MPEP § 1205 — MPEP § 1205
Current through: 2022-07-01

1205-Appeal Brief 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1205 
 

 
 
 
 
 
 1205 Appeal Brief [R-11.2013]

 
 37 CFR 41.37 Appeal brief. 

 
 (a) Timing. Appellant must file a brief under this section within
 two months from the date of filing the notice of appeal under § 41.31 . The
 appeal brief fee in an application or ex parte reexamination
 proceeding is $0.00, but if the appeal results in an examiner's answer, the appeal
 forwarding fee set forth in § 37 CFR 41.20(b)(4) must be
 paid within the time period specified in § 41.45 to avoid dismissal of an appeal.
 

 (b) Failure to file a brief. On failure to file the brief within
 the period specified in paragraph (a) of this section, the appeal will stand
 dismissed.
 

 (c) Content of appeal brief. 
 (1) Except as otherwise provided in this paragraph, the
 brief shall contain the following items under appropriate headings and in
 the order indicated in paragraphs (c)(1)(i) through (v) of this section,
 except that a brief filed by an appellant who is not represented by a
 registered practitioner need only substantially comply with paragraphs
 (c)(1)(i), (c)(1)(ii), (c)(1)(iv), and (c)(1)(v) of this section:
 
 (i) Real party in interest. A statement identifying by
 name the real party in interest at the time the appeal brief is filed,
 except that such statement is not required if the named inventor or
 inventors are themselves the real party in interest. If an appeal
 brief does not contain a statement of the real party in interest, the
 Office may assume that the named inventor or inventors are the real
 party in interest.
 

 (ii) Related appeals, interferences, and trials. A
 statement identifying by application, patent, appeal, interference, or
 trial number all other prior and pending appeals, interferences,
 trials before the Board, or judicial proceedings (collectively,
 "related cases") which satisfy all of the following conditions:
 involve an application or patent owned by the appellant or assignee,
 are known to appellant, the appellant’s legal representative, or
 assignee, and may be related to, directly affect or be directly
 affected by or have a bearing on the Board’s decision in the pending
 appeal, except that such statement is not required if there are no
 such related cases. If an appeal brief does not contain a statement of
 related cases, the Office may assume that there are no such related
 cases.
 

 (iii) Summary of claimed subject matter. A concise
 explanation of the subject matter defined in each of the rejected
 independent claims, which shall refer to the specification in the
 Record by page and line number or by paragraph number, and to the
 drawing, if any, by reference characters. For each rejected
 independent claim, and for each dependent claim argued separately
 under the provisions of paragraph (c)(1)(iv) of this section, if the
 claim contains a means plus function or step plus function recitation
 as permitted by 35 U.S.C. 112(f) ,
 then the concise explanation must identify the structure, material, or
 acts described in the specification in the Record as corresponding to
 each claimed function with reference to the specification in the
 Record by page and line number or by paragraph number, and to the
 drawing, if any, by reference characters. Reference to the patent
 application publication does not satisfy the requirements of this
 paragraph.
 

 (iv) Argument. The arguments of appellant with respect
 to each ground of rejection, and the basis therefor, with citations of
 the statutes, regulations, authorities, and parts of the Record relied
 on. The arguments shall explain why the examiner erred as to each
 ground of rejection contested by appellant. Except as provided for in
 §§ 41.41 , 41.47 and
 41.52 , any arguments or authorities not
 included in the appeal brief will be refused consideration by the
 Board for purposes of the present appeal. Each ground of rejection
 contested by appellant must be argued under a separate heading, and
 each heading shall reasonably identify the ground of rejection being
 contested ( e.g., by claim number, statutory basis,
 and applied reference, if any). For each ground of rejection applying
 to two or more claims, the claims may be argued separately (claims are
 considered by appellant as separately patentable), as a group (all
 claims subject to the ground of rejection stand or fall together), or
 as a subgroup (a subset of the claims subject to the ground of
 rejection stand or fall together). When multiple claims subject to the
 same ground of rejection are argued as a group or subgroup by
 appellant, the Board may select a single claim from the group or
 subgroup and may decide the appeal as to the ground of rejection with
 respect to the group or subgroup on the basis of the selected claim
 alone. Notwithstanding any other provision of this paragraph, the
 failure of appellant to separately argue claims which appellant has
 grouped together shall constitute a waiver of any argument that the
 Board must consider the patentability of any grouped claim separately.
 Under each heading identifying the ground of rejection being
 contested, any claim(s) argued separately or as a subgroup shall be
 argued under a separate subheading that identifies the claim(s) by
 number. A statement which merely points out what a claim recites will
 not be considered an argument for separate patentability of the
 claim.
 

