MPEP § 1204 — MPEP § 1204
Current through: 2022-07-01

1204-Notice of Appeal 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1204 
 

 
 
 
 
 
 1204 Notice of Appeal [R-01.2024]

 
 35 U.S.C. 134 
 Appeal to the Patent Trial and Appeal Board. 

 
 (a) PATENT APPLICANT.— An applicant for a patent, any of whose claims
 has been twice rejected, may appeal from the decision of the primary examiner to
 the Patent Trial and Appeal Board, having once paid the fee for such appeal.
 

 (b) PATENT OWNER.— A patent owner in a reexamination may appeal from
 the final rejection of any claim by the primary examiner to the Patent Trial and
 Appeal Board, having once paid the fee for such appeal.
 

 
 

 
 35 U.S.C. 41 
 Patent fees; patent and trademark search systems 

 
 (a) GENERAL FEES. — The Director shall charge the following fees: 
 
 *****

 (6) APPEAL FEES. —
 
 (A) On filing an appeal from the examiner to the Patent
 Trial and Appeal Board, $540. 
 

 (B) In addition, on filing a brief in support of the
 appeal, $540, and on requesting an oral hearing in the appeal before
 the Patent Trial and Appeal Board, $1,080.
 

 An additional fee for forwarding an
 appeal to the Board after Examiner's Answer is set at
 37 CFR
 41.20(b)(4) .
 

 
 

 
 

 
 *****

 

 
 37 CFR 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.
 
 (1) Every applicant, any of whose claims has
 been twice rejected, may appeal from the decision of the examiner to the
 Board by filing a notice of appeal accompanied by the fee set forth in §
 41.20(b)(1) within the time period provided under §
 1.134 of this title for reply.
 

 
 
 (2) Every owner of a patent under ex parte 
 reexamination filed under § 1.510 of this title
 before November 29, 1999, any of whose claims has been twice rejected, may
 appeal from the decision of the examiner to the Board by filing a notice of
 appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under
 § 
 1.134 of this title for reply.
 

 (3) Every owner of a patent under ex parte 
 reexamination filed under § 1.510 of this title on
 or after November 29, 1999, any of whose claims has been finally (§
 1.113 of this title) rejected, may appeal from the
 decision of the examiner to the Board by filing a notice of appeal
 accompanied by the fee set forth in § 41.20(b)(1) within the
 time period provided under § 1.134 of this title for
 reply.
 

 
 

 (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 by the
 applicant and entered by the Office. Questions relating to matters not affecting
 the merits of the invention may be required to be settled before an appeal can be
 considered.
 

 (d) The time periods set forth in paragraphs (a)(1) through (a)(3) of
 this section are extendable under the provisions of § 1.136 of
 this title for patent applications and § 1.550(c) of this title for
 ex parte reexamination proceedings.
 

 
 
 I. APPEAL FEES Public Law 112-29, sec. 10 authorizes the Director to set
 or adjust fees 
 "established, authorized, or charged under title
 35."
 
 
 The fees for appeal as set forth in 35 U.S.C. 41(a)(6) 
 have been adjusted by rule at 37 CFR 41.20(b) . See
 37 CFR
 41.20(b)(1) for the fee for the filing of a notice of appeal,
 37 CFR
 41.20(b)(2)(i) for filing an appeal brief in an application or
 ex parte reexamination proceeding, and 37 CFR 41.20(b)(3) 
 for a request for oral hearing.
 

 Appeal fees (notice of appeal, petition, and appeal
 forwarding fees) due under 37 CFR 41.20 cannot be paid using a
 general authorization to a deposit account under 37 CFR 1.25(b) , which only
 authorizes payment of fees under 37 CFR 1.16 through
 1.18 .
 

