MPEP § 1213 — MPEP § 1213
Current through: 2022-07-01

1213-Decision by Board 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1213 
 

 
 
 
 
 
 1213 Decision by Board [R-11.2013]

 
 37 CFR 41.50 Decisions and other actions by the Board. 

 
 (a)
 
 (1) Affirmance and reversal. The Board, in its decision, may
 affirm or reverse the decision of the examiner in whole or in part on the
 grounds and on the claims specified by the examiner. The affirmance of the
 rejection of a claim on any of the grounds specified constitutes a general
 affirmance of the decision of the examiner on that claim, except as to any
 ground specifically reversed. The Board may also remand an application to
 the examiner.
 

 (2) If a substitute examiner's answer is written in
 response to a remand by the Board for further consideration of a rejection
 pursuant to paragraph (a)(1) of this section, 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:
 
 (i) Reopen prosecution. Request that prosecution be
 reopened before the examiner by filing a reply under §
 1.111 of this title with or without amendment
 or submission of affidavits (§§ 1.130 ,
 1.131 or
 1.132 of this title) 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 this
 paragraph (a) will be entered and the application or the patent under
 ex parte reexamination will be reconsidered by
 the examiner under the provisions of § 1.112 of this title. Any request that
 prosecution be reopened under this paragraph will be treated as a
 request to withdraw the appeal.
 

 (ii) Maintain appeal. Request that the appeal be
 maintained by filing a reply brief as provided in § 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
 paragraph (a)(2)(i) of this section.
 

 
 

 
 

 (b) New ground of rejection. Should the Board have knowledge of any
 grounds not involved in the appeal for rejecting any pending claim, it may include
 in its opinion a statement to that effect with its reasons for so holding, and
 designate such a statement as a new ground of rejection of the claim. A new ground
 of rejection pursuant to this paragraph shall not be considered final for judicial
 review. When the Board enters such a non-final decision, the appellant, within two
 months from the date of the decision, must exercise one of the following two
 options with respect to the new ground of rejection to avoid termination of the
 appeal as to the rejected claims:
 
 (1) Reopen prosecution. Submit an appropriate amendment of
 the claims so rejected or new Evidence relating to the claims so rejected,
 or both, and have the matter reconsidered by the examiner, in which event
 the prosecution will be remanded to the examiner. The new ground of
 rejection is binding upon the examiner unless an amendment or new Evidence
 not previously of Record is made which, in the opinion of the examiner,
 overcomes the new ground of rejection designated in the decision. Should the
 examiner reject the claims, appellant may again appeal to the Board pursuant
 to this subpart.
 

 (2) Request rehearing. Request that the proceeding be reheard
 under § 41.52 by the Board upon the same Record. The request
 for rehearing must address any new ground of rejection and state with
 particularity the points believed to have been misapprehended or overlooked
 in entering the new ground of rejection and also state all other grounds
 upon which rehearing is sought.
 

 
 

 (c) Review of undesignated new ground of rejection. Any request to
 seek review of a panel's failure to designate a new ground of rejection in its
 decision must be raised by filing a request for rehearing as set forth in §
 41.52 . Failure of appellant to timely file such a request
 for rehearing will constitute a waiver of any arguments that a decision contains
 an undesignated new ground of rejection.
 

 (d) Request for briefing and information. The Board may order
 appellant to additionally brief any matter that the Board considers to be of
 assistance in reaching a reasoned decision on the pending appeal. Appellant will
 be given a time period within which to respond to such an order. Failure to timely
 comply with the order may result in the sua sponte dismissal of the appeal.
 

 (e) Remand not final action. Whenever a decision of the Board
 includes a remand, that decision shall not be considered final for judicial
 review. When appropriate, upon conclusion of proceedings on remand before the
 examiner, the Board may enter an order otherwise making its decision final for
 judicial review.
 

 (f) Extensions of time. Extensions of time under §
 1.136(a) of this title for patent applications are not
 applicable to the time periods set forth in this section. See § 1.136(b) of
 this title for extensions of time to reply for patent applications and §
 1.550(c) of this title for extensions of time to reply for
 ex parte reexamination proceedings.
 

