[Federal Register Volume 74, Number 244 (Tuesday, December 22, 2009)]
[Proposed Rules]
[Pages 67987-68004]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-30402]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 41
[Docket No.: PTO-P-2009-0021]
RIN 0651-AC37
Rules of Practice Before the Board of Patent Appeals and
Interferences in Ex Parte Appeals; Request for Comments on Potential
Modifications to Final Rule and Notice of Roundtable During Comment
Period
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Advance notice of proposed rule making; request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) is considering modifications to rules governing practice before
the Board of Patent Appeals and Interferences (BPAI) in ex parte patent
appeals. Previously submitted comments with regard to an earlier
published final rule, particularly those submitted in response to a
proposed collection of information, raised some public concerns which
have been reconsidered by the Office. After further consideration of
these concerns, the Office is issuing this notice seeking further
public comment on possible revisions to portions of the final rule. In
order to facilitate a full exchange of views, the United States Patent
and Trademark Office is also conducting a public session and roundtable
in connection with this request for comments. Following the public
comment period, if the Office
[[Page 67988]]
determines further action is necessary, a subsequent notice of proposed
rule making would be issued to solicit additional comments on specific
proposals before any modified final rule would be issued.
DATES: The roundtable is scheduled to be held on January 20, 2010,
beginning at 9:30 a.m. and ending at 12:30 p.m. In the event of
inclement weather or other reason for cancellation or delay, the public
is advised to check the USPTO, Board of Patent Appeals and
Interferences Web site for the latest roundtable scheduling information
(http://www.uspto.gov/patents/process/appeal/).
The deadline for receipt of requests to participate in the
roundtable is 5 p.m. Eastern Standard Time on January 8, 2010.
The deadline for receipt of written comments on potential
modifications to the final rule is 5 p.m. Eastern Standard Time on
February 12, 2010.
Additionally, the USPTO will accept written comments on other
matters discussed at the roundtable until 5 p.m. Eastern Standard Time
on February 25, 2010.
Because the USPTO is now considering the final rule anew, and in
light of potential modifications to the final rule, appeal briefs filed
on or after January 21, 2010 must comply with the current rules in
effect.
ADDRESSES: The roundtable will be held at the USPTO, in the Madison
Auditorium on the concourse level of the Madison Building, which is
located at 600 Dulany Street, Alexandria, Virginia.
Requests to participate at the roundtable are required and must be
submitted by electronic mail message through the Internet to
[email protected]. Requests to participate at the roundtable
should indicate the following information: (1) The name of the person
desiring to participate and his or her contact information (telephone
number and electronic mail address); and (2) the organization(s) he or
she represents.
Written comments on potential modifications to the final rule
should be sent by electronic mail message over the Internet addressed
to [email protected]. Comments on potential modifications to the
final rule may also be submitted by mail addressed to: Mail Stop
Interference, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of ``Linda Horner, BPAI Rules.'' Although comments may be
submitted by mail, the USPTO prefers to receive comments via the
Internet.
Written comments on general topics discussed at the roundtable
should be sent by electronic mail message over the Internet addressed
to [email protected]. Comments on general topics discussed at
the roundtable may also be submitted by mail addressed to: Mail Stop
Interference, Director of the United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the
attention of ``Linda Horner, BPAI Gen. Topics.'' Although comments may
be submitted by mail, the USPTO prefers to receive comments via the
Internet.
The written comments and list of the roundtable participants and
their associations will be available for public inspection at the Board
of Patent Appeals and Interferences, located in Madison East, Ninth
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available
via the USPTO Internet Web site (address: http://www.uspto.gov/web/offices/dcom/bpai/). Because comments will be made available for public
inspection, information that is not desired to be made public, such as
an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Linda Horner, Administrative Patent
Judge, Board of Patent Appeals and Interferences, by telephone at (571)
272-9797, or by mail addressed to: Mail Stop Interference, Director of
the United States Patent and Trademark Office, P.O. Box 1450,
Alexandria, VA 22313-1450, marked to the attention of Linda Horner.
SUPPLEMENTARY INFORMATION:
Background
The United States Patent and Trademark Office (USPTO or Office)
published a notice of proposed rule making governing practice before
the Board of Patent Appeals and Interferences (BPAI) in ex parte patent
appeals (72 FR 41,472-41,490 (Jul. 30, 2007)). The notice was also
published in the Official Gazette. 1321 Off. Gaz. Pat. Office 95 (Aug.
21, 2007). The public was invited to submit written comments. Comments
were to be received on or before September 30, 2007.
A final rule making was then published in the Federal Register (73
FR 32937-32977 (Jun. 10, 2008)). The final rule that was published on
June 10, 2008, may be viewed at http://www.uspto.gov/web/offices/com/sol/notices/73fr32938.pdf. The final rule stated that the effective
date was December 10, 2008, and that the final rule would apply to all
appeals in which an appeal brief was filed on or after the effective
date. On June 9, 2008, the Office published a 60-Day Federal Register
notice requesting the Office of Management and Budget (OMB) to
establish a new information collection for BPAI items in the final rule
and requesting public comment on the burden impact of the final rule
under the provisions of the Paperwork Reduction Act (PRA). On October
8, 2008, the Office published a 30-Day Federal Register notice stating
that the proposal for the collection of information under the final
rule was being submitted to OMB and requesting that comments on the
proposed information collection be submitted to OMB. Because the
information collection process had not been completed by the original
effective and applicability date of the final rule, the Office
published a Federal Register notice (73 FR 74972 (December 10, 2008))
notifying the public that the effective and applicability date of the
final rule was not December 10, 2008, and that the effective and
applicability dates would be identified in a subsequent notice.
Additionally, on January 20, 2009, the Assistant to the President
and Chief of Staff instructed agencies via a memorandum entitled,
``Regulatory Review,'' to consider seeking comments for an additional
30 days on rules that were published in the Federal Register and had
not yet become effective by January 20, 2009. On January 21, 2009, the
Office of Management and Budget issued a memorandum, ``Implementation
of Memorandum Concerning Regulatory Review,'' which provided agencies
further guidance on such rules that had not yet taken effect. For such
rules, both memorandums stated that agencies should consider reopening
the rule making process to review any significant concerns involving
law or policy that have been raised.
The USPTO is now considering further modifications to the rules of
practice before the Board of Patent Appeals and Interferences in ex
parte appeals and is conducting a roundtable and publishing this
request for comments to solicit input from interested members of the
public on potential modifications to the final rule. The Office seeks
comment both on potential modifications to the final rule and issues of
law and policy raised by the final rule.
The Office has further considered the comments thus far submitted
and is considering changes to the final rule to significantly reduce
any additional burden introduced by the final rule. The
[[Page 67989]]
continued delay of the effective and applicability dates and a new
comment period are necessary to give the public additional time to
comment on potential modifications to the final rule and to permit the
Director to evaluate any additional comments to determine if the rules
are consistent with administration policy.
On November 20, 2008 [73 FR 70282], the Office published a
clarification notice on the effective date provision. See Clarification
of the Effective Date Provision in the Final Rule for Ex Parte Appeals,
73 FR 70282 (November 20, 2008). The clarification notice states that
the Office will not hold an appeal brief as non-compliant solely for
following the new format set forth in the notice published on June 10,
2008, in the Federal Register (Rules of Practice Before the Board of
Patent Appeals and Interferences in Ex Parte Appeals; Final Rule, 73 FR
32938 (June 10, 2008), 1332 Off. Gaz. Pat. Office 47 (July 1, 2008)).
Because the USPTO is now considering the final rule anew, and in light
of the potential modifications to the final rule, for purposes of
consistency, the Office will now no longer accept appeal briefs in the
new format. Therefore, appeal briefs filed on or after 30 days from the
publication of this notice must comply with the current 37 CFR 41.37.
For clarity, this notice refers to three sets of Board Rules: (1) The
``current board rules'' published in 37 CFR 41.1 et seq. (2007); (2)
the ``final rule'' published on June 10, 2008 [73 FR 32938], the
effective date of which is delayed; and (3) potential modifications to
the board rules published in this notice for the purpose of soliciting
comments from the public. The current rules in effect are the current
board rules as published in 37 CFR 41.1 et seq. (2007).
Furthermore, the Office has posted a list of questions and answers
on the USPTO Web site (at http://www.uspto.gov/web/offices/dcom/bpai/rule/faq_121008.html) regarding the implementation of the Board final
rule. These questions and answers will be updated after the Office
issues notice of the revised effective and applicability dates for the
final rule. Previously submitted comments, particularly those submitted
in response to the PRA notice [73 FR 32559], raised some public
concerns which have been reconsidered by the Office. After further
consideration of these concerns the Office is considering modifications
to the final rule as follows below.
Public Participation
In addition to these considerations to modify the final rule, the
Office is also seeking comment on those portions of the final rule that
are not being specifically considered for modification in this notice.
After receiving comments from the public as a result of this notice,
the Office would issue a notice of proposed rulemaking seeking
additional feedback on proposed rule changes before any modifications
to the final rule would take effect.
