposing to 

rescind the stayed final rule and is 

issuing this notice seeking public 

comment on proposed new revisions to 

the current rule. The goal of this 

proposed rulemaking is to simplify the 

appellate process in a manner that 

effects an overall lessening of the 

burden on appellants and examiners to 

present an appeal to the Board. 

DATES: The deadline for receipt of 

written comments on the proposed 

rulemaking is 5 p.m. Eastern Standard 

Time on January 14, 2011. 

ADDRESSES: Written comments on the 

proposed rulemaking should be sent by 

electronic mail message over the 

Internet addressed to 

BPAI.Rules@uspto.gov. Comments on 

the proposed rulemaking may also be 

submitted by mail addressed to: Mail 

Stop Interference, Director of the United 

States Patent and Trademark Office, 

P.O. Box 1450, Alexandria, VA 22313– 

1450, marked to the attention of ‘‘Linda 

Horner, BPAI Rules.’’ Although 

comments may be submitted by mail, 

the USPTO prefers to receive comments 

via the Internet. 

FOR FURTHER INFORMATION CONTACT: 

Linda Horner, Administrative Patent 

Judge, Board of Patent Appeals and 

Interferences, by telephone at (571) 272– 

9797, or by mail addressed to: Mail Stop 

Interference, Director of the United 

States Patent and Trademark Office, 

P.O. Box 1450, Alexandria, VA 22313– 

1450, marked to the attention of Linda 

Horner. 

SUPPLEMENTARY INFORMATION: 

Background 

On July 30, 2007, the Office published 

a notice of proposed rulemaking 

governing practice before the Board in 

ex parte patent appeals (72 FR 41,472 

(Jul. 30, 2007)). The notice was also 

published in the Official Gazette. 1321 

Off. Gaz. Pat. Office 95 (Aug. 21, 2007). 

The public was invited to submit 

written comments. Comments were to 

be received on or before September 28, 

2007. 

On June 10, 2008, a final rulemaking 

was then published in the Federal 

Register (73 FR 32,938 (Jun. 10, 2008)). 

This final rule stated that the effective 

and applicability dates were December 

10, 2008. On June 9, 2008, the Office 

published a 60-day Federal Register 

notice (73 FR 32,559 (Jun. 9, 2008)) 

requesting the Office of Management 

and Budget (OMB) establish a new 

information collection for BPAI items in 

the final rule and requesting public 

comment on the burden impact of the 

final rule under the provisions of the 

Paperwork Reduction Act (PRA). On 

October 8, 2008, the Office published a 

30-day Federal Register notice (73 FR 

58,943 (Oct. 8, 2008)) stating that the 

proposal for the collection of 

information under the final rule was 

being submitted to OMB and requesting 

that comments on the proposed 

information collection be submitted to 

OMB. Because the information 

collection process had not been 

completed by the original effective and 

applicability date of the final rule, the 

Office published a Federal Register 

notice (73 FR 74972 (Dec. 10, 2008)) 

notifying the public that the effective 

and applicability dates of the final rule 

was not December 10, 2008, and that the 

effective and applicability dates would 

be delayed until a subsequent notice. 

On January 20, 2009, the Assistant to 

the President and Chief of Staff 

instructed agencies via a memorandum 

entitled, ‘‘Regulatory Review,’’ (74 FR 

4435 (Jan. 20, 2009)) to consider seeking 

comments for an additional 30 days on 

rules that were published in the Federal 

Register and had not yet become 

effective by January 20, 2009. On 

January 21, 2009, the Office of 

Management and Budget issued a 

memorandum entitled, ‘‘Implementation 

of Memorandum Concerning Regulatory 

Review,’’ (available at http://www.

whitehouse.gov/sites/default/files/omb/

assets/agencyinformation_memoranda_

2009_pdf/m09-08.pdf) which provided 

agencies further guidance on such rules 

that had not yet taken effect. For such 

rules, both memoranda stated that 

agencies should consider reopening the 

rulemaking process to review any 

significant concerns involving law or 

policy that have been raised. 

On December 22, 2009, the Office 

published an Advance Notice of 

Proposed Rulemaking (ANPRM) 

proposing further modifications to the 

stayed final rule and seeking public 

comment via a public roundtable and 

written comment (74 FR 67,987 (Dec. 

22, 2009)). 

Request for Comments 

In light of the comments received to 

these notices, the Office is now 

proposing to rescind the stayed final 

rule and is proposing new changes to 

the current rules of practice before the 

Board in ex parte appeals, and is 

publishing this Notice of Proposed 

Rulemaking (NPRM) to solicit input 

from interested members of the public 

on the proposed new changes to the 

current rule. 

Purposes for Proposed Changes to the 

Current Rule 

The USPTO proposes to amend the 

rules of practice in ex parte patent 

appeals to avoid undue burden on 

appellants or examiners to provide 

information from the record to the 

Board, to eliminate any gap in time from 

the end of briefing to the 

commencement of the Board’s 

jurisdiction, to clarify and simplify 

petitions practice in appeals, and to 

reduce confusion as to which claims are 

on appeal. For example, the Office 

proposes to amend the rules to: (1) 

Remove several of the current briefing 

requirements for an appeal brief, (2) 

provide for the Board to take 

jurisdiction over the appeal earlier in 

the appeal process, (3) eliminate the 

Board’s authority, absent the Director’s 

approval, to remand an application to 

the examiner, (4) no longer require 

examiners to acknowledge receipt of 

reply briefs, (5) create specified 

procedures under which an appellant 

can seek review of an undesignated new 

ground of rejection in either an 

examiner’s answer or in a Board 

decision, (6) provide that the Board will 

presume that the appeal is taken from 

the rejection of all claims under 

rejection unless cancelled by an 

applicant’s amendment, and (7) clarify 

that, for purposes of the examiner’s 

answer, any rejection that relies upon 

new evidence shall be designated as a 

new ground of rejection. 

For clarity, this notice refers in places 

to the ‘‘current’’ Board rules. The current 

rules in effect are the current Board 

rules as published in 37 CFR 41.1 

through 41.81 (2010). 

One purpose of this proposed 

rulemaking is to ensure that the Board 


hsrobinson on DSK69SOYB1PROD with PROPOSALS2
Federal Register / Vol. 75, No. 219 / Monday, November 15, 2010 / Proposed Rules 69829 

has adequate information to decide ex 

parte appeals on the merits, while not 

unduly burdening appellants or 

examiners with unnecessary briefing 

requirements. In particular, the goal of 

this proposed rulemaking is to effect an 

overall lessening of the burden on 

appellants and examiners to present an 

appeal to the Board. For example, 

statements of the status of claims, the 

status of amendments, the grounds of 

rejection to be reviewed on appeal, and 

the claims appendix would no longer be 

required in the appeal brief (Proposed 

Bd.R. 41.37) or in the examiner’s 

answer. Because this information is 

already available in the Image File 

Wrapper, it is unnecessary for 

appellants or examiners to provide this 

information to the Board. Moreover, by 

eliminating these briefing requirements, 

the Office expects to reduce the number 

of non-compliant appeal briefs and the 

number of examiners’ answers returned 

to the examiner due to non-compliance, 

which are a significant cause of delays 

on appeal. See USPTO, Top Eight 

Reasons Appeal Briefs are NonCompliant, http://www.uspto.gov/ip/ 

boards/bpai/procedures/ 

top_8_reasons_appeal_brf_dec09.pdf. 

Another purpose of this proposed 

rulemaking is to eliminate any gap in 

time from the end of briefing to the 

commencement of the Board’s 

jurisdiction, and to minimize the 

number of appeals that transfer backand-forth between the Board and the 

examiner. For example, under the 

proposed rules, the Board would take 

jurisdiction upon the earlier of the filing 

of a reply brief or the expiration of the 

time in which to file a reply brief 

(Proposed Bd.R. 41.35(a)). Examiners 

would no longer be required to 

acknowledge receipt of the reply brief 

(Proposed Bd.R. 41.43 [removed]). The 

proposed rules also eliminate the 

Board’s independent authority to 

remand an application to an examiner 

(Proposed Bd.R. 41.50(a)). Therefore, the 

Board would be required to decide the 

appeal on the merits, and only with the 

Director’s approval may the Board 

remand an application back to the 

examiner (Proposed Bd.R. 41.35(c)). 

The proposed rulemaking is also 

intended to clarify and simplify 

petitions practice on appeal. For 

example, except under limited 

circumstances, any information 

disclosure statement or petition filed 

while the Board possesses jurisdiction 

over the proceeding would be held in 

abeyance until the Board’s jurisdiction 

ends (Proposed Bd.R. 41.35(d)). Also, in 

response to public comments, and based 

on a comprehensive survey of case law 

from the United States Court of Appeals 

for the Federal Circuit (Federal Circuit) 

and United States Court of Customs and 

Patent Appeals (CCPA), the Office will 

provide improved guidance in the 

Manual of Patent Examination 

Procedure (MPEP), discussed infra, as to 

what constitutes a new ground of 

rejection in an examiner’s answer. The 

proposed rulemaking explicitly sets 

forth the procedure under which an 

appellant can seek review of the Office’s 

failure to designate a new ground of 

rejection in either an examiner’s answer 

(Proposed Bd.R. 41.40) or in a Board 

decision (Proposed Bd.R. 41.50(c)). 

Another purpose of this proposed 

rulemaking is to reduce confusion as to 

which claims are on appeal. For 

example, under the proposed rules, the 

Board would presume that the appeal is 

taken from the rejection of all claims 

under rejection unless cancelled by an 

applicant’s amendment (Proposed Bd.R. 

41.31(c)). This change would simplify 

practice for the majority of appellants 

who seek review of all claims under 

rejection by obviating the need to 

enumerate the rejected claims that are 

being appealed. This proposed rule 

would avoid the unintended 

cancellation of claims by the Office due 

to appellant’s mistake in the listing of 

the claims in either the notice of appeal 

or in the appeal brief. Under current 

practice, if an appellant incorrectly lists 

the claims on appeal, or is silent in the 

brief as to some of the claims under 

rejection, then the Office assumes that 

such claims are not on appeal, and notes 

that those non-appealed claims should 

be cancelled by the examiner. Ex parte 

Ghuman, 88 USPQ2d 1478, 2008 WL 

2109842 (BPAI 2008) (precedential) 

(holding that when appellant does not 

appeal some of the claims under 

rejection and does not challenge the 

Examiner’s rejection of these claims, 

then the Board will treat these claims as 

withdrawn from the appeal, which 

operates as an authorization for the 

Examiner to cancel those claims from 

the application). The Office is proposing 

to change this practice in order to avoid 

the unintended cancellation of claims 

due to oversight or mistake by 

appellants in listing the claims on 

appeal. This proposed change would 

replace the Office’s procedure under 

Ghuman and simplify practice for 

examiners by no longer requiring 

examiners to cancel non-appealed 

claims. 

The SUPPLEMENTARY INFORMATION in 

this notice provides: (1) A brief 

explanation of the proposed changes to 

the current rule, (2) a discussion of the 

differences between the proposed rule 

and the current rule, and (3) a copy of 

the proposed amendments to the 

regulatory text. 

Brief Explanation of Proposed Changes 

to the Current Rule 

The notable changes in the proposed 

rule, as compared to the current Board 

rule, are: (1) The Board would presume 

that an appeal is taken from the 

rejection of all claims under rejection 

unless cancelled by an amendment filed 

by appellant (Proposed Bd.R. 41.31(c)); 

(2) the Board would take jurisdiction 

upon the filing of a reply brief or the 

expiration of time in which to file such 

a reply brief, whichever is earlier 

(Proposed Bd.R. 41.35(a)); (3) the 

requirements to include statements of 

the status of claims and grounds of 

rejection to be reviewed on appeal and 

the requirements to include a claims 

appendix, an evidence appendix and a 

related proceedings appendix would be 

eliminated from the appeal brief 

(Proposed Bd.R. 41.37(c)); (4) the Board 

may apply default assumptions if a brief 

omits a statement of the real party-ininterest or a statement of related cases 

(Proposed Bd.R. 41.37(c)(1)(i) and (ii)); 

(5) for purposes of the examiner’s 

answer, any rejection that relies upon 

new evidence shall be designated as a 

new ground of rejection (Proposed Bd.R. 

41.39(a)(2)); (6) the appellant can await 

a decision on a petition seeking review 

of an examiner’s failure to designate a 

rejection in the answer as a new ground 

of rejection prior to filing a reply brief 

(Proposed Bd.R. 41.40) and thereby 

avoid having to file a request for 

extension of time in which to file the 

reply brief; and (7) the examiner’s 

response to a reply brief would be 

eliminated (Proposed Bd.R. 41.43 

[removed]). A more detailed discussion 

of all of the proposed changes follows. 

Discussion of Proposed Changes to the 

Current Rule 

Explanation of Proposed Changes 

Existing rules in Part 1 are 

denominated as ‘‘Rule x’’ in this 

supplementary information. A reference 

to Rule 1.136(a) is a reference to 37 CFR 

1.136(a) (2010). 

Existing rules in Part 11 are 

denominated as ‘‘Rule x’’ in this 

supplementary information. A reference 

to Rule 11.18(a) is a reference to 37 CFR 

11.18(a) (2010). 

Existing rules in Part 41 are 

denominated as ‘‘Bd.R. x’’ in this 

supplementary information. A reference 

to Bd.R. 41.3 is a reference to 37 CFR 

41.3 (2010). 

Proposed rules are denominated as 

‘‘Proposed Bd.R. x’’ in this 

supplementary information. 


hsrobinson on DSK69SOYB1PROD with PROPOSALS2
69830 Federal Register / Vol. 75, No. 219 / Monday, November 15, 2010 / Proposed Rules 

The Board has jurisdiction to consider 

and decide ex parte appeals in patent 

applications (including reissue, design 

and plant patent applications) and ex 

parte reexamination proceedings. 

The proposed rules do not propose to 

change any of the rules relating to inter 

partes reexamination appeals. Nor do 

the proposed rules propose to change 

any of the rules relating to contested 

cases. 

For purposes of this notice of 

proposed rulemaking, some paragraphs 

that are proposed to be deleted are 

shown as ‘‘reserved.’’ These ‘‘reserved’’ 

paragraphs will be deleted entirely in 

the final rule, and the remaining 

paragraphs in each section will be 

renumbered, as appropriate. 

Discussion of Proposed Changes to 

Specific Rules 

Part 1 

Termination of Proceedings 

Proposed Rule 1.197 proposes to 

revise the title of this section and to 

delete paragraph (a), the provision that 

sets forth when jurisdiction passes from 

the Board to the examiner after a 

decision has been issued by the Board. 

The operative language of this 

paragraph has been incorporated into 

Proposed Bd.R. 41.54, except that 

‘‘transmittal of the file’’ has been 

omitted. Most patent application files 

are electronic files (Image File Wrapper 

files), not paper files. Accordingly, a 

paper file is no longer ‘‘transmitted’’ to 

the examiner. The changes to Proposed 

Rule 1.197 and Proposed Bd.R. 41.54 are 

intended to more accurately reflect the 

fact that files are handled electronically 

within the Office, and do not imply that 

there would be a change in the practice 

for passing jurisdiction back to the 

examiner after decision by the Board— 

the process would remain the same 

under the proposed rule. 

The ANPRM did not propose any 

changes to this section. As such, no 

comments were received in connection 

with this section. 

Part 41 

Authority 

The listing of authority for Part 41 

would be revised to add references to 35 

U.S.C. 132, 133, 306, and 315. Section 

132 provides that the Director shall 

prescribe by regulations to provide for 

the continued examination of 

applications for patent at the request of 

the applicant. Section 133 states that 

upon failure of the applicant to 

prosecute the application within six 

months after any action therein, the 

application shall be regarded as 

abandoned. Section 306 establishes the 

patent owner’s right to appeal in an ex 

parte reexamination proceeding. Section 

315 establishes the right to appeal in an 

inter partes reexamination proceeding. 

Subpart A 

Citation of Authority 

Proposed Bd.R. 41.12 proposes to 

delete from the current rule the 

requirements: (1) To cite to particular 

case law reporters, and (2) to include 

parallel citations to multiple reporter 

systems. The proposed rule indicates a 

Board preference for citations to certain 

reporters and for limited use of nonbinding authority. 

The ANPRM proposed to delete the 

requirement in Bd.R. 41.12 to use 

parallel citations. The Office received 

one comment that the changes to this 

section proposed in the ANPRM were 

unclear. Specifically, the comment 

questioned whether the proposed 

changes made certain citations 

mandatory or if the citations were a 

preference of the Board. The Office also 

received one comment stating that 

requiring reporter cites is burdensome 

on parties and does not provide any 

efficiency to the Board. This comment 

further noted that requiring the filing of 

a copy of authorities relied upon would 

be unduly burdensome. 

This section of the proposed rule has 

been revised to eliminate the previously 

proposed requirement to cite to a 

particular case law reporter and the 

previous requirement to include parallel 

citations to multiple reporter systems. 

The requirement to include pinpoint 

citations, whenever a specific holding or 

portion of an authority is invoked, is 

maintained. Because Administrative 

Patent Judges have access to both the 

West Reporter System and the United 

States Patents Quarterly, it is 

unnecessary for appellants to cite to 

both reporters. 

The proposed rule, as well as the 

current rule, states that appellants 

should provide a copy of an authority if 

the authority is not an authority of the 

Office and is not reproduced in the 

United States Reports or the West 

Reporter System. This provision is 

designed to ensure that a full record is 

before the Administrative Patent Judge 

to allow an efficient and timely decision 

to be made on the merits of the case. 