 Effective March 19, 2013, the fee for filing an appeal
 brief in an application or ex parte reexamination ( 37 CFR
 41.20(b)(2)(i) ) was reduced to $0, and a new fee for forwarding an
 appeal in an application or ex parte reexamination proceeding to the
 Board after the mailing of an examiner's answer was added at 37 CFR
 41.20(b)(4) . See 37 CFR 41.45 and
 MPEP §
 1208.01 for additional information pertaining to the
 forwarding fee.
 

 For appeal fees due upon the reinstatement of an appeal,
 see MPEP §
 1204.01 .
 

 II. APPEAL BY PATENT APPLICANT Under 37 CFR 41.31(a)(1) , an applicant for a patent dissatisfied with
 the primary examiner’s decision in the second or subsequent rejection of the applicant's
 claims may appeal to the Board for review of the examiner’s rejection by filing a notice
 of appeal and the required fee set forth in 37 CFR 41.20(b)(1) within the time
 period provided under 37 CFR 1.134 and 1.136 . A notice of appeal may be
 filed after any of the claims has been twice rejected, regardless of whether the
 claim(s) has/have been finally rejected. The limitation of “twice rejected” does not
 have to be related to a particular application. See Ex Parte Lemoine, 
 46 USPQ2d 1420, 1423 (Bd. Pat. App. & Inter. 1994) ("so long as the applicant has
 twice been denied a patent, an appeal may be filed"). For example, if any claim was
 rejected in a parent application, and the claim is again rejected in a continuing
 application, then applicant can choose to file an appeal in the continuing application,
 even if the claim was rejected only once in the continuing application. Applicant cannot
 file an appeal in a continuing application, or after filing a request for continued
 examination (RCE) under 37 CFR 1.114 , until the application
 is under a rejection. Accordingly, applicant cannot file a notice of appeal with an RCE,
 even if the application has been twice rejected prior to the filing of the RCE.
 

 If appellant files an amendment, a notice of appeal and
 an appeal brief on the same date after the mailing of a final action, 37 CFR 1.116 
 applies. Such an amendment filed after a final action is not entered as a matter of
 right. It may be admitted if it cancels claims or complies with all requirements of form
 expressly set forth in previous Office actions; presents rejected claims in better form
 for consideration on appeal; or amends the specification, including claims, upon a
 showing of good and sufficient reasons why the amendment is necessary and was not
 earlier presented. 
 

 If applicant files a reply under 37 CFR 1.111 in
 response to a second or subsequent non-final rejection and later files a notice of
 appeal before the Office considers the reply, or the reply is filed on the same day as
 the notice of appeal, the notice of appeal is defective and the Office will answer the
 reply under 37 CFR
 1.111 in due course. Ordinarily, a notice of appeal would have
 been proper when at least one claim has been twice rejected. In this instance, however,
 since applicant has elected to request reconsideration of the rejection (or further
 examination) by filing a reply under 37 CFR 1.111 rather than directly
 appealing from the second non-final rejection, the notice of appeal is premature. The
 Office has not had the opportunity to consider the reply under 37 CFR 1.111 and
 issue an Office action in view of the reply. (Note that this is different than
 after-final situations where a reply under 37 CFR 1.116 is not entered as
 matter of right and applicant is appealing from the final rejection). Applicant must
 wait to file any appeal until the examiner considers the reply and the claims are
 rejected again. Once the Office action is mailed in response to the reply applicant may
 file another notice of appeal under 37 CFR 41.31 . 
 

