MPEP § 1215 — MPEP § 1215
Current through: 2022-07-01

1215-Withdrawal or Dismissal of Appeal 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1215 
 

 
 
 
 
 
 1215 Withdrawal or Dismissal of Appeal [R-11.2013]

 
 1215.01 Withdrawal of Appeal [R-10.2019]

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 appeal was withdrawn unless there are allowed claims in the case.
 

 Where a letter abandoning the application is filed in accordance with
 37 CFR
 1.138 , the effective date of abandonment is the date of
 recognition of the letter by an appropriate official of the Office or a different date,
 if so specified in the letter itself. See MPEP § 711.01 .
 

 If a brief has been filed within the time permitted by
 37 CFR
 41.37 (or any extension thereof) and an answer mailed and
 appellant withdraws the appeal prior to transfer of jurisdiction to the Board under
 37 CFR
 41.35(a) , the application is returned to the examiner. If
 appellant withdraws the appeal after jurisdiction has been transferred to the Board,
 dismissal of the appeal will be handled by the Board.
 

 Prior to a decision by the Board, if an applicant wishes to withdraw
 an application from appeal and to reopen prosecution of the application, applicant can
 file a request for continued examination (RCE) under 37 CFR 1.114 , accompanied by a
 submission (i.e., a reply responsive within the meaning of 37 CFR 1.111 to
 the last outstanding Office action) and the RCE fee set forth under 37 CFR
 1.17(e) . Note that the RCE practice under 37 CFR 1.114 does
 not apply to utility or plant patent applications filed before June 8, 1995, design
 applications, or reexamination proceedings. See 37 CFR 1.114(d) and
 MPEP
 § 706.07(h) , subsection X., for more details. An appeal brief
 or reply brief (or related papers) is not a submission under 37 CFR 1.114 ,
 unless the transmittal letter of the RCE contains a statement that incorporates by
 reference the arguments in a previously filed appeal brief or reply brief. See
 MPEP
 § 706.07(h) , subsection II. The filing of an RCE will be
 treated as a withdrawal of the appeal by the applicant, regardless of whether the RCE
 includes the appropriate fee or a submission. Therefore, when an RCE is filed without
 the appropriate fee or a submission in an application that has no allowed claims, the
 application will be considered abandoned. To avoid abandonment, the RCE should be filed
 in compliance with 37 CFR 1.114 . See MPEP § 706.07(h) , subsections I-II.
 

 Once appellant has filed a notice of appeal, appellant also may request
 that prosecution be reopened for the following situations:
 

 
 (A) In response to a new ground of rejection made in an examiner’s
 answer, appellant may file a reply in compliance with 37 CFR 1.111 
 that addresses the new ground of rejection within two months from the mailing of
 the examiner’s answer (see MPEP § 1207.03 ).
 

 (B) In response to a substitute examiner’s answer that is written in
 response to a remand by the Board for further consideration of a rejection under
 37 CFR
 41.50(a) , appellant may file a reply in compliance with
 37 CFR
 1.111 that addresses the rejection in the substitute answer
 within two months from the mailing of the substitute answer (see
 MPEP §
 1207.05 ).
 

 
 To avoid the rendering of decisions by the Board in applications which
 have already been refiled as continuations, applicants should promptly inform the Clerk
 of the Board in writing as soon as they have positively decided to refile or to abandon
 an application containing an appeal awaiting a decision. Applicants also should advise
 the Board when an RCE is filed in an application containing an appeal awaiting decision.
 Failure to exercise appropriate diligence in this matter may result in the Board
 refusing an otherwise proper request to vacate its decision.
 

 Upon the withdrawal of an appeal, an application having no allowed
 claims is abandoned, and a notice of abandonment should be mailed. Claims which are
 allowable except for their dependency from rejected claims will be treated as if they
 were rejected. The following examples illustrate the appropriate approach to be taken by
 the examiner in various situations:
 

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

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

 (C) Claim 1 is rejected and claim 2 is objected to as being allowable
 except for its dependency from claim 1. The examiner should hold the application
 abandoned as there is no remaining time period to redraft claim 2 in independent
 form.
 

 (D) Claim 1 is rejected and claim 2 is objected to as being allowable
 except for its dependency from claim 1; independent claim 3 is allowed. The
 examiner should cancel claims 1 and 2 and issue the application or ex
 parte reexamination certificate with claim 3 only.
 

 
 In an ex parte reexamination proceeding, an
 ex parte reexamination certificate should be issued under
 37 CFR
 1.570 .
 

 

 
 1215.02 Claims Standing Allowed [R-08.2012]

 If an application contains allowed claims, as well as claims on appeal,
 the withdrawal of the appeal does not operate as an abandonment of the application, but
 is considered a withdrawal of the appeal as to those claims and authority to the
 examiner to cancel the same. An amendment canceling the appealed claims is equivalent to
 a withdrawal of the appeal.
 

