MPEP § 1214 — MPEP § 1214
Current through: 2022-07-01

1214-Procedure Following Decision by Board 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 Skip over navigation 
 
 
 
 
 
 
 
 search for patents | search for trademarks 

 
 
 
 
 
 
 
 
 
 
 
 Search 
 
 
 

 
 

 
 
 
 
 
 PATENTS 
 
 Patent Search 

 
 Patent Process 

 
 Patent Classification 

 
 Patent Forms 

 
 Statistics 

 
 Electronic Business Center 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Resources and Guidance 

 
 Office of Data Management 

 
 Announcements 

 
 Initiatives & Events 

 
 International Protection 

 
 Employee Locator 

 
 Contact Patents 

 

 

 
 TRADEMARKS 
 
 Trademark Search 

 
 Trademarks Process 

 
 News & Notices 

 
 Manuals, Guides, Official Gazette 

 
 Laws & Regulations 

 
 Online Filing 

 
 Contact Trademarks 

 

 

 
 IP LAW & POLICY 
 
 Rulemaking 

 
 IP Policy and Enforcement 

 
 Protecting IP Overseas 

 
 Training and Education 

 
 Training Programs & Conferences 

 
 Office of Governmental Affairs 

 
 Office of Chief Economist 

 
 Boards and Counsel 

 

 

 
 PRODUCTS & SERVICES 
 
 Electronic Data Products 

 
 XML Resources 

 
 XML Resources - Retrospective 

 
 USPTO Contact Center Order Form 

 
 Services 

 
 Locate Libraries 

 
 Training/Events 

 
 Online Services Hub 

 

 

 
 INVENTORS 
 
 Patents for Inventors 

 
 Trademarks for Inventors 

 
 Inventors Assistance 

 
 Education and Information 

 
 Scam Prevention 

 
 Pro Se and Pro Bono 

 
 Current Events 

 
 State Resources 

 
 InventorsEye Newsletter 

 

 

 
 NEWS & NOTICES 
 
 Subscription Center 

 
 Press Releases 

 
 Testimony and Speeches 

 
 Director's Forum 

 
 Systems Status 

 
 Emergency Notices 

 
 USPTO Videos 

 
 Official Gazette 

 
 Federal Register Notices 

 
 Event Calendar 

 

 

 
 FAQs 
 
 Patents FAQs 

 
 Trademarks FAQs 

 
 Assignments 

 
 Security 

 
 Musicians and Artists 

 
 Browser Plugins 

 
 Other Web Resources 

 

 

 
 ABOUT US 
 
 USPTO Leadership 

 
 USPTO Organization 

 
 USPTO Offices 

 
 Careers 

 
 Budget, Performance, and Planning 

 
 Statistics 

 
 Vendor Information 

 
 Public Advisory Committees 

 
 National Medal of Technology and Innovation 

 
 IP in Motion 

 
 Contact Us 

 

 

 
 
 

 

 
 

 
 
 
 
 Home Page 

 
 Patents 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1214 
 

 
 
 
 
 
 1214 Procedure Following Decision by Board [R-07.2022]

 
 37 CFR 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.
 

 

 After an appeal to the Board has been decided, a copy of the decision is
 provided to appellant and placed in IFW. The 63-day time period for filing an appeal or
 commencing a civil action under 37 CFR 90.3 , or the two month period
 for filing a request for rehearing under 37 CFR 41.52 , begins to run from the
 “MAIL DATE” if the decision is provided by paper delivery, or the “NOTIFICATION DATE” if
 the decision is provided by electronic delivery, as shown on the FORM PTOL-90A attached to
 the decision. The application is returned to the Technology Center electronically via a
 change in the application status reflecting the decision of the Board. If the Board
 decision affirms or affirms in part the decision of the examiner, the examiner must await
 the expiration of the above time periods before taking any further action.
 

 
 1214.01 Procedure Following New Ground of Rejection by
 Board [R-01.2024]
 

 When the Board designates a new ground of rejection under
 37 CFR
 41.50(b) , the appellant, as to each claim so rejected, has the
 option of:
 

 
 (A) reopening prosecution before the examiner by submitting an
 appropriate amendment and/or new evidence ( 37 CFR 41.50(b)(1) );
 

 (B) requesting rehearing before the Board ( 37 CFR
 41.50(b)(2) ); or 
 

 (C) filing a request for continued examination in
 which case the decision by the Board is the law of the case. See
 MPEP §
 706.07(h), subsection XI.
 

 
 The procedures of 37 CFR 41.50(b)(1) and (b)(2) only
 apply where the Board designates a rejection as a new ground of rejection under
 37 CFR
 41.50(b) . If an appellant believes that a Board decision that
 appears to be an affirmance is actually a new ground of rejection, review of any
 undesignated new ground of rejection is by way of 37 CFR 41.50(c) and
 37 CFR
 41.52 and not through the procedure described here. 
 