 Under 37 CFR 41.31(c) , an applicant is
 presumed to be appealing all claims under rejection in a particular application unless
 cancelled by an amendment filed by the applicant and entered by the Office. Thus, an
 appeal is presumed to be taken from the rejection of all pending claims under rejection
 in the application regardless of whether the notice of appeal identifies fewer or more
 than all pending claims under rejection. 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, any challenge to that
 ground of rejection has been waived, and the Board has discretion to simply affirm any
 rejections against such claims. See e.g. Hyatt v. Dudas, 551 F.3d
 1307, 1314, 89 USPQ2d 1465, 1470, (Fed. Cir. 2008). Appellants are cautioned that any
 waiver of a challenge to a rejection, including a nonstatutory double patenting
 rejection, may result in a jurisdictional issue should the appellant seek judicial
 review of the Board decision affirming the examiner's rejection of the claims either by
 an appeal to the U.S. Court of Appeals for the Federal Circuit ( 35 U.S.C. 141 )
 or by a civil action in the U.S. District Court for the Eastern District of Virginia
 ( 35 U.S.C.
 145 ). Alternatively, the Court may summarily affirm the
 nonstatutory double patenting rejection without considering other grounds of rejection
 challenged on appeal. See also MPEP § 1205.02 .
 

 Although the rules do not require that the notice of appeal be signed,
 applicants may file notices of appeal which are signed. It should be noted that the
 elimination of the requirement to sign a notice of appeal does not affect the
 requirements for other papers (such as an amendment under 37 CFR 1.116 )
 submitted with the notice, or for other actions contained within the notice, e.g., an
 authorization to charge fees to a deposit account or to a credit card, to be signed. See
 MPEP §
 509 . Thus, failure to sign the notice of appeal may have
 unintended adverse consequences; for example, if an unsigned notice of appeal contains
 an (unsigned) authorization to charge the notice of appeal fee to a deposit account, the
 notice of appeal will be unacceptable because the notice of appeal fee is lacking.
 

 The notice of appeal must be filed within the period for reply set in
 the last Office action, which is normally three months for applications. See
 MPEP §
 714.13 . For example, failure to remove all grounds of
 rejection and otherwise place an application in condition for allowance or to file an
 appeal after final rejection will result in the application becoming abandoned, even if
 one or more claims have been allowed. The notice of appeal and appropriate fee may be
 filed up to six months from the date of the Office action (e.g., a final rejection) from
 which the appeal was taken, so long as an appropriate petition and fee for an extension
 of time under 37 CFR
 1.136(a) is filed either prior to or with the notice of
 appeal.
 

 The use of a separate letter containing the notice of appeal is
 strongly recommended. Form PTO/SB/31 may be used for filing a notice of appeal.
 Appellant must file an appeal brief in compliance with 37 CFR 41.37 
 accompanied by the fee set forth in 37 CFR 41.20(b)(2) within two months
 from the date of filing the notice of appeal. See MPEP § 1205 .
 Effective March 19, 2013, the fee for filing an appeal brief in an application or
 ex parte reexamination was set at $0. For as long as this fee
 remains at $0, appeal briefs will not be held defective for failure to pay this fee or
 make any statement about this fee.
 

 III. APPEAL BY PATENT OWNER 37
 CFR 41.31(a)(2) and (a)(3) provide for appeal to the
 Board by the patent owner from any decision in an ex parte 
 reexamination proceeding adverse to patentability, in accordance with 35 U.S.C. 306 and
 35 U.S.C.
 134. See also MPEP § 2273 .
 

 In an ex parte reexamination filed
 before November 29, 1999 , the patent owner may appeal to the
 Board after the second rejection of the claims.
 

 In an ex parte reexamination filed on or
 after November 29, 1999 , the patent owner may appeal to the Board
 only after the final rejection of one or more claims in the
 particular reexamination proceeding for which appeal is sought. 
 

 The fee for filing the notice of appeal by a patent owner is set forth
 in 37 CFR
 41.20(b)(1) , and the time period to pay the fee is determined as
 provided in 37 CFR
 1.134 and 37 CFR 1.550(c) . 
 

 Failure to file an appeal in an ex parte 
 reexamination proceeding will result in issuance of the reexamination certificate under
 37 CFR
 1.570 .
 

 Appeals to the Board in inter partes reexamination
 proceedings filed under 35 U.S.C. 311 are governed by
 37 CFR
 41.60 through 41.81 . 37 CFR 41.30 
 through 41.54 are not applicable to appeals in inter partes
 reexamination proceedings. See MPEP § 2674 to § 2683 for appeals in
 inter partes reexamination proceedings.
 