Subpart B 

Definitions 

Proposed Bd.R. 41.30 proposes to add 

a definition of ‘‘Record’’ to the current 

rule so that, when subsequent sections 

of Subpart B refer to the ‘‘Record’’, it is 

clear what constitutes the official record 

on appeal. The proposed rule would 

state that the official record contains the 

items listed in the content listing of the 

image file wrapper, excluding papers 

that were denied entry. The proposed 

definition of ‘‘Record’’ includes the 

items listed in the content listing of the 

image file wrapper because, in some 

cases, physical items that form part of 

the official file are not able to be 

scanned into the image file wrapper and 

are maintained elsewhere, such as in an 

artifact file. Some examples of such 

items include original drawings in 

design patent applications and sequence 

listings. In such cases, the image file 

wrapper will include an entry in the 

contents listing that points to this 

artifact file. 

The ANPRM proposed to amend 

Bd.R. 41.30 to add a definition of 

‘‘Record’’ to mean ‘‘the official content of 

the file of an application or 

reexamination proceeding on appeal.’’ 

The Office received only one comment 

to this proposed change in the ANPRM, 

which approved of the proposal. 

This section of the proposed rule 

includes a slightly different, but clearer, 

definition of ‘‘Record’’ than that which 

was proposed in the ANPRM. In 

particular, the definition in Proposed 

Bd.R. 41.30 explicitly excludes any 

amendment, evidence, or other 

document that was denied entry. 

Because an examiner’s refusal to enter 

an amendment, evidence, or other 

document is a petitionable matter that is 

not subject to review by the Board, the 

exclusion of such un-entered documents 

from the proposed definition of 

‘‘Record’’ reflects the fact that the 

Board’s review of patentability 

determinations is properly based on the 

record of all entered documents in the 

file. 

Appeal to the Board 

Proposed Bd.R. 41.31(a) proposes to 

revise the current rule to make clear that 

an appeal to the Board is taken by filing 

a notice of appeal. This proposed 

change is not intended to change the 

current practice of the Office. The Office 

currently requires appellants to file a 

notice of appeal in order to appeal an 

adverse decision of the examiner to the 

Board. 

The ANPRM proposed to amend 

41.31(a) to clarify that an appeal is taken 

to the Board by filing a notice of appeal. 

The Office received a comment that the 

changes proposed in the ANPRM, which 

would have deleted reference to the 

statutory conditions under which a right 

of appeal arises, lacked clarity. 

Specifically, the comment noted that it 

would promote efficiency to retain the 

specific statutory conditions for appeal 


hsrobinson on DSK69SOYB1PROD with PROPOSALS2
Federal Register / Vol. 75, No. 219 / Monday, November 15, 2010 / Proposed Rules 69831 

in the rules to provide clarity to 

appellants and practitioners who might 

read only the rules and not the 

underlying statutes. Proposed Bd.R. 

41.31 proposes to keep the language of 

sections (a)(1), (a)(2), and (a)(3) found in 

the current rule, thus retaining the 

statutory conditions under which a right 

of appeal arises. 

The Office received another comment 

that proposed eliminating the notice of 

appeal requirement altogether because it 

causes unnecessary delay in the 

appellate process. This suggestion is not 

adopted. The filing of the notice of 

appeal is an important procedural step 

of the larger prosecution process at the 

Office. For example, the filing of a 

notice of appeal triggers the appellant’s 

ability to file a pre-appeal brief 

conference request. 

The Office received a comment to the 

ANPRM requesting that the Office 

provide statistics on the Pre-Appeal 

Brief Conference program. For each full 

fiscal year (FY) since the Pre-Appeal 

Brief Conference program was launched, 

the following charts show: (1) The 

annual number of such requests, (2) the 

percent of notices of appeal that contain 

a request, (3) the outcomes of the 

conferences, and (4) a comparison of the 

outcomes of the Pre-Appeal Brief 

Conference to the Appeal Conference. 

PRE-APPEAL BRIEF CONFERENCE EFFECTS: ACTIONS IN RESPONSE TO REQUEST FOR PRE-APPEAL BRIEF REVIEW

FY Number of 

requests 

Frequency of 

requests 

(percent) 

Proceed to 

board 

(percent) 

Prosecution 

reopened 

(percent) 

All rejections 

withdrawn 

(percent) 

Defective 

request 

(percent) 

06 ............................................................. 6,525 24 55 37 5 3 

07 ............................................................. 7,240 25 56 38 4 2 

08 ............................................................. 8,255 27 59 37 2 2 

09 ............................................................. 9,967 30 56 39 3 2 

10 ............................................................. 12,019 34 56 38 5 1 

APPEAL CONFERENCE EFFECTS: ACTIONS IN RESPONSE TO APPEAL BRIEF

FY 

Examiner’s 

answer 

(percent) 

Prosecution 

reopened 

(percent) 

All rejections 

withdrawn 

(percent) 

Other action 

(percent) 

98 ..................................................................................................... 58 12 29 1 

99 ..................................................................................................... 52 15 32 1 

00 ..................................................................................................... 46 21 32 1 

01 ..................................................................................................... 40 25 34 1 

02 ..................................................................................................... 38 26 34 1 

03 ..................................................................................................... 38 29 31 1 

04 ..................................................................................................... 39 32 27 2 

05 ..................................................................................................... 39 35 24 2 

06 ..................................................................................................... 49 30 19 2 

07 ..................................................................................................... 56 28 14 2 

08 ..................................................................................................... 59 28 12 1 

09 ..................................................................................................... 56 27 16 1 

10 ..................................................................................................... 59 23 17 1 

Proposed Bd.R. 41.31(b) proposes to 

revise the current rule to make clear that 

the signature requirements of Rules 1.33 

and 11.18(a) do not apply to the notice 

of appeal. This proposed change 

updates paragraph (b) to add a reference 

to Rule 11.18(a) to avoid any conflict 

between the rules of practice in ex parte 

appeals and the rules governing practice 

by registered practitioners before the 

Office. 

The ANPRM proposed to remove the 

provision that a notice of appeal need 

not be signed. One comment requested 

clarification as to why the ANPRM 

proposed to delete paragraph (b) of the 

current rule. The comment suggested 

removing this flexibility might lead to 

mistakes and more work for both the 

Office and appellants to correct such 

mistakes. In light of this comment, 

Proposed Bd.R. 41.31(b) would retain 

the provision that a notice of appeal 

need not be signed and would further 

clarify that Rule 11.18(a) does not apply 

to a notice of appeal, so as to avoid any 

conflict in the requirements for 

practitioners under this title. 

Proposed Bd.R. 41.31(c) proposes to 

revise the current rule so that an appeal, 

when taken, would be presumed to seek 

review of all of the claims under 

rejection unless canceled by an 

amendment filed by the appellant. This 

proposed change, obviates the need for 

the majority of appellants who seek 

review of all claims under rejection to 

affirmatively state (in the notice of 

appeal and/or in the status of claims 

section of the appeal brief) which claims 

are on appeal. Rather, under Proposed 

Bd.R. 41.31(c), the Board would 

presume that an appellant intends to 

appeal all claims under rejection except 

for those that the appellant has 

canceled. This proposed change avoids 

the unintended cancellation of claims 

by the Office due to an appellant’s 

mistake in the listing of the claims in 

either the notice of appeal or in the 

appeal brief. Under current practice, if 

an appellant incorrectly lists the claims 

on appeal, or is silent in the brief as to 

any of the claims under rejection, then 

the Office assumes that such claims are 

not on appeal, and notes that those nonappealed claims should be cancelled by 

the examiner. Ex parte Ghuman, 88 

USPQ2d 1478, 2008 WL 2109842 (BPAI 

2008) (precedential) (holding that when 

appellant does not appeal some of the 

claims under rejection and does not 

challenge the Examiner’s rejection of 

these claims, then the Board will treat 

these claims as withdrawn from the 

appeal, which operates as an 

authorization for the Examiner to cancel 

those claims from the application). The 

proposed rule would avoid potential 

unintended cancellation of claims due 

to oversight or mistake by appellants in 

listing the claims on appeal. This 

proposed change would replace the 

Office’s procedure under Ghuman and 

simplify practice for examiners by no 


hsrobinson on DSK69SOYB1PROD with PROPOSALS2
69832 Federal Register / Vol. 75, No. 219 / Monday, November 15, 2010 / Proposed Rules 

longer requiring examiners to cancel 

non-appealed claims. Any appellant 

who wishes to appeal fewer than all 

rejected claims should file an 

amendment cancelling the nonappealed claims. If an appellant does 

not file an amendment cancelling claims 

that the appellant does not wish to 

appeal, but then also fails to provide 

any argument in the appeal brief 

directed to those claims, then the Board 

may simply affirm any rejections against 

such claims. 

Amendments and Affidavits or Other 

Evidence After Appeal 

Proposed Bd.R. 41.33(c) proposes to 

delete cross-references to Bd.R. 

41.50(a)(2)(i) and Bd.R. 41.50(c) from 

the current rule. As noted infra, 

Proposed Bd.R. 41.50 proposes to delete 

paragraph (a)(2)(i) from the current rule 

and to amend paragraph (c) so that it is 

no longer applicable to Proposed Bd.R. 

41.33(c). 

Proposed Bd.R. 41.33(d)(2) proposes 

to delete the cross-reference to Bd.R. 

41.50(a)(2)(i) from the current rule. As 

noted infra, Proposed Bd.R. 41.50 

proposes to delete paragraph (a)(2)(i) 

from the current rule. 

The ANPRM proposed to limit the 

types of amendments and evidence that 

could be filed on or after an appeal 

brief. The restrictions set forth in the 

ANPRM were identical to the 

restrictions in current Bd.R. 41.33. 

The Office received one comment that 

the restrictions set forth in the ANPRM 

would limit the examiner’s ability to 

enter amendments or evidence after an 

appeal is filed, thus potentially 

preventing an examiner from entering 

an amendment suggested by the 

examiner that would possibly render the 

claims allowable. The comment 

suggested adding a third condition for 

allowance to section (b) for an 

examiner-approved amendment and to 

add a new rule allowing appellants to 

submit examiner-requested evidence 

after an appeal is filed. 

Proposed Bd.R. 41.33 does not 

substantively change the current rule. 

Both the current rule and the rule 

proposed in this NPRM restrict the 

types of amendments and evidence that 

can be filed after filing a brief. This 

approach is designed to promote 

efficiency of the Board in its review by 

ensuring that the Board has the benefit 

of the examiner’s final evaluation of the 

weight and sufficiency of any evidence 

relied upon by appellants prior to the 

Board rendering a decision on appeal. 

The Office received another comment 

that the restrictions set forth in the 

ANPRM would prevent appellants from 

submitting evidence to rebut an 

examiner’s position raised for the first 

time after a notice of appeal is filed, 

specifically in an examiner’s answer. 

Proposed Bd.R. 41.40 has been added to 

respond to the comments desiring 

clarification of how appellants can file 

a petition to the Director under Rule 

1.181 seeking review of the examiner’s 

failure to designate a rejection as a new 

ground of rejection if they feel that the 

examiner’s answer contains a new 

ground of rejection that necessitates the 

filing of new amendments or new 

evidence. Thus, appellants are afforded 

due process by granting a fair 

opportunity to respond to all aspects of 

a rejection prior to appeal. Since the 

filing of such a Rule 1.181 petition tolls 

the period for filing a reply brief, 

appellants would not need to incur the 

expense of preparing and filing a reply 

brief if their petition is granted, and 

examiners would not be required to 

respond to appellants’ requests under 

Rule 1.136(b) for extensions of time in 

which to file a reply brief while the 

petition is being decided. 

The Office received another comment 

that the rule proposed in the ANPRM 

seemed to conflict with § 556(d) of the 

Administrative Procedure Act (APA) 

which guarantees the right to submit 

rebuttal evidence in agency proceedings 

and with case law from the Federal 

Circuit. As noted supra, the Proposed 

Bd.R. 41.40 in this NPRM provides 

appellants with procedures to file a 

petition to the Director under Rule 1.181 

seeking review of the examiner’s failure 

to designate a rejection as a new ground 

of rejection and, consequently, if 

granted, have an opportunity to reopen 

prosecution and submit rebuttal 

evidence, consistent with the APA. 

Jurisdiction Over Appeal 

Proposed Bd.R. 41.35(a) proposes to 

revise the current rule to provide that 

jurisdiction over the appeal passes to 

the Board upon the filing of a reply brief 

or the expiration of the time in which 

to file such a reply brief, whichever is 

earlier. This proposed change is deemed 

necessary because current Bd.R. 41.35(a) 

provides that the Board acquires 

jurisdiction upon transmittal of the file 

to the Board. Most patent application 

files are electronic files (Image File 

Wrapper files), not paper files. 

Accordingly, a paper file is no longer 

‘‘transmitted’’ to the Board. 

The Board intends to continue 

sending a docket notice as a courtesy to 

appellants to indicate that the Board has 

assigned an appeal number to the 

appeal. By having the Board’s 

jurisdiction commence immediately 

upon the filing of a reply brief or the 

expiration of the time in which to file 

such a reply brief, there would be no 

affirmative step required to be taken by 

the Board prior to assuming jurisdiction 

and no gap in time from the end of the 

briefing to the commencement of 

jurisdiction by the Board. 

The ANPRM proposed that 

jurisdiction of the Board would begin 

when a docketing notice was mailed by 

the Board. The Office received one 

comment suggesting that an appeal 

should be instantly docketed at the 

Board upon receipt of a reply brief. The 

Office has adopted this proposed change 

substantially as suggested, while taking 

into account that some appellants may 

choose not to file a reply brief. The 

Office received another comment 

suggesting that jurisdiction should pass 

to the Board upon the filing of the 

notice of appeal, and thus, the Board 

would be the only entity reviewing 

briefs for compliance with the rule. The 

Office chose not to adopt this proposed 

change, because if the Board acquired 

jurisdiction upon filing of a notice of 

appeal, this change would foreclose the 

opportunity for the examiner, upon 

reviewing the appeal brief, to find some 

or all of the appealed claims patentable 

prior to the Board taking jurisdiction, 

thus obviating the need to proceed with 

the appeal. To address the concern 

raised by the public comment, the 

Office chose instead to implement a 

streamlined procedure for review of 

briefs in ex parte appeals in which the 

Chief Judge of the Board is the sole 

reviewer of briefs for compliance with 

the rules. A streamlined procedure for 

review of briefs in appeals involving 

both patent applications (75 FR 15,689 

(March 30, 2010)) and ex parte 

reexamination proceedings (75 FR 

29,321 (May 25, 2010)) has already been 

implemented. As such, the Board is 

currently the only reviewing body for 

appeal brief compliance. 

Proposed Bd.R. 41.35(b) proposes to 

remove from the current rule the 

provision that gives the Board the power 

to return an appeal to the examiner if 

the Board deems that a file is not 

complete or not in compliance with the 

requirements of Subpart B. Rather, if a 

file is not in condition for the Board to 

render a decision on the appeal, the file 

may be remanded to the examiner by a 

Director-ordered remand pursuant to 

Bd.R. 41.35(c). Proposed Bd.R. 41.35(b) 

also proposes to revise the current rule 

to make clear when the Board’s 

jurisdiction ends so that no gaps in time 

exist between the end of the Board’s 

jurisdiction and further action by the 

examiner. 

The ANPRM similarly proposed 

revising Bd.R. 41.35(b) to set forth when 

the Board’s jurisdiction ends. The Office 


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received no comments in response to 

this proposed change. 

Proposed Bd.R. 41.35(c) proposes to 

add to the current rule a paragraph 

heading and a cross-reference to a 

relevant section of the rule. 

Proposed Bd.R. 41.35 proposes to add 

a new paragraph (d) to the current rule 

to provide that, except for petitions 

authorized by part 41 of this title, the 

Board would not return or remand an 

application for consideration of an 

information disclosure statement or a 

petition filed while the Board possesses 

jurisdiction, and that consideration of 

such filings would be held in abeyance 

until the Board’s jurisdiction ends. The 

Board’s jurisdiction begins upon the 

filing of the reply brief or upon the 

expiration of the time for filing a reply 

brief. Therefore, under both current and 

Proposed Bd.R. 41.33(d)(2), the filing of 

an information disclosure statement 

during the Board’s jurisdiction 

constitutes the introduction of untimely 

evidence. Similarly, because Rule 1.181 

provides that petitions must be filed 

within two months of the mailing date 

of the action or notice from which relief 

is requested, and because the Board’s 

jurisdiction begins up to two months 

after the mailing date of the examiner’s 

answer (assuming no petition under 

Rule 1.181 is filed), it follows that all 

petitions relating to the examination 

phase of the application or 

reexamination proceeding ought to be 

filed prior to the time the Board takes 

jurisdiction. It is in the interest of 

compact prosecution that the Office not 

delay a decision on appeal for 

consideration of untimely evidence and 

petitions. Proposed Bd.R. 41.35(d) 

excludes ‘‘petitions authorized by this 

part.’’ For example, petitions authorized 

by part 41 include petitions under Bd.R. 

41.3. 

Proposed Bd.R. 41.35(d) was not part 

of the ANPRM, and thus no comments 

were received pertaining to it. 

Appeal Brief—Timing and Fee; and 

Failure To File a Brief 

Proposed Bd.R. 41.37(a) and (b) 

propose to add paragraph headings to 

the current rule. 

The ANPRM proposed minor wording 

changes to paragraphs (a) and (b), but 

proposed no substantive amendments. 

No comments were received regarding 

these paragraphs. In order to avoid 

changes to the current rule that are not 

necessary for clarification or improved 

practice and procedure, these 

paragraphs of the proposed rule add 

only descriptive headings and the 

remainder of the text is the same as the 

current rule. 