 Where a decision designates a new ground of rejection
 under 37 CFR
 41.50(b) , the Board retains jurisdiction over the appeal
 until:
 

 
 (a) the time for response expires and the Board enters
 an order of dismissal ( 37 CFR 41.35(b)(5) ); 
 

 (b) appellant reopens prosecution in response to the
 new grounds of rejection ( 37 CFR 41.35(b)(6) ); or
 

 (c) the appellant files a request for continued
 examination (RCE).
 

 
 The amendment and/or new evidence under 37 CFR
 41.50(b)(1) , or the request for rehearing under 37 CFR
 41.50(b)(2) , must be filed within 2 months from the date of the
 Board’s decision. In accordance with 37 CFR 41.50(f) , this 2-month time
 period may not be extended by the filing of a petition and fee under 37 CFR 1.136(a) ,
 but only under the provisions of 37 CFR 1.136(b) , or under
 37 CFR
 1.550(c) if the appeal involves an ex parte 
 reexamination proceeding. An RCE (accompanied by the appropriate fee and a submission)
 may be filed after a decision by the Board, but before the filing of a Notice of Appeal
 to the Court of Appeals for the Federal Circuit (Federal Circuit) or the commencement of
 a civil action in federal district court. The time period for filing a notice of appeal
 to the Federal Circuit or for commencing a civil action ends sixty-three (63) days after
 the date of the final Board decision. See 37 CFR 90.3 and
 MPEP §
 1216 . Thus, an RCE filed within this sixty-three day time
 period and before the filing of a notice of appeal to the Federal Circuit or the
 commencement of a civil action would be timely filed. 
 

 If an appellant files an appropriate amendment or new evidence (see
 paragraph I below) as to less than all of the claims rejected by the Board under
 37 CFR
 41.50(b) , and a request for rehearing (see paragraph II below) as
 to the remainder of the claims so rejected, the examiner will not consider the claims
 for which rehearing was requested. The request for rehearing will be considered by the
 Board after prosecution before the examiner with respect to the first group of claims is
 terminated. Argument as to any of the claims rejected by the Board which is not
 accompanied by an appropriate amendment or new evidence as to those claims will be
 treated as a request for rehearing as to those claims.
 

 I. SUBMISSION OF AMENDMENT OR NEW EVIDENCE 37 CFR
 41.50(b)(1) provides that the application will be remanded to
 the examiner for reconsideration if the appellant submits “an appropriate amendment”
 of the claims rejected by the Board, “or new evidence relating to the claims so
 rejected, or both.” An amendment is “appropriate” under the rule if it amends one or
 more of the claims rejected, or substitutes new claims to avoid the art or reasons
 adduced by the Board. Ex parte Burrowes, 110 O.G. 599, 1904 C.D.
 155 (Comm’r Pat. 1904). Such amended or new claims must be directed to the same
 subject matter as the appealed claims. Ex parte Comstock, 317 O.G.
 4,1923 C.D. 82 (Comm’r Pat. 1923). An amendment which adds new claims without either
 amending the rejected claims, or substituting new claims for the rejected claims, is
 not appropriate. The new claims will not be entered, and the examiner should consult
 a supervisor to have the entry in the file changed to a request for rehearing under
 37 CFR
 41.50(b)(2) , if it contains any argument concerning the Board’s
 rejection. The “new evidence” under the rule may be a showing under 37 CFR 1.130 ,
 1.131 or 1.132 , as may be appropriate.
 

 If the appellant submits an argument without either an appropriate
 amendment or new evidence as to any of the claims rejected by the Board, it will be
 treated as a request for rehearing under 37 CFR 41.50(b)(2) .
 

 The new ground of rejection raised by the Board does not reopen
 prosecution except as to that subject matter to which the new rejection was applied.
 If the Board’s decision in which the rejection under 37 CFR 41.50(b) 
 was made includes an affirmance of the examiner’s rejection, the basis of the
 affirmed rejection is not open to further prosecution. If the appellant elects to
 proceed before the examiner with regard to the new rejection, the Board’s affirmance
 of the examiner’s rejection will be treated as nonfinal for purposes of seeking
 judicial review, and no request for reconsideration of the affirmance need be filed
 at that time. Prosecution before the examiner of the 37 CFR 41.50(b) 
 rejection can incidentally result in overcoming the affirmed rejection even though
 the affirmed rejection is not open to further prosecution. Therefore, it is possible
 for the application to be allowed as a result of the limited prosecution before the
 examiner of the 37
 CFR 41.50(b) rejection. If the application becomes allowed, the
 application should not be returned to the Board. Likewise, if the application is
 abandoned for any reason, the application should not be returned to the Board. If the
 rejection under 37
 CFR 41.50(b) is not overcome, the applicant can file a second
 appeal (as discussed below). Such appeal must be limited to the 37 CFR 41.50(b) 
 rejection and may not include the affirmed rejection. If the application does not
 become allowed or abandoned as discussed above, once prosecution of the claims which
 were rejected under 37 CFR 41.50(b) is terminated before the examiner, the
 application file must be returned to the Board so that a decision making the original
 affirmance final can be entered.
 