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

 

 
 IV. ACKNOWLEDGEMENT Appellant may check the status of the application and the receipt date
 of the notice of appeal in Patent Center.
 

 Where the notice of appeal is filed by mail, the Office does not
 acknowledge receipt by separate letter. However, if a self-addressed postcard is
 included with the notice of appeal, it will be date stamped and mailed. See
 MPEP §
 503 , subsection III.
 

 V. DEFECTIVE NOTICE OF APPEAL Notices of appeal are reviewed by the Patent Appeal Center. If a notice
 of appeal is defective, the Office will notify the applicant of the non-compliance. A
 notice of appeal is not a proper reply to the last Office action if none of applicant's
 claims have been twice rejected. A notice of appeal is defective if it was not timely
 filed within the time period set forth in the last Office action, or the notice of
 appeal fee set forth in 37 CFR 41.20(b)(1) was not timely
 filed. Form PTOL-461 (Rev. 9-04 or later), Communication Re: Appeal, should be used to
 indicate defects in a notice of appeal. This communication is done by the Patent Appeal
 Center rather than by the examiner. In the rare event that these defects are identified
 after the notice of appeal is entered, the examiner should contact the Patent Appeal
 Center to determine the appropriate action to take. 
 

 When appellant files an appeal brief without first filing a notice of
 appeal, the Office treats the appeal brief as a notice of appeal and an appeal brief.
 For this situation, appellant must file the brief within the time period for reply set
 forth in the last Office action and the brief must be accompanied by the fees under
 37 CFR 41.20(b)(1)
 and (b)(2) for filing a notice of appeal and an appeal brief in
 compliance with 37 CFR
 41.31 and 41.37 . Effective March 19, 2013, the
 fee for filing an appeal brief in an application or ex parte 
 reexamination was set at $0. For as long as this fee remains at $0, appeal briefs will
 not be held defective for failure to pay this fee or make any statement about this
 fee.
 

 

 
 1204.01 Reinstatement of Appeal [R-07.2022]

 When prosecution is reopened after the filing of a notice of appeal and
 prior to a written decision by the Patent Trial and Appeal Board, appellant must file a
 new notice of appeal in compliance with 37 CFR 41.31 and a complete new
 appeal brief in compliance with 37 CFR 41.37 in order to reinstate
 the appeal. Any previously paid appeal fees set forth in 37 CFR 41.20 for
 filing a notice of appeal, filing an appeal brief (if any), requesting an oral hearing
 and/or forwarding the appeal to the Board will not be required to be paid again except
 if a final Board decision has been made on the first appeal.
 

 If the appeal fees have increased since they were
 previously paid, then appellant must pay the difference between the current fee(s) and
 the amount previously paid. Appellant must file a complete new appeal brief in
 compliance with the format and content requirements of 37 CFR 41.37(c) 
 within two months from the date of filing the new notice of appeal. See
 MPEP §
 1205 . This time period is extendible as provided in
 MPEP §
 1205.01 .
 

 For example, suppose the applicant files a notice of
 appeal and two months later applicant files an appeal brief. During the appeal
 conference, it is decided to reopen prosecution as provided in MPEP § 1207.04 rather
 than draft an examiner’s answer. If applicant proceeds to file a subsequent appeal by
 filing a new notice of appeal and appeal brief, applicant would only pay the difference
 in appeal related fees between the current fees and the amount previously paid.
 Similarly, if applicant files an RCE after the notice of appeal and a final Board
 decision is not issued, the applicant would only pay the difference in fees between the
 current fees and the amount previously paid.
 