Appeal Brief—Content of Appeal 

Brief—Preamble 

Proposed Bd.R. 41.37(c)(1) proposes 

to add a paragraph heading to the 

current rule. Additionally, Proposed 

Bd.R. 41.37(c)(1) proposes to add the 

introductory phrase ‘‘Except as 

otherwise provided in this paragraph’’ to 

the current rule to clarify that several of 

the content requirements listed in 

paragraph (c)(1) contain exceptions that 

may result in an appeal brief containing 

fewer than all items listed in paragraph 

(c)(1). Proposed Bd.R. 41.37(c)(1) would 

also revise the current rule to correct the 

cross-references in light of further 

changes to this section, discussed infra. 

Appeal Brief—Content of Appeal 

Brief—Real Party in Interest 

Proposed Bd.R. 41.37(c)(1)(i) proposes 

to revise the current rule to provide that 

the statement identifying the real party 

in interest should be accurate as of the 

date of filing of the appeal brief. 

Proposed Bd.R. 41.37(c)(1)(i) would 

revise the current rule to allow the 

Board to assume, if the statement of real 

party in interest is omitted from the 

appeal brief, that the named inventors 

are the real party in interest. These 

changes are proposed to decrease the 

burden on appellants by allowing 

appellants to omit this statement if the 

named inventors are the real party in 

interest. The purpose of this section is 

to enable Administrative Patent Judges 

to determine whether they have a 

conflict of interest with the real parties 

in the case and then to appropriately 

recuse themselves if such a conflict of 

interest is found. The information 

required in Proposed Bd.R. 41.37(c)(1)(i) 

is the minimum information needed by 

the Board to effectively make this 

determination. 

The ANPRM proposed a default rule 

that if the brief omits this statement, the 

Office would assume that the named 

inventors are the real party in interest. 

The Office received no comments in 

response to these proposed changes. 

The proposed rule includes 

substantially the same default provision 

as the ANPRM, but it states that the 

Office ‘‘may’’ make the assumption. 

Thus, the Office is not required to make 

the assumption if it is aware of 

information to the contrary. 

Appeal Brief—Content of Appeal 

Brief—Related Appeals and 

Interferences 

Proposed Bd.R. 41.37(c)(1)(ii) would 

be revised to limit the required 

disclosure of related appeals, 

interferences and judicial proceedings 

(collectively ‘‘related cases’’) to only 

those which: (1) Involve an application 

or patent owned by the appellant or 

assignee, (2) are known to appellant, 

and (3) may have a bearing on the 

Board’s decision. The section would 

also be revised to permit appellants to 

omit the statement entirely if there are 

no such related cases, and to provide a 

default assumption for the Office in the 

event the statement is omitted. 

The ANPRM proposed revising this 

requirement to make clear that 

appellants are under a continuing 

obligation to update the statement of 

related cases. The ANPRM also 

proposed a default rule that if the brief 

omits this statement; the Office would 

assume that there are no such related 

cases. 

The Office received several comments 

to the proposed changes to this section 

in the ANPRM (41.37(g) of the ANPRM). 

Specifically, one comment stated that 

the language of the ANPRM was overly 

broad, and suggested that the rule 

should be narrowed to require 

disclosure of only applications of the 

assignee, and that the continuing 

obligation to update this information 

was unduly burdensome to appellants. 

Another comment stated that the 

information that was required in the 

ANPRM was available to the Office and 

that requiring appellants to disclose this 

level of detail would be unduly 

burdensome. Another comment was 

concerned with charges of inequitable 

conduct for failure to include related 

appeals and proposed that the rules 

require appellants to identify only 

related U.S. court actions and decisions, 

and that the Office should bear the 

burden of searching the IFW system to 

identify related cases. Another comment 

stated that the rules should not impose 

a continuing obligation to update this 

information throughout the course of 

the appeal as that places a large burden 

on appellants. Another comment 

posited that the language in the ANPRM 

was overbroad and vague. Another 

comment stated that the term 

‘‘significant’’ used in the ANPRM was 

indefinite. Another comment expressed 

concern that the term ‘‘related case’’ was 

used differently in the ANPRM than it 

is used for Information Disclosure 

Statements and suggested clarifying the 

term or adopting new terminology. 

In response to some of the concerns 

raised by these comments, the proposed 

rule has narrowed the information 

required to be included in the statement 

of related cases in the appeal brief, as 

compared to the current rule, to limit 

the statement to appeals in cases which 

are owned by the same appellant(s) or 

assignee. The proposed rule removes the 

language in the prior proposed Bd.R. 


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41.37(c)(1)(ii) regarding a continuing 

obligation to update this information. 

The proposed rule in this NPRM retains 

a default provision, originally proposed 

in the ANPRM, so that a statement that 

there are ‘‘no known related cases’’ is not 

required and that fact ‘‘may’’ be inferred 

from the absence of a statement. The 

proposed rule also no longer requires 

filing of copies of decisions in related 

cases. The narrowed scope of this 

proposed section, as compared to the 

current rule, lessens the burden on 

appellants from the statement that is 

currently required and addresses 

concerns raised in the comments 

received to the ANPRM. 

Appeal Brief—Content of Appeal 

Brief—Status of Claims 

Proposed Bd.R. 41.37(c)(1)(iii) omits 

the current requirement for the appeal 

brief to contain an indication of the 

status of claims. 

Appeal Brief—Content of Appeal 

Brief—Statement of Last Entered 

Amendment 

Proposed Bd.R. 41.37(c)(1)(iv) 

proposes to eliminate the current 

requirement to provide a statement of 

the status of any amendment filed 

subsequent to final rejection, and would 

require that appellants simply provide a 

statement identifying, by date of filing, 

the last entered amendment of the 

claims. The proposed rule also provides 

a default that the Office may assume no 

amendments to the claims exist if the 

appeal brief omits this statement. 

The ANPRM, like the current rule, 

required the appeal brief to include a 

statement of the status of all 

amendments filed after final rejection. 

The Office is proposing instead in this 

NPRM that the Office bear the burden of 

reviewing the IFW to identify the claims 

on appeal. The proposed rule requires 

appellants to provide the date of filing 

of the last entered amendment only so 

that the Board will know the set of 

claims to which the appellant’s 

arguments apply. 

Appeal Brief—Content of Appeal 

Brief—Summary of Claimed Subject 

Matter 

Proposed Bd.R. 41.37(c)(1)(v) 

proposes to revise the current rule to 

require that the summary of claimed 

subject matter include an annotated 

copy of each rejected independent claim 

wherein the annotations would appear 

after each limitation in dispute by 

appellant and include a reference to the 

specification in the Record showing 

support for the claim language sufficient 

to allow the Board to understand the 

claim. Proposed Bd.R. 41.37(c)(1)(v) 

would also apply to each means plus 

function or step plus function recitation 

in dispute by appellant. Additionally, 

Proposed Bd.R. 41.37(c)(1)(v) would 

clarify that reference to the pre-grant 

patent application publication is not 

sufficient to satisfy the requirements for 

the summary of claimed subject matter. 

The ANPRM proposed to revise the 

summary of claimed subject matter to 

require an annotated copy of each 

element of each independent claim. The 

ANPRM also proposed to revise this 

requirement to call for an annotated 

copy of every means plus function or 

step plus function recitation in any 

independent claim on appeal or in any 

dependent claim separately argued. 

The Office received a comment that it 

was not clear in the ANPRM whether 

this rule would have imposed a 

requirement to cite every instance of 

support, or simply to provide citations 

sufficient to understand the scope and 

meaning of the claim limitations. 

Another comment similarly requested 

the Office to clarify that this provision 

is only an aid to understanding the 

claimed subject matter, and that the 

Office will construe claims based upon 

the entire disclosure. Another comment 

suggested that the rule should not 

require appellants to cite to every 

instance of support in the Specification, 

but only the ‘‘best’’ support in the 

Specification. 

These comments were well taken. The 

proposed rule makes clear that the 

reference to the specification and figures 

required under this section need only be 

‘‘sufficient to understand the claim,’’ 

thus clarifying that every reference to 

the claim limitation in the specification 

need not be cited. 

The Office received numerous 

comments that the rule should not 

require appellants to map claim 

elements not in dispute. Some 

comments stated that it is against a 

practitioner’s interest to say more than 

what is required for issues on appeal as 

it raises potential malpractice issues for 

practitioners. Other comments stated 

that requiring appellants to map all 

claim elements, including elements not 

in dispute, would be comparable to 

requiring the practitioner to evaluate 

claim support, which would potentially 

waive arguments or take positions that 

create estoppels or disclaimers, leading 

to potential malpractice claims. 

In response to these comments, the 

proposed rule limits the requirement to 

annotate the claims to only those 

limitations which are actually in 

dispute, thus significantly limiting any 

potential estoppel or malpractice issues. 

The Office received another comment 

suggesting that there should be no 

requirement to map claim support for 

independent claims which are not 

argued separately as they will be 

affirmed or rejected as a group. 

The Office declined to change this 

requirement of the current rule. Thus, 

the proposed rule still requires 

appellants to provide a summary of 

claimed subject matter for each rejected 

independent claim. The Office decided 

not to change this requirement because 

each independent claim in a group may 

be different in scope and no one claim 

may clearly be the ‘‘broadest.’’ The 

Board has the option to select a single 

claim from a group to decide the appeal 

as to the group of claims. The Board 

needs claim mapping for each 

independent claim so that it can select 

which claim is representative of the 

group. Otherwise, appellants might 

select one claim to map and the Board 

might decide to select a different claim 

as representative of the group, in which 

case the Board will not have the benefit 

of the claim summary for the selected 

representative claim. 

The proposed rule further clarifies the 

requirement for reference to the 

specification by noting that it should be 

by annotation of the actual claim 

language with reference to the page and 

line number or paragraph number of the 

specification. The proposed rule further 

clarifies that citation to the pre-grant 

publication of the application is not 

acceptable. 

The Office received one comment 

suggesting that the Board clarify the 

current rule by giving examples and 

guidance to practitioners rather than by 

adopting a new rule. The following are 

examples of acceptable claim 

summaries: 

In each example, the only claim 

limitation in dispute in the appeal, and 

thus the only claim limitation 

annotated, is the ‘‘pivot axle’’ limitation 

of the claim. 

Example 1: 

1. An apparatus, comprising: 

A first arm; 

a second arm; and 

a pivot axle (Spec. 6, ll. 1–10; Spec. 

7, ll. 21–27; figs. 1, 2) disposed 

between said first arm and said 

second arm. 

Example 2: 

1. An apparatus, comprising: 

A first arm; 

a second arm; and 

a pivot axle (paras. 0032, 0033, 0040; 

figs. 1, 2) disposed between said 

first arm and said second arm. 

The Office received one comment 

requesting that the rule should allow 

various formats based on USPTO 

provided models, including a columnar 

chart, which would provide more 


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flexibility to appellants. This suggestion 

was not adopted because the formats 

received under the current rule vary 

widely, with some summaries 

containing little to no useful 

information. It is important to impose a 

specific format for this rule to ensure 

that the Board obtains the information 

that will be most useful. This 

requirement for a strict format has been 

offset with a lessening of the burden on 

appellants by requiring annotation only 

for those elements in dispute. Also, the 

proposed rule is more flexible than the 

current rule in that it allows citation to 

paragraph number, rather than limiting 

citations to page and line number of the 

specification. 

The Office received another comment 

that the current rule is sufficient to 

provide an ‘‘easy reference guide * * * 

to the relevant sections of the 

specification’’ and that a more detailed 

requirement (such as that proposed in 

the ANPRM) is unnecessary. In drafting 

the proposed rule, the current rule was 

used as the basis for the revisions, rather 

than the rule proposed in the ANPRM. 

Proposed Bd.R. 41.37(c)(1)(v) would 

provide a less detailed requirement than 

Bd.R. 41.37(c)(1)(v) because the 

proposed rule requires annotation only 

for those elements in dispute. 

The Office received another comment 

suggesting that if appellant does not 

identify structure for a § 112, ¶ 6 

analysis, then ‘‘for purposes of the 

appeal’’ such limitations should not be 

limited to their corresponding structure 

under § 112, ¶ 6. In light of the Federal 

Circuit’s decision in In re Donaldson 

Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) 

(en banc), in which the court held that 

the Office ‘‘may not disregard the 

structure disclosed in the specification 

corresponding to [means-plus-function] 

language when rendering a patentability 

determination,’’ the Board cannot ignore 

the structure corresponding to a means 

plus function limitation to decide an 

appeal. As a compromise, the proposed 

rule does not require appellant to 

provide claim mapping for a § 112, ¶ 6 

limitation if that limitation is not in 

dispute. 

Appeal Brief—Content of Appeal 

Brief—Grounds of Rejection To Be 

Reviewed on Appeal 

Bd.R. 41.37(c)(1)(vi) requires that the 

appeal brief include a statement of the 

grounds of rejection. The proposed rule 

eliminates the requirement for a 

statement of the grounds of rejection 

from the brief. Under Proposed Bd.R. 

41.31(c), discussed supra, the Board 

would presume that all rejections made 

in the Office Action from which the 

appeal was taken are before it on appeal, 

unless appellant cancels the claim(s) 

subject to a particular rejection. 

Moreover, under Proposed Bd.R. 

41.37(c)(1)(vii), discussed infra, the 

headings of the argument section of the 

brief shall reasonably identify the 

ground of rejection being contested. 

Therefore, it is unnecessary for the 

appeal brief to contain a separate 

statement of the grounds of rejection on 

appeal—a source of internal 

inconsistency in appeal briefs filed 

under the current rules. 

Appeal Brief—Content of Appeal 

Brief—Argument 

Proposed Bd.R. 41.37(c)(1)(vii) 

proposes to revise the current rule to 

clarify that the argument section should 

specifically explain why the examiner 

erred as to each ground of rejection 

contested by appellants. The proposed 

revision would also provide that, except 

as provided for in Proposed Bd.R. 41.41, 

41.47, and 41.52, any arguments not 

included in the appeal brief will not be 

considered by the Board ‘‘for purposes 

of the present appeal.’’ Additionally, 

Proposed Bd.R. 41.37(c)(1)(vii) would 

require that each ground of rejection 

argued be set forth in a separate section 

with a heading that reasonably 

identifies the ground being argued 

therein. Further, the proposed rule 

would require that any claim(s) argued 

separately or as a subgroup be placed 

under a separate subheading that 

identifies the claim(s) by number. 

The ANPRM proposed to amend the 

argument section of the brief to require 

an explanation as to why the examiner 

erred. The ANPRM also stated that any 

finding or conclusion of the examiner 

that is not challenged would be 

presumed to be correct and that 

appellant would waive all arguments 

that could have been, but were not, 

addressed in the argument section of the 

brief. 

The Office received a large number of 

comments regarding the presumption of 

examiner correctness language in the 

ANPRM. Several comments stated that 

the proposed presumption of examiner 

correctness language improperly placed 

the burden of persuasion on appellants 

to show error in the examiner’s 

rejection, is inconsistent with the 

statutory requirements of the Board, and 

is inconsistent with case law. Other 

comments noted concern that the 

duration and scope of the presumption 

of examiner correctness was not made 

clear in the proposed language of the 

ANPRM. Another comment noted that it 

is difficult to respond to all ‘‘points’’ 

stated by the examiner when the 

examiner’s positions are not clearly 

delineated in the Office action. Other 

comments expressed concern that such 

a presumption would force appellants to 

contest every point made by the 

examiner instead of allowing them to 

focus the issues for appeal. In response 

to these comments, the proposed rule in 

this NPRM omits the presumption of 

examiner correctness from the rule. 

One comment suggested that the 

argument section of this rule should be 

changed to read, ‘‘The ’argument’ shall 

explain why the examiner erred as to 

each ground of rejection to be reviewed. 

Each ground of rejection shall be 

separately argued under a separate 

heading.’’ The proposed rule 

substantially adopts this suggested 

language. 

The Office received further comments 

regarding the waiver language of this 

portion of the ANPRM. Specifically, the 

Office received some comments that the 

waiver provision would limit the 

Board’s ability to independently review 

the examiner’s rejections and base the 

decision on the entire record on appeal. 

Other comments stated that the waiver 

provision would lead to piecemeal 

review of the examiner’s rejection. One 

comment suggested that, if the Board 

adopted this waiver language, the Board 

should also limit the review of the 

examiner’s answer to the facts and 

reasons set forth therein. One comment 

distinguished between Federal Circuit 

waiver cases and BPAI waiver cases, 

because at the Federal Circuit both sides 

are precluded from raising new issues 

on appeal, whereas at the Board the 

examiner may raise new issues. 

The proposed rule in this NPRM 

omits the waiver language from the rule. 

Nonetheless, the case law supports the 

Office’s position on waiver, so despite 

the waiver language not being included 

in the rule, the Board will still treat as 

waived, for purposes of the present 

appeal, any arguments not raised by 

appellant. See Hyatt v. Dudas, 551 F.3d 

1307, 1313–14 (Fed. Cir. 2008) (the 

Board may treat arguments appellant 

failed to make for a given ground of 

rejection as waived); In re Watts, 354 

F.3d 1362, 1368 (Fed. Cir. 2004) 

(declining to consider the appellant’s 

new argument regarding the scope of a 

prior art patent when that argument was 

not raised before the Board); and In re 

Schreiber, 128 F.3d 1473, 1479 (Fed. 

Cir. 1997) (declining to consider 

whether prior art cited in an 

obviousness rejection was nonanalogous art when that argument was 

not raised before the Board). 

The Office received another comment 

noting concern that the scope of the 

‘‘waiver’’ is unclear, and noting that 

appellants should not be precluded 

from making arguments during 


hsrobinson on DSK69SOYB1PROD with PROPOSALS2
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continued prosecution based on a 

waiver set forth in a prior appeal. 

Several comments suggested that the 

waiver should be limited in 

applicability for ‘‘purposes of appeal 

only.’’ The proposed rule permits the 

Board to refuse to consider arguments 

not raised in the appeal brief, except as 

provided in Proposed Bd.R. 41.41, 

41.47, and 41.52. This proposed 

language is substantially the same as the 

current Bd.R. 41.37(c)(1)(vii), which 

states that ‘‘[a]ny arguments or 

authorities not included in the brief or 

a reply brief filed pursuant to § 41.41 

will be refused consideration by the 

Board, unless good cause is shown.’’ 