 The time for filing a request for rehearing on the affirmance or
 seeking court review runs from the date of the decision by the Board making the
 original affirmance final. See MPEP §§ 1214.03 and
 1216 . The date of the decision is the "mailing date" or
 "notification date" indicated on form PTOL-90 accompanying the Board decision. See
 In re McNeil-PPC, 574 F.3d 1393, 91 USPQ2d 1576 (Fed. Cir.
 2009).
 

 If the examiner does not consider that the amendment and/or new
 evidence overcomes the rejection, the examiner will again reject the claims. If
 appropriate, the rejection will be made final.
 

 When such a rejection has been made by the examiner an applicant
 may mistakenly believe that they are entitled to review by the Board of the rejection
 by virtue of the previous appeal, but under the provisions of 37 CFR
 41.50(b)(1) , after such a rejection, an applicant who desires
 further review of the matter must file a new appeal to the Board. Such an appeal from
 the subsequent rejection by the examiner will be an entirely new appeal involving a
 different ground and will require a new notice of appeal, appeal brief, and the
 payment of the appropriate fees.
 

 II. REQUEST FOR REHEARING Instead of filing an amendment and/or new evidence under
 37 CFR
 41.50(b)(1) , an appellant may elect to proceed under
 37 CFR
 41.50(b)(2) and file a request for rehearing of the Board’s new
 rejection. The rule requires that 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 rendering the decision and also state all other
 grounds upon which rehearing is sought.” By proceeding in this manner, the appellant
 waives their right to further prosecution before the examiner. In re
 Greenfield, 40 F.2d 775, 5 USPQ 474 (CCPA 1930). This waiver extends to
 the appellant’s right to amend claims under 37 CFR 41.50(b)(1) ; appellant may
 still invoke the limited right to rewrite dependent claims not subject to the new
 grounds of rejection into independent form. See MPEP § 1214.06 . A
 request for rehearing accompanied by an appropriate amendment of the claims rejected
 by the Board, and/or by new evidence, does not constitute a proper request for
 rehearing under 37
 CFR 41.50(b)(2) , and will be treated as a submission under
 37 CFR
 41.50(b)(1) . 
 

 If the Board’s decision also includes an affirmance of the
 examiner’s rejection, a request for rehearing of the affirmance (see
 MPEP §§
 1214.03 and 1214.06 , subsection IV.) should be
 filed in a separate paper to facilitate consideration.
 

 

 
 1214.02 [Reserved] [R-]

 

 

 
 1214.03 Rehearing [R-10.2019]

 
 37 CFR 41.52 Rehearing. 

 
 (a)
 
 (1) Appellant may file a single request for
 rehearing within two months of the date of the original decision of the
 Board. No request for rehearing from a decision on rehearing will be
 permitted, unless the rehearing decision so modified the original
 decision as to become, in effect, a new decision, and the Board states
 that a second request for rehearing would be permitted. The request for
 rehearing must state with particularity the points believed to have been
 misapprehended or overlooked by the Board. 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 (a)(4) of this
 section. When a request for rehearing is made, the Board shall render a
 decision on the request for rehearing. The decision on the request for
 rehearing is deemed to incorporate the earlier opinion reflecting its
 decision for appeal, except for those portions specifically withdrawn on
 rehearing, and is final for the purpose of judicial review, except when
 noted otherwise in the decision on rehearing.
 

 (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.
 

 (4) New arguments that the Board's decision
 contains an undesignated new ground of rejection are permitted.
 

 
 

 (b) 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.
 

 
 

 The term “rehearing” is used in 37 CFR 41.52 for consistency with
 the language of 35 U.S.C. 6(b) . It should not be
 interpreted as meaning that an appellant is entitled to an oral hearing on the request
 for rehearing, but only to a rehearing on the written record. It is not the normal
 practice of the Board to grant rehearings in the sense of another oral hearing.
 Ex parte Argoudelis, 157 USPQ 437, 441 (Bd. App. 1967),
 rev’d. on other grounds, 434 F.2d 1390, 168 USPQ 99 (CCPA
 1970).
 

 37 CFR
 41.52 provides that any request for rehearing must specifically
 state the points believed to have been misapprehended or overlooked in the Board’s
 decision. Experience has shown that many requests for rehearing are nothing more than
 reargument of appellant’s position on appeal. In response, the rule was revised to limit
 requests to the points of law or fact which appellant feels were overlooked or
 misapprehended by the Board. Arguments not raised in the briefs before the Board and
 evidence not previously relied upon in the brief and any reply brief(s) are not
 permitted in the request for rehearing except appellant may present (A) new argument(s)
 based upon a recent relevant decision of either the Board or a Federal Court, (B) new
 argument(s) responding to a new ground of rejection made pursuant to 37 CFR 41.50(b) ,
 and (C) new argument(s) that the Board’s decision contains an undesignated new ground of
 rejection. If appellant relies upon a recent relevant decision of either the Board or a
 Federal Court, a remand by the Board to the examiner to respond to that new argument may
 be appropriate.
 

 The 2-month period provided by 37 CFR 41.52(a) for filing a request
 for rehearing can only be extended under the provisions of 37 CFR 1.136(b) or
 under 37 CFR
 1.550(c) if the appeal involves an ex parte 
 reexamination proceeding.
 