 (v) Claims appendix. An appendix containing a copy of
 the claims involved in the appeal.
 

 
 

 (2) A brief shall not include any new or non-admitted
 amendment, or any new or non-admitted affidavit or other Evidence.
 See § 37 CFR 1.116 of this
 title for treatment of amendments, affidavits or other evidence filed after
 final action but before or on the same date of filing an appeal and §
 41.33 for treatment of amendments, affidavits or
 other Evidence filed after the date of filing the appeal. Review of an
 examiner's refusal to admit an amendment or Evidence is by petition to the
 Director. See § 1.181 of this title.
 

 
 

 (d) Notice of non-compliance. If a brief is filed which does not
 comply with all the requirements of paragraph (c) of this section, appellant will
 be notified of the reasons for non-compliance and given a time period within which
 to file an amended brief. If appellant does not, within the set time period, file
 an amended brief that overcomes all the reasons for non-compliance stated in the
 notification, the appeal will stand dismissed. Review of a determination of
 non-compliance is by petition to the Chief Administrative Patent Judge.
 See § 41.3 .
 

 (e) Extensions of time. The time periods set forth in 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.
 

 
 

 
 1205.01 Time for Filing Appeal Brief [R-10.2019]

 37 CFR
 41.37(a) provides 2 months from the date of the notice of appeal
 for the appellant to file an appeal brief and the appeal brief fee set forth in
 37 CFR
 41.20(b)(2) . Any brief in an application or an ex
 parte reeexamination proceeding filed on or after March 19, 2013 need not
 be accompanied by an appeal brief fee as the 37 CFR 41.20(b)(2) fee amount on or
 after that date is set at $0.
 

 The usual period of time in which appellant must file his or her brief
 is 2 months from the date of the notice of appeal. The Office date of receipt of the
 notice of appeal (and not the date indicated on any Certificate of Mailing under
 37 CFR
 1.8 ) is the date from which this 2-month time period is measured.
 See MPEP
 § 512 . If the notice of appeal is filed in accordance with
 37 CFR
 1.10 using the Priority Mail Express ® 
 service of the United States Postal Service (USPS), the date of deposit with the USPS is
 the date from which this 2-month time period is measured because the date of deposit
 shown by the “date accepted” on the Priority Mail Express ® 
 label or other official USPS notation is considered to be the date of receipt. See
 MPEP §
 513 .
 

 37 CFR
 41.37(a) does not permit the brief to be filed within the time
 allowed for reply to the action from which the appeal was taken even if such time is
 later. Once appellant timely files a notice of appeal in compliance with
 37 CFR
 41.31 , the time period for reply set forth in the last Office
 action is tolled and is no longer relevant for the time period for filing an appeal
 brief. For example, if appellant filed a notice of appeal within one month from the
 mailing of a final Office action which sets forth a 3-month shortened statutory period
 for reply, and then the appellant filed an appeal brief after 2 months from the filing
 date of the notice of appeal, a petition for an extension of time for one month would be
 required, even if the brief was filed but within three (3) months from the mailing of
 the final action. Similarly, if the appellant files a request for continued examination
 (RCE) under 37 CFR
 1.114 , instead of an appeal brief, after two (2) months from the
 filing date of the notice of appeal a petition for an extension of time would be
 required, even if the RCE was filed within three (3) months from the mailing of the
 final action.
 