The date for the roundtable has been set to occur during the
comment period so that participants will have time to familiarize
themselves with modifications to the final rule that are under
consideration in advance of the roundtable so as to provide meaningful
input to the USPTO and so that those submitting written comments will
have the benefit of the discussion from the roundtable and adequate
time after the roundtable to prepare and submit written comments. The
public session will also include a presentation by the USPTO of the
challenges, including an increased appeal workload, facing the Board of
Patents Appeals and Interferences. It will discuss the results it hopes
to achieve from any potential modifications to the final rule and will
solicit input from the roundtable participants on how, beyond the
procedural changes that are under consideration, to meet these
challenges.
The number of participants in the roundtable is limited to ensure
that all who are speaking will have a meaningful chance to do so. The
roundtable is open to the public, but participation in the roundtable
is by request, as the number of participants in the roundtable is
limited. The USPTO plans to invite a number of participants from patent
user, practitioner, industry, and independent inventor organizations,
academia, industry, and government. The USPTO also plans to have a few
``at-large'' participants based upon requests received in response to
this notice to ensure that the USPTO is receiving a balanced array of
views on the potential modifications to the final rule. The USPTO will
attempt to provide selected participants with notice at least seven
days prior to the roundtable. While members of the public who wish to
participate in the roundtable must do so by request, members of the
public who wish solely to observe need not submit a request. Any member
of the public, however, may submit written comments on issues raised at
the roundtable or on potential modifications to the final rule under
consideration by the USPTO.
The USPTO plans to make the roundtable available via Web cast. Web
cast information will be available on the USPTO's Internet Web site
before the roundtable. The written comments and list of the roundtable
participants and their associations will be posted on the USPTO's
Internet Web site.
This notice is not a publication of a final rule. After the public
comment period, if the Office determines further action is necessary, a
subsequent notice of proposed rule making will be issued to solicit
additional comments on specific proposals before any modified final
rule would be issued. The Office is publishing these possible
modifications to the final rule for the purpose of soliciting comments
from the public on these topics. The Office will also be accepting
comments on other matters raised at the public session and roundtable.
Purpose for Potential Modifications to the Final Rule Under
Consideration
The Office is considering modifications to the final rule in an
effort to efficiently frame any dispute between the appellant and the
examiner for the benefit of the Board and the appeal conferees to
provide the best opportunity for resolution of the dispute without the
necessity of proceeding with the appeal, and in an effort to reduce the
number of returns based on defective briefs. The Office is also
considering further modifications to the final rule that would reserve
(delete) certain sections of the final rule that place a burden on
appellants appearing before the BPAI in ex parte appeals. The
Supplementary Information in this notice provides: (1) An explanation
of the possible modifications to the final rule (referred to herein as
the ``potential modifications to the final rule'') under consideration,
(2) a discussion of the differences between the potential modified
final rule and the existing rule, and (3) a copy of potential
modifications to the final rule under consideration.
Explanation of Potential Modifications to the Final Rule
Several changes are being considered to the final rule as compared
to the final rule as published in 73 FR 32937 (June 10, 2008). The
possible changes under consideration include: (1) Deleting portions of
the rule that require the filing of a petition to the Chief
Administrative Patent Judge seeking extensions of time to file certain
papers after an appeal brief is filed in an ex parte appeal or seeking
to exceed a page limit; (2) deleting portions of the rule that require
the filing of a jurisdictional statement, table of contents, table of
authorities, and statement of facts in appeal briefs, a table of
contents, table of authorities, and statement of additional facts in
reply briefs, and a table of contents and table of authorities
[[Page 67990]]
in requests for rehearing filed in ex parte appeals; (3) deleting
portions of the rule that require an appellant to specifically identify
which arguments were previously presented to the Examiner and which
arguments are new; (4) deleting portions of the rule that require
specific formatting requirements and page limits for appeal briefs,
reply briefs, and requests for rehearing; and (5) deleting portions of
the rule that require appellants to provide a list of technical terms
and other unusual words for an oral hearing. The Office is also
considering a revision to the final rule so that an examiner may
continue to enter a new ground of rejection in an examiner's answer (as
is allowed under the current rules). The Office is also considering not
allowing an examiner to file a supplemental examiner's answer in
response to a reply brief. For reasons of administrative efficiency,
the Office is also considering revising the final rule to make clear
that the Chief Administrative Patent Judge, rather than the Board, may
remand an application to the examiner.
Discussion of Potential Modifications to the Final Rule
What follows is a discussion of the potential modifications to the
final rule (text follows) compared to the existing rule, currently in
effect, for discussion at the roundtable.
Existing rules in Part 1 are denominated as ``Rule x'' in this
supplementary information. For example, a reference to Rule 136(a) is a
reference to 37 CFR 1.136(a) (2007).
Existing rules in Part 41 are denominated as ``Rule 41.x'' in this
supplementary information. For example, a reference to Rule 41.3 is a
reference to 37 CFR 41.3 (2007).
Potential modifications to the final rule in this request for
comments and notice of roundtable are denominated as ``Bd.R. x'' in
this supplementary information. For example, a reference to Bd.R. 41.3
is a reference to the potential modification of 37 CFR 41.3 (2007), as
considered for discussion in this request for comments and notice of
roundtable.
Definitions
Bd.R. 41.2 amends Rule 41.2 to eliminate from the definition of
``Board'' any reference to a proceeding under Bd.R. 41.3 relating to
petitions to the Chief Administrative Patent Judge. Action by the Chief
Administrative Patent Judge is action on behalf of the Director by
delegation to the Chief Administrative Patent Judge. See MPEP Sec.
1002.02(f) (8th ed., Aug., 2006).
Bd.R. 41.2 also amends Rule 41.2 to eliminate a petition under
Bd.R. 41.3 from the definition of contested case. At the present time,
there are no petitions authorized in a contested case.
Petitions
Bd.R. 41.3 is amended to include a delegation of authority from the
Director to the Chief Administrative Patent Judge to decide certain
petitions authorized by Part 41. The delegation of authority would be
in addition to that already set out in the MPEP Sec. 1002.02(f) (8th
ed., Aug., 2006).
Bd.R. 41.3(b) is amended to define the scope of petitions which can
be filed pursuant to the rules. Under Bd.R. 41.3(b), a petition could
not be filed to seek review of issues committed by statute to a panel.
See, e.g., In re Dickinson, 299 F.2d 954, 958 (CCPA 1962).
Timeliness
Bd.R. 41.4(c) is amended to add the phrase ``Except to the extent
provided in this part'' and to revise paragraph 2 to read: ``Filing of
a notice of appeal, a brief, or a request for oral hearing (see
Sec. Sec. 41.31, 41.37, 41.41, 41.47, 41.61, 41.66, 41.67, 41.68,
41.71 and 41.73).'' The amendment makes clear that the Chief
Administrative Patent Judge would not determine whether extensions are
to be granted for the filing of papers before the Board has
jurisdiction.
Citation of Authority
Rule 41.12 currently requires the public to cite to specific
reporters, including some parallel citations. The Board, however, no
longer follows the practice specified in Rule 41.12, and does not use
parallel citations. Accordingly, Bd.R. 41.12 is amended to make the
rule consistent with Board practice and minimize the citation burden on
the public. Under Bd.R. 41.12, as amended, a citation to a single
source, in the priority order set out in the rule, will be sufficient.
Definitions
Bd.R. 41.30 is amended to add a definition of ``Record.'' The
Record on appeal would be the official content of the file of an
application or reexamination proceeding on appeal. In the rules, a
reference to ``Record'' with a capital R is a reference to the Record
as defined in Bd.R. 41.30. The definition advises applicants of what
documents the Board will consider in resolving the appeal. The
definition also makes it clear to any reviewing court what record was
considered by the Board.
Appeal to Board
Bd.R. 41.31(a) provides that an appeal is taken from a decision of
the examiner to the Board by filing a notice of appeal. The following
language would be acceptable under the rule: ``An appeal is taken from
the decision of the examiner mailed [specify date appealed rejection
was mailed].'' An appeal can be taken when authorized by the statute 35
U.S.C. 134. The provision of Rule 41.31(b) that a notice of appeal need
not be signed has been removed. Papers filed in connection with an
appeal, including the notice of appeal, would need to be signed in
accordance with Sec. 1.33 of this title.
Bd.R. 41.31(b) requires that the notice of appeal be accompanied by
the fee required by law and would refer to the rule that specifies the
required fee.
Bd.R. 41.31(c) specifies the time within which a notice of appeal
would have to be filed in order to be considered timely. The time for
filing a notice of appeal appears in Rule 134.
Bd.R. 41.31(d) provides that a request for an extension of time to
file a notice of appeal in an application is governed by Rule 136(a).
Bd.R. 41.31(d) also provides that a request for an extension of time to
file a notice of appeal in an ex parte reexamination proceeding is
governed by Rule 550(c).
Bd.R. 41.31(e) defines a ``non-appealable issue'' as an issue that
is not subject to an appeal under 35 U.S.C. 134. Non-appealable issues
are issues (1) over which the Board does not exercise authority in
appeal proceedings, and (2) which are handled by a petition. Non-
appealable issues include such matters as an examiner's refusal to (1)
enter a response to a final rejection, (2) enter evidence presented
after a final rejection, (3) enter an appeal brief or a reply brief, or
(4) withdraw a restriction requirement. An applicant or patent owner
dissatisfied with a decision of an examiner on a non-appealable issue
would be required to seek review by petition before an appeal is
considered on the merits. Failure to timely file a petition seeking
review of a decision of the examiner related to a non-appealable issue
would generally constitute a waiver to have those issues considered.