 If the appeal results in a written decision, the Office
 will again require the submission of the fees under 37 CFR 41.20 if a new appeal is
 later filed. For example, if the Board issues a decision under 37 CFR 41.50(a)(1) 
 affirming a rejection and the appellant does not seek reconsideration or file an appeal,
 then the decision on the appeal is final, and any subsequent prosecution resulting in a
 new appeal would require the payment of all appeal fees.
 

 Moreover, if applicant elects to reopen prosecution
 under 37 CFR
 41.50(a)(2)(ii) or 41.50(b)(1) after a decision by the
 Board, then applicant would have to pay the appeal fees if a new appeal is filed.
 

 If applicant elects to maintain the appeal under
 37 CFR
 41.50(a)(2)(ii) or request rehearing after a decision under
 37 CFR
 41.50(a) or (b) , the applicant need not pay
 additional appeal fees. Responding to a requirement for briefing under 37 CFR 41.50(d) or
 responding to a remand under 37 CFR 41.50(e) would not require
 payment of additional appeal fees.
 

 

 
 1204.02 Pre-Appeal Brief Review Request and Conference
 Pilot Program [R-01.2024]
 

 Since July of 2005 the Office has provided an ongoing
 pilot program in which an appellant, upon the filing of a notice of appeal may also
 request a pre-appeal brief review. See “Pre-Appeal Brief Conference Pilot Program,” 1296 OG 67 (July 12,
 2005) and “Extension
 of the Pilot Pre-Appeal Brief Conference Program,” 1303 OG 21 (February 7,
 2006) . This program does not apply to reexamination proceedings.
 Presenting a request for pre-appeal brief review does not change the fee required to
 file a notice of appeal and does not require a separate fee. No extensions of time to
 file the request for review later than the notice of appeal are available.
 

 In order to be proper the applicant must file a notice
 of appeal in compliance with 37 CFR 41.31 . The request for
 pre-appeal brief review must be filed with the filing of the notice of appeal and before
 the filing of an appeal brief. Form PTO/AIA/33, “Pre-Appeal Brief Request for Review”
 may be used for filing the request. The request must be accompanied by arguments in a
 separate paper entitled, “Pre-Appeal Brief Request for Review”. The request, not
 including Form PTO/AIA/33, may not exceed five (5) total pages and should provide a
 succinct, concise and focused set of arguments for which the review is being requested.
 Requests are limited to appealable, not petitionable matters. See MPEP § 1201 . An after
 final amendment may not accompany the request. Any amendment pursuant to
 37 CFR
 1.116 that is filed on the same day as the Pre-Appeal Brief
 Conference Request, regardless of whether the amendment is filed together with the
 notice of appeal and request or in a separate submission, will be considered to
 accompany the request. Therefore, such a request will not meet the content requirements
 of the Pilot program. A request that fails to comply with these requirements should be
 dismissed.
 

 If applicant files a notice of appeal, a Pre-Appeal
 Brief Conference Request, and an RCE all on the same date, the RCE will control. A
 notice of appeal cannot be entered into an application with an RCE until the application
 is under rejection, even if such application has been twice rejected prior to the RCE
 submission. Accordingly, the notice of appeal or the Pre-Appeal Brief Conference Request
 will not be considered. Applicant further cannot file a notice of appeal in the
 application until the application is under rejection. See MPEP § 1204 ,
 subsection II. 
 

 A pre-appeal brief request that is found not compliant
 cannot be corrected and resubmitted to cure the reason(s) for non-compliance because the
 corrected request would not meet the requirement that the notice of appeal and
 pre-appeal brief request be filed on the same date.
 

 Appellant cannot request withdrawal of a properly-filed
 notice of appeal for the purpose of requesting a Pre-Appeal Brief Conference and must
 perfect the appeal by filing the appeal brief within two months of the date of the
 filing of the notice of appeal under 37 CFR 41.31 . However, if the Office
 reopens prosecution and applicant wishes to reinstate the appeal, applicant may file
 both a new notice of appeal and a new request for Pre-Appeal Brief Conference on the
 same date. 
 