 If a timely request for rehearing of the Board’s decision
 is filed, the time for filing a notice of appeal to the U.S. Court of Appeals for the
 Federal Circuit or for commencing a civil action expires 63 days after a decision on a
 request for rehearing or reconsideration ( 37 CFR 90.3(b)(1) ). An applicant may
 file a RCE during the 63 day period available to appeal after decision on the rehearing
 request. See MPEP §
 706.07(h) , subsection XI.
 

 For extension of time to appeal to the Court of Appeals for the Federal
 Circuit or commence a civil action under 37 CFR 90.3(c) , see
 MPEP §
 1216 and § 1002.02(o) .
 

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

 Should an Administrative Patent Judge (APJ) retire or otherwise become
 unavailable to reconsider a decision, normally another APJ will be designated as a
 substitute for the unavailable APJ.
 

 

 
 1214.04 Examiner Reversed in Whole [R-01.2024]

 A complete reversal of the examiner’s rejection brings the case up for
 immediate action by the examiner. If the reversal does not place an application in
 condition for immediate allowance (e.g., the Board has entered a new ground of rejection
 under 37 CFR
 41.50(b) or the application contains withdrawn claims to a
 non-elected invention), the examiner should refer to the situations outlined in
 MPEP §
 1214.06 for appropriate guidance.
 

 Though the examiner is expected to bring the prior art search
 up-to-date prior to passing an application to issue, the examiner should never regard
 such a reversal as a challenge to make a new search to uncover other and better
 references. If the application or ex parte reexamination proceeding
 has been transferred or assigned to a new examiner and the new examiner considers the
 prior art search to be incomplete (i.e. a new claim interpretation is suggested in the
 decision), the examiner should raise the issue with their SPE.
 

 If an examiner is proposing a new rejection for any reason (e.g. a
 change in statute, guiding case law, or agency guidance or the examiner has specific
 knowledge of the existence of a particular reference or references which indicate
 nonpatentability) of any of the appealed claims as to which the examiner was reversed,
 except under the provisions of 37 CFR 1.114 or 41.50 , the
 examiner must submit the matter to the Technology Center (TC) Director or Central
 Reexamination Unit (CRU) Director for authorization to reopen prosecution under
 37 CFR
 1.198 for the purpose of entering the new rejection. See
 MPEP §
 1002.02(c) and MPEP § 1214.07 . The TC or CRU
 Director’s approval is placed on the action reopening prosecution.
 

 The examiner may request rehearing of the Board decision. Such a
 request should normally be made within 2 months of the return of the application to the
 TC or the reexamination proceeding or reissue application to the CRU.
 

 All requests by the examiner to the Board for rehearing of a decision
 must be approved by the TC or CRU Director and must also be forwarded to the Office of
 the Deputy Commissioner for Patent Examination Policy for approval before mailing.
 

 The request for rehearing must state with particularity the points
 believed to have been misapprehended or overlooked by the Board. Arguments not raised in
 the answers before the Board and evidence not previously relied upon in the answers are
 not permitted in the request for rehearing except that the examiner may present a new
 argument based upon a recent relevant decision of either the Board or a Federal
 Court.
 

 The request should set a period of 2 months for the appellant to file a
 reply.
 

 If the request for rehearing is approved by the Office of the Deputy
 Commissioner for Patent Examination Policy, the TC or CRU will enter the request for
 rehearing in the electronic file and a copy will be mailed or given to the appellant.
 
 

 

 
 1214.05 Cancellation of Claims Not Appealed [R-11.2013]

 Pursuant to 37 CFR 41.31(c) , an appeal is
 presumed to be taken from the rejection of all claims. Where, in an appeal brief filed
 before January 23, 2012, an appellant withdraws some of the appealed claims (i.e.,
 claims subject to a ground of rejection that the appellant did not present for review in
 the brief), and the Board reverses the examiner on the remaining appealed claims, the
 withdrawal is treated as an authorization to cancel the withdrawn claims. It is
 necessary for the examiner to notify the appellant of the cancellation of the withdrawn
 claims. See MPEP §
 1205.02 .
 

 

 
 1214.06 Examiner Sustained in Whole or in Part; Claims Require Action [R-07.2022]

 
 37 CFR 41.35 Jurisdiction over appeal. 

 *****

 
 (b) End of jurisdiction. The jurisdiction of the Board ends
 when:
 
 *****

 (2) The Board enters a final decision
 ( see § 41.2 ) and judicial
 review is sought or the time for seeking judicial review has expired,
 

 
 

 
 *****

 

 
 37 CFR 1.197 Termination of proceedings. 

 
 (a) Proceedings on an application are considered
 terminated by the dismissal of an appeal or the failure to timely file an
 appeal to the court or a civil action except:
 
 (1) Where claims stand allowed in an application;
 or
 

 (2) Where the nature of the decision requires
 further action by the examiner.
 