The language ``[f]ailure to timely file'' would be interpreted to mean
not filed within the time set out in the rules. For example, Rule
1.181(f) provides that any petition under Rule 181 not filed within two
months of the mailing date of the action or notice from which relief is
requested may be dismissed as untimely. The object of the amendment to
the rule is to maximize resolution of non-appealable issues
[[Page 67991]]
before an appeal is considered on the merits. Under current practice,
an applicant or a patent owner often does not timely seek to have non-
appealable issues resolved, thereby necessitating a remand by the Board
to the examiner to have a non-appealable issue resolved. The remand
adds to the pendency of an application or reexamination proceeding and,
in some instances, may unnecessarily enlarge patent term adjustment.
The Office intends to strictly enforce the waiver provisions of Bd.R.
41.31(e) with the view of making the appeal process administratively
efficient. While the Office will retain discretion to excuse a failure
to timely settle non-appealable issues, it is expected that exercise of
that discretion will be reserved for truly unusual circumstances.
Amendments and Evidence Filed After Appeal and Before Brief
Bd.R. 41.33(a) provides that an amendment filed after the date a
notice of appeal is filed and before an appeal brief is filed may be
admitted as provided in Rule 116.
Bd.R. 41.33(b), under two circumstances, gives the examiner
discretion to enter an amendment filed with or after an appeal brief is
filed. A first circumstance would be to cancel claims, provided
cancellation of claims does not affect the scope of any other pending
claim in the proceedings. A second circumstance would be to rewrite
dependent claims into independent form.
Bd.R. 41.33(c) provides that all other amendments filed after the
date an appeal brief is filed will not be admitted, except as permitted
by (1) Bd. R. 41.39(b)(1) (request to reopen prosecution after entry of
new ground of rejection by Examiner), (2) Bd.R. 41.50(b)(1) (request
for amendment after remand), (3) Bd.R. 41.50(d)(1) (request to reopen
prosecution after entry of new ground of rejection by the Board), and
(4) Bd.R. 41.50(e) (amendment after recommendation by the Board).
Bd.R. 41.33(d) provides that evidence filed after a notice of
appeal is filed and before an appeal brief is filed may be admitted if
(1) the examiner determines that the evidence overcomes at least one
rejection under appeal, and (2) appellant shows good cause why the
evidence was not earlier presented. The first step in an analysis of
whether evidence may be admitted is a showing of good cause why the
evidence was not earlier presented. The Office has found that too often
an applicant or a patent owner belatedly presents evidence as an
afterthought and that the evidence was, or should have been, readily
available. Late presentation of evidence is not consistent with
efficient administration of the appeal process. Under the rule, the
Office would strictly apply the good cause standard. Cf. Hahn v. Wong,
892 F.2d 1028 (Fed. Cir. 1989). For example, a change of attorneys at
the appeal stage or an unawareness of the requirement of a rule would
not constitute a showing of good cause. If good cause is not shown, the
analysis ends and the evidence would not be admitted. In those cases
where good cause is shown, a second analysis will be made to determine
if the evidence would overcome at least one rejection. Even where good
cause is shown, if the evidence does not overcome at least one
rejection, the evidence would not be admitted. Alternatively, the
examiner could determine that the evidence does not overcome at least
one rejection under appeal and does not necessitate any new ground of
rejection, and on that basis alone, could refuse to admit the evidence.
Bd.R. 41.33(e) provides that evidence filed after an appeal brief
is filed will not be admitted except as permitted by (1) Bd.R.
41.39(b)(1) (request to reopen prosecution after entry of new ground of
rejection by Examiner), (2) Bd.R. 41.50(b)(1) (request to reopen
prosecution after entry of a remand by the Board), and (3) Bd.R.
41.50(d)(1) (request to reopen prosecution after new ground of
rejection entered by the Board).
Jurisdiction Over Appeal
Bd.R. 41.35(a) provides that the Board acquires jurisdiction when
the Board mails a docket notice. At an appropriate time after
proceedings are completed before the examiner, a docket notice
identifying the appeal number would be entered in the application or
reexamination proceeding file and mailed to the appellant. A new docket
notice identifying a new appeal number would be mailed upon return of
the case to the Board following remand. By delaying the transfer of
jurisdiction until the appeal is fully briefed and the position of the
appellant is fully presented for consideration by the examiner and the
Office reviewers (appeal conferees), the possibility exists that the
examiner will find some or all of the appealed claims patentable
without the necessity of proceeding with the appeal and invoking the
jurisdiction of the Board. For this reason, jurisdiction transfers to
the Board only after (1) the appellant has filed an appeal brief, (2)
the examiner's answer has been mailed, and (3) the appellant has filed
a reply brief or the time for filing a reply brief has expired. Rule
41.35(a) provides that the Board acquires jurisdiction upon transmittal
of the file, including all briefs and examiner's answers, to the Board.
Under that practice, however, an appellant may or may not know the date
when a file is transmitted to the Board. Most files are now electronic
files (Image File Wrapper or IFW file) as opposed to a paper file
wrapper. Accordingly, a paper file wrapper is no longer transmitted to
the Board. Under current practice, the Board prepares a docket notice
which is (1) entered in the IFW file, and (2) mailed to appellant. Upon
receipt of the docket notice, appellant knows that the Board has
acquired jurisdiction over the appeal. Bd.R. 41.35(a) codifies current
practice and establishes a precise date, known to all involved, as to
when jurisdiction is transferred to the Board.
Bd.R. 41.35(b) provides that the jurisdiction of the Board ends
when (1) the Board mails a remand order (see Sec. 41.50(b) or Sec.
41.50(d)(1)), (2) the Board mails a final decision (see Sec. 41.50(a)
and judicial review is sought or the time for seeking judicial review
has expired, (3) an express abandonment is filed which complies with
Sec. 1.138 of this title, or (4) a request for continued examination
is filed which complies with Sec. 1.114 of this title. The Board knows
when it mails a remand order and when it mails a final decision. The
Board is not automatically notified when an express abandonment or a
request for continued examination is filed. One problem the Board has
had in the past is that an appellant does not notify the Board that it
has filed an express abandonment or a request for continued examination
and the Board continues to work on the appeal. Often failure to notify
occurs after oral hearing. Accordingly, an appellant should notify the
Board immediately if an express abandonment or a request for continued
examination is filed. If any notification reaches the Board after a
remand order or a final decision is mailed, the remand order or final
decision will not be removed from the file.
There are two occasions when a remand is entered. First, a remand
is entered when the Board is of the opinion that clarification on a
point of fact or law is needed. See Bd.R. 41.50(b). Second, a remand is
entered when an appellant elects further prosecution before the
examiner following entry of a new ground of rejection by the Board. See
Bd.R. 41.50(d)(1). Upon entry of a remand, the Board's jurisdiction
ends.
The Board also no longer has jurisdiction as a matter of law when
an appeal to the Federal Circuit is filed in the USPTO. See In re
Allen, 115 F.2d
[[Page 67992]]
936, 939 (CCPA 1940) and In re Graves, 69 F.3d 1147, 1149 (Fed. Cir.
1995). A final decision is a panel decision which disposes of all
issues with regard to a party eligible to seek judicial review and does
not indicate that further action is needed. See Rule 41.2 (definition
of ``final''). When a party requests rehearing, a decision becomes
final when the Board decides the request for rehearing. A decision
including a remand or a new ground of rejection is an interlocutory
order and is not a final decision. If an appellant elects to ask for
rehearing to contest a new ground of rejection, the decision on
rehearing is a final decision for the purpose of judicial review.
Bd.R. 41.35(c) would continue current practice and provide that the
Director could sua sponte order an appeal to be remanded to an examiner
before entry of a Board decision has been mailed. The Director has
inherent authority to order a sua sponte remand to the examiner.
Ordinarily, a rule is not necessary for the Director to exercise
inherent authority. However, in this particular instance, it is
believed that a statement in the rule of the Director's inherent
authority serves an appropriate public notice function.
Appeal Brief
Bd.R. 41.37 provides for filing an appeal brief to perfect an
appeal and sets out the requirements for appeal briefs. The appeal
brief is a highly significant document in an ex parte appeal. Appeal
brief experience under Rule 41.37 has been mixed. Bd.R. 41.37 seeks to
(1) take advantage of provisions of Rule 41.37 which have proved
useful, (2) clarify provisions which have been subject to varying
interpretations by counsel, and (3) add provisions which are expected
to make the decision-making process more focused and efficient.
Bd.R. 41.37(a) provides that an appeal brief shall be filed to
perfect an appeal. Upon a failure to timely file an appeal brief,
proceedings on the appeal would be considered terminated. The language
``without further action on the part of the Office'' gives notice that
no action, including entry of a paper by the Office, would be necessary
for the appeal to be considered terminated. Bd.R. 41.37(a) does not
preclude the Office from entering a paper notifying an applicant or
patent owner that the appeal has been terminated. Any failure of the
Office to enter a paper notifying an applicant or patent owner that an
appeal stands terminated would not affect the terminated status of the
appeal. The language ``proceedings are considered terminated'' provides
notice that when (1) no appeal brief is filed, and (2) no claims are
allowed, the time for filing a continuing application under 35 U.S.C.
120 would be before the time expires for filing an appeal brief. The
language ``terminated'' is used because proceedings on appeal are over
prior to mailing of a docket notice pursuant to Bd.R. 41.35(a).