Proposed Bd.R. 41.41, 41.47, and 41.52 

have provisions allowing certain new 

arguments for good cause in reply briefs, 

at oral hearing, or in requests for 

rehearing which ensure that appellants 

have a full and fair opportunity to be 

heard before the Board. The proposed 

rule clarifies that the Board’s right to 

refuse consideration of arguments not 

raised is ‘‘for purposes of the present 

appeal’’ so as to clarify that such right 

of refusal does not extend to subsequent 

Board appeals in the same or related 

applications. See Abbott Labs. v. 

TorPharm, Inc., 300 F.3d 1367, 1379 

(Fed. Cir. 2002) (‘‘[P]recedent has long 

supported the right of an applicant to 

file a continuation application despite 

an unappealed adverse Board decision, 

and to have that application examined 

on the merits. Where the Patent Office 

has reconsidered its position on 

patentability in light of new arguments 

or evidence submitted by the applicant, 

the Office is not forbidden by principles 

of preclusion to allow previously 

rejected claims.’’ (internal citation 

omitted)). 

Proposed Bd.R. 41.37(c)(1)(vii) also 

proposes to revise the current rule to 

clarify the proper use of headings and 

to require the use of subheadings in 

order to clearly set out the ground of 

rejection and the specific claims to 

which each argument presented applies. 

These headings and subheadings will 

make certain that arguments are not 

overlooked by the examiner or the 

Board. The Office received one 

comment suggesting that allowing 

‘‘substantial’’ compliance with the 

heading requirement of the appeal brief 

would prevent unnecessary delays in 

the appellate process. The comment 

stated that the requirement for headings 

has sometimes been interpreted by the 

Office to require a verbatim correlation 

to the ground of rejection as articulated 

by the examiner. The comment 

suggested that to prevent this 

requirement from being interpreted as a 

verbatim requirement, the rule should 

contain the following language ‘‘An 

appeal brief that substantially complies 

with the content requirements will not 

be deemed non-compliant for minor 

errors in form.’’ While the Office 

declined to add this proposed language 

to the rule, now that the Office has a 

sole reviewer of appeal briefs for 

compliance with this rule, the content 

requirements of this paragraph will not 

be interpreted as verbatim requirements 

and briefs will not be held noncompliant for minor formatting issues. 

In particular, as to the heading 

requirement, Proposed Bd.R. 

41.37(c)(1)(vii) requires, ‘‘Each ground of 

rejection contested by appellant must be 

argued under a separate heading, each 

heading shall reasonably identify the 

ground of rejection being contested (e.g., 

by claim number, statutory basis, and 

applied reference, if any).’’ This 

proposed language means that the 

heading should contain enough detail so 

that the Office knows which ground of 

rejection is being argued. As to the 

subheading requirement, Proposed 

Bd.R. 41.37(c)(1)(vii) requires, ‘‘Under 

each heading identifying the ground of 

rejection being contested, any claim(s) 

argued separately or as a subgroup shall 

be argued under a separate subheading 

that identifies the claim(s) by number.’’ 

The Office offers the following examples 

of appropriate headings and 

subheadings which can be used for 

claims argued as a group, subgroup, or 

separately. 

Example 1: Claims 1–20 are pending. 

Claims 1–10 are rejected under 35 

U.S.C. 102(b) as being anticipated by 

Smith, and claims 11–20 are rejected 

under 35 U.S.C. 103(a) as being 

unpatentable over Smith and Jones. 

Appellant wishes to argue claims 1–10 

as a group, and wishes to argue claims 

11–19 as a subgroup and claim 20 

separately. 

[Heading 1:] ‘‘Rejection of claims 1–10 

under 35 U.S.C. 102(b) as anticipated by 

Smith’’ 

[Add Argument for claims 1–10 here]. 

(Note: Because claims 1–10 are being 

argued as a single group for this ground of 

rejection, there is no need for any 

subheadings.) 

[Heading 2:] ‘‘Rejection of claims 11–20 

under 35 U.S.C. 103(a) over Smith and 

Jones’’ 

[Subheading 1:] ‘‘Claims 11–19’’ 

[Add Argument for claims 11–19 

here]. 

[Subheading 2:] ‘‘Claim 20’’ 

[Add Argument for claim 20 here]. 

Example 2: Same facts as in Example 

1 above. 

[Heading 1:] ‘‘Anticipation Rejection’’ 

[Add Argument for claims 1–10 here] 

(Note: Because there is only one 

anticipation rejection in the appeal, this 

heading is sufficient for the Board to know 

which ground of rejection is being argued. 

Also, because claims 1–10 are being argued 

as a single group for this ground of rejection, 

there is no need for any subheadings.) 

[Heading 2:] ‘‘Obviousness Rejection’’ 

(Note: Because there is only one 

obviousness rejection in the appeal, this 

heading is sufficient for the Board to know 

which ground of rejection is being argued.) 

[Subheading 1:] ‘‘Claims 11–19’’ 

[Add Argument for claims 11–19 

here]. 

[Subheading 2:] ‘‘Claim 20’’ 

[Add Argument for claim 20 here]. 

Appeal Brief—Content of Appeal 

Brief—Claims Appendix 

The proposed rule deletes Bd.R. 

41.37(c)(1)(viii). 

Bd.R. 41.37(c)(1)(viii) and the ANPRM 

required appellants to include a claims 

appendix with the brief. The proposed 

rule deletes the claims appendix from 

the briefing requirements. Because the 

last entered amendment is the most 

accurate reflection of the claims on 

appeal, the Office would look to the 

claims as presented in the last entered 

amendment as the claims on appeal. 

Appeal Brief—Content of Appeal 

Brief—Evidence Appendix 

The proposed rule deletes Bd.R. 

41.37(c)(1)(ix). 

Bd.R. 41.37(c)(1)(ix) and the ANPRM 

required appellants to include an 

evidence appendix with the brief. The 

Office received comments expressing 

concern that requiring inclusion of an 

evidence appendix including copies of 

documents already available to the 

Board in the Record is burdensome on 

appellants and does not improve 

efficiency at the Board. The proposed 

rule deletes the evidence appendix from 

the briefing requirements to address 

these concerns. The Office decided to 

assume the burden of locating copies of 

the evidence relied upon in the Record 

rather than requiring appellants to 

provide copies with their appeal brief. 

While it is no longer a requirement to 

include an evidence appendix, the 

Office strongly encourages and 

appreciates receiving copies of the 

evidence relied upon. This ensures that 

the Board is considering the proper 

evidence and avoids any confusion as to 


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the particular evidence referenced in the 

appeal brief. In the alternative, the 

Board recommends that appellants 

clearly identify in the appeal brief the 

evidence relied upon using a clear 

description of the evidence along with 

the date of entry of such evidence into 

the Image File Wrapper. 

Appeal Brief—Content of Appeal 

Brief—Related Proceedings Appendix 

The proposed rule deletes Bd.R. 

41.37(c)(1)(x). 

Bd.R. 41.37(c)(1)(x) and the ANPRM 

required appellants to include a related 

proceedings appendix with the brief. 

The Office received one comment 

expressing concern about the cost 

burden that this requirement imposes 

on appellants. To address this concern, 

the proposed rule deletes the related 

proceedings appendix from the briefing 

requirements. 

Appeal Brief—New or Non-Admitted 

Amendments or Evidence 

Proposed Bd.R. 41.37(c)(2) adds a 

sentence to the current rule to make 

clear in the rule the current Office 

procedure for review of an examiner’s 

refusal to admit an amendment or piece 

of evidence by petition to the Director 

under Rule 1.181. 

Appeal Brief—Notice of NonCompliance 

Proposed Bd.R. 41.37(d) proposes to 

revise the current rule to add a 

paragraph heading and to provide that 

under the Office’s new streamlined 

procedure for review of ex parte appeal 

briefs for compliance with the rule, 

review of a determination of noncompliant appeal brief should be 

requested via a petition to the Chief 

Judge. 

While the ANPRM did not propose to 

substantively amend this section of the 

current rule, the Office received many 

comments at the roundtable and in the 

written comments expressing concern 

that too many briefs were being returned 

as non-compliant. 

To address this concern, the Board, 

independently from these proposed 

rules, implemented a streamlined 

procedure for review of briefs for 

compliance with Bd.R. 41.37(c) under 

which the Board has the sole authority 

to hold briefs as non-compliant (75 FR 

15,689 (March 30, 2010)). This process 

ensures consistent application of the 

appeal brief rules and leads to fewer 

determinations of non-compliance. As 

this change has already been 

implemented, appellants should notice 

a decrease in determinations of noncompliance immediately. Also, because 

the proposed rule includes fewer overall 

briefing requirements and provides for 

default assumptions if certain portions 

of the brief are omitted, the proposed 

rule will result in even fewer 

determinations that briefs are noncompliant than under the current rule. 

Appeal Brief—Extensions of Time 

Proposed Bd.R. 41.37(e) proposes to 

add a paragraph heading to the current 

rule. 

Examiner’s Answer 

Proposed Bd.R. 41.39(a) proposes to 

add a paragraph heading and preamble 

to the current rule. 

Proposed Bd.R. 41.39(a)(1) proposes 

to revise the current rule to provide that 

the examiner’s answer, by default, 

incorporates all the grounds of rejection 

set forth in the Office action which is 

the basis for the appeal, including any 

modifications made via advisory action 

or pre-appeal brief conference decision, 

except for any grounds of rejection 

indicated by the examiner as withdrawn 

in the answer. Proposed Bd.R. 

41.39(a)(1) proposes to delete the 

requirement that the answer include an 

explanation of the invention claimed 

and of the grounds of rejection, since 

the Board would rely on appellant’s 

specification and summary of claimed 

subject matter for an explanation of the 

invention claimed and would rely on 

the statement of the rejection(s) in the 

Office action from which the appeal is 

taken. 

Proposed Bd.R. 41.39(a)(2) proposes 

to revise the current rule to provide that 

if a rejection set forth in the answer 

relies on any new evidence not relied on 

in the Office action from which the 

appeal is taken, then the rejection must 

be designated as a new ground of 

rejection, and any answer that contains 

such a new ground of rejection must be 

approved by the Director. 

The Office received a comment 

requesting that the rule make clear that 

any new ground of rejection raised in 

the examiner’s answer must be 

approved by a Technology Center 

Director. This requirement is currently 

in the MPEP. See MPEP § 1207.03. The 

Office chose to include a requirement in 

the proposed rule that the Director must 

approve a new ground of rejection in the 

examiner’s answer to make clear that 

the Office plans to continue this 

requirement for supervisory review of 

new grounds of rejection. The Director 

may choose to delegate this authority as 

appropriate. 

The Office received several comments 

requesting parity between the 

requirements and restrictions on the 

appeal brief (e.g., no new evidence) and 

those placed on the answer. 

Additionally, some comments stated 

that if examiners are permitted to use 

new evidence in the answer, then 

appellants should be able to add new 

evidence in the briefs. The Office also 

received comments stating that it is 

often unclear when a new reference 

actually constitutes a new ground of 

rejection and requesting that examiners 

should be required to disclose where a 

rejection was first entered into the 

record so as to prevent examiners from 

adding rejections without so designating 

them. These comments also raised 

concerns that when a potential new 

ground of rejection is not so designated, 

it forces appellants to file a request for 

continued examination which 

negatively impacts patent term. Another 

comment suggested that examiners 

should be barred from citing new 

evidence in an answer unless they 

designate it as a new ground of 

rejection. In view of these comments, 

the Office proposes to amend the rule to 

clarify that, for purposes of the 

examiner’s answer, any rejection which 

relies upon new evidence shall be 

designated as a new ground of rejection. 

The proposed rule would continue to 

provide appellants the option to reopen 

prosecution or maintain the appeal by 

filing a reply brief to respond to the new 

ground of rejection. 

To further address the desire for 

parity, the content requirements for 

appeal briefs have been significantly 

decreased so as not to create a disparity 

in the requirements between the brief 

and the answer. Content requirements 

for the examiner’s answer were not 

included in the rule, because the Office 

needs to retain flexibility to add content 

requirements as needed by revision of 

the MPEP. However, the Office plans to 

continue to require that the examiner’s 

answer contain a grounds of rejection 

section that would set forth any 

rejections that have been withdrawn 

and any new grounds of rejection, and 

the answer would further be required to 

contain a response to arguments section 

to include any response the examiner 

has to arguments raised in the appeal 

brief. See MPEP § 1207.02. The answer 

would no longer be required to restate 

the grounds of rejection. The Board 

would instead rely on the statement of 

the grounds of rejection in the Office 

action from which the appeal was taken 

(as modified by any subsequent 

Advisory Action or Pre-Appeal Brief 

Conference Decision). 

The Office received several comments 

opposing an examiner’s right to enter a 

new ground of rejection in an 

examiner’s answer. While the Office 

agrees that the entry of new grounds of 

rejection in an examiner’s answer 


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should be a rare occurrence, the Office 

determined that the option to enter a 

new ground of rejection in an 

examiner’s answer should be retained in 

the proposed rule for those situations in 

which new evidence comes to light later 

in the prosecution. The proposed rule 

codifies the Office’s standing procedure 

that requires supervisory approval of 

each new ground of rejection. 

The Office received some comments 

suggesting to allow appellants the 

option of reopening prosecution 

regardless of whether or not an 

examiner designates a rejection as 

containing a new ground. The Office 

received a further comment requesting 

the Office provide further guidance as to 

what constitutes a new ground of 

rejection. 

An appellant always has the option to 

reopen prosecution after filing a notice 

of appeal, by filing a request for 

continued examination (RCE) during the 

pendency of the application, but under 

the proposed rule the Office would 

allow appellant to reopen prosecution 

without having to file an RCE only if the 

examiner’s answer is designated as 

containing a new ground of rejection. 

Proposed new Bd.R. 41.40, discussed 

infra, delineates the process by which 

appellant can seek review of the 

primary examiner’s failure to designate 

a rejection as a new ground of rejection 

should appellant feel that the 

examiner’s answer contains a new 

ground of rejection that has not been 

designated as such. 

The following discussion provides 

guidance to appellants and examiners as 

to the Office’s view of what constitutes 

a new ground of rejection. This 

discussion is limited for ‘‘purposes of 

the examiner’s answer,’’ as per Proposed 

Bd.R. 41.39(a)(2). This discussion does 

not apply to final rejections under Rule 

1.113. The reason for this distinction is 

that Rule 1.116 affords applicants the 

opportunity to submit rebuttal evidence 

after a final rejection but before or on 

the same date of filing a notice of 

appeal. An appellant’s ability to 

introduce new evidence after the filing 

of an appeal is more limited under Bd.R. 

41.33(d) and proposed Bd.R. 41.33(d) 

than it is prior to the appeal. Thus, 

applicants are able to present rebuttal 

evidence in response to a final rejection, 

while they are not permitted to do so in 

response to an examiner’s answer on 

appeal, unless an answer is designated 

as containing a new ground of rejection. 

If new evidence (such as a new prior 

art reference) is applied or cited for the 

first time in an examiner’s answer, then 

Proposed Bd.R. 41.39(a)(2) requires that 

the rejection be designated as 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 introduce a new 

ground of rejection. Even if the prior art 

reference is cited to support the 

rejection in a minor capacity, it should 

be positively included in the statement 

of rejection and be designated as a new 

ground of rejection. In re Hoch, 428 F.2d 

1341, 1342 n.3 (CCPA 1970). 

Relying on new evidence, however, is 

not the only way to trigger a new ground 

of rejection in an examiner’s answer. A 

‘‘position or rationale new to the 

proceedings’’—even if based on 

evidence previously of record—may 

give rise to a new ground of rejection. 

In re De Blauwe, 736 F.2d 699, 706 n.9 

(Fed. Cir. 1984) (stating that where the 

Office advances ‘‘a position or rationale 

new to the proceedings, an applicant 

must be afforded an opportunity to 

respond to that position or rationale by 

submission of contradicting evidence’’ 

(citing In re Eynde, 480 F.2d 1364 

(CCPA 1973))). 

To avoid triggering a new ground of 

rejection in an examiner’s answer, the 

examiner is not required to use identical 

language in both the examiner’s answer 

and the Office action from which the 

appeal is taken. It is not a new ground 

of rejection, for example, if the 

examiner’s answer responds to 

appellant’s arguments using different 

language, or restates the reasoning of the 

rejection in a different way, so long as 

the evidence relied upon is the same 

and the ‘‘basic thrust of the rejection’’ is 

the same. In re Kronig, 539 F.2d 1300, 

1303 (CCPA 1976); see also In re 

Noznick, 391 F.2d 946, 949 (CCPA 

1968) (no new ground of rejection made 

when ‘‘explaining to appellants why 

their arguments were ineffective to 

overcome the rejection made by the 

examiner’’); In re Krammes, 314 F.2d 

813, 817 (CCPA 1963) (‘‘It is well 

established that mere difference in form 

of expression of the reasons for finding 

claims unpatentable or unobvious over 

the references does not amount to 

reliance on a different ground of 

rejection.’’ (citation omitted)); In re 

Cowles, 156 F.2d 551, 1241 (CCPA 1946) 

(holding that the use of ‘‘different 

language’’ does not necessarily trigger a 

new ground of rejection). 