 This 2-month time period for a patent application may be extended under
 37 CFR
 1.136(a) , and if 37 CFR 1.136(a) is not available,
 under 37 CFR
 1.136(b) for extraordinary circumstances. In an ex
 parte reexamination proceeding, the time period can be extended only under
 the provisions of 37
 CFR 1.550(c) . See also MPEP § 2274 .
 

 In the event that the appellant finds that they are unable to file a
 brief within the time period allotted by the rule, they may file a petition for
 extension of time under 37 CFR 1.136(a) with the appropriate
 fee. Additional time in excess of 5 months will not be granted unless extraordinary
 circumstances are involved under 37 CFR 1.136(b) . Where a proper
 petition for extension of time is filed, the new due date is computed from the receipt
 date of the notice of appeal, as opposed to the original due date. For example, if a
 notice of appeal’s receipt date is December 30, the appeal brief would be due on the
 following February 28 (or 29, if it is a leap year), if not a Saturday, Sunday or
 federal holiday. If the period for filing an appeal brief is extended by one month the
 appeal brief would be due on March 30, if not a Saturday, Sunday, or federal holiday. 
 

 ¶ 12.210 Extension To File Brief - Granted

 The request for an extension of time
 under 37 CFR
 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on
 [1] has been approved for [2] .
 

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

 2. In bracket 2, insert the amount
 of time the extension of time has been approved for.
 

 3. This form paragraph should only
 be used when 37 CFR
 1.136(a) is not available or has been exhausted, such as in
 litigation reissues or when appellant requests to reopen prosecution or file a reply
 brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2) .
 
 
 

 ¶ 12.211 Extension To File Brief - Denied

 The request for an extension of time
 under 37 CFR
 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on
 [1] has been disapproved because no sufficient cause for the
 extension has been shown.
 

 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 when 37 CFR
 1.136(a) is not available or has been exhausted, such as in
 litigation reissues or when appellant requests to reopen prosecution or file a reply
 brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2) .
 
 
 
 

 When an application is revived after abandonment for failure on the
 part of the appellant to take appropriate action after final rejection, and the petition
 to revive was accompanied by a notice of appeal, appellant has 2 months, from the
 mailing date of the Director’s affirmative decision on the petition, in which to file
 the appeal brief. The time period for filing the appeal brief may be extended under
 37 CFR
 1.136 .
 

FAILURE TO TIMELY FILE AN APPEAL BRIEF
 The appeal ordinarily will be dismissed if the brief is not filed
 within the period provided by 37 CFR 41.37(a) or within such
 additional time as may be properly extended. Effective March 19, 2013, the statutory
 fee for filing an appeal brief was adjusted to $0. As long as the fee under
 37 CFR
 41.20(b)(2) remains $0, the appeal will not be dismissed for
 failure to pay the fee.
 

 A brief must be filed to preserve appellant’s right to the appealed
 claims, notwithstanding circumstances such as:
 

 
 (A) the filing of a petition to invoke the supervisory authority
 of the Director under 37 CFR 1.181 ;
 

 (B) the filing of an amendment, even if it is one which the
 examiner previously has indicated may place one or more claims in condition for
 allowance, unless the examiner, in acting on the amendment, disposes of all
 issues on appeal;
 

 (C) the receipt of a letter from the examiner stating that
 prosecution is suspended, without the examiner withdrawing the final rejection
 from which appeal has been taken.
 

 
 Although failure to file the brief within the permissible time will
 result in dismissal of the appeal, if any claims stand allowed the application does
 not become abandoned by the dismissal, but is returned to the examiner for action on
 the allowed claims. See MPEP § 1215.04 . If there are no
 allowed claims, the application is abandoned as of the date the brief was due. Claims
 which have been objected to as dependent from a rejected claim do not stand allowed.
 In an ex parte reexamination proceeding, failure to file the brief
 will result in the issuance of the certificate under 37 CFR
 1.570 .
 