Dismissal of an appeal takes place after a docket notice is mailed
since only the Board dismisses an appeal (Bd.R. 41.35(b)(2)).
Bd.R. 41.37(b) provides that the appeal brief shall be accompanied
by the fee required by Bd.R. 41.20(b)(2).
Bd.R. 41.37(c) provides that an appellant must file an appeal brief
within two months from the filing of the notice of appeal.
Bd.R. 41.37(d) provides that the time for filing an appeal brief is
extendable under the provisions of Rule 136(a) for applications and
Rule 550(c) for ex parte reexamination proceedings. Consideration was
given to proposing a requirement for a petition to extend the time for
filing an appeal brief. However, in view of the pre-appeal conference
pilot program (see Official Gazette of July 12, 2005; http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&log=linklog&to=http://www.uspto.gov/web/offices/com/sol/og/2005/week28/patbref.htm), and in an effort to
encourage continued participation in that pilot program, further
consideration on whether to require a petition will be deferred pending
further experience by the Office in the pre-appeal conference pilot
program.
Bd.R. 41.37(e) provides that an appeal brief must contain, under
appropriate headings and in the order indicated, the following items:
(1) Statement of the real party in interest, (2) statement of related
cases, (3) [reserved], (4) [reserved], (5) [reserved], (6) [reserved],
(7) status of amendments, (8) grounds of rejection to be reviewed, (9)
[reserved], (10) argument, and (11) an appendix containing (a) claims
section, (b) claim support and drawing analysis section, (c) means or
step plus function analysis section, (d) evidence section, and (e)
related cases section. The items are otherwise defined in other
subsections of Bd.R. 41.37.
Bd.R. 41.37(f) requires a ``statement of real party in interest''
which would include an identification of the name of the real party in
interest. The principal purpose of an identification of the name of the
real party in interest is to permit members of the Board to assess
whether recusal is required or would otherwise be appropriate. Another
purpose is to assist employees of the Board to comply with the Ethics
in Government Act. Since a real party in interest can change during the
pendency of an appeal, there would be a continuing obligation to update
the real party in interest during the pendency of the appeal. If an
appeal brief does not contain a statement of real party in interest,
the Office will assume that the named inventors are the real party in
interest.
Bd.R. 41.37(g) requires an appeal brief to include a ``statement of
related cases.'' The statement of related cases would identify related
cases by (1) application number, patent number, appeal number or
interference number, or (2) court docket number. The statement would
encompass all prior or pending appeals, interferences or judicial
proceedings known to any inventors, any attorneys or agents who
prepared or prosecuted the application on appeal and any other person
who was substantively involved in the preparation or prosecution of the
application on appeal. A related case is one which would directly
affect, or would be directly affected by or have a bearing on the
Board's decision in the appeal. A copy of any final or significant
interlocutory decision rendered by the Board or a court in any
proceeding identified under this paragraph shall be included in the
related cases section in the appendix (Bd.R. 41.37(u)). A significant
interlocutory decision would include (1) a decision on a patentability
motion in an interference, or (2) a decision in an interference or a
court interpreting a claim. A related case includes any continuing
application of the application on appeal. If an appellant fails to
advise the Board that it has filed a continuing application or a
request for continued examination, or that it has filed an express
abandonment of the application on appeal and the Board mails a decision
on appeal in the application on appeal, the appellant should expect
that the decision will not be removed from the file. The time to update
a statement of related cases, or notify the Board that an application
on appeal has been abandoned, is when the continuing application,
request for continued examination, or express abandonment is filed.
Appellant would be under a continuing obligation to update a statement
of related cases during the pendency of the appeal. If an appeal brief
does not contain a statement of related cases, the Office will assume
that there are no related cases.
Bd.R. 41.37(h) is reserved.
Bd.R. 41.37(i) is reserved.
Bd.R. 41.37(j) is reserved.
Bd.R. 41.37(k) is reserved.
[[Page 67993]]
Bd.R. 41.37(l) requires an appeal brief to indicate the ``status of
amendments'' for all amendments filed after final rejection (e.g.,
entered or not entered). Examples of a status of amendments might read
as follows: (1) ``No amendment was filed after final rejection.'' (2)
``An amendment filed October 31, 2006, was not entered by the
examiner.'' (3) ``An amendment filed November 1, 2006, was entered by
the examiner.'' (4) ``An amendment filed October 31, 2006, was not
entered by the examiner, but an amendment filed November 1, 2006, was
entered by the examiner.''
Bd.R. 41.37(m) requires an appeal brief to set out the grounds of
rejection to be reviewed, including the claims subject to each
rejection. Examples might read as follows: (1) ``Rejection of claim 2
as being anticipated under 35 U.S.C. 102(b) over Johnson.'' (2)
``Rejection of claims 2-3 as being unpatentable under 35 U.S.C. 103(a)
over Johnson and Young.'' (3) ``Rejection of claim 2 as failing to
comply with the written description requirement of the first paragraph
of 35 U.S.C. 112.'' (4) ``Rejection of claim 2 as failing to comply
with the enablement requirement of the first paragraph of 35 U.S.C.
112.'' (5) ``Rejection of claim 3 under 35 U.S.C. 251 based on
recapture.''
Bd.R. 41.37(n) is reserved.
Bd.R. 41.37(o) requires that an appeal brief contain an argument
comprising an analysis explaining, as to each rejection to be reviewed,
why the appellant believes the examiner erred. The analysis would have
to address all points made by the examiner with which the appellant
disagrees. The presentation of a concise, but comprehensive, argument
in response to the final rejection (1) will efficiently frame any
dispute between the appellant and the examiner not only for the benefit
of the Board but also for consideration by the examiner and Office
reviewers (appeal conferees), and (2) provide the best opportunity for
resolution of the dispute without the necessity of proceeding with the
appeal.
To promote clarity, Bd.R. 41.37(o) also requires that each
rejection for which review is sought shall be separately argued under a
separate heading. Also, Bd.R. 41.37(o) provides that any finding made
or conclusion reached by the examiner that is not challenged would be
presumed to be correct.
Bd.R. 41.37(o)(1) provides that when a ground of rejection applies
to two or more claims, the claims may be argued separately (claims are
considered by appellant as separately patentable) or as a group (claims
stand or fall together). When two or more claims subject to the same
ground of rejection are argued as a group, the Board may select a
single claim from the group of claims that are argued together and
decide the appeal on the basis of the selected claim alone with respect
to the group of claims as to the ground of rejection. Any doubt as to
whether an election has been made would be resolved against the
appellant and the claims would be deemed to have been argued as a
group.
For each claim argued separately, a subheading identifying the
claim by number would be required. The requirement for a separate
subheading in the appeal brief is to minimize any chance the examiner
or the Board will overlook an argument directed to the separate
patentability of a particular claim. In the past, appellants have been
confused about whether a statement of what a claim covers is sufficient
to constitute an argument that the claim is separately patentable. It
is not. A statement that a claim contains a limitation not present in
another claim would not in and of itself be sufficient to satisfy the
requirement of Bd.R. 41.37(o)(1) that a separate argument be made.
Unless an appellant plans to argue the separate patentability of a
claim, the appellant should not discuss or refer to the claim in the
argument section of the appeal brief. A copy of the claims will be
before the Board in the ``claims section'' (Bd.R. 41.37(p)). In an
application containing claims 1-3 where the examiner has made (1) a
Sec. 102 rejection, or (2) a Sec. 103 rejection, or (3) both a Sec.
102 and Sec. 103 rejection, examples of a proper statement of ``claims
standing or falling together'' would be as follows: (1) ``With respect
to the rejection under Sec. 102, claims 1-3 stand or fall together.''
(2) ``With respect to the rejection under Sec. 103, claims 1-2 stand
or fall together; claim 3 is believed to be separately patentable.''
(3) ``With respect to the rejection under Sec. 102, claims 1-2 stand
or fall together; claim 3 is believed to be separately patentable. With
respect to the rejection under Sec. 103, the claims stand or fall
together.''
Bd.R. 41.37(o)(2) provides that the Board would only consider
arguments that (1) are presented in the argument section of the appeal
brief, and (2) address claims set out in the claim support and drawing
analysis section in the appendix. In keeping with the well-established
rules of waiver, Appellant would waive all arguments which could have
been, but were not, addressed in the argument section of the appeal
brief. See e.g., Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir.
2008) (holding that when an appellant fails to contest a ground of
rejection to the Board, the Board may treat any argument with respect
to that ground of rejection as waived); In re Watts, 354 F.3d 1362,
1367-68 (Fed. Cir. 2004) (declining to consider the appellant's new
argument regarding the scope of a prior art patent raised for the first
time on appeal because the court did not have the benefit of the
Board's informed judgment on the issue for its review); In re Berger,
279 F.3d 975, 984 (Fed. Cir. 2002) (in which the Board affirmed an
uncontested rejection of claims under 35 U.S.C. 112, second paragraph,
and on appeal the Federal Circuit affirmed the Board's decision and
found that the appellant had waived his right to contest the
indefiniteness rejection by not presenting arguments as to error in the
rejection on appeal to the Board); and In re Schreiber, 128 F.3d 1473,
1479 (Fed. Cir. 1997) (declining to consider whether prior art cited in
an obviousness rejection was non-analogous art when that argument was
not raised before the Board).
