MPEP § 1211 — MPEP § 1211
Current through: 2022-07-01

1211-Remand by Director or Board 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1211 
 

 
 
 
 
 
 1211 Remand by Director or Board [R-08.2017]

 Both the Director and the Board have the authority to remand a case to the
 examiner when necessary. See 37 CFR 41.35(c) and (e) , and
 37 CFR
 41.40(a) . As specified by 37 CFR 41.50(e) , a remand by the Board
 is not appealable (i.e. not final for purposes of judicial review). In any remand,
 jurisdiction over the appeal is transferred from the Board back to the examiner. Following
 the remand, the examiner should take action consistent with the remand order. In the
 absence of other guidance in the remand order, the examiner should take an action described
 in MPEP §
 1207 .
 

 For example, the Director may remand a case for consideration
 of a new ground of rejection pursuant to 37 CFR 41.35(c) where there has been a
 change in the law that calls for a new ground of rejection to be entered. Such a remand may
 require the examiner to prepare a substitute examiner’s answer to enter the new ground of
 rejection. 
 

 
 1211.01 Remand by Board for Further Consideration of
 Rejection [R-11.2013]
 

 A substitute examiner’s answer written in response to a remand by the
 Board for consideration of a rejection pursuant to 37 CFR 41.50(a)(1) may set forth a
 new ground of rejection. See MPEP § 1207.03 .
 

 If a substitute examiner’s answer is written in response to a remand by
 the Board for consideration of a rejection pursuant to 37 CFR 41.50(a)(1) 
 (even when there is no new ground of rejection made in the substitute examiner’s
 answer), the appellant must exercise one of the following two options to avoid
 sua sponte dismissal of the appeal as to the claims subject to the
 rejection for which the Board has remanded the proceeding:
 

 
 (A) Reopen prosecution. Request that prosecution be reopened before
 the examiner by filing a reply under 37 CFR 1.111 with or without
 amendment or submission of affidavits ( 37 CFR 1.131(a) ,
 37
 CFR 1.131(c) or 1.132 ) or other evidence. Any
 amendment or submission of affidavits or other evidence must be relevant to the
 issues set forth in the remand or raised in the substitute examiner’s answer. A
 request that complies with 37 CFR 41.50(a)(2)(i) will be
 entered and the application or the patent under ex parte 
 reexamination will be reconsidered by the examiner under the provisions of
 37 CFR
 1.112 . Any request that prosecution be reopened under
 37 CFR
 41.50(a)(2)(i) will be treated as a request to withdraw the
 appeal.
 

 (B) Maintain appeal. Request that the appeal be maintained by filing
 a reply brief as provided in 37 CFR 41.41 . If such a reply
 brief is accompanied by any amendment, affidavit or other evidence, it shall be
 treated as a request that prosecution be reopened before the examiner under
 37 CFR
 41.50(a)(2)(i) .
 

 
 See MPEP
 § 1207.03 for information on new grounds of rejection.
 

 See MPEP
 § 1207.05 for information on substitute examiner’s answer and
 appellant’s response to a substitute examiner’s answer. 
 

 See MPEP
 § 1208 for information on reply briefs.
 

 The following are two examples of situations where there may be a
 remand by the Board for examiner action that is not for further consideration of a
 rejection:
 

 
 (A) A remand to consider an Information Disclosure Statement; and

 (B) A remand for the examiner to consider a reply brief.

 
 37 CFR
 41.50(a)(2) does not apply when the remand by the Board is not for
 further consideration of a rejection. The Board will normally indicate in the remand
 whether 37 CFR
 41.50(a)(2)(i) applies. Appellant cannot request that prosecution
 be reopened under 37
 CFR 41.50(a)(2)(i) and is not required to reply to a substitute
 examiner’s answer that is written in response to a remand that is not for further
 consideration of a rejection. 
 

 The following form paragraph may be used in preparing the substitute
 examiner’s answer after a remand from the Board:
 

 ¶ 12.285 Substitute Examiner’s Answer - On Remand FOR FURTHER
 CONSIDERATION OF A REJECTION
 

 Pursuant to the remand under
 37 CFR
 41.50(a)(1) by the Patent Trial and Appeal Board on [1] for further consideration of a rejection , a substitute Examiner’s Answer under
 37 CFR
 41.50(a)(2) is set forth below: [2] .
 

 The appellant must within TWO
 MONTHS from the date of the substitute examiner’s answer exercise one of the
 following two options to avoid sua sponte dismissal of the appeal as to the claims subject to
 the rejection for which the Board has remanded the proceeding:
 

 (1) Reopen prosecution .
 Request that prosecution be reopened before the examiner by filing a reply under
 37 CFR
 1.111 with or without amendment, affidavit, or other evidence. Any
 amendment, affidavit, or other evidence must be relevant to the issues set forth in the remand
 or raised in the substitute examiner’s answer. Any request that prosecution be reopened will
 be treated as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i) .
 