 
 

 (b) The date of termination of proceedings on an
 application is the date on which the appeal is dismissed or the date on which
 the time for appeal to the U.S. Court of Appeals for the Federal Circuit or
 review by civil action (§ 90.3 of this chapter)
 expires in the absence of further appeal or review. If an appeal to the U.S.
 Court of Appeals for the Federal Circuit or a civil action has been filed,
 proceedings on an application are considered terminated when the appeal or
 civil action is terminated. A civil action is terminated when the time to
 appeal the judgment expires. An appeal to the U.S. Court of Appeals for the
 Federal Circuit, whether from a decision of the Board or a judgment in a civil
 action, is terminated when the mandate is issued by the Court.
 

 
 

 The practice under the situations identified in subsections I-III below
 is similar to the practice after a decision of the court outlined in
 MPEP
 § 1216.01 . Examiners must be very careful that applications
 and ex parte reexamination proceedings that leave the jurisdiction of
 the Board are not overlooked because every case is up for action by the examiner in the
 event no court review has been sought. See MPEP §§ 1216.01 and
 1216.02 for procedure where court review is sought.
 

 As provided by 37 CFR 90.3 , the time for seeking
 review of a decision of the Board by the Court of Appeals for the Federal Circuit or the
 U.S. District Court for the Eastern District of Virginia is the same for both tribunals,
 that is, 63 days plus any additional time requested and granted under 37 CFR
 90.3(c) . In the event a request for rehearing is timely filed
 before the Board, or as extended by the Director. See MPEP § 1216 . When the
 time for seeking court review has passed without such review being sought, the examiner
 must take up the application or ex parte reexamination for
 consideration. The situations which can arise when an examiner is sustained in whole or
 in part will involve one or more of the following circumstances:
 

 I. NO CLAIMS STAND ALLOWED The proceedings in an application or ex parte 
 reexamination proceeding are terminated as of the date of the expiration of the time
 for filing court action. The application is no longer considered as pending. In an
 application, a Notice of Abandonment should be prepared and mailed once the period
 for seeking review under 37 CFR 90.3 has expired. In an
 ex parte reexamination proceeding, a notice of intent to issue
 a reexamination certificate should be issued under 37 CFR 1.570 
 once the period for seeking review under 37 CFR
 90.3 has expired.
 

 If the application includes a non-statutory double
 patenting rejection which was affirmed by the Board or a provisional rejection that
 was not addressed by the Board, the applicant may file a proper terminal disclaimer
 prior to the expiration of the period for seeking review under 37 CFR
 90.3 to overcome the rejection. If the terminal disclaimer is
 insufficient to overcome the rejection the applicant will not be granted additional
 time to correct the deficiency. See MPEP §§ 804.02 and
 1490 . 
 

 Claims indicated as allowable but objected to prior to appeal
 because of their dependency from rejected claims will be treated as if they were
 rejected, unless an amendment pursuant to 37 CFR 41.33(b)(2) rewriting such
 claims in independent form is filed within the period for seeking review under
 37 CFR
 90.3 . See MPEP § 1206 . The following examples
 illustrate the appropriate approach to be taken by the examiner in various situations
 in applications:
 

 
 (A) If claims 1-2 are pending, the Board affirms a rejection of
 independent claim 1, dependent claim 2 was objected to prior to forwarding of
 the appeal as being allowable except for its dependency from claim 1 and claim
 2 remains in dependent form, the examiner should hold the application abandoned
 as there is no remaining time period to redraft claim 2 in independent
 form.
 

 (B) If the Board or court affirms a rejection against an
 independent claim and reverses all rejections against a claim dependent
 thereon, after expiration of the period for further appeal, the examiner should
 proceed in one of two ways:
 
 (1) Convert the dependent claim into independent form by
 examiner’s amendment, cancel all claims in which the rejection was
 affirmed, and issue the application; or
 

 (2) Set a 2-month time limit in which appellant may rewrite
 the dependent claim(s) in independent form. Extensions of time under
 37
 CFR 1.136(a) are available. If no timely reply is
 received, the application is abandoned because no claims stand
 allowed.
 

 
 

 
 The following form paragraph may be used where appropriate:

 ¶ 12.291 Examiner Sustained in Part - Requirement of Rewriting Dependent
 Claims (No Allowed Claim)
 

 The Patent Trial Appeal Board affirmed the rejection(s) against
 independent claim(s) [1] , but reversed all rejections against claim(s)
 [2] dependent thereon. There are no allowed claims in the application. The
 independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06 . Applicant
 is given a shortened statutory period of TWO (2) MONTHS from the mailing date of
 this letter in which to present the dependent claim(s) in independent form to avoid
 ABANDONMENT of the application. EXTENSIONS OF TIME UNDER 37 CFR 1.136(a) ARE AVAILABLE but in no
 case can any extension carry the date for reply to this letter beyond the maximum period of
 SIX MONTHS set by statute ( 35 U.S.C. 133 ). Prosecution is otherwise
 closed.
 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. In bracket 1, enter the
 independent claim number(s) for which the Board affirmed the
 rejection(s).
 

 3. In bracket 2, enter the
 dependent claim number(s) for which the Board reversed the rejection(s).
 
 
 

 For procedures in reexamination proceedings, see
 MPEP §
 2278 , subsection I.
 