Bd.R. 41.37(p) would require an appeal brief to contain a ``claims
section'' in the appendix which would consist of an accurate clean copy
in numerical order of all claims pending in the application or
reexamination proceeding on appeal. The claims section in the appendix
would include all pending claims, not just those under rejection. The
status of each claim would have to be indicated (i.e., 1 (rejected), 2
(withdrawn), 3 (objected to), 4 (cancelled), 5 (allowed), 6
(confirmed), 7 (not subject to reexamination)).
Bd.R. 41.37(q) is reserved.
Bd.R. 41.37(r) requires an appeal brief to contain a ``claim
support and drawing analysis section.''
The claim support portion of Bd.R. 41.37(r) replaces Rule
41.37(c)(1)(v) which required a concise explanation of the subject
matter defined in each of the independent claims on appeal. The claim
support section, for each independent claim involved in the appeal and
each dependent claim argued separately (see Bd.R. 41.37(o)(1)), would
consist of an annotated copy of the claim indicating in bold face
between braces ({ {time} ) after each limitation where, by page and
line or paragraph numbers, the limitation is described in the
specification as filed. Braces ({ {time} ) are used instead of brackets
([ ]) because brackets are used in reissue claim practice. Unlike the
``claims section'' (see Bd.R. 41.37(p)), only those independent claims
and dependent claims being argued separately, would need to appear in
the ``claim support
[[Page 67994]]
and drawing analysis section.'' A significant objective of the claim
support requirement is to provide the examiner and the Board with
appellant's perspective on where language of the claims (including
specific words used in the claims, but not in the specification) finds
support in the specification. Finding support for language in the
claims can help the examiner and the Board construe claimed terminology
and limitations when applying the prior art. The claim support
requirement will help the Board interpret the scope of claims, or the
meaning of words in a claim, before applying the prior art. Practice
under Rule 41.37(c)(1)(v) has not been efficient because of the diverse
manners in which different appellants have attempted to comply with the
current rule.
One significant problem faced by the Board under Rule
41.37(c)(1)(v) occurs when the language of a claim does not have direct
antecedent language in the specification. In order for the Board to
understand the scope of a claim or the meaning of a term in the claim,
the Board primarily relies on the specification. Moreover, in practice
before the Office, a claim is given its broadest reasonable
construction consistent with the specification. However, when the
language of the claim does not find correspondence in the
specification, as filed, often it is difficult to determine the meaning
of a particular word in a claim or to give the claim its broadest
reasonable interpretation. The claim support requirement will give the
examiner and the Board the appellant's view on where the claim is
supported by the application, as filed. The requirement is expected to
significantly improve the efficiency of the Board's handling of
appeals.
The ``claims support and drawing analysis section'' also requires
for each independent claim on appeal and each dependent claim argued
separately (see Bd.R. 41.37(o)(1)), that a drawing analysis consist of
an annotated copy of the claim in numerical sequence, indicating in
bold face between braces ({ {time} ) (the same braces used to identify
references to the specification) after each limitation where, by
reference or sequence residue number, each limitation is shown in the
drawing or sequence. A drawing analysis has been required in
interference cases since 1998 and has proven useful to the Board in
understanding claimed inventions described in applications and patents
involved in an interference. The drawing analysis requirement is
expected to be equally useful in ex parte appeals.
Bd.R. 41.37(s) requires an appeal brief to contain a ``means or
step plus function analysis section.'' The means or step plus function
analysis section replaces the requirement of Rule 41.37(c)(1)(v)
relating to identification of structure, material or acts for means or
step plus function claim limitations contained in appealed claims.
Under Bd.R. 41.37(s), the means or step plus function analysis section
would include each independent claim and each dependent claim argued
separately (see Bd.R. 41.37(o)(1)) that contains a limitation that
appellant regards as a means or step plus function limitation in the
form permitted by the sixth paragraph of 35 U.S.C. 112. Further, for
each such claim, an annotated copy of the claim would be reproduced
indicating in bold face between braces ({ {time} ) the specific
portions of the specification and drawing that describe the structure
material or acts corresponding to each claimed function.
The Office is requiring a particular format for the means or step
plus function analysis section to avoid the confusion that arises from
the variety of ways appellants employ under current practice in
attempting to comply with the requirements of Rule 41.37(c)(1)(v). A
means or step plus function analysis essentially tracking Bd.R.
41.37(s) has been used in interference cases since 1998 and has been
helpful in determining the scope of claims involved.
Bd.R. 41.37(t) would require an appeal brief to contain an
``evidence section'' in the appendix. The evidence section essentially
continues the practice under Rule 41.37(c)(1)(ix). The evidence section
would include (1) [reserved], (2) [reserved], (3) [reserved], (4)
[reserved], (5) affidavits and declarations upon which the appellant
relied before the examiner, (6) other evidence upon which the appellant
relied before the examiner, and (7) evidence relied upon by the
appellant and admitted into the file pursuant to Bd.R. 41.33(d).
Documents in the evidence appendix would not have to be reformatted
to comply with format requirements of the appeal brief. However, the
affidavits, declarations and evidence required by Bd.R. 41.37(t) which
is otherwise mentioned in the appeal brief, but which does not appear
in the evidence section will not be considered. Rule 41.37(c)(1)(ix)
has a similar provision, but appellants have not attached the evidence
appendix required by that rule. Appellants will now be on notice of the
consequence of failing to comply with Bd.R. 41.37(t).
If the examiner believes that other material should be included in
the evidence section, the examiner would be able to attach that
evidence to the examiner's answer for consideration by Board.
Bd.R. 41.37(u) requires an appeal brief to contain a ``related
cases section'' in the appendix. The related cases section consists of
copies of orders and opinions required to be cited pursuant to Bd.R.
41.37(g).
Examiner's Answer
Bd.R. 41.39(a)(1) provides that within such time and manner as may
be directed by the Director and if the examiner determines that the
appeal should go forward, the examiner may enter an examiner's answer
responding to the appeal brief. The specific requirements of what would
be required in an examiner's answer would appear in the Manual of
Patent Examining Procedure.
Bd.R. 41.39(a)(2) provides that an examiner may enter a new ground
of rejection in an examiner's answer. As made clear in Bd.R.
41.39(a)(1) and Bd.R. 41.39(d), the examiner may respond to appellant's
brief by filing only one examiner's answer, except in the case of a
return or remand of an application by the Chief Administrative Patent
Judge to the examiner (see Bd.R. 41.50(b)). The examiner may no longer
file a supplemental examiner's answer in response to a reply brief. The
reply brief is the last word. Although the examiner may enter a new
ground of rejection in the examiner's answer, this will rarely occur
because the examiner will not be able to respond to any new argument
raised in the reply brief in response to the new ground. As set forth
below in Bd.R. 41.39(b) and its subparts, if the examiner does enter a
new ground of rejection in the examiner's answer, the appellant will
have a choice of either (a) requesting reopening of prosecution before
the examiner with the opportunity to enter an amendment or file
additional evidence, or (b) requesting docketing of the appeal by the
Board and filing a reply brief with argument relevant to the new ground
of rejection. Where a newly cited reference is added in the examiner's
answer merely as evidence of the prior statement made by the examiner
as to what is ``well-known'' in the art which was challenged for the
first time in the appeal brief, the citation of the reference in the
examiner's answer would not ordinarily constitute a new ground of
rejection within the meaning of Bd.R. 41.39(a)(2) and 41.39(b).
Similarly, it
[[Page 67995]]
would not ordinarily be a new ground of rejection for an examiner to
cite an additional reference in an examiner's answer in the following
situations: (1) To prove a previously applied reference contains an
enabling disclosure; (2) to explain the meaning of a term used in a
previously applied reference; or (3) to show that a characteristic not
explicitly disclosed in a previously applied reference is inherent. The
basic thrust of the rejection remains the same in these above-
referenced situations because the additional reference simply explains
a previously applied reference or is evidence of what was taught in a
previously applied reference in response to a new argument.
Bd.R. 41.39(b) provides that if an examiner's answer contains a
rejection designated as a new ground of rejection, appellant would be
required to exercise one of two options to avoid dismissal of the
appeal as to the claims subject to the new ground of rejection. Either
option would have to be exercised within two months from the date of
the examiner's answer.
Bd.R. 41.39(b)(1) specifies a first option and provides that
appellant could request that prosecution be reopened before the
examiner by filing a reply under Rule 111, with or without amendment or
submission of evidence. Any amendment or evidence would have to be
relevant to the new ground of rejection. A request that complies with
this paragraph would be entered and the application or patent under
reexamination would be reconsidered by the examiner under the
provisions of Rule 112. A request under Bd.R. 41.39(b)(1) would be
treated as a request to dismiss the appeal.
Bd.R. 41.39(b)(2) specifies a second option and provides that
appellant could request that the appeal be docketed. The request would
have to be accompanied by a reply brief as set forth in Bd.R. 41.41. An
amendment or evidence could not accompany the reply brief. A reply
brief that is accompanied by an amendment or evidence would be treated
as a request to reopen prosecution pursuant to Bd.R. 41.39(b)(1).
Bd.R. 41.39(c) provides that extensions of time under Rule 136(a)
do not apply and that a request for an extension of time would be
governed by the provisions of Rule 136(b) for extensions of time to
reply for patent applications and Rule 550(c) for extensions of time to
reply for ex parte reexamination proceedings.