 
 

 After consideration of the Record including appellant’s briefs and the
 examiner’s answers, the Board writes its decision, affirming the examiner in whole or in
 part, or reversing the examiner’s decision, sometimes also setting forth a new ground of
 rejection.
 

 37 CFR
 41.50(e) provides that a decision of the Board which includes a
 remand will not be considered final for judicial review. The Board, following conclusion of
 the proceedings before the examiner, will either adopt its earlier decision as final for
 judicial review or will render a new decision based on all appealed claims, as it considers
 appropriate. In either case, final action by the Board will give rise to the alternatives
 available to an appellant following a decision by the Board.
 

 On occasion, the Board has refused to consider an appeal until after the
 conclusion of a pending civil action or appeal to the Court of Appeals for the Federal
 Circuit involving issues identical with and/or similar to those presented in the later
 appeal. Such suspension of action, postponing consideration of the appeal until the Board
 has the benefit of a court decision which may be determinative of the issues involved, has
 been recognized as sound practice. An appellant is not entitled, after obtaining a final
 decision by the U.S. Patent and Trademark Office on an issue in a case, to utilize the
 prolonged pendency of a court proceeding as a means for avoiding res
 judicata while relitigating the same or substantially the same issue in
 another application.
 

 An appellant may petition that the decision be withheld to permit the
 refiling of the application at any time prior to the mailing of the decision. Up to 30 days
 may be granted, although the time is usually limited as much as possible. The Board will be
 more prone to entertain the appellant’s petition where the petition is filed early,
 obviating the necessity for an oral hearing or even for the setting of the oral hearing
 date. If the case has already been set for oral hearing, the petition should include a
 request to vacate the hearing date, not to postpone it.
 

 In a situation where a withdrawal of the appeal is filed on the same day
 that the decision is mailed, a petition to vacate the decision will be denied.
 

 See MPEP §
 1214.01 concerning the procedure following a new ground of
 rejection by the Board under 37 CFR 41.50(b) . 
 

 A remark by the Board that a certain feature does not appear
 in a claim is not to be taken as a statement that the claim may be allowed if the feature
 is supplied by amendment. Ex parte Norlund, 1913 C.D. 161, 192 O.G. 989
 (Comm’r Pat. 1913). A remark by the Board shall not be construed by appellant to give
 appellant authority to amend the claim.
 

 
 1213.01 [Reserved] [R-]

 

 

 
 1213.02 New Grounds of Rejection by Board [R-11.2013]

 
 37 CFR 41.50 Decisions and other actions by the Board. 

 *****

 
 (b) New ground of rejection. Should the Board have knowledge of
 any grounds not involved in the appeal for rejecting any pending claim, it may
 include in its opinion a statement to that effect with its reasons for so
 holding, and designate such a statement as a new ground of rejection of the
 claim. A new ground of rejection pursuant to this paragraph shall not be
 considered final for judicial review. When the Board enters such a non-final
 decision, the appellant, within two months from the date of the decision, must
 exercise one of the following two options with respect to the new ground of
 rejection to avoid termination of the appeal as to the rejected claims:
 
 (1) Reopen prosecution. Submit an appropriate amendment of
 the claims so rejected or new Evidence relating to the claims so
 rejected, or both, and have the matter reconsidered by the examiner, in
 which event the prosecution will be remanded to the examiner. The new
 ground of rejection is binding upon the examiner unless an amendment or
 new Evidence not previously of Record is made which, in the opinion of
 the examiner, overcomes the new ground of rejection designated in the
 decision. Should the examiner reject the claims, appellant may again
 appeal to the Board pursuant to this subpart.
 

 (2) Request rehearing. Request that the proceeding be
 reheard under § 41.52 by the Board
 upon the same Record. The request for rehearing must address any new
 ground of rejection and state with particularity the points believed to
 have been misapprehended or overlooked in entering the new ground of
 rejection and also state all other grounds upon which rehearing is
 sought.
 