 II. CLAIMS STAND ALLOWED The appellant is not required to file a reply. The examiner issues
 the application or ex parte reexamination certificate on the
 claims which stand allowed. It is not necessary for the applicant or patent owner to
 cancel the rejected claims, since they may be canceled by the examiner in an
 examiner’s amendment.
 

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

 If the Board affirms a rejection against independent claim 1,
 reverses all rejections against dependent claim 2 and claim 3 is allowed, after
 expiration of the period for further appeal, the examiner should either:
 

 
 (A) Convert dependent claim 2 into independent form by examiner’s
 amendment, cancel claim 1 in which the rejection was affirmed, and issue the
 application or ex parte reexamination certificate with
 claims 2 and 3; or
 

 (B) Set a 2-month time limit in which appellant is required to
 rewrite dependent claim 2 in independent form, to avoid cancellation of claim
 2. Extensions of time under 37 CFR 1.136(a) are
 available. If no timely reply is received, the examiner will cancel claims 1
 and 2 and issue the application with allowed claim 3 only.
 
 

 

 The following form paragraphs may be used where
 appropriate:
 

 

 
 ¶ 12.292 Examiner Sustained in Part - Requirement of Rewriting Dependent
 Claims (At Least One Allowed Claim)
 

 The Patent Trial and Appeal Board affirmed the rejection(s) against
 independent claim(s) [1] , but reversed all rejections against claim(s)
 [2] dependent thereon. The independent claim(s) is/are cancelled by the
 examiner in accordance with MPEP § 1214.06 . Applicant is given a TWO (2) MONTH TIME
 PERIOD from the mailing date of this letter in which to present the dependent
 claim(s) in independent form. EXTENSIONS OF TIME UNDER 37 CFR 1.136 ARE AVAILABLE. If the
 applicant does not timely present the dependent claim(s) in independent form, the dependent
 claim(s) will be cancelled and the application will be allowed with claim(s) [3] .
 Prosecution is otherwise closed.
 

 Examiner Note:
 
 1 For use if the notice of appeal was filed on or after January
 23, 2012.
 

 2. In bracket 1, enter the independent claim number(s) for which the
 Board affirmed the rejection(s).
 

 3. In bracket 2, enter the dependent claim number(s) for which the
 Board reversed the rejection(s).
 

 4. In bracket 3, enter the claim number(s) of the allowed claims.
 
 

 If uncorrected matters of form which cannot be handled without
 written correspondence remain in the application, the examiner should take
 appropriate action but prosecution is otherwise closed. A letter such as that set
 forth in form paragraph 12.297 is suggested:
 

 

 ¶ 12.297 Period For Seeking Court Review Has Lapsed

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

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

 Applicant is required to make the necessary corrections addressing the
 outstanding formal matters within a shortened statutory period set to expire TWO (2)
 MONTHS from the mailing date of this letter to avoid ABANDONMENT of the application.
 Extensions of time may be granted under 37 CFR 1.136 but in no case can any
 extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set
 by statute ( 35 U.S.C.
 133 ).
 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. In bracket 1, enter the mailing date of the decision (or
 notification date of the decision if electronic mail notification was sent to the
 appellant under the e-Office Action program).
 

 3. In bracket 2, identify the
 allowed claims.
 

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

 For procedures in reexamination proceedings, see
 MPEP §
 2278 , subsection II.
 

 III. CLAIMS REQUIRE ACTION A decision of the Board may include a reversal of a rejection that
 brings certain claims up for action on the merits. These decisions include the
 reversal of the rejection of generic claims in an application containing claims to
 nonelected species not previously acted upon. The application may also contain a
 provisional rejection which was not reached in the Board's decision. The examiner
 will take up the application for appropriate action on the matters thus brought up.
 However, the application is not considered open to further prosecution except as to
 such matters.
 

 A. Application contains
 non-elected claims If, upon review of the decision of the Board, the
 elected claims are in condition for allowance and the application contains claims
 directed to a non-elected invention, whether the election was made with or without
 traverse, the non-elected invention should be considered for rejoinder. See
 MPEP §
 821.04 .
 

 If the decision of the Board includes a reversal of
 all rejections of a generic claim, pending claims drawn to a non-elected species must
 be acted upon. The only exception is when, the examiner reopens prosecution and
 enters a new ground of rejection of the generic claim and determines that the
 election of species continues to be appropriate; in such situations the generic claim
 and any claims drawn to the elected species are examined on the merits and claims
 drawn to non-elected species remain withdrawn from consideration. See
 MPEP §
 809 .
 

 B. Application contains a
 provisional nonstatutory double patenting rejection, which was not reached by
 the Board If a decision by the Board does not include an opinion
 on a provisional nonstatutory double patenting rejection, and includes a reversal of
 all other grounds as to a claim rejected based on provisional nonstatutory double
 patenting and the applicant has not filed a proper terminal disclaimer, the examiner
 must act upon the provisional nonstatutory double patenting rejection. The examiner
 must first determine if any reference application used in the provisional
 nonstatutory double patenting rejection has issued as a patent. If the reference
 application has issued, the provisional rejection should be re-issued as a
 non-provisional rejection and a terminal disclaimer should be required, for example,
 by using form paragraphs 8.33 - 8.39 as appropriate. See MPEP § 804 ,
 subsection II.B. If the reference application has been abandoned or has not matured
 to a patent and the provisional double patenting rejection is the only remaining
 rejection in the application the examiner should withdraw the provisional rejection.
 