 

 
 1215.03 Partial Withdrawal [R-11.2013]

 If an appellant wishes to remove claims from consideration on appeal,
 the appellant must submit an amendment to cancel the claims from the application. See
 37 CFR
 41.31(c) and 41.33 . An appellant may, of course,
 choose not to present arguments or rely upon particular evidence as to certain claim
 rejections; however, such arguments and evidence are waived for purposes of the appeal
 and the Board may summarily sustain any grounds of rejections not argued. See
 MPEP §§
 1205.02 and 1214.05 .
 

 If appellant fails to respond to a new ground of rejection made in an
 examiner’s answer by either filing a reply brief or a reply under 37 CFR 1.111 
 within 2 months from the mailing of the examiner’s answer, the appeal will be
 sua sponte dismissed by the Board as to the claims subject to the
 new ground of rejection. 
 

 Similarly, if appellant fails to respond to a substitute examiner’s
 answer that is written in response to a remand by the Board for further consideration of
 a rejection under 37
 CFR 41.50(a) by either filing a reply brief or a reply under
 37 CFR
 1.111 within 2 months from the mailing of the substitute
 examiner's answer, the appeal will sua sponte dismissed by the Board
 as to the claims subject to the rejection for which the Board has remanded the
 proceeding. Such substitute examiner’s answer may also include a new ground of
 rejection. 
 

 

 
 1215.04 Dismissal of Appeal [R-10.2019]
 I. DISMISSAL BECAUSE NO BRIEF WAS
 FILED If no brief is filed within the time prescribed by 37 CFR 41.37 ,
 the appeal stands dismissed by operation of the rule. Unless appellant specifically
 withdraws the appeal as to rejected claims, the appeal should not be dismissed until
 the extended period (5 months of extension are available under 37 CFR
 1.136(a) ) to file the brief has expired.
 

 Applications having no allowed claims will be abandoned. Claims
 which are allowable except for their dependency from rejected claims will be treated
 as if they were rejected. However, as provided in MPEP § 1214.07 , if
 an amendment has been filed which obviously places an application in condition for
 allowance, regardless of whether the amendment is filed with an RCE, the primary
 examiner may recommend that the amendment be entered. Note also MPEP § 1002.02(d) ,
 which requires the concurrence of the supervisory patent examiner. 
 

 The following examples illustrate the appropriate
 approach to be taken by the examiner in various situations:
 

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

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

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

 (D) Claim 1 is rejected and claim 2 is objected to as being
 allowable except for its dependency from claim 1; independent claim 3 is
 allowed. If no amendment rewriting claim 2 in independent form has been filed,
 the examiner should cancel claims 1 and 2 and issue the application.
 

 
 If formal matters remain to be attended to, the examiner should take
 appropriate action on such matters. For example (1) the examiner may handle the
 formal matters by examiner’s amendment (see MPEP § 1302.04 ) or (2) the examiner
 may use form paragraph 12.209 to describe the formal matters that applicant
 is required to correct and set a shortened period for reply. Note that further
 prosecution on the application or reexamination proceeding is closed except as to
 such formal matters.
 

 ¶ 12.209 Appeal Dismissed - Allowed Claims, Formal Matters
 Remaining
 

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

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

 [2] 

 Applicant is required to make the necessary corrections within a
 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. This form paragraph should only
 be used if the formal matters cannot be handled by examiner’s amendment. See
 MPEP §
 1215.04 .
 

 3. In bracket 2, insert a
 description of the formal matters to be corrected.
 

 4. Claims which have been indicated
 as containing allowable subject matter but are objected to as being dependent upon a
 rejected claim are to be considered as if they were rejected. See MPEP §
 1215.04 .
 
 
 
 II. DISMISSAL BECAUSE BRIEF WAS HELD
 NON-COMPLIANT An appeal will also be dismissed if an applicant fails to timely and
 fully reply to a notice of noncompliance with 37 CFR 41.37(d) . See
 MPEP §
 1205.03 and 37 CFR 41.37(d) . As in examples
 (B) - (C) above, if no allowed claims remain in an application, the application is
 abandoned as of the date the reply to the notice was due. The applicant may petition
 to revive the application as in other cases of abandonment, and to reinstate the
 appeal. If the appeal is dismissed, but allowed claims remain in the application, as
 in examples (A) and (D) above, the application is not abandoned; to reinstate the
 claims cancelled by the examiner because of the dismissal, the applicant must
 petition under 37
 CFR 1.182 to reinstate the claims and the appeal, but a showing
 equivalent to a petition to revive under 37 CFR 1.137 is required. In
 either event, a proper reply to the notice of noncompliance must be filed before the
 petition will be considered on its merits.
 

 III. DISMISSAL BECAUSE APPEAL FORWARDING
 FEE WAS NOT PAID As provided in 37 CFR
 41.45(b) and MPEP §
 1208.01 , if the appeal forwarding fee set forth in
 37 CFR
 41.20(b)(4) is not paid within the period set forth in
 37 CFR
 41.45(a) , the appeal will stand dismissed. 
 

 Applications having no allowed claims will be
 abandoned. Claims which are allowable except for their dependency from rejected
 claims will be treated as if they were rejected. However, as provided in
 MPEP §
 1214.07 , if an amendment has been filed which obviously
 places an application in condition for allowance, regardless of whether the amendment
 is filed with an RCE, the primary examiner may recommend that the amendment be
 entered. Note also MPEP § 1002.02(d) , which requires the concurrence of the
 supervisory patent examiner. 
 