 
 

 
 *****

 
 (f) Extensions of time. Extensions of time under §
 1.136(a) of this title for patent applications are not
 applicable to the time periods set forth in this section. See §
 1.136(b) of this title for extensions of time to reply
 for patent applications and § 1.550(c) of this title for
 extensions of time to reply for ex parte reexamination
 proceedings.
 

 
 

 Under 37 CFR 41.50(b) , the Board may, in its decision, make a new
 rejection of one or more of any of the claims pending in the case, including claims
 which have been allowed by the examiner. When the Board exercises its authority to make
 a new ground of rejection it must also designate that rejection as a new ground of
 rejection.
 

 The Board’s reversal of a rejection should not be
 interpreted as an instruction to the Examiner to allow the claims so rejected. See
 MPEP §
 1214.04 for further discussion of the procedure following a
 reversal of the examiner’s decision. The Board’s primary role is to review the adverse
 decision as presented by the Examiner, and not to conduct its own separate examination
 of the claims. Further, since the exercise of authority under 37 CFR 41.50(b) is
 discretionary, no inference should be drawn from a failure to exercise that
 discretion.
 

 While the Board is authorized to reject allowed claims, this
 authorization is not intended as an instruction to the Board to examine every allowed
 claim in every appealed application. It is, rather, intended to give the Board express
 authority to act when it becomes apparent, during the consideration of rejected claims,
 that one or more allowed claims may be subject to rejection on either the same or on
 different grounds from those applied against the rejected claims. 
 

 See MPEP
 § 1214.01 for the procedure following a new ground of
 rejection under 37 CFR
 41.50(b) .
 

 

 
 1213.03 Publication of and Public Access to Board Decision [R-11.2013]

 
 37 CFR 41.6 Public availability of Board records. 

 
 (a) Publication. 
 (1) Generally. Any Board action is available for public
 inspection without a party’s permission if rendered in a file open to the
 public pursuant to § 1.11 of this title
 or in an application that has been published in accordance with §§
 
 1.211 to 1.221 of this title.
 The Office may independently publish any Board action that is available
 for public inspection.
 

 (2) Determination of special circumstances. Any Board
 action not publishable under paragraph (a)(1) of this section may be
 published or made available for public inspection if the Director
 believes that special circumstances warrant publication and a party does
 not, within two months after being notified of the intention to make the
 action public, object in writing on the ground that the action discloses
 the objecting party’s trade secret or other confidential information and
 states with specificity that such information is not otherwise publicly
 available. If the action discloses such information, the party shall
 identify the deletions in the text of the action considered necessary to
 protect the information. If the affected party considers that the entire
 action must be withheld from the public to protect such information, the
 party must explain why. The party will be given time, not less than
 twenty days, to request reconsideration and seek court review before any
 contested portion of the action is made public over its objection.
 

 
 

 (b) Record of proceeding. 
 (1) The record of a Board proceeding is
 available to the public unless a patent application not otherwise
 available to the public is involved.
 

 (2) Notwithstanding paragraph (b)(1) of this
 section, after a final Board action in or judgment in a Board proceeding,
 the record of the Board proceeding will be made available to the public
 if any involved file is or becomes open to the public under §
 1.11 of this title or an involved application is
 or becomes published under §§ 1.211 to
 1.221 of this title.
 

 
 

 
 

 Any Board decision is available for public inspection without a party’s
 permission if rendered in a file open to the public pursuant to 37 CFR 1.11 or in
 an application that has been published in accordance with 37 CFR 1.211 
 through 1.221 . The Office may independently publish any Board action that
 is available for public inspection.
 

 Decisions of the Board which are open to the public are available in
 electronic form on the USPTO Web site (http://www.uspto.gov) in the FOIA reading
 room.
 

 Any Board decision rendered in a file not open to the public pursuant
 to 37 CFR
 1.11 or in an application that has not been published in
 accordance with 37 CFR
 1.211 through 1.221 may be published or made
 available for public inspection under 37 CFR 41.6(a)(2) if the Director
 believes that special circumstances warrant publication.
 

 

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 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 20:50:33