 

 IV. 37 CFR 41.50(b) REJECTION Where the Board makes a new rejection under 37 CFR 41.50(b) 
 and no action is taken with reference thereto by appellant within 2 months, the
 examiner should proceed in the manner indicated in paragraphs I-III of this section
 as appropriate. See MPEP § 1214.01 .
 

 If the Board affirms the examiner’s rejection, but also enters a new
 ground of rejection under 37 CFR 41.50(b) , the subsequent
 procedure depends upon the action taken by the appellant with respect to the
 37 CFR
 41.50(b) rejection.
 

 
 (A) If the appellant elects to proceed before the examiner with
 regard to the new rejection (see MPEP § 1214.01 , subsection I.,
 the Board’s affirmance will be treated as nonfinal, and no request for
 rehearing of the affirmance need be filed at that time. In order to proceed
 before the examiner, applicant must amend the newly rejected claims or submit
 new evidence, as defined in 37 CFR 41.33, or both. If applicant presents
 arguments against the new grounds of rejection without amendment or evidence,
 jurisdiction over the appeal should remain with the Board. The Board, having
 made the new ground of rejection and thus having the most complete
 understanding of the logic and analysis that led to the new ground, is in the
 best position to evaluate appellant’s rebuttal arguments in a request for
 rehearing. It is only in the instance where appellant chooses to amend the
 claims or submit new evidence that prosecution must be reopened and the case
 returned to the examiner to consider the amendment and/or new evidence in the
 first instance. Should an examiner discover that a reply containing only
 arguments against a new ground of rejection has been returned to the examining
 corps, the appeal should be returned to the Board for appropriate handling.
 
 

 

 Prosecution before the examiner of the
 37 CFR
 41.50(b) rejection can incidentally result in overcoming
 the affirmed rejection even though the affirmed rejection is not open to
 further prosecution. Therefore, it is possible for the application to be
 allowed as a result of the limited prosecution before the examiner of the
 37 CFR
 41.50(b) rejection. If an application becomes allowed, it
 should not be returned to the Board. Likewise, if an application is abandoned
 for any reason, it should not be returned to the Board. If the rejection under
 37 CFR
 41.50(b) is not overcome, the applicant (or patent owner
 in an ex parte reexamination proceeding) can file a second
 appeal (as discussed below). Such appeal must be limited to the
 37 CFR
 41.50(b) rejection and may not include the affirmed
 rejection. If an application does not become allowed or abandoned as discussed
 above, once prosecution of the claims which were rejected under
 37 CFR
 41.50(b) is terminated before the examiner, the
 application file must be returned to the Board so that a decision making the
 original affirmance final can be entered. Similarly, the file of any
 ex parte reexamination proceeding including decisions
 including rejections affirmed by the Board but made non-final for purposes of
 judicial review must be returned to the Board so that the affirmance can be
 made final by the Board. The time for filing a request for rehearing on the
 affirmance or seeking court review runs from the date of the decision by the
 Board making the original affirmance final. See MPEP §§
 1214.03 and 1216 .
 

 

 (B) If the appellant elects to request rehearing of the new
 rejection (see MPEP § 1214.01 , paragraph II), the request for
 rehearing of the new rejection and of the affirmance must be filed within 2
 months from the date of the Board’s decision.
 

 
 

 
 1214.07 Reopening of Prosecution [R-11.2013]

 
 37 CFR 1.198 Reopening after a final decision of the Patent Trial and Appeal
 Board. 

 When a decision by the Patent Trial and Appeal Board on
 appeal has become final for judicial review, prosecution of the proceeding before the
 primary examiner will not be reopened or reconsidered by the primary examiner except
 under the provisions of § 1.114 or § 41.50 of this
 title without the written authority of the Director,and then only for the
 consideration of matters not already adjudicated, sufficient cause being shown.
 

 

 Sometimes an amendment is filed after the Board’s decision which
 presents a new or amended claim or claims. In view of the fact that prosecution is
 closed, the appellant is not entitled to have such amendment entered as a matter of
 right. However, if the amendment is submitted with a request for continued examination
 (RCE) under 37 CFR
 1.114 and the fee set forth in 37 CFR
 1.17(e) , prosecution of the application will be reopened and the
 amendment will be entered. See MPEP § 706.07(h) , subsection XI. Note
 that the RCE practice under 37 CFR 1.114 does not apply to
 utility or plant patent applications filed before June 8, 1995 or to design
 applications. See 37
 CFR 1.114(d) and MPEP § 706.07(h) , subsection I. If the
 amendment obviously places an application in condition for allowance, regardless of
 whether the amendment is filed with an RCE, the primary examiner should recommend that
 the amendment be entered, and with the concurrence of the supervisory patent examiner,
 the amendment will be entered. Note MPEP § 1002.02(d) .
 