 ¶ 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 .
 
 
 

 If the time for filing a brief has passed and the application has
 consequently become abandoned, the applicant may petition to revive the application
 under 37 CFR
 1.137 , as in other cases of abandonment. See
 MPEP §
 711.03(c) . If the appeal is dismissed, but the application
 is not abandoned because there is at least one allowed claim, the applicant may file
 a petition to reinstate the claims and the appeal, but a showing equivalent to that
 in a petition to revive under 37 CFR 1.137 is required. See
 MPEP §
 711.03(c) . In addition to the petition and petition fee,
 appellant must file:
 

 
 (A) A request for continued examination (RCE) under
 37 CFR
 1.114 accompanied by a submission (i.e., a reply under
 37 CFR
 1.111 ) and the fee as set forth in 37 CFR
 1.17(e) if the application is a utility or plant
 application filed on or after June 8, 1995, or a continuing application under
 37 CFR
 1.53(b) (or a CPA under 37 CFR
 1.53(d) if the application is a design application);
 or
 

 (B) An appeal brief and the appeal brief fee to reinstate the
 appeal. Effective March 19, 2013, the statutory fee for filing an appeal brief
 in an application or ex parte reexamination proceeding was
 adjusted to $0. For so long as the fee under 37 CFR
 41.20(b)(2) remains $0, the appeal will not be dismissed
 for failure to pay the fee. A proper brief must be filed before the petition
 will be considered on its merits. 
 

 
 Where the dismissal of the appeal is believed to be in error, filing
 a petition, pointing out the error, may be sufficient.
 

 

 
 1205.02 Appeal Brief Content [R-07.2022]

 Only one copy of the appeal brief is required. Any brief for which the
 notice of appeal was filed on or after January 23, 2012 must comply with the
 requirements set forth in current 37 CFR 41.37 . For information
 pertaining to the Office’s ex parte appeal practice and procedure
 that is applicable if the notice of appeal was filed before January 23, 2012 (or if
 proceedings were commenced before September 16, 2012), see Chapter 1200 in the MPEP 8th
 Edition, Rev. 9 (August 2012)(available on the USPTO website at www.uspto.gov/web/
 offices/pac/mpep/old/mpep_E8R9.htm ).
 

 Appellant must file a brief under 37 CFR 41.37 
 within two months from the date of filing the notice of appeal under 37 CFR 41.31 . The
 appeal brief fee in an application or ex parte reexamination
 proceeding is $0.00. For so long as the adjusted fee for filing an appeal brief remains
 at $0, the brief need not be accompanied by an attempt to pay the fee under
 37 CFR
 41.20(b)(2) . A brief that is filed on or after January 23, 2012
 that fails to comply with the requirements set forth in 37 CFR 41.37(c) 
 shall be held to be non-compliant under 37 CFR 41.37(d) . The brief, as well
 as every other document relating to an appeal, should indicate the number of the
 Technology Center (TC) to which the application or patent under reexamination is
 assigned and the application or reexamination control number. Oral argument at a hearing
 will not remedy deficiencies in a brief. The following discussion of the contents of an
 appeal brief pertains to briefs filed pursuant to the requirements set forth in
 37 CFR
 41.37 .
 

 An appellant’s brief must present arguments responsive to every ground
 of rejection stated by the examiner in the Office action from which the appeal has been
 taken (as modified by any advisory action and/or pre-appeal brief conference decision).
 See 37 CFR
 41.31(c) and 37 CFR 41.37(c)(1)(iv) . If a ground
 of rejection stated by the examiner is not addressed in the appellant’s brief, appellant
 has waived any challenge to that ground of rejection and the Board may summarily sustain
 it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.
 See 37 CFR
 41.39(a)(1) . The fact that appellant may consider a ground to be
 clearly improper does not justify failure to point out to the Board the reasons for that
 belief, including an explanation of why the examiner erred as to the ground of
 rejection. Similarly, requesting that a rejection, such as a non-statutory double
 patenting rejection, be held in abeyance does not meet the requirements of
 37 CFR
 41.37(c)(1)(iv) . Such response will be treated as a waiver of any
 challenge to the double-patenting rejection and such rejections may be summarily
 affirmed by the Board. The presence of such rejections may result in the dismissal of a
 request for judicial review should the appellant seek judicial review 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 ). 
 