 Upon receipt of a properly filed request, a supervisor
 will designate a panel of appropriate reviewers to review the appellant's remarks and
 the examiner's rejections. The panel will include at least a supervisor and the examiner
 of record and will have the authority to reopen prosecution if appropriate. The
 appellant will not be permitted to attend the review and no interviews will be granted
 prior to issuance of the pre-appeal brief review decision. 
 

 After the review is complete, the Office will mail a
 decision on the status of the application. The decision will state one of the
 following:
 

 
 (A) The application remains under appeal because there
 is at least one actual issue for appeal.
 

 (B) Prosecution on the merits is reopened and an
 appropriate Office communication will follow in due course. In appropriate
 circumstances, a proposed amendment may accompany the panel’s decision proposing
 changes that, if accepted, may result in an indication of allowability for the
 contested claim(s). 
 

 (C) The application is allowed on the existing claims
 and prosecution remains closed. 
 

 (D) The request fails to comply with the submission
 requirements and is dismissed.
 

 
 The panel’s review will be terminated if the applicant
 files any of the following responses after filing a request, but prior to a decision by
 the appointed panel of examiners assigned to conduct the review.
 

 
 (A) An appeal brief.

 (B) A request for continued examination.

 (C) An after final amendment.

 (D) An affidavit or other evidence.

 (E) An express abandonment.

 
 After a panel decision, the time period for filing an
 appeal brief will be reset to be one month from the mailing of the decision on the
 request, or the balance of the two-month time period running from the receipt of the
 notice of appeal, whichever greater. Further, the time period for filing of the appeal
 brief is extendible under 37 CFR 1.136 . 
 

 For as long as this pilot program remains in effect,
 submission of a pre-appeal review request may extend the period for filing an appeal
 brief until a decision is made on the request or the request is otherwise dismissed.
 
 

 

 
 1204.03 Interviews After Notice of Appeal [R-11.2013]

 As indicated in MPEP § 713.09 , one interview after
 final rejection is normally permitted. Where a notice of appeal is filed in an
 application or ex parte reexamination, the phrase "after final
 rejection" includes only the time from the mailing of the final rejection through the
 filing of an appeal brief. However, as indicated in the notice "Pre-Appeal Brief Conference Pilot Program," 1296 OG 76 (July 12,
 2005) , no interviews will be granted from the filing of a request for
 pre-appeal review through issuance of a decision on the request. See
 MPEP §
 1204.02 .
 

 Except in unusual situations, no interview is permitted
 after the appeal brief is filed. See MPEP § 713.05 . Where an appeal brief is
 filed in an application or ex parte reexamination, the phrase "after the appeal brief is
 filed" includes the time from filing of the appeal brief through the first of a decision
 by the Board, the mailing by the examiner of a rejection or other paper with a response
 period, the mailing of a notice of defective appeal brief, or the mailing of a notice of
 allowance. 
 

 Effective March 19, 2013, 37 CFR
 41.20(b)(4) sets a fee to forward an appeal to the Board after the
 mailing of an examiner’s answer. While appellants may desire an interview after mailing
 of an examiner’s answer and prior to payment of this fee, interviews during this time
 period are likely to confuse the record on appeal and are not permitted except in
 unusual situations. These unusual circumstances may include situations where appellant
 wishes to cancel all appealed claims and proceed to issue with claims previously
 indicated as allowable, or where the examiner is convinced that some but not all of the
 previously rejected claims are in condition for allowance. 
 

 After the time specified in 37 CFR 41.35(a) ,
 the application or ex parte reexamination is no longer under the
 jurisdiction of the examiner. While the examiner has no jurisdiction over a proceeding
 after the time set in 37 CFR 41.35(a) , the Director of the USPTO or appropriate
 delegate has the authority to remand the proceeding to the examiner under
 37 CFR
 41.35(c) . Requests for interviews on cases under the jurisdiction
 of the Board should be granted only with specific approval of the Technology Center
 Director upon a showing in writing of extraordinary circumstances that justify a remand
 from the Board to the examiner in order to conduct an interview. 
 