The following examples are intended 

to provide guidance as to what 

constitutes a new ground of rejection in 

an examiner’s answer. What constitutes 

a ‘‘new ground of rejection’’ is a highly 

fact-specific question. See, e.g., Kronig, 

539 F.2d at 1303 (finding new ground 

entered based upon ‘‘facts of this case’’ 

and rejecting other cases as controlling 

given ‘‘distinctive facts at bar’’); In re 

Ahlert, 424 F.2d 1088, 1092 (CCPA 

1970) (‘‘[l]ooking at the facts of this case, 

we are constrained to hold’’ that a new 

ground was entered). If a situation arises 

that does not fall neatly within any of 

the following examples, it is 

recommended that the examiner 

identify the example below that is most 

analogous to the situation at hand, 

keeping in mind that ‘‘the ultimate 

criterion of whether a rejection is 

considered ‘new’ * * * is whether 

appellants have had fair opportunity to 

react to the thrust of the rejection.’’ 

Kronig, 539 F.2d at 1302. 

Factual Situations That Constitute a 

New Ground of Rejection 

1. Changing the statutory basis of 

rejection from § 102 to § 103. If the 

examiner’s answer changes the statutory 

basis of the rejection from § 102 to § 103, 

then the rejection should be designated 

as a new ground of rejection. For 

example, in In re Hughes, 345 F.2d 184 

(CCPA 1965), the Board affirmed an 

examiner’s rejection under § 102 over a 

single reference. On appeal, the 

Solicitor argued that the Board’s 

decision should be sustained under 

§ 103 over that same reference. The 

court declined to sustain the rejection 

under § 103, holding that a change in 

the statutory basis of rejection would 

constitute a new ground of rejection, 

and observed that ‘‘the issues arising 

under the two sections [§§ 102 and 103] 

may be vastly different, and may call for 

the production and introduction of quite 

different types of evidence.’’ Hughes, 

345 F.2d at 186–87. See also In re 

Moore, 444 F.2d 572 (CCPA 1971) 

(holding the Board’s decision contained 

a new ground of rejection, wherein the 

examiner rejected the claims under 

§ 102 based on applicant’s failure to 

show prior discovery of utility, and 

wherein the Board affirmed the rejection 

based on obviousness of that utility 

under § 103). 

2. Changing the statutory basis of 

rejection from § 103 to § 102, based on 

a different teaching. If the examiner’s 

answer changes the statutory basis of 

the rejection from § 103 to § 102, and 

relies on a different portion of a 

reference which goes beyond the scope 

of the portion that was previously relied 

upon, then the rejection should be 

designated as a new ground of rejection. 

For example, in In re Echerd, 471 F.2d 

632, 635 (CCPA 1973), the examiner 

rejected the claims under § 103 over a 

combination of two references. The 

Board then changed the ground of 

rejection to § 102 over one of those 

references, relying on a different portion 

of that reference for some claim 

limitations, and asserted that the 


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remaining claim limitations were 

inherently present in that reference. The 

court held that the Board’s affirmance 

constituted a new ground of rejection. 

Echerd, 471 F.2d at 635 (‘‘[A]ppellants 

should have been accorded an 

opportunity to present rebuttal evidence 

as to the new assumptions of inherent 

characteristics.’’ (citation omitted)). 

3. Citing new calculations in support 

of overlapping ranges. If a claim reciting 

a range is rejected as anticipated or 

obvious based on prior art that falls 

within or overlaps with the claimed 

range (see MPEP §§ 2131.03 and 

2144.05), and the rejection is based 

upon range values calculated for the 

first time in the examiner’s answer, then 

the rejection should be designated as a 

new ground of rejection. For example, 

in In re Kumar, 418 F.3d 1361 (Fed. Cir. 

2005), the examiner rejected the claims 

under § 103 based on overlapping 

ranges of particle sizes and size 

distributions. The Board affirmed the 

rejection, but included in its decision an 

Appendix containing calculations to 

support the prima facie case of 

obviousness. The court held the Board’s 

reliance upon those values to constitute 

a new ground of rejection, stating that 

‘‘the Board found facts not found by the 

examiner regarding the differences 

between the prior art and the claimed 

invention, which in fairness required an 

opportunity for response.’’ Kumar, 418 

F.3d at 1368 (citation omitted). 

4. Citing new structure in support of 

structural obviousness. If, in support of 

an obviousness rejection based on close 

structural similarity (see MPEP 

§ 2144.09), the examiner’s answer relies 

on a different structure than the one on 

which the examiner previously relied, 

then the rejection should be designated 

as a new ground of rejection. For 

example, in In re Wiechert, 370 F.2d 927 

(CCPA 1967), the examiner rejected 

claims to a chemical composition under 

§ 103 based on the composition’s 

structural similarity to a prior art 

compound disclosed in a reference. The 

Board affirmed the rejection under § 103 

over that same reference, but did so 

based on a different compound than the 

one the examiner cited. The court held 

that the Board’s decision constituted a 

new ground of rejection, stating, ‘‘Under 

such circumstances, we conclude that 

when a rejection is factually based on an 

entirely different portion of an existing 

reference the appellant should be 

afforded an opportunity to make a 

showing of unobviousness vis-a-vis 

such portion of the reference.’’ Wiechert, 

370 F.2d at 933. 

5. Pointing to a different portion of the 

claim to maintain a ‘‘new matter’’ 

rejection. If, in support of a claim 

rejection under 35 U.S.C. 112, first 

paragraph, based on new matter (see 

MPEP § 2163.06), a different feature or 

aspect of the rejected claim is believed 

to constitute new matter, then the 

rejection should be designated as a new 

ground of rejection. For example, in In 

re Waymouth, 486 F.2d 1058, 1059 

(CCPA 1973), the claims included the 

limitation ‘‘said sodium iodide * * * 

present in amount of at least 0.17 mg./ 

cc. of said arc tube volume.’’ The 

examiner’s rejection stated that the 

claimed ‘‘sodium iodide’’ constituted 

new matter because the specification 

was alleged only to disclose ‘‘sodium.’’ 

The Board affirmed the rejection, but 

did so on a ‘‘wholly different basis,’’ 

namely, that the specification failed to 

disclose the claimed ‘‘0.17 mg./cc.’’ 

volume limitation. Waymouth, 486 F.2d 

at 1060. The court held that the Board’s 

rationale constituted a new ground of 

rejection, ‘‘necessitating different 

responses by appellants.’’ Id. at 1061. 

Factual Situations That Do Not 

Constitute a New Ground of Rejection 

1. Citing a different portion of a 

reference which goes no farther than, 

and merely elaborates upon, what is 

taught in the previously cited portion of 

that reference. If the examiner’s answer 

cites a different portion of an applied 

reference which goes no farther than, 

and merely elaborates upon, what is 

taught in the previously cited portion of 

that reference, then the rejection does 

not constitute a new ground of rejection. 

For example, in In re DBC, 545 F.3d 

1373 (Fed. Cir. 2008), the examiner 

rejected the claims under § 103 over a 

combination of references, including the 

English translation of the abstract for a 

Japanese patent. The examiner cited the 

English abstract for two claim 

limitations: (1) Mangosteen rind, and 

(2) fruit or vegetable juice. The Board 

affirmed the rejection under § 103 over 

the same references, but instead of 

citing the abstract, the Board cited an 

Example on page 16 of the English 

translation of the Japanese reference, 

which was not before the examiner. 

DBC, 545 F.3d at 1381. Importantly, the 

Board cited the Example for the same 

two claim limitations taught in the 

abstract, and the Example merely 

elaborated upon the medicinal qualities 

of the mangosteen rind (which 

medicinal qualities were not claimed) 

and taught orange juice as the preferred 

fruit juice (while the claim merely 

recited fruit or vegetable juice). Hence, 

the Example merely provided a more 

specific disclosure of the same two 

generic limitations that were fully 

taught by the abstract. The court held 

that this did not constitute a new 

ground of rejection because ‘‘the 

example in the translation goes no 

farther than, and merely elaborates 

upon, what is taught by the abstract.’’ 

DBC, 545 F.3d at 1382 n.5. 

2. Changing the statutory basis of 

rejection from § 103 to § 102, but relying 

on the same teachings. If the examiner’s 

answer changes the statutory basis of 

the rejection from § 103 to § 102, and 

relies on the same teachings of the 

remaining reference to support the § 102 

rejection, then the rejection does not 

constitute a new ground of rejection. For 

example, in In re May, 574 F.2d 1082 

(CCPA 1978), a claim directed to a 

genus of chemical compounds was 

rejected under § 103 over a combination 

of references. The primary reference 

disclosed a species that fell within the 

claimed genus. Both the examiner and 

the Board cited the species to reject the 

claim under § 103. The court affirmed 

the rejection, but did so under § 102, 

stating that ‘‘lack of novelty is the 

epitome of obviousness.’’ May, 574 F.2d 

at 1089 (citing In re Pearson, 494 F.2d 

1399, 1402 (CCPA 1974)). Because the 

court relied on the same prior art 

species as both the examiner and Board, 

the court held that this did not 

constitute a new ground of rejection. 

May, 574 F.2d at 1089. 

3. Relying on fewer than all references 

in support of a § 103 rejection, but 

relying on the same teachings. If the 

examiner’s answer removes one or more 

references from the statement of 

rejection under § 103, and relies on the 

same teachings of the remaining 

references to support the § 103 rejection, 

then the rejection does not constitute a 

new ground of rejection. For example, 

in In re Kronig, 539 F.2d 1300, 1302 

(CCPA 1976), the examiner rejected the 

claims under § 103 over four references. 

The Board affirmed the rejection under 

§ 103, but limited its discussion to three 

of the references applied by the 

examiner. Id. The Board relied upon the 

references for the same teachings as did 

the examiner. The court held that this 

did not constitute a new ground of 

rejection. Kronig, 539 F.2d at 1303 

(‘‘Having compared the rationale of the 

rejection advanced by the examiner and 

the board on this record, we are 

convinced that the basic thrust of the 

rejection at the examiner and board 

level was the same.’’). See also In re 

Bush, 296 F.2d 491, 495–96 (CCPA 

1961) (Examiner rejected claims 28 and 

29 under § 103 based upon ‘‘Whitney in 

view of Harth;’’ Board did not enter new 

ground of rejection by relying only on 

Whitney). 

4. Changing the order of references in 

the statement of rejection, but relying on 

the same teachings of those references. 


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If the examiner’s answer changes the 

order of references in the statement of 

rejection under § 103, and relies on the 

same teachings of those references to 

support the § 103 rejection, then the 

rejection does not constitute a new 

ground of rejection. For example, in In 

re Cowles, 156 F.2d 551, 552 (CCPA 

1946), the examiner rejected the claims 

under § 103 over ‘‘Foret in view of either 

Preleuthner or Seyfried.’’ The Board 

affirmed the rejection under § 103, but 

styled the statement of rejection as to 

some of the rejected claims as ‘‘Seyfried 

in view of Foret,’’ but relied on the same 

teachings of Seyfried and Foret on 

which the examiner relied. The court 

held that this did not constitute a new 

ground of rejection. Cowles, 156 F.2d at 

554. See also In re Krammes, 314 F.2d 

813, 816–17 (CCPA 1963) (holding that 

a different ‘‘order of combining the 

references’’ did not constitute a new 

ground of rejection because each 

reference was cited for the ‘‘same 

teaching’’ previously cited). 

5. Considering, in order to respond to 

applicant’s arguments, other portions of 

a reference submitted by the applicant. 

If an applicant submits a new reference 

to argue, for example, that the prior art 

‘‘teaches away’’ from the claimed 

invention (see MPEP § 2145), and the 

examiner’s answer points to portions of 

that same reference to counter the 

argument, then the rejection does not 

constitute a new ground of rejection. In 

In re Hedges, 783 F.2d 1038 (Fed. Cir. 

1986), the claimed invention was 

directed to a process for sulfonating 

diphenyl sulfone at a temperature above 

127° C. Id. at 1039. The examiner 

rejected the claims under § 103 over a 

single reference. The applicant 

submitted three additional references as 

evidence that the prior art teaches away 

from performing sulfonation above 

127° C, citing portions of those 

references which taught lower 

temperature reactions. The Board 

affirmed the rejection, finding the 

applicant’s evidence unpersuasive. On 

appeal, the Solicitor responded to the 

applicant’s ‘‘teaching away’’ argument 

by pointing to other portions of those 

same references which, contrary to 

applicant’s argument, disclosed 

reactions occurring above 127° C. The 

court held that this did not constitute a 

new ground of rejection because ‘‘[t]he 

Solicitor has done no more than search 

the references of record for disclosures 

pertinent to the same arguments for 

which [applicant] cited the references.’’ 

Hedges, 783 F.2d at 1039–40. 

Proposed Bd.R. 41.39(b) proposes to 

revise the current rule to add a 

paragraph heading. No changes are 

proposed to Bd.R. 41.39(b)(1). Proposed 

Bd.R. 41.39(b)(2) does not propose to 

substantively revise the current rule— 

the phrase ‘‘each new ground of 

rejection’’ would be moved to a different 

location in the sentence in which it 

currently appears to increase the clarity 

of the sentence. The Office received a 

comment stating that the two-month 

time period for responding to a new 

ground of rejection is too short to allow 

appellants to properly respond and that 

the period should be the same as that 

afforded to applicants during 

prosecution (3 months under Rule 

1.136(a)). The Office declined to adopt 

the suggestion to change the current rule 

because such a change in the time 

period would increase the overall 

appeal pendency. The Office notes that 

appellant can seek extensions of time of 

this two-month time period under Rule 

1.136(b) for patent applications or Rule 

1.550(c) for ex parte reexamination 

proceedings. 

The Office received another comment 

stating that the requirement in the rule 

proposed in 41.39(b)(2) of the ANPRM 

requiring appellants to file a request to 

docket the appeal be deleted as it would 

place an increased burden on appellant. 

The proposed rule does not propose to 

change the substance of Bd.R. 

41.39(b)(2), which requires appellants to 

file a reply brief addressing each new 

ground of rejection in order to maintain 

the appeal as to the claims subject to the 

new ground of rejection. 

Proposed Bd.R. 41.39(c) proposes to 

add a paragraph heading to the current 

rule. 

Tolling of Time Period To File a Reply 

Brief 

Proposed Bd.R. 41.40 is proposed to 

be added to clearly set forth the 

exclusive procedure for appellant to 

request review of the primary 

examiner’s failure to designate a 

rejection as a new ground of rejection 

via a petition to the Director under Rule 

1.181. This procedure should be used if 

an appellant feels an answer includes a 

new ground of rejection that has not 

been designated as such, and wishes to 

reopen prosecution so that new 

amendments or evidence may be 

submitted in response to the rejection. 

However, if appellant wishes to submit 

only arguments, the filing of a petition 

under Rule 1.181 would not be 

necessary because appellant may submit 

the arguments in a reply brief. 

Proposed Bd.R. 41.40(a) would 

provide that any such petition under 

Rule 1.181 would be required to be filed 

within two months from the entry of the 

examiner’s answer and prior to the 

filing of a reply brief. 

Proposed Bd.R. 41.40(b) would 

provide that a decision granting such a 

Rule 1.181 petition would require 

appellants to file a reply under Rule 

1.111 within two months from the date 

of the decision to reopen prosecution. 

The appeal would be dismissed if 

appellant fails to timely file a reply. 

Proposed Bd.R. 41.40(c) would 

provide that a decision refusing to grant 

such a Rule 1.181 petition would allow 

appellants a two-month time period in 

which to file a single reply brief under 

Proposed Bd.R. 41.41. 

Proposed Bd.R. 41.40(d) would 

provide that if a reply brief is filed prior 

to a decision on the Rule 1.181 petition, 

then the filing of the reply brief would 

act to withdraw the petition and 

maintain the appeal. Jurisdiction would 

pass to the Board upon the filing of the 

reply brief, and the petition under Rule 

1.181 would not be decided on the 

merits. 

Proposed Bd.R. 41.40(e) would 

provide that the time periods described 

in this section are not extendable under 

Rule 1.136(a) and appellant would need 

to seek any extensions of time under the 

provisions of Rules 1.136(b) and 

1.550(c) for extensions of time to reply 

for patent applications and ex parte 

reexaminations, respectively. 

Proposed Bd.R. 41.40 is designed to 

address the numerous comments 

received regarding new grounds of 

rejection by examiners in answers. This 

proposed rule clearly explains the 

proper manner for appellants to address 

a situation where an appellant believes 

that an examiner’s answer contains an 

undesignated new ground of rejection. 

The proposed rule does not create a new 

right of petition—appellants have 

always had the opportunity to file a 

petition under Rule 1.181 if an 

appellant felt that the examiner’s 

answer contained a new ground of 

rejection not so designated. This 

proposed section of the rule merely lays 

out the process to better enable 

appellant to address such concerns. The 

proposed rule also now tolls the time 

period for filing a reply brief, so 

appellants can avoid the cost of 

preparing and filing a reply brief prior 

to the petition being decided, and can 

avoid the cost altogether if the petition 

is granted and prosecution is reopened. 

Similarly, the tolling provision would 

spare examiners the burden of having to 

act on appellants’ requests under Rule 

1.136(b) for extension of the two-month 

time period for filing a reply brief while 

the Rule 1.181 petition is being decided. 

Reply Brief 

Proposed Bd.R. 41.41(a) proposes to 

revise the current rule to add a 


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paragraph heading and to clarify that 

appellants may file only one reply brief 

and that such a reply brief must be filed 

within two months of either the 

examiner’s answer or a decision 

refusing to grant a petition under Rule 

1.181 to designate a new ground of 

rejection in an examiner’s answer. 

The ANPRM proposed to amend this 

rule by explicitly stating that the rule 

allows for only a single reply brief. The 

Office received no comments directed to 

this proposed change and has thus 

adopted it in these proposed rules. 