 The mere filing of a document titled as a brief will not necessarily be
 considered to be in compliance with 37 CFR 41.37(c) . The rule requires
 that the brief must set forth arguments and the basis therefor, with citations of the
 statutes, regulations, authorities and parts of the record relied upon. It is essential
 that the Board be provided with a brief fully stating the position of the appellant with
 respect to each ground of rejection presented for review in the appeal so that no search
 of the Record is required in order to determine that position. Thus, the brief should
 not incorporate or reference previous responses. 37 CFR 41.37(c)(1) requires that the
 brief contain specific items, as discussed below. The brief must have all of the
 required items under appropriate headings in the order indicated in 37 CFR
 41.37(c)(1) . 37 CFR 41.37(c)(1) provides that in
 certain circumstances, the items listed in paragraphs (c)(1)(i) and (c)(1)(ii) may be
 omitted from an appeal brief and further provides that the Office may assume certain
 information about the appeal should these items be omitted from the appeal brief. As
 such, the headings are not required to be included in the appeal brief in the event that
 an item is not applicable (i.e., the real party in interest is the inventor(s), or there
 are no related appeals). To assist appellants in complying with 37 CFR 41.37 , the
 Board has posted checklists for notices of appeal and appeal briefs on the USPTO website
 at www.uspto.gov/ patents-application-process/appealing-patent-decisions/
 procedures/guidance-reduce-non-compliant .
 

 An exception to the requirement that all the items specified in
 37 CFR
 41.37(c)(1) be included in the brief is made if the application or
 reexamination proceeding is being prosecuted by the appellant pro se, 
 i.e., there is no attorney or agent of record, and the brief was neither prepared nor
 signed by a registered attorney or agent. The brief of a pro se 
 appellant which does not contain all of the items specified in 37 CFR 41.37(c)(1) 
 will be accepted as long as it substantially complies with the requirements of
 subparagraphs (i), (ii), (iv) and (v). 
 

 While it is no longer a requirement to include an evidence appendix,
 the Office strongly encourages and appreciates receiving copies of the evidence relied
 upon (e.g., copies of declarations and affidavits, evidence of secondary considerations,
 etc.). This ensures that the Board is considering the proper evidence and avoids any
 confusion as to the particular evidence referenced in the appeal brief. In the
 alternative, the Board recommends that appellants clearly identify in the appeal brief
 the evidence relied upon using a clear description of the evidence along with the date
 of entry of such evidence into the Image File Wrapper.
 

 An amendment or other evidence submitted under
 37 CFR
 1.116 or 37 CFR 41.33 will not be entered as
 part of the record for the appeal unless entered by the examiner.
 

 The specific items required by 37 CFR 41.37(c)(1) are:
 

 (i) Real party in interest. A statement identifying
 by name the real party in interest at the time the appeal brief is filed, except that
 such statement is not required if the named inventor or inventors are themselves the
 real party in interest. If an appeal brief does not contain a statement of the real
 party in interest, the Office may assume that the named inventor or inventors are the
 real party in interest.
 

 The identification of the real party in interest allows members of the
 Board to comply with ethics regulations associated with working in matters in which the
 member has a financial interest to avoid any potential conflict of interest. When an
 application is assigned to a subsidiary corporation, the real party in interest is both
 the assignee and either the parent corporation or corporations, in the case of joint
 ventures. One example of a statement identifying the real party in interest is: The real
 party in interest is XXXX corporation, the assignee of record, which is a subsidiary of
 a joint venture between YYYY corporation and ZZZZ corporation.
 