 

 
 1204.04 Official Record on Appeal [R-01.2024]

 
 37 CFR 41.30 Definitions. 

 *****

 Evidence means something (including testimony, documents and
 tangible objects) that tends to prove or disprove the existence of an alleged fact,
 except that for the purpose of this subpart Evidence does not
 include dictionaries, which may be cited before the Board.
 

 *****

 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 or the official file of the Office if other than the Image File Wrapper,
 excluding amendments, Evidence, and other documents that were not entered. In the
 case of an issued patent being reissued or reexamined, the Record 
 further includes the Record of the patent being reissued or
 reexamined.
 

 

 The official record on appeal contains the items listed
 in the content listing of the Image File Wrapper or the official file of the Office if
 other than the Image File Wrapper, excluding any amendments, evidence, or other
 documents that were not entered or indicated considered by the examiner. 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 non-entered
 documents from the definition of "Record" reflects the fact that the Board’s review of
 patentability determinations is properly based on the record of all entered and
 indicated considered documents in the file. 
 

 An information disclosure statement or petition that is
 held in abeyance while the Board possesses jurisdiction over the proceeding is not an
 entered or indicated considered document and therefore is excluded from the definition
 of "Record" until such time as it is entered or indicated to have been considered. 
 

 The 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 content listing that
 points to this artifact file or other record. 
 

 In the case of an issued patent being reissued or
 reexamined, the Record further includes the Record of the patent being reissued or
 reexamined. 
 

 All references listed on an Information Disclosure
 Statement (i.e., Form PTO/SB/08), which have been indicated as having been considered by
 the examiner, or listed on a form PTO-892 are included in the definition of Record even
 if each of the so listed references does not separately appear in the content listing of
 the Image File Wrapper.
 

 For the purposes of appeal, "Evidence" does not encompass
 dictionaries. Excluding dictionaries from the definition of "Evidence" thus allows
 appellants to refer to dictionaries in their briefs, which would otherwise be precluded
 under 37 CFR
 41.33(d)(2) (absent existence of one of the enumerated
 exceptions). It further allows examiners to refer to dictionaries in the examiner’s
 answers without automatically rendering a rejection a new ground under 37 CFR
 41.39(a)(2) . Treating dictionaries in this manner is consistent with
 Supreme Court and Federal Circuit precedent, which contemplate that such materials may
 be consulted by tribunals "at any time." See, e.g., Nix v. Hedden, 
 149 U.S. 304, 307 (1893) (citations omitted) (admitting dictionaries to understand the
 ordinary meaning of terms "not as evidence, but only as aids to the memory and
 understanding of the court"); Phillips v. AWH Corp., 415 F.3d 1303,
 1322–23, 75 USPQ2d 1321, 1333 (Fed. Cir. 2005) ( en banc ) ("[J]udges
 are free to consult dictionaries and technical treatises at any time in order to better
 understand the underlying technology and may also rely on dictionary definitions when
 construing claim terms, so long as the dictionary definition does not contradict any
 definition found in or ascertained by a reading of the patent documents.") (citation
 omitted); In re Boon, 439 F.2d 724, 727–28, 169 USPQ 231, 234
 (CCPA 1971) (holding citation to dictionary was not tantamount to the assertion of a new
 ground of rejection "where such a reference is a standard work, cited only to support a
 fact judicially noticed and, as here, the fact so noticed plays a minor role, serving
 only to fill in the gaps which might exist in the evidentiary showing made by the
 Examiner to support a particular ground for rejection." (emphasis and internal
 quotations omitted)). Thus, 37 CFR 41.30 permits both the
 applicant and examiner to submit them to the Board during the briefing stage.
 

 

 [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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 03/09/2026 20:49:25