 The following examples illustrate the appropriate
 approach to be taken by the examiner in various situations:
 

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

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

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

 (D) Claim 1 is rejected and claim 2 is objected to
 as being allowable except for its dependency from claim 1; independent claim 3
 is allowed. If no amendment rewriting claim 2 in independent form has been
 filed, the examiner should cancel claims 1 and 2 and issue the application.
 

 
 If formal matters remain to be attended to, the
 examiner should take appropriate action on such matters. For example (1) the examiner
 may handle the formal matters by examiner’s amendment (see MPEP § 1302.04 ) or
 (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant
 is required to correct and set a shortened period for reply. Note that further
 prosecution on the application or reexamination proceeding is closed except as to
 such formal matters.
 

 IV. DISMISSAL AS TO CLAIMS SUBJECTED TO
 NEW GROUNDS OF REJECTION IN EXAMINER'S ANSWER As provided in MPEP § 1207.03 , with TC Director
 approval, 37 CFR
 41.39(a)(2) permits the entry of new grounds of rejection in an
 examiner’s answer. If the appellant does not timely respond to the examiner’s answer,
 form paragraph 12.279.02 may be used to dismiss the appeal as to
 the claims subject to the new grounds of rejection.
 

 ¶ 12.279.02 Dismissal Following New Ground(s) of Rejection in Examiner’s
 Answer
 

 Appellant failed to timely respond to
 the examiner’s answer mailed on [1] that included a new ground of rejection.
 Under 37 CFR
 41.39(b) , if an examiner’s answer contains a rejection designated as a
 new ground of rejection, appellant must, within two months from the date of the examiner’s
 answer, file either: (1) a request that prosecution be reopened by filing a reply under
 37 CFR
 1.111 ; or (2) a request that the appeal be maintained by filing a reply
 brief under 37 CFR
 41.41 , addressing each new ground of rejection, to avoid sua sponte
 dismissal of the appeal as to the claims subject to the new ground of rejection. In view of
 appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the
 time period required by 37
 CFR 41.39 , the appeal as to claims [2] is dismissed, and these
 claims are canceled .
 

 Only claims [3] remain in
 the application. The appeal continues as to these remaining claims. The application will be
 forwarded to the Board after mailing of this communication.
 

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

 2. In bracket 1, insert the mailing
 date of the examiner’s answer.
 

 3. In bracket 2, insert the claim
 numbers of the claims subject to the new ground of rejection.
 

 4. In bracket 3, insert the claim
 numbers of the claims that are not subject to the new ground of
 rejection.
 
 
 
 V. DISMISSAL FOLLOWING REMAND FROM THE
 BOARD An appeal may be dismissed if an appellant fails to
 timely and fully reply to a substitute examiner’s answer which was written in
 response to a remand by the Board for further consideration of a rejection under
 37 CFR
 41.50(a)(1) . Pursuant to 37 CFR 41.50(a)(1) , the
 appellant must, within two months, from the date of the substitute examiner’s answer,
 file either: (1) a request that prosecution be reopened by filing a reply under
 37 CFR
 1.111 ; or (2) a request that the appeal be maintained by filing
 a reply brief under 37 CFR 41.41 , to avoid sua sponte dismissal
 of the appeal as to the claims subject to the rejection for which the Board has
 remanded the proceeding. If the appellant fails to timely and fully reply to the
 substitute examiner’s answer the appeal will be dismissed as to the claims subject to
 the rejection remanded by the Board and those claims cancelled. The examiner may use
 form paragraph 12.286 to inform the appellant of their options
 .
 

 ¶ 12.286 Dismissal Following A Substitute Examiner’s Answer Written in Response to a Remand
 for Further Consideration of a Rejection
 

 Appellant failed to timely respond to the
 substitute examiner’s answer mailed on [1] that was written in response to
 a remand by the Board for further consideration of a rejection. Under 37 CFR 41.50(a)(2) , appellant must, within two months from the date of the substitute
 examiner’s answer, file either: (1) a request that prosecution be reopened by filing a
 reply under 37 CFR 1.111 ; or (2) a request that the appeal be maintained by filing a
 reply brief under 37 CFR 41.41 , to avoid sua sponte dismissal of the appeal as to the
 claims subject to the rejection for which the Board has remanded the proceeding. In view
 of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the
 time period required by 37 CFR 41.50(a)(2) , the appeal as to claims [2] is
 dismissed, and these claims are canceled .
 

 Only claims [3] remain in the
 application. The appeal continues as to these remaining claims. The application will be
 forwarded to the Board after mailing of this communication.
 

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

 2. In bracket 1, insert the mailing date
 of the substitute examiner’s answer.
 

 3. In bracket 2, insert the claim
 numbers of the claims subject to the rejection for which the Board has
 remanded the proceeding.
 

 4. In bracket 3, insert the claim
 numbers of the claims that are not subject to the rejection.
 
 
 

 

 [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 20:50:33