Bd.R. 41.39(d) provides that the examiner shall not enter a
supplemental examiner's answer in response to any reply brief filed
under Bd.R. 41.39(b)(2) and/or Bd.R. 41.41.
Reply Brief
Bd.R. 41.41(a) provides that an appellant may file a single reply
brief responding to the examiner's answer. On too many occasions,
appellants have filed a first reply brief and thereafter a second reply
brief. Only one reply brief is authorized under Bd.R. 41.41(a). A
second reply brief will not be considered.
Bd.R. 41.41(b) provides that the time for filing a reply brief
would be within two months of the date the examiner's answer is mailed.
Bd.R. 41.41(c) provides that extensions of time under Rule 136(a)
do not apply and that a request for an extension of time would be
governed by the provisions of Rule 136(b) for extensions of time to
reply for patent applications and Rule 550(c) for extensions of time to
reply for ex parte reexamination proceedings.
Bd.R. 41.41(d) provides that a reply brief shall be limited to
responding to points made in the examiner's answer. Except as otherwise
set out in the rules, the form and content of a reply brief would be
governed by the requirements for an appeal brief as set out in Bd.R.
41.37. A reply brief would be required to contain, under appropriate
headings and in the order indicated, the following items: (1)
[reserved], (2) [reserved], (3) [reserved], (4) [reserved], (5)
argument.
Bd.R. 41.41(e) is reserved.
Bd.R. 41.41(f) is reserved.
Bd.R. 41.41(g) requires that an argument made in the reply brief be
limited to responding to points made in the examiner's answer. Any
argument raised in a reply brief which is not responsive to a point
made in the examiner's answer will not be considered and will be
treated as waived. An example of an acceptable format for presenting an
argument in a reply brief (where there was no new ground of rejection
in the examiner's answer) might read as follows: First paragraph:
``This is a reply to the examiner's answer mailed [insert the date the
answer was mailed].'' Last paragraph: ``For the reasons given in this
reply brief and in the appeal brief, reversal of the examiner's
rejection is requested.'' All paragraphs between the first and last
paragraphs should read: ``On page x, lines y-z of the examiner's
answer, the examiner states that [state what the examiner states]. The
response is [concisely state the response].'' As part of each response,
the appellant should refer to the page number and line or paragraph and
drawing element number of any document relied upon to support the
response. Frequently, new details and arguments surface in reply
briefs. Bd.R. 41.41(g) seeks to confine reply briefs to what they ought
to be--a response to points raised in the examiner's answer. If it
turns out that too many resources of the Office are needed to enforce
the reply brief rule and considerable time is wasted in resolving
improper reply brief issues, consideration may be given to further
limiting the nature of replies filed in ex parte appeals.
Bd.R. 41.41(h) is reserved.
Bd.R. 41.41(i) provides that an amendment or new evidence may not
accompany a reply brief. The Office has found that appellants continue
to attempt to file amendments and evidence with reply briefs. If an
appellant, after reviewing the examiner's answer, believes that an
amendment is appropriate, the appellant may file a continuing
application or a request for continued examination or, in the case of a
reexamination proceeding, ask that the proceeding be reopened.
Examiner's Response to Reply Brief and Supplemental Reply Brief
Bd.R. 41.43 is reserved. An examiner will no longer be responding to a
reply brief. As such, a supplemental reply brief is also no longer
authorized because the examiner will no longer be filing a response to
a reply brief.
Oral Hearing
Bd.R. 41.47(a) provides that if the appellant desires an oral
hearing, appellant must file, as a separate paper, a written request
captioned: ``REQUEST FOR ORAL HEARING.''
Bd.R. 41.47(b) provides that a request for oral hearing shall be
accompanied by the fee required by Sec. 41.20(b)(3).
Bd.R. 41.47(c) provides that the time for filing a request for an
oral hearing would be within two months from the date the examiner's
answer is mailed.
Bd.R. 41.47(d) provides that extensions of time under Rule 136(a)
do not apply and that a request for an extension of time would be
governed by the provisions of Rule 136(b) for extensions of time to
reply for patent applications and Rule 550(c) for extensions of time to
reply for ex parte reexamination proceedings.
Bd.R. 41.47(e) provides that if an oral hearing is properly
requested, a date for the oral hearing would be set.
Bd.R. 41.47(f) provides that if an oral hearing is set, then within
such time as the Board may order, appellant shall confirm attendance at
the oral hearing. Failure to timely confirm attendance would be taken
as a waiver of any request for an oral hearing.
[[Page 67996]]
Bd.R. 41.47(g) is reserved.
Bd.R. 41.47(h) provides that unless otherwise ordered by the Board,
argument on behalf of appellant at an oral hearing would be limited to
20 minutes.
Bd.R. 41.47(i) provides that at oral hearing only the Record will
be considered. No additional evidence may be offered to the Board in
support of the appeal. Any argument not presented in a brief cannot be
made at the oral hearing.
Bd.R. 41.47(j) provides that notwithstanding Bd.R. 41.47(i), an
appellant could rely on and call the Board's attention to a recent
court or Board opinion which could have an effect on the manner in
which the appeal is decided.
Bd.R. 41.47(k) provides that visual aids may be used at an oral
hearing. However, visual aids must be limited to copies of documents or
artifacts in the Record or a model or exhibit presented for
demonstration purposes during an interview with the examiner. When an
appellant seeks to use a visual aid, one copy of each visual aid
(photograph in the case of an artifact, a model or an exhibit) should
be provided for each judge and one copy to be added to the Record.
Bd.R. 41.47(l) provides that failure of an appellant to attend an
oral hearing would be treated as a waiver of the oral hearing. Over the
years, the Board has become concerned with the large number of requests
for postponements. In some cases, multiple requests in a single appeal
are submitted for postponement of an oral hearing. Apart from the fact
that a postponement can lead to large patent term adjustments,
efficiency dictates that the Board is able to set an oral hearing
schedule with an expectation that in a large majority of the cases the
oral hearing will timely occur or the appellant will waive oral
hearing. The Board will continue to handle requests for postponement of
oral hearings on an ad hoc basis. However, postponements would no
longer be granted on a routine basis. A request for a postponement made
immediately after a notice of oral hearing is mailed is more likely to
receive favorable treatment, particularly since it may be possible to
set an oral hearing date prior to the originally scheduled oral hearing
date.
Decisions and Other Actions by the Board
Bd.R. 41.50(a) provides that the Board may affirm or reverse a
decision of the examiner in whole or in part on the grounds and on the
claims specified by the examiner. Bd.R. 41.50(a) continues a long-
standing practice that an affirmance of a 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.
Bd.R. 41.50(b) provides that the Chief Administrative Patent Judge
may remand an application to the examiner. This potential modification
would designate that the Chief Administrative Patent Judge, rather than
the Board, may remand an application to the examiner. This change to
the rule is being considered as a matter of administrative efficiency
because a large majority of remands from the Board are administrative
remands made under the direction of the Chief Administrative Patent
Judge due to procedural defects in the application, rather than remands
made by an assigned panel of Administrative Patent Judges on the
merits. For example, in Fiscal Year 2009, the Board issued 431
administrative remands of applications to the examiner and only 33
merits remands of applications to the examiner. The Chief
Administrative Patent Judge can delegate to an assigned panel of
Administrative Patent Judges the authority to remand an application.
Upon entry of a remand, the Board would no longer have jurisdiction
unless an appellant timely files a request for rehearing. If the
request for rehearing does not result in modification of the remand,
the Board would then lose jurisdiction. An examiner may enter an
examiner's answer in response to a remand. Should the examiner enter an
examiner's answer in response to the remand, appellant would be
required to exercise one of two options to avoid abandonment of the
application or termination of the reexamination proceeding. Either
option would have to be exercised within two months from the date of
any examiner's answer mailed in response to the remand.
Bd.R. 41.50(b)(1) specifies a first option and provides that
appellant could request that prosecution be reopened before the
examiner by filing a reply under Rule 111, with or without amendment or
submission of evidence. Any amendment or evidence would have to be
relevant to the issues set forth in the remand or raised in any
examiner's answer mailed in response to the remand. A request that
complies with this paragraph would be entered and the application or
patent under reexamination would be reconsidered by the examiner under
the provisions of Rule 112. A request under Bd.R. 41.50(b)(1) would be
treated as a request to dismiss the appeal.
Bd.R. 41.50(b)(2) specifies a second option and provides that
appellant could request that the appeal be re-docketed. The request
would have to be accompanied by a reply brief as set forth in Bd.R.
41.41. An amendment or evidence could not accompany the reply brief. A
reply brief that is accompanied by an amendment or evidence would be
treated as a request to reopen prosecution pursuant to Bd.R.
41.50(b)(1).
Bd.R. 41.50(c) provides that a remand is not a final decision.
Following proceedings on remand, and with respect to affirmed
rejections and claims not involved in the remand, an appellant could
request the Board to enter a final decision so that the appellant could
then seek judicial review as to those rejections and claims. Only a
final decision of the Board is subject to judicial review. Copelands'
Enter., Inc. v. CNV, Inc., 887 F.2d 1065 (Fed. Cir. 1989) (en banc).