Proposed Bd.R. 41.41(b) proposes to 

add a paragraph heading and 

subsections to the current rule and to 

delete the current provision that a reply 

brief which is not in compliance with 

the provisions of the remainder of 

proposed Bd.R. 41.41 will not be 

considered by the Board. Specifically, 

proposed paragraph (b)(1) prohibits a 

reply brief from including new or nonadmitted amendments or evidence, 

which is the same language as current 

Bd.R. 41.41(a)(2). The Office received 

one comment suggesting that appellants 

should be allowed to rely on new 

evidence in a reply brief. The Office 

declined to adopt this suggestion 

because it is important that the Board 

have the benefit of the examiner’s initial 

evaluation of any evidence relied upon 

by appellants prior to the Board 

deciding any issues pertaining to the 

relevance and weight to be given to such 

evidence in deciding the issues on 

appeal. 

Proposed Bd.R. 41.41(b)(2) would 

provide that any arguments which were 

not raised in the appeal brief or are not 

made in response to arguments raised in 

the answer would not be considered by 

the Board, absent a showing of good 

cause. 

The ANPRM proposed amending the 

rule to limit reply briefs to responding 

to points made in the examiner’s answer 

and to disallow new arguments that 

were not made previously in the appeal 

brief and are not responsive to the 

answer. The Office received a few 

comments suggesting that new 

arguments should be allowed in reply 

briefs to address new arguments and 

issues presented in the answer—as well 

as to address new grounds of rejection. 

The proposed rule allows new 

arguments in the reply brief that are 

responsive to arguments raised in the 

examiner’s answer, including any 

designated new ground of rejection. See 

Proposed Bd.R. 41.41(b)(2)(ii). 

The Office also received a few 

comments suggesting that there be a 

limited option to raise additional 

arguments or to revise arguments in a 

reply brief to address intervening 

changes in the law. The Office agrees 

that an intervening change in the law, 

if pertinent to the issues before the 

Board, is ‘‘good cause’’ for allowing new 

or revised arguments to be raised in a 

reply brief. Proposed paragraph (b)(2) 

provides a ‘‘good cause’’ exception to the 

rule against raising new arguments. 

The Office received a comment that 

any requirement for appellants to 

identify any new, versus previously 

presented, arguments would be difficult 

to enforce and would lead to disputes 

about what is ‘‘new.’’ The proposed rule 

contains no requirement for appellants 

to identify new arguments. 

The ANPRM proposed certain 

additional formatting requirements for 

reply briefs. The Office received a 

comment requesting that these 

formatting requirements be removed 

from the proposed rule. The proposed 

rule in this NPRM contains none of 

these specific formatting requirements 

for reply briefs. 

Proposed Bd.R. 41.41(c) proposes to 

add a paragraph heading to the current 

rule. 

Examiner’s Response to Reply Brief 

The proposed rule would delete Bd.R. 

41.43. 

The ANPRM proposed to delete Bd.R. 

41.43, which currently requires the 

examiner to acknowledge reply briefs 

and allows examiners to file 

supplemental answers. The Office 

received one comment in favor of 

removing the section of the rule and no 

comments opposed to this proposed 

change. In keeping with the ANPRM, 

the proposed rule would delete Bd.R. 

41.43 in its entirety. 

Oral Hearing 

Proposed Bd.R. 41.47 proposes 

removing references to the 

supplemental examiner’s answer in 

paragraphs (b) and (e)(1), as the 

proposed rules do not allow for 

supplemental examiner’s answers. The 

proposed rule would further revise 

paragraph (b) to change the time period 

in which a request for oral hearing is 

due to take into account the potential 

for the time period for filing a reply 

brief to be tolled under Proposed Bd.R. 

41.40. 

The ANPRM proposed several 

changes to this section of the rules. The 

Office did not receive any comments to 

these proposed changes. Despite no 

opposition to the changes proposed in 

the ANPRM, in an effort to avoid 

changing the current rule except where 

necessary, the current rule was used as 

the basis for the proposed changes to 

this section in this NPRM. 

Decisions and Other Actions by the 

Board 

Proposed Bd.R. 41.50(a) proposes to 

revise the current rule by: Adding a 

paragraph heading; deleting the 

subsection separation in Bd.R. 

41.50(a)(1) and (2); deleting the 

provision allowing the Board to remand 

applications to the examiner; and 

deleting the provision allowing an 

examiner to write a supplemental 

examiner’s answer in response to a 

remand by the Board for further 

consideration of a rejection. This 

proposed rule would not provide for the 

Board, under its independent authority, 

to remand an application to the 

examiner. The proposed rule would 

retain the portion of current rule which 

provides a mechanism for the Director 

to order an application remanded under 

Bd.R. 41.35(c). The Director has the 

option to delegate this remand power as 

appropriate. 

The ANPRM proposed to revise the 

current rule so that only the Chief 

Administrative Patent Judge had the 

authority to remand an application to 

the examiner. The Office received a 

wide range of comments regarding this 

proposed modification, some comments 

in direct contradiction with others. Two 

comments expressed the view that the 

Chief Administrative Patent Judge 

should not have sole authority over 

merits remands. However, another 

comment expressed the opposite view 

that allowing the Chief Administrative 

Patent Judge to issue remand orders 

would improve the appellate process 

before the Board. Another comment 

expressed the view that the Board 

should issue remands sparingly. Yet 

another comment expressed the distinct 

view that the remand power is an 

important tool for the Board to require 

an examiner to correct errors and that it 

promotes efficiency at the Board by 

freeing judges from doing the job of the 

examiner and allows the examiner to 

correct errors based on oversight. The 

comment further notes that if the panel 

could no longer remand an application, 

it would require the Board to force 

decisions into either an affirmance or 

reversal and would negatively impact 

the quality of the Board decisions. 

However, another comment was in favor 

of the proposed change, noting that the 

Board has used its remand power to 

avoid deciding cases on the merits and 

instead remanded cases to the examiner. 

The Office agrees with some of the 

comments noting that remands should 

be used sparingly. The Office’s position 

is that Director-ordered remands would 

be used in most instances to correct 

errors in the appeal that prevent the 


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Board from otherwise deciding the 

issues before it. The Board would 

decide the issues before it based on the 

rejections as presented by the examiner 

and the arguments made by appellant. 

This proposed rule would lead to more 

compact prosecution because it would 

provide an incentive for examiners to 

fully explain and articulate the 

rejections earlier in the prosecution. 

Proposed Bd.R. 41.50(b) proposes to 

add a paragraph heading to the current 

rule. Additionally, Proposed Bd.R. 

41.50(b) would revise the current rule to 

clarify the language in the rule allowing 

the Board to enter a new ground of 

rejection. The proposed rule also 

proposes to revise the language in 

paragraph (b)(1) to clarify the language 

and to make it consistent with other 

modifications in the proposed rule (i.e., 

deleting the reference to the Board 

remanding the matter to the examiner). 

Proposed Bd.R. 41.50(b)(2) proposes to 

revise the current rule to reference the 

definition of ‘‘Record’’ provided in 

Proposed Bd.R. 41.30. 

Bd.R. 41.50 provides the Board with 

the authority to enter a new ground of 

rejection. The Office received a 

comment to the ANPRM in favor of 

allowing the Board to enter a new 

ground of rejection in a decision. The 

Office received other comments, 

however, opposing the Board’s authority 

to enter a new ground of rejection. In 

order for the Board to protect the public 

from the issuance of claims that have 

been foreclosed by intervening changes 

in law, and to shape the law on 

patentability in areas not yet addressed 

by the Federal Circuit, the Office 

determined that the Board should retain 

its authority to enter new grounds of 

rejection. Additionally, this authority to 

enter a new ground is important in 

situations where the Board’s articulation 

of its reasons for sustaining a rejection 

goes beyond the thrust of the examiner’s 

articulation of the rejection, such that 

appellant has not had a fair opportunity 

to respond to the reasoning. In such 

cases, the Board would designate its 

decision as containing a new ground of 

rejection to give appellants an 

opportunity to respond. 

The Office received two comments 

requesting that the time frame for 

responding to a new ground of rejection 

raised in a decision be changed to three 

months. As discussed supra, in the 

interest of avoiding an increase in 

appeal pendency, the Office did not 

adopt this suggestion. The concerns 

raised in the comments are understood. 

However, the proposed rule retains the 

two-month response time frame in the 

interest of ensuring that the appeal 

proceeds expeditiously and efficiently. 

The Office notes that the rule provides 

for extensions of time to respond under 

Rule 1.136(b) for patent applications 

and Rule 1.550(c) for ex parte 

reexamination proceedings. See 

Proposed Bd.R. 41.50(d). 

The Office also received a comment 

requesting that appellants be given the 

option to submit new arguments, 

evidence, and amendments to the Board 

in response to a new ground of 

rejection. The proposed rule allows 

appellants to submit new arguments in 

response to a designated new ground of 

rejection in a request for rehearing 

without reopening prosecution. See 

Proposed Bd.R. 41.52(a)(3). As in the 

current rule, the proposed rule requires 

appellants to reopen prosecution to 

introduce new amendments or 

evidence. The current rule is retained in 

this regard because the examiner, with 

his/her subject matter expertise, should 

be the first to review new amendments 

and/or evidence submitted in an 

application, prior to the Board’s 

appellate-level review. 

Proposed Bd.R. 41.50(c) proposes to 

revise the current rule to remove the 

Board’s power to suggest how a claim 

may be amended to overcome a 

rejection and proposes to add new 

language to the rule explaining the 

procedure by which appellants can seek 

review of a panel’s failure to designate 

a decision as containing a new ground 

of rejection. The proposed rule provides 

that review of decisions which 

appellants believe contain a new ground 

of rejection should be requested through 

a request for rehearing consistent with 

the provisions of Proposed Bd.R. 41.52. 

The Office received a comment to the 

ANPRM that appellants should be 

afforded the right to respond to new 

grounds of rejection presented in 

decisions from the Board regardless of 

whether they are designated as such. To 

address this concern, the proposed rule 

allows appellants to respond to new 

grounds, whether or not designated as 

such, in a request for rehearing. 

Proposed Bd.R. 41.52(a)(3) allows for 

new arguments in a request for 

rehearing responding to a new ground of 

rejection designated as such, and 

Proposed Bd.R. 41.52(a)(4) allows for 

new arguments in a request for 

rehearing to argue that the Board’s 

decision contains an undesignated new 

ground of rejection. If such a request for 

rehearing under Proposed Bd.R. 

41.52(a)(4) is granted, then the Board 

would modify its original decision to 

designate the decision as containing a 

new ground of rejection under Proposed 

Bd.R. 41.50(b) and provide appellants 

with the option to either reopen 

prosecution under Proposed Bd.R. 

41.50(b)(1) or request rehearing on the 

merits of the designated new ground of 

rejection under Proposed Bd.R. 

41.50(b)(2). 

Proposed Bd.R. 41.50(d) proposes to 

revise the current rule to add a 

paragraph heading, and to delete the 

‘‘non-extendable’’ limitation on the 

response time period which appears in 

the current rule. The Office received a 

comment at the roundtable discussion 

held on January 20, 2010, questioning 

why this time period was not 

extendable and noting that appellants 

may have good cause to show why 

additional time might be needed. The 

proposed rule, by removing the ‘‘nonextendable’’ limitation from the rule, 

now allows appellants to seek 

extensions of time under Rule 1.136(b) 

for patent applications and Rule 

1.550(c) for ex parte reexamination 

proceedings. The Office received 

another comment to the ANPRM 

asserting that the ability of the Board to 

allow evidence to be submitted under 

Proposed Bd.R. 41.50(d) is not 

consistent with the prohibition in 

Proposed Bd.R. 41.33 prohibiting 

submission of additional evidence. The 

Office determined that it was important 

to retain this authority to seek 

additional briefing and information 

from appellants in those rare cases 

where the Board felt such additional 

briefing and information would help the 

Board provide a more informed 

decision. 

The proposed rule proposes to delete 

current Bd.R. 41.50(e) consistent with 

the change in Proposed Bd.R. 41.50(a), 

as the Board would no longer remand 

cases under this provision. 

Proposed Bd.R. 41.50(e) would 

contain the language of current Bd.R. 

41.50(f) and proposes to add a 

paragraph heading. 

Rehearing 

Proposed Bd.R. 41.52(a)(1) proposes 

to add cross-references to relevant 

sections of the rule and to revise the 

current rule to clarify that arguments 

which are not raised and evidence 

which was not previously relied upon 

are not permitted in the request for 

rehearing, unless consistent with the 

remainder of Proposed Bd.R. 41.52(a). 

Proposed Bd.R. 41.52(a)(2) proposes 

to delete the requirement of a showing 

of good cause for appellants to present 

new arguments based on a recent 

relevant decision of the Board or the 

Federal Circuit. This change is proposed 

because it is the Office’s position that a 

new argument based on a recent 

relevant decision would inherently 

make a showing of good cause and thus 


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the text of the current rule seemed 

redundant. 

Proposed Bd.R. 41.52(a)(3) proposes 

to revise the current rule to change the 

word ‘‘made’’ to ‘‘designated’’ to clarify 

that new arguments are permitted in 

response to a new ground of rejection 

designated as such in the Board’s 

opinion. 

The proposed rules seek to add 

Proposed Bd.R. 41.52(a)(4) to make clear 

that new arguments are permitted in a 

request for rehearing for appellants 

seeking to have the Board designate its 

decision as containing a new ground of 

rejection that has not been so 

designated. 

The proposed rules would not modify 

Bd.R. 41.52(b). 

The ANPRM proposed barring new 

arguments in requests for rehearing 

except in response to a new ground of 

rejection or a new legal development. 

The Office received a comment that the 

rule proposed in the ANPRM barring 

new arguments was too restrictive in its 

scope because it did not allow for new 

arguments in the event that the Board 

used logic not set forth by the examiner. 

To address the concerns raised in the 

comments, Proposed Bd.R. 41.52 has 

been revised to specifically allow 

appellants to present new arguments in 

a request for rehearing when they 

believe that the Board has made a new 

ground of rejection that has not been so 

designated. Additionally, appellants are 

specifically permitted to make new 

arguments to respond to a designated 

new ground of rejection in a request for 

rehearing. 

Action Following Decision 

Proposed Bd.R. 41.54 is substantially 

the same as Bd.R. 41.54, except that the 

proposed rule proposes to revise the 

current rule to specifically state that 

jurisdiction over an application or a 

patent under ex parte reexamination 

passes to the examiner after a decision 

on appeal is issued by the Board. This 

slight revision to the language of the 

current rule is proposed to incorporate 

the language of Rule 1.197(a), which 

would be deleted under the proposed 

rules. By incorporating the language of 

Rule 1.197(a) into Proposed Bd.R. 41.54, 

the rules for passing jurisdiction back to 

the examiner after decision by the Board 

would not be substantively changed. 

Sanctions 

The ANPRM proposed including a 

new section to the rule to clarify 

instances in which the Board could 

impose sanctions on an appellant. The 

Office received numerous comments 

opposing the addition of a new section 

on sanctions. The proposed rule does 

not include any such section. 

Rulemaking Considerations 

Executive Order 12866: This 

rulemaking has been determined to be 

significant for purposes of Executive 

Order 12866 (Sept. 30, 1993). 

Administrative Procedure Act: The 

changes in the proposed rule relate 

solely to the procedure to be followed 

in filing and prosecuting an ex parte 

appeal to the Board. 

Therefore, these rule changes involve 

rules of agency practice and procedure 

under 5 U.S.C. 553(b)(A), and prior 

notice and an opportunity for public 

comment are not required pursuant to 5 

U.S.C. 553(b)(A) (or any other law). See 

Bachow Commc’ns, Inc. v. F.C.C., 237 

F.3d 683, 690 (D.C. Cir. 2001) (rules 

governing an application process are 

‘‘rules of agency organization, 

procedure, or practice’’ and exempt from 

the Administrative Procedure Act’s 

notice and comment requirement); 

Merck & Co. v. Kessler, 80 F.3d 1543, 

1549–50 (Fed. Cir. 1996) (the rules of 

practice promulgated under the 

authority of former 35 U.S.C. 6(a) (now 

in 35 U.S.C. 2(b)(2)) are not substantive 

rules to which the notice and comment 

requirements of the Administrative 

Procedure Act apply); Fressola v. 

Manbeck, 36 USPQ2d 1211, 1215 

(D.D.C. 1995) (‘‘it is extremely doubtful 

whether any of the rules formulated to 

govern patent or trade-mark practice are 

other than ‘interpretive rules, general 

statements of policy, * * * procedure, 

or practice’ ’’ (quoting C.W. Ooms, The 

United States Patent Office and the 

Administrative Procedure Act, 38 

Trademark Rep. 149, 153 (1948)). 

Because the proposed rule is 

procedural, it is not required to be 

published for notice and comment. 

Nevertheless, the Office is publishing 

this notice in the Federal Register and 

in the Official Gazette of the United 

States Patent and Trademark Office in 

order to solicit public comment before 

implementing the rule. 

Regulatory Flexibility Act: Prior notice 

and an opportunity for public comment 

are not required pursuant to 5 U.S.C. 

553 or any other law. Neither a 

Regulatory Flexibility Act analysis nor a 

certification under the Regulatory 

Flexibility Act (5 U.S.C. 601 et seq.) is 

applicable to this notice of proposed 

rulemaking. See 5 U.S.C. 603. 

Nonetheless, the Deputy General 

Counsel for General Law of the United 

States Patent and Trademark Office has 

certified to the Chief Counsel for 

Advocacy of the Small Business 

Administration that, for the reasons 

discussed below, this notice of proposed 

rulemaking, Rules of Practice Before the 

Board of Patent Appeals and 

Interferences in Ex Parte Appeals [RIN 

0651–AC37], will not have a significant 

economic impact on a substantial 

number of small entities. See 5 U.S.C. 

605(b) (Regulatory Flexibility Act). 

There are no fee changes associated 

with the proposed rule. The estimates of 

economic impact provided below are 

based on agency expertise in patent 

prosecution practice. 

Claims on Appeal 

In those instances where appellants 

wish to appeal all claims under 

rejection, which are the majority of 

appeals, there will be a cost savings. 