 (2) Maintain appeal .
 Request that the appeal be maintained by filing a reply brief as set forth in
 37 CFR
 41.41 . If such a reply brief is accompanied by any amendment, affidavit
 or other evidence, it shall be treated as a request that prosecution be reopened under
 37 CFR
 41.50(a)(2)(i) . See 37 CFR 41.50(a)(2)(ii) .
 

 Extensions of time under
 37 CFR
 1.136(a) are not applicable to the TWO MONTH time period
 set forth above. See 37 CFR
 1.136(b) for extensions of time to reply for patent applications and
 37 CFR
 1.550(c) for extensions of time to reply for ex parte 
 reexamination proceedings.
 

 A Technology Center Director or designee has approved this substitute examiner’s answer
 by signing below: 

 [3] 

 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 of
 the remand.
 

 3. In bracket 2, provide reasons
 supporting the rejections set forth in the substitute Examiner’s
 Answer.
 

 4. In bracket 3, insert the TC
 Director’s or designee’s signature. A TC Director or designee must approve every
 substitute examiner’s answer.
 
 
 

 The supervisory patent examiner must approve any action in which a
 remanded application is withdrawn from appeal. See MPEP §§ 706.07(e) and
 1002.02(d) . If the examiner decides to withdraw the final
 rejection and reopen prosecution to enter a new ground of rejection, approval from the
 supervisory patent examiner is required. See MPEP § 1207.04 .
 

 

 
 1211.02 Remand To Consider Amendment [R-11.2013]

 There is no obligation resting on the Board to consider new or amended
 claims submitted while it has jurisdiction of the appeal. In re
 Sweet, 136 F.2d 722, 58 USPQ 327 (CCPA 1943). However, a proposed amendment
 filed after the date of filing of a brief to either cancel claims, where such
 cancellation does not affect the scope of any other pending claim in the proceeding, or
 to rewrite dependent claims into independent form may be remanded for consideration by
 the examiner. See MPEP §
 1206 .
 

 If the proposed amendment is in effect an abandonment of the appeal,
 the appeal will normally be dismissed by the Board. 
 

 

 
 1211.03 Remand To Consider Affidavits or Declarations [R-11.2013]

 Affidavits or declarations filed with the filing of a notice of appeal
 but before jurisdiction passes to the Board (see MPEP § 1206 ) will be considered for
 entry only if the appellant makes the necessary showing under 37 CFR 1.116(e) as
 to why they are necessary and were not earlier presented. Authority from the Board is
 not necessary to consider such affidavits or declarations. Affidavits or declarations
 filed after a final rejection and prior to a notice of appeal are handled as provided in
 MPEP §§
 715.09 , 716 , and 716.01 . If such
 evidence has not been treated by the examiner, the Board or the Director may remand the
 proceeding to permit the examiner to consider such evidence.
 

 In the case of affidavits or declarations filed after the filing of a
 notice of appeal, but before a jurisdiction passes to the Board under 37 CFR 41.35 , the
 examiner is without authority to consider the same unless the examiner determines that
 the affidavit or other evidence overcomes all rejections under appeal and that a showing
 of good and sufficient reasons why the affidavit or other evidence is necessary and was
 not earlier presented have been made. See MPEP § 1206 .
 

 It is not the custom of the Board to remand affidavits or declarations
 offered in connection with a request for rehearing of its decision where no rejection
 has been made under 37
 CFR 41.50(b) . Affidavits or declarations submitted for this
 purpose, not remanded to the examiner, are considered only as arguments. In re
 Martin, 154 F.2d 126, 69 USPQ 75 (CCPA 1946).
 

 For remand to the examiner to consider appellant’s response relating to
 a 37 CFR
 41.50(b) rejection, see MPEP § 1214.01 .
 

 

 
 1211.04 Remand by Board for Further Search [R-08.2012]

 It should be extremely rare for the Board to remand a case to the
 examiner for further search. A remand to the examiner extends the total pendency of an
 application and may necessitate an extension of the patent term under 35 U.S.C. 154(b) .
 See MPEP §
 2710. When such a remand is necessary, the Board should
 conduct a search (on-line or otherwise) of at least one subclass and cite art from that
 subclass to demonstrate the basis on which it concludes that a search of this area would
 be material.The art cited need not be art upon which a rejection can be made.
 

 

 [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 

 
 

 

 

 
 

 
 
 

 
 

 

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