 Where the amendment cannot be entered, the examiner should write to the
 appellant indicating that the amendment cannot be entered and stating the reason why.
 The refusal may not be arbitrary or capricious.
 

 Form paragraph 12.298 should be used: 
 

 ¶ 12.298 Amendment After Board Decision, Entry Refused

 The amendment filed [1] 
 after a decision by the Patent Trial and Appeal Board is not entered because prosecution is
 closed. As provided in 37
 CFR 1.198 , prosecution of the proceeding before the primary examiner
 will not be reopened or reconsidered by the primary examiner after a final decision of the
 Board except under the provisions of 37 CFR 1.114 (request for continued
 examination) or 37 CFR
 41.50 without the written authority of the Director, and then only for
 the consideration of matters not already adjudicated, sufficient cause being
 shown.
 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. In bracket 1, insert the date
 the amendment was filed.
 

 3. This form paragraph is not to be
 used where a 37 CFR
 41.50(b) rejection has been made by the Board.
 
 
 

 In the event that claims stand allowed in the application under the
 conditions set forth in MPEP § 1214.06 , paragraph II, the application should be
 passed to issue.
 

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

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

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

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

 (C) When the decision of the Board is based on a practice, rule, law,
 or judicial precedent which, since the Board’s decision, has been rescinded,
 repealed, or overruled.
 

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

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

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1201-Introduction 

 1202-Composition of Board 

 1203-Administrative Handling 

 1204-Notice of Appeal 
 1204.01-Reinstatement of Appeal 

 1204.02-Pre-Appeal Brief Review Request and Conference Pilot Program 

 1204.03-Interviews After Notice of Appeal 

 1204.04-Official Record on Appeal 

 
 

 1205-Appeal Brief 
 1205.01-Time for Filing Appeal Brief 

 1205.02-Appeal Brief Content 

 1205.03-Non-Compliant Appeal Brief and Amended Brief 

 
 

 1206-Amendments and Affidavits or Other Evidence Filed With or After Appeal 

 1207-Examiner’s Answer 
 1207.01-Appeal Conference 

 1207.02-Contents of Examiner’s Answer 

 1207.03-New Ground of Rejection in Examiner’s Answer 
 1207.03(a)-Determining Whether a Ground of Rejection is New 

 1207.03(b)-Petition to Designate a New Ground of Rejection and to Reopen Prosecution 

 1207.03(c)-Appellant's Reply to New Grounds of Rejection 

 
 

 1207.04-Reopening of Prosecution After Appeal 

 1207.05-Substitute Examiner’s Answer 

 
 

 1208-Reply Briefs and Fee for Forwarding Appeal 
 1208.01-Fee for Forwarding an Appeal to the Board 

 
 

 1209-Oral Hearing 

 1210-Actions Subsequent to Examiner’s Answer but Before Board’s Decision 

 1211-Remand by Director or Board 
 1211.01-Remand by Board for Further Consideration of Rejection 

 1211.02-Remand To Consider Amendment 

 1211.03-Remand To Consider Affidavits or Declarations 

 1211.04-Remand by Board for Further Search 

 
 

 1212-Board Requires Appellant to Address Matter 

 1213-Decision by Board 
 1213.01-[Reserved] 

 1213.02-New Grounds of Rejection by Board 

 1213.03-Publication of and Public Access to Board Decision 

 
 

 1214-Procedure Following Decision by Board 
 1214.01-Procedure Following New Ground of Rejection by Board 

 1214.02-[Reserved] 

 1214.03-Rehearing 

 1214.04-Examiner Reversed in Whole 

 1214.05-Cancellation of Claims Not Appealed 

 1214.06-Examiner Sustained in Whole or in Part; Claims Require Action 

 1214.07-Reopening of Prosecution 

 
 

 1215-Withdrawal or Dismissal of Appeal 
 1215.01-Withdrawal of Appeal 

 1215.02-Claims Standing Allowed 

 1215.03-Partial Withdrawal 

 1215.04-Dismissal of Appeal 

 
 

 1216-Judicial Review 
 1216.01-Appeals to the U.S. Court of Appeals for the Federal Circuit 

 1216.02-Civil Suits Under 35 U.S.C. 145 and 146 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
 Accessibility 

 Privacy Policy 

 Terms of Use 

 Security 

 Emergencies/Security Alerts 

 Information Quality Guidelines 

 
 

 
 
 Federal Activities Inventory Reform (FAIR) Act 

 Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act 

 Budget & Performance 

 Freedom of Information Act (FOIA) 

 
 

 
 
 Department of Commerce NoFEAR Act Report 

 Regulations.gov 

 STOP!Fakes.gov 

 Department of Commerce 

 USA.gov 

 
 

 
 
 Strategy Targeting Organized Piracy (STOP!) 

 Careers 

 Site Index 

 Contact Us 

 Submit Feedback 

 
 

 
 This page is owned by Patents.

 Last Modified: 
 
 03/09/2026 20:49:25