The proposed changes eliminate the 

requirement for appellants to 

affirmatively state (in the status of 

claims section of the appeal brief), all of 

the claims on appeal. There may be a 

slight increase in cost, however, to a 

small subset of appellants who choose 

not to appeal all of the rejected claims. 

For this small subset of appellants, the 

proposed rule would require 

cancellation of any non-appealed claims 

by filing an amendment. 

The Office estimates that, for those 

appellants choosing to appeal fewer 

than all of the rejected claims, this 

proposed change may result in two 

hours of attorney time toward the 

preparation of such an amendment. For 

purposes of comparison, the 2009 report 

of the Committee on Economics of Legal 

Practice of the American Intellectual 

Property Law Association (‘‘the AIPLA 

2009 Report’’) notes that the median cost 

for the preparation and filing of a patent 

application amendment/argument of 

minimal complexity is $1,850. Using the 

AIPLA 2009 Report’s median billing rate 

for attorneys in private firms of $325 per 

hour, this cost equates to approximately 

5.7 hours of attorney time. The Office’s 

estimate of two hours of attorney time 

($650) for an amendment merely 

canceling claims is based on the fact 

that such an amendment will not 

contain an argument section, unlike a 

regular patent application amendment/ 

argument. As such, the Office estimates 

that the amendment to cancel claims 

will be significantly less timeconsuming than a regular patent 

application amendment/argument. 

Based on the Office’s experience, it 

estimates that such an amendment 

canceling claims will only be filed in 

approximately 1% of appeals. The 

Board decided Ex parte Ghuman, 88 

USPQ2d 1478, 2008 WL 2109842 (BPAI 

2008) (precedential) in May 2008. Of the 

approximately 2,056 reported Board 

decisions and orders issued in the 

remainder of FY 2008, only ten such 


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decisions and orders cited Ghuman in 

noting that an appellant had withdrawn 

claims from appeal. In FY 2009 (October 

2008–September 2009), of the 

approximately 5,612 reported Board 

decisions and orders, only twenty cited 

Ghuman in noting that an appellant had 

withdrawn claims from appeal. In FY 

2010 (October 2009–September 2010), of 

the approximately 5,990 reported Board 

decisions and orders, only twenty-six 

cited Ghuman in noting that an 

appellant had withdrawn claims from 

appeal. While these numbers may not 

represent a precise indication of the 

numbers of appeals where appellants 

chose not to appeal all of the rejected 

claims, these figures are provided as an 

indication of the relatively small 

number of appeals in which appellants 

choose to appeal fewer than all of the 

rejected claims without canceling such 

unappealed claims prior to appeal. 

Based on this data, the Office found that 

approximately 0.41% of all appeals had 

Ghuman issues, i.e., where fewer than 

all of the rejected claims were appealed. 

For purposes of calculating additional 

cost to appellants from this proposed 

rule change, the Office rounded up to 

1% and used this as a conservative 

(high) estimate for the number of 

amendments expected. As such, this 

proposed rule change will not have a 

significant economic impact on a 

substantial number of small entities. 

Additionally, for the majority of 

appellants this proposed change will 

likely result in cost savings. Because the 

current rule allows appellants to appeal 

fewer than all of the claims under 

rejection, the current rule also requires 

appellants to affirmatively state (in the 

status of claims section of the appeal 

brief), all of the claims on appeal. Under 

this proposed rule, the Board would 

presume that appellants intend to 

appeal all claims under rejection unless 

those claims under rejection for which 

review is not sought are canceled. This 

proposed change to the rule allows the 

Office to eliminate the current 

requirement for appellants to identify 

the claims on appeal in the appeal brief. 

Thus, in those instances where 

appellants wish to appeal all claims 

under rejection, which represents the 

majority of appeals, the appellant’s 

burden is lessened by not having to 

include a listing of the status of all of 

the claims under rejection. 

Changes to Appeal Brief Requirements 

The Office also estimates a net cost 

savings to all appellants as a result of 

the proposed changes to the appeal brief 

requirements. In particular, the Office 

estimates a savings due to the proposed 

elimination of certain appeal brief 

requirements and proposed changes to 

other requirements to make them more 

flexible. The Office estimates a small 

increase in cost to the subset of 

appellants who choose to argue claims 

separately or as a subgroup. 

For the subset of appellants who 

choose to argue claims separately or as 

a subgroup, the small increase in cost 

would merely be the addition of 

subheadings before separately argued 

claims or subgroups. The Office 

estimates this added burden may 

increase the time it takes to prepare an 

appeal brief by 0.2 hours for those 

appellants who choose to separately 

argue claims. This estimate is based on 

the Office’s view of the time it would 

take to add subheadings based on 

agency expertise in patent prosecution 

practice. The estimated small increase 

in cost would not apply to all appeal 

briefs because some appellants choose 

to argue all of the claims rejected under 

a ground of rejection as a single group. 

However, since the Office does not track 

the number of appeals in which 

appellants argue all claims as a single 

group versus the number of appeals in 

which appellants argue some claims 

separately, the Office has applied this 

increase to the estimate of all appeal 

briefs filed. Nevertheless, this proposed 

change will not have a significant 

economic impact on a substantial 

number of small entities. 

Notably, the overall proposed changes 

to the appeal brief requirements will 

result in net savings to appellants. By 

allowing for more flexibility in how an 

appellant chooses to present an appeal 

to the Board and by eliminating many 

current appeal brief requirements, 

appellants will incur less cost overall in 

preparation of appeal briefs. As 

discussed infra in the Paperwork 

Reduction Act section of the notice, the 

Office estimates a net average savings in 

preparation time under the proposed 

rule of three hours of attorney time as 

compared to the previous estimate 

under the current rule. This estimate is 

based on the Office’s view of the net 

time saved in preparation of an appeal 

brief as a result of the proposed changes 

based on agency expertise in patent 

prosecution practice. As such, the 

overall average attorney time and cost it 

will take to prepare an appeal brief 

under the proposed rule will be reduced 

from 34 hours ($11,050) to 31 hours 

($10,075). Using the median billing rate 

of $325 per hour, as published in the 

AIPLA 2009 Report, the Office estimates 

that these proposed rule changes will 

result in an average savings of $975 per 

appeal brief. This savings will apply 

equally to large and small entities. 

Accordingly, any costs related to the 

filing of an amendment canceling claims 

and the addition of subheadings to an 

appeal brief will not have a significant 

economic impact on a substantial 

number of small entities. Moreover, 

proposed changes to the rule, as a 

whole, will likely result in a net cost 

savings to an appellant and, therefore, 

also not have a significant economic 

impact on a substantial number of small 

entities. 

Unfunded Mandates: The Unfunded 

Mandates Reform Act requires, at 2 

U.S.C. 1532, that agencies prepare an 

assessment of anticipated costs and 

benefits before issuing any rule that may 

result in expenditure by State, local, and 

tribal governments, in the aggregate, or 

by the private sector, of $100 million or 

more (adjusted annually for inflation) in 

any given year. This rule would have no 

such effect on State, local, and tribal 

governments or the private sector. 

Executive Order 13132: This 

rulemaking does not contain policies 

with federalism implications sufficient 

to warrant preparation of a Federalism 

Assessment under Executive Order 

13132 (Aug. 4, 1999). 

Paperwork Reduction Act: This 

proposed rule involves information 

collection requirements which are 

subject to review by the Office of 

Management and Budget under the 

Paperwork Reduction Act of 1995 (44 

U.S.C. 3501 et seq.). The collections of 

information in the rule have been 

reviewed and previously approved by 

OMB under control numbers 0651–0031 

and 0651–0063. 

As stated above in the Regulatory 

Flexibility Act section of this notice, 

while the majority of the changes to the 

rule being proposed will either have no 

impact on or will lessen the burden to 

the public as compared to the collection 

of information previously approved by 

OMB, the Office has identified two 

proposed changes that may, in certain 

circumstances, increase the burden to 

the public. 

Specifically, the Office has estimated 

that the proposed change to Bd.R. 

41.31(c) will impose an increased 

burden of two hours time to a small 

subset of appellants (1%) who choose 

not to seek review of all claims under 

rejection by requiring such appellants to 

file an amendment canceling any 

unappealed claims, or otherwise have 

the Board treat all rejected claims as 

being on appeal. Additionally, the 

Office estimated that the proposed 

change to the briefing requirements in 

Bd.R. 41.37(c)(1)(vii) (requiring 

appellants to place any claim(s) argued 

separately or as a subgroup under a 

separate subheading that identifies the 


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claim(s) by number) would result in 0.2 

hours of added time for those appellants 

who choose to separately argue their 

claims. The estimates are based on the 

Office’s expertise in patent prosecution 

practice. This increase in burden hours 

would not apply to all appeal briefs 

because some appellants choose to 

argue all of the claims rejected under a 

ground of rejection as a single group. 

However, since the Office does not track 

the number of appeals in which 

appellants argue all claims as a single 

group versus the number of appeals in 

which appellants argue some claims 

separately, for purposes of estimating 

the overall burden, the Office has 

applied this 0.2 hour increase to the 

estimate of all appeal briefs filed. 

The Office has also specifically 

identified below at least eleven 

proposed changes that will lessen the 

burden to the public as compared to the 

current rule. 

1. The proposed change to Bd.R. 

41.12(b) lessens the burden on appellant 

by removing the current requirement for 

appellant to include parallel citations 

(Bd.R. 41.12(a)(2)–(3)) to both the West 

Reporter System and to the United 

States Patents Quarterly for any decision 

other than a United States Supreme 

Court decision, and further lessens the 

burden on appellant by no longer 

requiring citation to a particular 

reporter. 

2. The proposed change to Bd.R. 

41.37(c)(1)(i) lessens the burden on 

appellant because it provides for a 

default in the event that this item is 

omitted from the brief, such that the 

appellant is not required to include this 

section in the brief if the inventors are 

the real party in interest. 

3. The proposed change to Bd.R. 

41.37(c)(1)(ii) lessens the burden on 

appellant because it: (a) Limits the duty 

to provide information as to only those 

related cases that involve an application 

or patent co-owned by appellant or 

assignee; (b) provides a default 

assumption in the event that this item 

is omitted from the brief so that 

appellants are no longer required to 

make a statement that ‘‘there are no such 

related cases’’; and (c) no longer requires 

filing of copies of decisions in related 

proceedings. 

4. The proposed change to Bd.R. 

41.37(c)(1)(iii) lessens the burden on 

appellant by eliminating the 

requirement to identify the status of 

claims in the appeal brief. 

5. The proposed change to Bd.R. 

41.37(c)(1)(iv) lessens the burden on 

appellant by lessening the required 

disclosure from a statement of the status 

of any amendments to simply an 

identification of the filing date of the 

last-entered amendment. This proposed 

change further lessens the burden on 

appellant by providing a default 

assumption of no such amendments in 

the event that this item is omitted from 

the brief, such that the appellant is not 

required to include this section in the 

brief in the event that no amendments 

were made to the claims. 

6. The proposed change to Bd.R. 

41.37(c)(1)(v) lessens the burden on 

appellant by limiting the summary of 

the claimed subject matter to require 

annotation only for ‘‘each limitation in 

dispute by appellant.’’ The proposed 

rule provides more flexibility than the 

current rule by allowing citation to 

paragraph number (instead of limiting 

citation to page and line number). The 

proposed rule similarly limits the 

requirement for a § 112, ¶ 6 summary to 

only those recitations ‘‘in dispute by 

appellant.’’ The proposed change also 

clarifies the current Office policy, which 

does not allow reference to the patent 

application publication in the summary 

of claim subject matter. Since improper 

reference to the patent application 

publication is a current cause of 

defective briefs, this rule change is 

proposed to reduce confusion. 

7. The proposed change to Bd.R. 

41.37(c)(1)(vi) lessens the burden on 

appellant by eliminating the 

requirement that appellant state the 

grounds of rejection to be reviewed on 

appeal in the appeal brief. The Board 

would look to documents already of 

Record (i.e., the Office action from 

which the appeal is taken and any 

subsequent Advisory Action or PreAppeal Conference Decision) to 

determine the grounds of rejection on 

appeal. 

8. The proposed change to Bd.R. 

41.37(c)(1)(vii) lessens the burden on 

appellant by allowing appellant’s 

headings to ‘‘reasonably identify the 

ground being contested (e.g., by claim 

number, statutory basis, and applied 

reference, if any).’’ The current rule has 

occasionally been interpreted as a 

verbatim requirement and resulted in 

briefs being found defective for failure 

to state the ground of rejection in the 

heading exactly the same as stated in 

the Office action from which the appeal 

was taken. The proposed rule clarifies 

that this is not a verbatim requirement 

and allows more flexibility in the brief. 

9. The proposed change to Bd.R. 

41.37(c)(1)(viii) lessens the burden on 

appellant by eliminating the 

requirement for appellants to file a 

claims appendix containing a copy of 

claims on appeal. The Board would look 

to the last-entered amendment in the 

Record to identify the claims on appeal. 

10. The proposed change to Bd.R. 

41.37(c)(1)(ix) lessens the burden on 

appellant by eliminating the 

requirement for appellant to file an 

evidence appendix containing copies of 

evidence relied upon. The Board would 

look to the Record to obtain copies of 

the evidence relied upon in the briefs. 

11. The proposed change to Bd.R. 

41.37(c)(1)(x) lessens the burden on 

appellant by eliminating the 

requirement for appellant to file a 

related proceedings appendix 

containing copies of decisions in related 

proceedings. The Board would look to 

the records in the Office and other 

publicly available sources to locate and 

review decisions rendered in any 

related proceedings. 

In the approved information 

collection [OMB Control Number 0651– 

0063], the Office estimated the average 

appeal brief took 34 hours to prepare. In 

light of the proposed changes to the 

current rule for briefing requirements 

for filing appeal briefs, and taking into 

account the eleven proposed changes 

that will lessen the burden and the one 

proposed change (i.e., addition of 

subheadings) that will add a burden, the 

agency estimates that the proposed 

changes to the current rule will result in 

a net average decrease of approximately 

3 hours per appeal brief from the prior 

estimate, thereby lowering the previous 

average estimate of approximately 34 

hours to 31 hours to prepare an appeal 

brief. This estimate is based on the net 

impact of the proposed changes and 

time saved in preparation of an appeal 

brief based on agency expertise in 

patent prosecution practice. Using the 

median billing rate of $325 per hour, as 

published in the AIPLA 2009 Report, 

the Office estimates that these proposed 

rule changes will result in an average 

savings of $975 per appeal brief. 

The Office notes that the number and 

significance of these proposed changes 

effecting a lessening of the burden to 

appellants substantially outweigh the 

proposed changes that may result, in 

certain circumstances, in increased 

burden to appellants. The Office will 

submit an information collection 

package to OMB for its review and 

approval. 

Interested persons are requested to 

send comments regarding this 

information collection, including 

suggestions for reduction of this burden 

to: (1) The Office of Information and 

Regulatory Affairs, Office of 

Management and Budget, New 

Executive Office Building, Room 10202, 

725 17th Street, NW., Washington, DC 

20503, Attention: Desk Officer for the 

Patent and Trademark Office; and (2) 

The Board of Patent Appeals and 


hsrobinson on DSK69SOYB1PROD with PROPOSALS2
69846 Federal Register / Vol. 75, No. 219 / Monday, November 15, 2010 / Proposed Rules 

Interferences, P.O. Box 1451, 

Alexandria, VA 22313–1451, Attention: 

Linda Horner. 

Notwithstanding any other provision 

of law, no person is required to respond 

to nor shall a person be subject to a 

penalty for failure to comply with a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act unless that collection of 

information displays a currently valid 

OMB control number. 

List of Subjects 

37 CFR Part 1 

Administrative practice and 

procedure, Courts, Freedom of 

Information, Inventions and patents, 

Reporting and recordkeeping 

requirements, Small Businesses. 

37 CFR Part 41 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers. 

Proposed Amendments to the 

Regulatory Text 

For the reasons stated in the 

preamble, the Under Secretary of 

Commerce for Intellectual Property and 

Director of the United States Patent and 

Trademark Office proposes to amend 37 

CFR parts 1 and 41 as follows: 

PART 1—RULES OF PRACTICE IN 

PATENT CASES 

1. The authority citation for part 1 

continues to read as follows: 

Authority: 35 U.S.C. 2(b)(2), unless 

otherwise noted. 

2. Amend § 1.197 by revising the 

section heading and removing and 

reserving paragraph (a). 

The revision reads as follows: 

§ 1.197 Termination of proceedings. 

* * * * * 

PART 41—PRACTICE BEFORE THE 

BOARD OF PATENT APPEALS AND 

INTERFERENCES 

3. Revise the authority citation for 

part 41 to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 

23, 32, 41, 132, 133, 134, 135, 306, and 315. 

Subpart A—General Provisions 

4. Revise § 41.12 to read as follows: 

§ 41.12 Citation of authority. 

(a) For any United States Supreme 

Court decision, citation to the United 

States Reports is preferred. 

(b) For any decision other than a 

United States Supreme Court decision, 

citation to the West Reporter System is 

preferred. 

(c) Citations to authority must include 

pinpoint citations whenever a specific 

holding or portion of an authority is 

invoked. 

(d) Non-binding authority should be 

used sparingly. If the authority is not an 

authority of the Office and is not 

reproduced in the United States Reports 

or the West Reporter System, a copy of 

the authority should be provided. 

Subpart B—Ex parte Appeals 

5. Amend § 41.30 by adding a 

definition for ‘‘record’’ in alphabetical 

order to read as follows: 

§ 41.30 Definitions. 

* * * * * 

Record means the items listed in the 

content listing of the image file wrapper 

of the official file of the application or 

reexamination proceeding on appeal, 

excluding amendments, evidence, and 

other documents that were denied entry. 