Bd.R. 41.50(d) provides that, should the Board have knowledge of a
basis not involved in the appeal for rejecting a pending claim, the
Board may enter a new ground of rejection. The pending claim could be a
claim not rejected by the examiner. A new ground of rejection would not
be considered final for purposes of judicial review. A new ground of
rejection is not considered a final agency action because the appellant
has not explained to the Board, without amendment or new evidence, or
to the Office, with an amendment or new evidence or both, why the
rejection is not proper. Bd.R. 41.50(d) places an appellant under a
burden to explain to the Board or the Office why a new ground of
rejection is not proper before it burdens a court with judicial review.
A response by an appellant may convince the Office that a new ground of
rejection should be withdrawn. If the Board enters a new ground of
rejection, appellant would have to exercise one of two options with
respect to the new ground of rejection to avoid dismissal of the appeal
as to any claim subject to the new ground of rejection. Either option
would have to be exercised within two months from the date of the new
ground of rejection.
Bd.R. 41.50(d)(1) specifies that a first option would be to submit
an amendment of the claims subject to a new ground of rejection or new
evidence relating to the new ground of rejection or both and request
that the matter be reconsidered by the examiner. The proceedings would
be remanded to the examiner. A new ground of rejection would be binding
on the examiner unless, in the opinion of the examiner, the amendment
or new evidence
[[Page 67997]]
overcomes the new ground of rejection. In the event the examiner
maintains the rejection, appellant would be able to again appeal to the
Board.
Bd.R. 41.50(d)(2) specifies that a second option would be to
request rehearing pursuant to Bd.R. 41.52. The request for rehearing
would have to be based on the record before the Board and no new
evidence or amendments would be permitted.
Bd.R. 41.50(e) continues a long-standing practice that the Board,
in its opinion in support of its decision, could include a
recommendation, explicitly designated as such, of how a claim on appeal
may be amended to overcome a specific rejection. For the recommendation
to be binding, it would have to be explicitly designated as a
recommendation. For example, a conclusion or comment by the Board that
a claim, notwithstanding appellant's argument, is so broad as to read
on the prior art should not be taken as a recommendation that, if some
undefined limitation is added, the claim would be patentable. When the
Board makes a recommendation, appellant may file an amendment in
conformity with the recommendation. An amendment in conformity with the
recommendation would be deemed to overcome the specific rejection. An
examiner would have authority to enter a rejection of a claim amended
in conformity with a recommendation provided that the additional
rejection constitutes a new ground of rejection. For example, the
examiner may know of additional prior art not known to the Board that
would meet the claim as amended. It is because of the possibility that
an examiner may know of additional prior art that a recommendation
would be expected to be a relatively rare event.
Bd.R. 41.50(f) provides that the Board could enter an order
requiring appellant to brief additional issues or supply additional
evidence or both if the Board believes doing so would be of assistance
in reaching a decision on the appeal. Bd.R. 41.50(f) continues a
practice which has been in existence since 1999. See e.g., (1) 37 CFR
1.196(d) (1999) and (2) Rule 41.50(d). Practice under Rule 41.50(d) has
been highly useful and complements the authority of Office personnel to
request additional material under Rule 105. Appellant would be given a
non-extendable time period within which to respond to the order. In
setting the length of the non-extendable time period, the Board would
take into account the extent of the information requested and the time
of year a response would be due. For example, it is not likely that the
Board would set a date for response between Christmas Day and New
Year's Day. Failure of appellant to timely respond to the order could
result in dismissal of the appeal in whole or in part. An appeal might
be dismissed-in-part if the order sought further briefing or evidence
or both related to one rejection but not another rejection,
particularly where the two rejections apply to different claims.
Bd.R. 41.50(g) provides for extensions of time to respond to
actions of the Board under Bd.R. 41.50(b) and (d). Bd.R. 41.50(g)
provides that a request for an extension of time to respond to a
request for briefing and information under Bd.R. 41.50(f) is not
authorized. A request for an extension of time to respond to Board
action under Bd.R. 41.50(b) and (d) would be governed by the provisions
of Rule 136(b) for extensions of time to reply for patent applications
and Rule 550(c) for extensions of time to reply for ex parte
reexamination proceedings.
Rehearing
Bd.R. 41.52(a) authorizes an appellant to file a single request for
rehearing. In the past, appellants have filed a second request for
rehearing, in effect supplementing a first request for rehearing.
Filing a second or subsequent request for rehearing is not authorized.
Any second or subsequent request for rehearing will not be considered.
Bd.R. 41.52(b) provides that a request for rehearing is due within
two months from the date the decision by the Board is mailed.
Bd.R. 41.52(c) provides that extensions of time under Rule 136(a)
do not apply and that a request for an extension of time would be
governed by the provisions of Rule 136(b) for extensions of time to
reply for patent applications and Rule 550(c) for extensions of time to
reply for ex parte reexamination proceedings.
Bd.R. 41.52(d) provides that a request for rehearing would have to
contain, under appropriate headings and in the order indicated, the
following items: (1) [reserved], (2) [reserved], (3) [reserved], and
(4) argument.
Bd.R. 41.52(e) is reserved.
Bd.R. 41.52(f) provides that a request for rehearing shall state
with particularity the points believed to have been misapprehended or
overlooked by the Board. A general restatement of the case will not be
considered an argument that the Board misapprehended or overlooked a
point. A new argument cannot be made in a request for rehearing, except
in two instances.
Bd.R. 41.52(f)(1) would authorize in a first instance an appellant
to respond to a new ground of rejection entered pursuant to Bd.R.
41.50(d)(2).
Bd.R. 41.52(f)(2) would authorize an appellant to rely on and call
the Board's attention to a recent decision of a court or the Board that
is relevant to an issue decided in the appeal. Generally, the recent
court decision would be a decision of the Supreme Court or the Court of
Appeals for the Federal Circuit.
Bd.R. 41.52(g) provides that an amendment or new evidence could not
accompany a request for rehearing.
Bd.R. 41.52(h) provides that a decision will be rendered on a
request for rehearing. The decision on rehearing would be deemed to
incorporate the decision sought to be reheard except for those portions
of the decision sought to be reheard specifically modified on
rehearing. A decision on rehearing would be considered final for
purposes of judicial review, except when otherwise noted in the
decision on rehearing.
Action Following Decision
Bd.R. 41.54 provides that, after a decision by the Board and
subject to appellant's right to seek judicial review, the proceeding
will be returned to the examiner for such further action as may be
consistent with the decision by the Board.
Sanctions
Bd.R. 41.56 is new and provides for sanctions. The rule is designed
to put the public on notice of actions which the Office believes are
detrimental to the efficient handling of ex parte appeals.
Bd.R. 41.56(a) provides that the Director may impose a sanction
against an appellant for misconduct. Misconduct would include (1)
failure to comply with an order entered in the appeal or an applicable
rule, (2) advancing or maintaining a misleading or frivolous request
for relief or argument, or (3) engaging in dilatory tactics. A sanction
would be entered by the Director. A sanction would be applied against
the appellant, not against a registered practitioner. Conduct of a
registered practitioner could result in a sanction against an
appellant. Conduct of a registered practitioner believed to be
inappropriate would be referred to the Office of Enrollment and
Discipline for such action as may be appropriate.
Bd.R. 41.56(b) provides that the nature of possible sanctions
includes entry of (a) an order declining to enter a docket notice, (b)
an order holding certain facts to have been established in the appeal,
(c) an order expunging a paper or precluding an appellant from filing a
paper, (d) an order precluding
[[Page 67998]]
an appellant from presenting or contesting a particular issue, (e) an
order excluding evidence, (f) an order holding an application on appeal
to be abandoned or a reexamination proceeding terminated, (g) an order
dismissing an appeal, (h) an order denying an oral hearing, or (i) an
order terminating an oral hearing.
Whether and what sanction, if any, should be imposed against an
appellant in any specific circumstance would be a discretionary action.
Previously submitted comments, particularly those submitted in
response to the PRA notice [73 FR 32559], raised some public concerns.
To the extent the potential modifications to the final rule have not
obviated these concerns, we address them below in an effort to solicit
more meaningful feedback from the public in response to this notice.
Concern 1: A concern was raised that the claim support and drawing
analysis section (final rule 41.37(r)) and the means or step plus
function analysis section (final rule 41.37(s)) significantly increase
the burden of preparing a brief.
Answer 1: The potential modifications to the final rule are not
intended to add any additional burden to appellants. It may be helpful
to explain why the Office believes that no additional burden is likely.
By way of comparison, current rule 41.37(c)(1)(v) is analogous to final
rule sections 41.37(r) and (s). The current rule requires ``a concise
explanation of the subject matter defined'' in each independent claim
on appeal. The current rule also requires the explanation to refer to
the specification by line and page number and the drawings, if any, by
reference characters.
Potential modification to final rule 41.37(r) also requires that
appellants refer to line and page numbers or paragraphs of the
specification when mapping a claim. The potential modifications to the
final rule differ, however, in that it requires not only a mapping of
the independent claims on appeal but also a mapping of any dependent
claim argued separately. For cases in which the appellants argue the
dependent claims separately, this may minimally add to the burden in
preparing the brief. Based upon the experience of the Office for the
briefs coming before the Board, this additional burden will be realized
in only a minority of cases. In the majority of cases coming before the
Board, appellants have not argued dependent claims separately, and in
such appeals the mapping burden is the same under both the current rule
and the final rule.