 (ii) Related appeals, interferences, and trials. A
 statement identifying by application, patent, appeal, interference, or trial number all
 other prior and pending appeals, interferences, trials before the Board, or judicial
 proceedings (collectively, "related cases") which satisfy all of the following
 conditions: Involve an application or patent owned by the appellant or assignee; are
 known to appellant, the appellant’s legal representative, or assignee; and may be
 related to, directly affect or be directly affected by or have a bearing on the Board’s
 decision in the pending appeal. If there are no such related cases, the appellant is not
 required to include the statement, and if the appellant has not included the statement,
 then the Office may assume that there are no such related cases.
 

 The rule does not require Appellant to provide copies of
 decisions in related cases.
 

 (iii) Summary of claimed subject matter. A
 concise explanation of the subject matter defined in each of the rejected independent
 claims, which shall refer to the specification in the Record by page and line number or
 by paragraph number, and to the drawing, if any, by reference characters. For each
 rejected independent claim, and for each dependent claim argued separately under the
 provisions of paragraph (c)(1)(iv) of this section, if the claim contains a means plus
 function or step plus function recitation as permitted by 35 U.S.C.
 112(f) , then the concise explanation must identify the structure,
 material, or acts described in the specification in the Record as corresponding to each
 claimed function with reference to the specification in the Record by page and line
 number or by paragraph number, and to the drawing, if any, by reference characters.
 Reference to the patent application publication does not satisfy the requirements of
 this paragraph.
 

 (iv) Argument. The arguments of appellant with
 respect to each ground of rejection and the basis therefor, including citations of
 statutes, regulations, authorities and parts of the Record relied on, should be
 presented in this section. The arguments shall explain why the examiner erred as to each
 ground of rejection contested by appellant. See Ex parte Frye, 94
 USPQ2d 1072, 1075-76 (BPAI 2010) (per curiam) (precedential) and In re
 Jung, 637 F.3d 1356, 98 USPQ2d 1174 (Fed. Cir. 2011). A statement which
 merely points out what a claim recites will not be considered an argument for
 patentability of the claim.
 

 37 CFR
 41.37(c)(1)(iv) contains the following sentence: 
 

 
 Except as provided for in §§ 41.41, 41.47 and 41.52,
 any arguments or authorities not included in the appeal brief will be refused
 consideration by the Board for purposes of the present appeal.
 

 
 This sentence emphasizes that all arguments and authorities which an
 appellant wishes the Board to consider for purposes of the present appeal should be
 included in the appeal brief. It should be noted that arguments not presented in the
 briefs and made for the first time at the oral hearing are not normally entitled to
 consideration except as provided for in 37 CFR 41.47 . In re
 Chiddix, 209 USPQ 78 (Comm’r Pat. 1980); Rosenblum v.
 Hiroshima, 220 USPQ 383 (Comm’r Pat. 1983).
 

 This sentence is not intended to preclude the filing of a supplemental
 brief or document if new authority should become available or relevant after the brief
 or reply brief was filed. An example of such circumstances would be where a pertinent
 decision of a court or other tribunal was not published until after the brief or reply
 brief was filed.
 

 This sentence is also limited to “the present appeal”
 and is not intended to extend the Board’s refusal to consider other arguments or
 authorities to subsequent appeals in the same application or to appeals in other
 applications.
 

 Each ground of rejection must be argued under a separate heading, which
 clearly identifies the ground of rejection being contested. For each ground of rejection
 applying to two or more claims, the claims may be argued separately (claims are
 considered by appellants as separately patentable), as a group (all claims subject to
 the ground of rejection stand or fall together), or as a subgroup (a subset of the
 claims subject to the ground of rejection stand or fall together). When multiple claims
 subject to the same ground of rejection are argued as a group or subgroup by appellant,
 the Board may select a single claim from the group of claims and may decide the appeal
 as to the ground of rejection with respect to the group or subgroup of claims as to the
 ground of rejection on the basis of the selected claim alone. The failure of appellant
 to separately argue claims which appellant has grouped together constitutes a waiver of
 any argument that the Board must consider the patentability of any grouped claim
 separately. See In re McDaniel, 293 F.3d 1379, 1384, 63 USPQ2d 1462,
 1465-66 (Fed. Cir. 2002). Under each heading identifying the ground of rejection being
 contested, any claim(s) argued separately or as a subgroup shall be placed under a
 separate subheading that identifies the claim(s) by number. 
 