6. Amend § 41.31 by revising 

paragraphs (a) introductory text, (b) and 

(c) to read as follows: 

§ 41.31 Appeal to Board. 

(a) Who may appeal and how to file 

an appeal. An appeal is taken to the 

Board by filing a notice of appeal. 

* * * * * 

(b) The signature requirements of 

§§ 1.33 and 11.18(a) of this title do not 

apply to a notice of appeal filed under 

this section. 

(c) An appeal, when taken, is 

presumed to be taken from the rejection 

of all claims under rejection unless 

cancelled by an amendment filed 

pursuant to §§ 1.121, 1.173, or 1.530 of 

this title. Questions relating to matters 

not affecting the merits of the invention 

may be required to be settled before an 

appeal can be considered. 

* * * * * 

7. Amend § 41.33 by revising 

paragraphs (c) and (d)(2) to read as 

follows: 

§ 41.33 Amendments and affidavits or 

other evidence after appeal. 

* * * * * 

(c) All other amendments filed after 

the date of filing an appeal pursuant to 

§ 41.31(a)(1) through (a)(3) will not be 

admitted except as permitted by 

§§ 41.39(b)(1) and 41.50(b)(1). 

(d) * * * 

(2) All other affidavits or other 

evidence filed after the date of filing an 

appeal pursuant to § 41.31(a)(1) through 

(a)(3) will not be admitted except as 

permitted by §§ 41.39(b)(1) and 

41.50(b)(1). 

6. Revise § 41.35 to read as follows: 

§ 41.35 Jurisdiction over appeal. 

(a) Beginning of jurisdiction. 

Jurisdiction over the proceeding passes 

to the Board upon the filing of a reply 

brief under § 41.41 or the expiration of 

the time in which to file such a reply 

brief, whichever is earlier. 

(b) End of jurisdiction. The 

jurisdiction of the Board ends when: 

(1) The Director enters a remand order 

(See § 41.35(c)), 

(2) The Board enters a final decision 

(See § 41.2 of this part) and judicial 

review is sought or the time for seeking 

judicial review has expired, 

(3) An express abandonment which 

complies with § 1.138 of this title is 

recognized, 

(4) A request for continued 

examination is filed which complies 

with § 1.114 of this title, 

(5) Appellant fails to take any 

required action under §§ 41.39(b), 

41.50(b), or 41.50(d), and the Board 

enters an order of dismissal, or 

(6) Appellant reopens prosecution in 

response to a new ground of rejection 

entered in a decision of the Board (See 

§ 41.50(b)(1)). 

(c) Remand ordered by the Director. 

Prior to the entry of a decision on the 

appeal by the Board (See § 41.50), the 

Director may sua sponte order the 

proceeding remanded to the examiner. 

(d) Documents filed during Board’s 

jurisdiction. Except for petitions 

authorized by this part, consideration of 

any information disclosure statement or 

petition filed while the Board possesses 

jurisdiction over the proceeding will be 

held in abeyance until the Board’s 

jurisdiction ends. 

8. Amend § 41.37 by: 

a. Adding headings to paragraphs (a) 

introductory text, (b), (d) and (e); 

b. Revising paragraphs (c)(1); 

c. Revising the second sentences in 

paragraphs (c)(2) and (d); and 

d. Adding a new third sentence to 

paragraph (c)(2) and paragraph (d). 

The revisions and additions read as 

follows: 

§ 41.37 Appeal brief. 

(a) Timing and fee. * * * 

(b) Failure to file a brief. * * * 

(c) Content of appeal brief. (1) Except 

as otherwise provided in this paragraph, 

the brief shall contain the following 

items under appropriate headings and 

in the order indicated in paragraphs 

(c)(1)(i) through (vii) of this section, 

except that a brief filed by an appellant 

who is not represented by a registered 

practitioner need only substantially 

comply with paragraphs (c)(1)(i), (ii), 

and (vii) of this section: 

(i) Real party in interest. A statement 

identifying by name the real party in 


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Federal Register / Vol. 75, No. 219 / Monday, November 15, 2010 / Proposed Rules 69847 

interest at the time the appeal brief is 

filed, except that such statement is not 

required if the named inventor or 

inventors are themselves the real party 

in interest. If an appeal brief does not 

contain a statement of the real party in 

interest, the Office may assume that the 

named inventor or inventors are the real 

party in interest. 

(ii) Related appeals and interferences. 

A statement identifying by application, 

patent, appeal or interference number 

all other prior and pending appeals, 

interferences or judicial proceedings 

(collectively, ‘‘related cases’’) which 

satisfy all of the following conditions: 

Involve an application or patent owned 

by the appellant or assignee, are known 

to appellant, the appellant’s legal 

representative, or assignee, and may be 

related to, directly affect or be directly 

affected by or have a bearing on the 

Board’s decision in the pending appeal, 

except that such statement is not 

required if there are no such related 

cases. If an appeal brief does not contain 

a statement of related cases, the Office 

may assume that there are no such 

related cases. 

(iii) [Reserved]. 

(iv) Statement of last entered 

amendment. A statement identifying by 

date of filing the last entered 

amendment of the claims. If an appeal 

brief does not contain a statement of last 

entered amendment, the Office may 

assume that there are no amendments of 

the claims. 

(v) Summary of claimed subject 

matter. An annotated copy of each of 

the rejected independent claims, which 

shall, for each limitation in dispute by 

appellant, immediately after each such 

limitation, refer to the specification in 

the Record by page and line number or 

by paragraph number, and to the 

drawing, if any, by reference characters, 

sufficient to understand the claim. For 

each rejected independent claim, and 

for each dependent claim argued 

separately under the provisions of 

paragraph (c)(1)(vii) of this section, if 

the claim contains a means plus 

function or step plus function recitation 

as permitted by 35 U.S.C. 112, sixth 

paragraph, then the annotated copy 

must identify, for every means plus 

function and step plus function 

recitation in dispute by appellant, the 

structure, material, or acts described in 

the specification in the Record as 

corresponding to each claimed function 

with reference to the specification in the 

Record by page and line number or by 

paragraph number, and to the drawing, 

if any, by reference characters. 

Reference to the patent application 

publication does not satisfy the 

requirements of this paragraph. 

(vi) [Reserved]. 

(vii) Argument. The arguments of 

appellant with respect to each ground of 

rejection, and the basis therefor, with 

citations of the statutes, regulations, 

authorities, and parts of the Record 

relied on. The arguments shall explain 

why the examiner erred as to each 

ground of rejection contested by 

appellant. Except as provided for in 

§§ 41.41, 41.47 and 41.52, any 

arguments or authorities not included in 

the appeal brief will be refused 

consideration by the Board for purposes 

of the present appeal. Each ground of 

rejection contested by appellant must be 

argued under a separate heading, and 

each heading shall reasonably identify 

the ground of rejection being contested 

(e.g., by claim number, statutory basis, 

and applied reference, if any). For each 

ground of rejection applying to two or 

more claims, the claims may be argued 

separately (claims are considered by 

appellants as separately patentable), as 

a group (all claims subject to the ground 

of rejection stand or fall together), or as 

a subgroup (a subset of the claims 

subject to the ground of rejection stand 

or fall together). When multiple claims 

subject to the same ground of rejection 

are argued as a group or subgroup by 

appellant, the Board may select a single 

claim from the group or subgroup and 

may decide the appeal as to the ground 

of rejection with respect to the group or 

subgroup on the basis of the selected 

claim alone. Notwithstanding any other 

provision of this paragraph, the failure 

of appellant to separately argue claims 

which appellant has grouped together 

shall constitute a waiver of any 

argument that the Board must consider 

the patentability of any grouped claim 

separately. Under each heading 

identifying the ground of rejection being 

contested, any claim(s) argued 

separately or as a subgroup shall be 

argued under a separate subheading that 

identifies the claim(s) by number. A 

statement which merely points out what 

a claim recites will not be considered an 

argument for separate patentability of 

the claim. 

(2) * * * See § 1.116 of this title for 

treatment of amendments, affidavits or 

other evidence filed after final action 

but before or on the same date of filing 

an appeal and § 41.33 for treatment of 

amendments, affidavits or other 

evidence filed after the date of filing the 

appeal. Review of an examiner’s refusal 

to admit an amendment or evidence is 

by petition to the Director. See § 1.181. 

(d) Notice of non-compliance. * * * 

If appellant does not, within the set time 

period, file an amended brief that 

overcomes all the reasons for noncompliance stated in the notification, 

the appeal will stand dismissed. Review 

of a determination of non-compliance is 

by petition to the Chief Judge. See 

§ 41.3. 

(e) Extensions of Time. * * * 

9. Amend § 41.39 by revising 

paragraph (a); adding a heading to 

paragraph (b) introductory text; revising 

the second sentence of paragraph (b)(2); 

and adding a heading to paragraph (c) 

to read as follows: 

§ 41.39 Examiner’s answer. 

(a) Content of examiner’s answer. The 

primary examiner may, within such 

time as may be directed by the Director, 

furnish a written answer to the appeal 

brief. 

(1) An examiner’s answer is deemed 

to incorporate all of the grounds of 

rejection set forth in the Office action 

from which the appeal is taken (as 

modified by any advisory action and 

pre-appeal brief conference decision), 

unless the examiner’s answer expressly 

indicates that a ground of rejection has 

been withdrawn. 

(2) An examiner’s answer may 

include a new ground of rejection. For 

purposes of the examiner’s answer, any 

rejection that relies upon any new 

evidence not relied upon in the Office 

action from which the appeal is taken 

(as modified by any advisory action) 

shall be designated by the primary 

examiner as a new ground of rejection. 

An examiner’s answer that includes a 

new ground of rejection must be 

approved by the Director. 

(b) Appellant’s response to new 

ground of rejection. * * * 

* * * * * 

(2) * * * Such a reply brief must 

address as set forth in § 41.37(c)(1)(vii) 

each new ground of rejection and 

should follow the other requirements of 

a brief as set forth in § 41.37(c). * * * 

(c) Extensions of time. * * * 

10. Add § 41.40 to read as follows: 

§ 41.40 Tolling of time period to file a reply 

brief. 

(a) Timing. Any request to seek review 

of the primary examiner’s failure to 

designate a rejection as a new ground of 

rejection in an examiner’s answer must 

be by way of a petition to the Director 

under § 1.181 filed within two months 

from the entry of the examiner’s answer 

and before the filing of any reply brief. 

Failure of appellant to timely file such 

a petition will constitute a waiver of any 

arguments that a rejection must be 

designated as a new ground of rejection. 

(b) Petition granted and prosecution 

reopened. A decision granting a petition 

under § 1.181 to designate a new ground 

of rejection in an examiner’s answer 

will provide a two-month time period in 


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69848 Federal Register / Vol. 75, No. 219 / Monday, November 15, 2010 / Proposed Rules 

which appellant must file a reply under 

§ 1.111 of this title to reopen the 

prosecution before the primary 

examiner. On failure to timely file a 

reply under § 1.111, the appeal will 

stand dismissed. 

(c) Petition not granted and appeal 

maintained. A decision refusing to grant 

a petition under § 1.181 to designate a 

new ground of rejection in an 

examiner’s answer will provide a twomonth time period in which appellant 

may file only a single reply brief under 

§ 41.41. 

(d) Withdrawal of petition and appeal 

maintained. If a reply brief under 

§ 41.41 is filed within two months from 

the date of the examiner’s answer and 

on or after the filing of a petition under 

§ 1.181 to designate a new ground of 

rejection in an examiner’s answer, but 

before a decision on the petition, the 

reply brief will be treated as a request 

to withdraw the petition and to 

maintain the appeal. 

(e) Extensions of time. Extensions of 

time under § 1.136(a) of this title for 

patent applications are not applicable to 

the time period set forth in this section. 

See § 1.136(b) of this title for extensions 

of time to reply for patent applications 

and § 1.550(c) of this title for extensions 

of time to reply for ex parte 

reexamination proceedings. 

11. Amend § 41.41 by revising 

paragraphs (a) and (b) and adding a 

heading to paragraph (c) to read as 

follows: 

§ 41.41 Reply brief. 

(a) Timing. Appellant may file only a 

single reply brief to an examiner’s 

answer within two months from the 

date of either the examiner’s answer, or 

a decision refusing to grant a petition 

under § 1.181 to designate a new ground 

of rejection in an examiner’s answer. 

(b) Content. (1) A reply brief shall not 

include any new or non-admitted 

amendment, or any new or nonadmitted affidavit or other evidence. See 

§ 1.116 of this title for amendments, 

affidavits or other evidence filed after 

final action but before or on the same 

date of filing an appeal and § 41.33 for 

amendments, affidavits or other 

evidence filed after the date of filing the 

appeal. 

(2) Any argument raised in the reply 

brief which was not raised in the appeal 

brief, or is not responsive to an 

argument raised in the examiner’s 

answer, including any designated new 

ground of rejection, will not be 

considered by the Board for purposes of 

the present appeal, unless good cause is 

shown. 

(c) Extensions of time. * * * 

§ 41.43 [Removed] 

12. Remove § 41.43. 

13. Amend § 41.47 by revising 

paragraph (b) and revising the last 

sentence of paragraph (e)(1) to read as 

follows: 

§ 41.47 Oral hearing. 

* * * * * 

(b) If appellant desires an oral 

hearing, appellant must file, as a 

separate paper captioned ‘‘REQUEST 

FOR ORAL HEARING,’’ a written 

request for such hearing accompanied 

by the fee set forth in § 41.20(b)(3) 

within two months from the date of the 

examiner’s answer or on the date of 

filing of a reply brief, whichever is 

earlier. 

* * * * * 

(e)(1) * * * The primary examiner 

may only rely on argument and 

evidence relied upon in an answer 

except as permitted by paragraph (e)(2) 

of this section. 

* * * * * 

14. Revise § 41.50 to read as follows: 

§ 41.50 Decisions and other actions by the 

Board. 

(a) Affirmance and reversal. The 

Board, 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. 

The affirmance of the rejection of a 

claim on any of the grounds specified 

constitutes a general affirmance of the 

decision of the examiner on that claim, 

except as to any ground specifically 

reversed. 

(b) New ground of rejection. Should 

the Board have knowledge of any 

grounds not involved in the appeal for 

rejecting any pending claim, it may 

include in its opinion a statement to 

that effect with its reasons for so 

holding, and designate such a statement 

as a new ground of rejection of the 

claim. A new ground of rejection 

pursuant to this paragraph shall not be 

considered final for judicial review. 

When the Board enters such a non-final 

decision, 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 the 

appeal as to the rejected claims: 

(1) Reopen prosecution. Submit an 

appropriate amendment of the claims so 

rejected or new evidence relating to the 

claims so rejected, or both, and have the 

matter reconsidered by the examiner, in 

which event the prosecution will be 

reopened before the examiner. The new 

ground of rejection is binding upon the 

examiner unless an amendment or new 

evidence not previously of record is 

made which, in the opinion of the 

examiner, overcomes the new ground of 

rejection designated in the decision. 

Should the examiner reject the claims, 

appellant may again appeal to the Board 

pursuant to this subpart. 

(2) Request rehearing. Request that 

the proceeding be reheard under § 41.52 

by the Board upon the same Record. The 

request for rehearing must address any 

new ground of rejection and state with 

particularity the points believed to have 

been misapprehended or overlooked in 

entering the new ground of rejection 

and also state all other grounds upon 

which rehearing is sought. 

(c) Review of undesignated new 

ground of rejection. Any request to seek 

review of a panel’s failure to designate 

a new ground of rejection in its decision 

must be raised by filing a request for 

rehearing as set forth in § 41.52. Failure 

of appellant to timely file such a request 

for rehearing will constitute a waiver of 

any arguments that a decision contains 

an undesignated new ground of 

rejection. 

(d) Request for briefing and 

information. The Board may order 

appellant to additionally brief any 

matter that the Board considers to be of 

assistance in reaching a reasoned 

decision on the pending appeal. 

Appellant will be given a time period 

within which to respond to such an 

order. Failure to timely comply with the 

order may result in the sua sponte 

dismissal of the appeal. 

(e) Extensions of time. Extensions of 

time under § 1.136(a) of this title for 

patent applications are not applicable to 

the time periods set forth in this section. 

See § 1.136(b) of this title for extensions 

of time to reply for patent applications 

and § 1.550(c) of this title for extensions 

of time to reply for ex parte 

reexamination proceedings. 

15. Amend § 41.52 by revising the 

fourth sentence of paragraph (a)(1), 

paragraphs (a)(2) and (3), and adding 

paragraph (a)(4) to read as follows: 

§ 41.52 Rehearing. 

(a)(1) * * * Arguments not raised, and 

evidence not previously relied upon, 

pursuant to §§ 41.37, 41.41, or 41.47 are 

not permitted in the request for 

rehearing except as permitted by 

paragraphs (a)(2) through (4) of this 

section. * * * 

(2) Appellant may present a new 

argument based upon a recent relevant 

decision of either the Board or a Federal 

Court. 

(3) New arguments responding to a 

new ground of rejection designated 

pursuant to § 41.50(b) are permitted. 


hsrobinson on DSK69SOYB1PROD with PROPOSALS2
Federal Register / Vol. 75, No. 219 / Monday, November 15, 2010 / Proposed Rules 69849 

(4) New arguments that the Board’s 

decision contains an undesignated new 

ground of rejection are permitted. 

* * * * * 

16. Revise § 41.54 to read as follows: 

§ 41.54 Action following decision. 

After decision by the Board, 

jurisdiction over an application or 

patent under ex parte reexamination 

proceeding passes 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 or patent 

under ex parte reexamination 

proceeding may require, to carry into 

effect the decision. 

Dated: October 21, 2010. 

David J. Kappos, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2010–28493 Filed 11–12–10; 8:45 am] 

BILLING CODE P 


hsrobinson on DSK69SOYB1PROD with PROPOSALS2