 For example, if Claims 1 to 5 stand rejected under 35 U.S.C.
 102(a)(2) as being anticipated by U.S. Patent No. Y and appellant
 is arguing only the limitations of independent claim 1, and thereby grouping dependent
 claims 2 to 5 to stand or fall with independent claim 1, then one possible heading as
 required by this subsection could be “ Rejection under 35 U.S.C. 102(a)(2)
 over U.S. Patent No. Y ” and an optional subheading would be
 “ Claims 1 to 5 .” Another example is where claims 1 to 3 stand
 rejected under 35 U.S.C. 102(a)(2) as being
 anticipated by U.S. Patent No. Z and appellant wishes to argue separately the
 patentability of each claim, a possible heading as required by this subsection could be
 “ Rejection under 35 U.S.C. 102 (a)(2) over U.S. Patent No. Z ,”
 and the required subheadings would be “ Claim 1 ,”
 “ Claim 2” and “ Claim 3 .” Under each
 subheading the appellant would present the argument for patentability of that claim.
 Another example is where claims 1-10 stand rejected under 35 U.S.C.
 102(a)(2) as being anticipated over U.S. Patent No. X and
 appellant wishes to argue claims 1-3 as a first subgroup, claim 4 separately, and claims
 5-10 as another subgroup. A possible heading as required by this subsection could be
 “Rejection under 35 U.S.C. 102(a)(2) over U.S. Patent No. X,” 
 and the required subheadings would be “Claims 1-3,” “Claim 4,” and “Claims
 5-10.” To make certain that an argument for separate consideration of a
 claim or subgroup of claims is not overlooked by the examiner or by the Board, the rule
 requires appellant to use a subheading for each claim for which separate consideration
 by the Board is desired.
 

 (v) Claims appendix. An appendix containing a copy
 of the claims involved in the appeal.
 

 The copy of the claims should be a clean copy and should not include
 any markings such as brackets or underlining except for claims in a reissue application
 and a reexamination proceeding. See MPEP § 1454 for the presentation of the
 copy of the claims in a reissue application. See 37 CFR 1.530(d) and
 (f) for reexamination proceedings, see also MPEP § 2274 for
 ex parte reexamination and MPEP § 2675 for inter
 partes reexamination.
 

 The copy of the claims should be double-spaced and the appendix should
 start on a new page. 37 CFR 41.37(c)(1) merely specifies the minimum requirements for
 a brief. An appellant may include in the brief a list of references, table of contents,
 table of cases, copies of evidence entered by the examiner and relied upon in the brief,
 etc. A brief is in compliance with 37 CFR 41.37(c)(1) as long as it
 includes items (i) to (v) in the order set forth and does not include prohibited
 material. 
 

 37 CFR
 41.37(c)(2) prohibits the inclusion in a brief of any new or
 non-admitted amendment, affidavit or other evidence. If an appellant wishes to seek
 review of an examiner’s refusal to admit an amendment, affidavit or evidence, such
 review is by petition to the Director under 37 CFR 1.181 . The time for filing
 this petition, described in 37 CFR 1.181(f) , is based on the
 date the examiner refused to enter the amendment, affidavit or evidence and not the date
 the brief is filed.
 

 An example of a format and content for an appeal brief for a patent
 application is a brief containing the following items, with each item starting on a
 separate page:
 

 
 (A) Identification page setting forth the applicant’s name(s), the
 application number, the filing date of the application, the title of the
 invention, the name of the examiner, the art unit of the examiner and the title of
 the paper (i.e., Appeal Brief);
 

 (B) Table of Contents page(s);

 (C) Real party in interest page(s);

 (D) Related appeals, interferences, and trials page(s);

 (E) Summary of claimed subject matter page(s);

 (F) Argument page(s);

 (G) Claims appendix page(s);

 
 In accordance with the above, the brief must be directed to the claims
 and to the record of the case as they appeared at the time of the appeal. 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 37 CFR
 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. Examiners should no longer follow the
 practice described in Ex parte Ghuman, 88 USPQ2d 1478, 2008 WL
 2109842 (BPAI 2008) (precedential, but superseded by rule). 37 CFR 41.31(c) 
 supersedes the Office’s procedure under Ghuman and also simplifies
 practice for examiners by no longer requiring examiners to cancel non-appealed
 claims.
 

 A timely filed brief will be referred to the Patent Appeal Center for
 consideration of its compliance with the applicable rules. If the brief is proper it
 will be forwarded to the examiner for preparation of an examiner’s answer if the
 application is not allowable. The examiner’s answer may withdraw the rejection of
 claims, if appropriate. The examiner, with supervisory approval, may also determine that
 it is necessary to reopen prosecution to enter a new ground of rejection. See
 MPEP §
 1207.04 .
 

 

 
 1205.03 Non-Compliant Appeal Brief and Amended Brief [R-10.2019]

 The Patent Appeal Center has the responsibility for determining whether
 appeal briefs filed in patent applications comply with 37 CFR 41.37 , and
 will complete the determination before the appeal brief is forwarded to the examiner for
 consideration. The determination should be completed within approximately one month from
 the filing of the appeal brief. If the appeal brief is determined to be compliant with
 the rules or it contains only minor informalities that do not affect the Office’s
 ability to render a decision, the Patent Appeal Center will accept the appeal brief and
 forward it to the examiner for consideration. If the Patent Appeal Center determines
 that the appeal brief is non-compliant with 37 CFR 41.37 and sends appellant a
 notice of non-compliant brief requiring a corrected brief, appellant will be required to
 file a corrected brief within the time period set forth in the notice to avoid the
 dismissal of the appeal. The Patent Appeal Center will also have the responsibility for
 determining whether corrected briefs comply with 37 CFR 41.37 .
 

 If appellant disagrees with the holding of noncompliance, a petition
 under 37 CFR
 41.3 may be filed. Filing a petition will not toll the time period
 for reply set in the notice. Appellant must timely reply to the notice or the Office
 communication that requires an amended brief.
 

 Once an appeal brief is accepted by the Board as in compliance with
 37 CFR
 41.37 , the appeal brief will not later be held as defective by the
 Patent Appeal Center or the examiner. The Board will not return or remand the
 application to the examiner for issues related to a non-compliant appeal brief.
 Furthermore, examiners are not required to review appeal briefs for the purposes of
 determining whether the appeal briefs comply with 37 CFR 41.37 . Accordingly, the
 Notification of Non-Compliant Appeal Brief (PTOL-462) and form paragraphs for holding an
 appeal brief defective are no longer available for the examiner to use.
 

 Furthermore, the Patent Appeal Center will correspond directly with the
 appellant on non-compliant brief issues. Examiners may use form paragraphs
 12.249 –
 12.279.01 to draft examiner’s answers to respond to
 appeal briefs filed in any format. In those rare situations where an appeal brief
 contains serious defects that will prevent the examiner from drafting an examiner’s
 answer, the primary examiner should report the issue to the Patent Appeal Center.
 

 The patent examining corps has jurisdiction over the application to
 consider the appeal brief, conduct an appeal conference, decide the entry of amendments,
 evidence, and information disclosure statements filed after final or after the filing of
 a notice of appeal, and draft an examiner’s answer until jurisdiction passes to the
 Board pursuant to 37
 CFR 41.35(a) . Furthermore, petitions concerning the refusal to
 enter amendments and/or evidence remain delegated according to MPEP §§ 1002.02(b) 
 and 1002.02(c) .
 

 

 [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 20:50:33