With regard to claims containing means plus function and step plus
function limitations, the requirements of the current rule
(41.37(c)(1)(v)) and those under consideration as potential
modifications to final rule (41.37(s)) are the same. Both require a
mapping of such limitations to the specification by reference to page
and line numbers and drawing reference characters which describe the
structure, material, or acts. Both rules also require a mapping of the
independent and dependent claims argued separately for those claims
containing means plus function and step plus function limitations. The
potential modifications to the final rule correct the inconsistency of
the current rule of mapping both independent claims and dependent
claims argued separately only in the case of means plus function and
step plus function claims. In the potential modifications to the final
rule, all independent claims and dependent claims argued separately on
appeal are required to be mapped to the specification.
In addition, the potential modification to final rules 41.37(r) and
(s) are intended to benefit appellants by reducing the likelihood of a
defective brief notice or a return from the Board for non-compliance
with the rule. One of the primary reasons for a defective brief notice
or a return under the current rules is an improper summary of the
claimed subject matter (rule 41.37(c)(1)(v)). The current rule requires
``a concise explanation of the subject matter.'' The phrase ``a concise
explanation of the subject matter'' in the current rule has been
interpreted in a myriad of ways by appellants. Appellants often
misinterpret what the current rules require or have questions for which
they seek guidance. The language in the current rule has also resulted
in inconsistent interpretation by Office reviewers. The current rule
has led to many appeals being returned before the Board will consider
appeals on their merits. The potential modifications to the final rule
would change the requirement to a clearly objective one. The potential
modifications to the final rule would require ``an annotated copy of
the claim * * * indicating in boldface between braces ({ {time} ) the
page and line or paragraph after each limitation where the limitation
is described in the specification as filed.'' The potential
modifications to the final rule provide a standardized objective format
for appellants to follow and for agency reviewers to apply. This
removes appellant's burden of interpreting the rule and reduces the
likelihood of incurring additional burden and delay due to a defective
brief notice, return, or remand. The Office, thus, has regarded this
more precise requirement as a net benefit to appellants by reducing the
delay that too frequently results from the current rule, while setting
up the case better for decision. Objections, if any, to this approach
should propose better ways to accomplish this goal.
Concern 2: A concern was raised that the sanctions rule (final rule
41.56) placed an additional burden on appellants in that sanctions in
appeals are a new concept and create a new category of misconduct.
Answer 2: This concern is based on the mistaken premise that the
final rule creates totally new misconduct sanctions. Potential
modifications to final rule 41.56 are not new concepts and do not
create a new category of misconduct. Existing 37 CFR 11.18 provides the
Director the authority to impose procedural sanctions for misconduct
for matters related to papers filed before the USPTO. Potential
modifications to final rule 41.56 merely makes clear that the
Director's existing 37 CFR 11.18 authority to impose procedural
sanctions extends to misconduct that may occur during an ex parte
appeal.
Additionally, potential modifications to final rule 41.56 parallel
existing 37 CFR 41.128, which is limited to contested case appeals.
Together these rules provide a comprehensive scope of procedural
sanctions for misconduct before the Board beyond just those matters
covered by 37 CFR 11.18. Finally, in addition to the Director's
explicit authority to establish regulations which shall govern the
conduct of proceedings in the Office (35 U.S.C. 2(b)(2)(A)), the
Director has, and always has had, inherent authority to enforce the
rules and to impose an appropriate sanction. In addition to existing 37
CFR 11.18 and 37 CFR 41.128, see existing 37 CFR 2.120(g) covering
sanctions during inter partes trademark proceedings. The authority for
potential modifications to final rule 41.56 spring from the same
authority as these existing rules and is not a new concept. Potential
modifications to final rule 41.56 provide for sanctions against an
appellant when appropriate .
Also, the rule is meant to be employed for egregious cases of
attorney misconduct, such as, for example, in the case where a
practitioner consistently and repeatedly fails to follow the Board's
rules.
Concern 3: A concern was raised that final rule 41.37(u) requiring
copies of final decisions in Board or court proceedings related to the
appeal places an additional burden on the appellants.
[[Page 67999]]
Answer 3: The requirement for such copies is not a new requirement.
On the contrary, in both the current rule and the potential
modifications to the final rule, appellants are required to file copies
of any final decision of the Board or court proceeding related to the
case on appeal. The potential modifications to the final rule would
impose no additional burden.
Concern 4: A concern was raised that appellants have no way to
respond to a new explanation in an examiner's answer.
Answer 4: It is not correct that the appellant cannot respond. Such
a response is permitted in a reply brief authorized by the potential
modification to final rule 41.41.
The United States Patent and Trademark Office (Office) is
considering changes to its rules in 37 CFR part 41 governing
prosecution in ex parte appeals at the Board of Patent Appeals and
Interferences (Board). There are no fee changes associated with the
proposed modified final rule. Additionally, as follows below, no
additional cost burdens are anticipated as a result of the potential
modifications to the final rule that are under consideration.
The primary potential modifications to the these rules are: (1) The
appeal brief must include sections for claim support and drawing
analysis and means or step plus function analysis in the appendix of
the appeal brief, (2) the reply brief must limit arguments made in the
reply brief to those responsive to points made in the examiner's
answer, (3) in a request for rehearing, a general restatement of the
case will not be considered an argument that the Board misapprehended
or overlooked a point, and (4) the examiner's response to a reply brief
is eliminated. The rules described in (1), (2), and (4) will apply to
all appeal briefs filed with the Board. The rule described in (3) will
apply only to those applicants who file a request for rehearing.
Appeal Brief (1)
No additional cost is associated with the potential modifications
to the appeal brief requirements.
The claim support and drawing analysis section and the means or
step plus function analysis section are analogous to the current
summary of the claimed subject matter section in the appeal brief. The
information required for these two newly titled sections is the same as
that required by the current rules. The potential modifications to the
final rule, however, are explicit as to the format to be followed in
these sections. The current rule requires an explanation of the subject
matter, whereas the potential modifications to the final rule set forth
the precise format to be used in mapping claim limitations to the
support and description of the limitations in the specification and
drawings. Bd. R. 41.37(r) and (s). The current rule leaves the format
for the explanation of the claimed subject matter open to
interpretation by the applicant. Rule 41.37(c)(1)(v). The potential
modifications to the final rule provide a standardized, easy to follow
format for these sections. By following the prescribed format of the
potential modifications to the final rule, the applicant will save time
in not having to create their own format to explain the claimed subject
matter. Moreover, the potential modifications to the final rule format
are expected to reduce the number of applications returned to the
examiner because the brief is not compliant with the explanation of the
claimed subject matter section of the rule. Under the current rules, it
is not uncommon for a case to be returned to the examiner because of
deficiencies in the summary of the claimed subject matter section of
the appeal brief. When a case is returned to the examiner for
correction of a non-compliant brief, the applicant must prepare and
file a corrected brief. This delays the applicant's appeal and costs
the applicant money to prepare a compliant brief. By following the
clear, standardized format in the potential modifications to the final
rule for the claim support and drawing analysis section and means or
step plus function section, applicants can prevent a return of their
application on either or both of these bases. This will save the
applicant the time and expense incurred for filing a corrected appeal
brief. The claim support and drawing analysis section and the means or
step plus function analysis section will not add cost to the appeal
brief and will provide a savings to applicants in some cases.
Reply Brief (2)
No additional cost is associated with the new reply brief
requirement under consideration in the potential modifications to the
final rule.
Under the potential modifications to the final rule, the argument
section of the reply brief has a new requirement that arguments be
responsive to points made in the examiner's answer; otherwise, the
argument will not be considered and will be treated as waived. This
requirement does not impose any additional economic burden on the
applicant. It only makes clear what arguments in the reply brief will
be considered by the Board. It saves the applicant the time and expense
of preparing arguments that will not be considered.
Request for Rehearing (3)
No additional cost is associated with the potential modifications
to the request for rehearing requirement.
Under the potential modifications to the final rule, it would be
established that a restatement of the case will not be considered an
argument that the Board misapprehended or overlooked a point. Under
current Rule 41.52(a)(1), applicants are already required to ``state
with particularity the points believed to have been misapprehended or
overlooked by the Board.'' As such, the clarification in the potential
modifications to the rule as to what fails to constitute an argument
that the Board misapprehended or overlooked a point do not impose any
additional economic burden on the applicant. Rather, it makes clear
what arguments in the request for rehearing will be considered by the
Board. Thus, the potential modifications to the final rule save the
applicant the time and expense of preparing arguments that will not be
considered.
Elimination of Examiner's Response to Reply Brief (4)
The potential modifications to the final rule eliminate the
requirement for an examiner's response following a reply brief. Under
the current rule, examiners are required to respond to a reply brief
either by filing a communication noting the reply brief or by filing a
supplemental examiner's answer. Rule 41.43(a)(1). The potential
modifications to the final rule eliminate both types of examiner
response to a reply brief.
The elimination of the examiner's requirement to note the reply
brief allows applications on appeal to proceed directly to the Board
upon filing of the reply brief, without waiting for an examiner's
response. This saves the applicant valuable time in the appeal process.
It also saves the applicant the expense of tracking the examiner's
response to the reply brief.
The elimination of a supplemental examiner's answer in response to
a reply brief also allows applications on appeal to proceed directly to
the Board upon filing of the reply brief. The applicant realizes an
additional savings by elimination of the supplemental examiner's
answer. Current practice provides that the applicant may file another
reply brief in response to a supplemental examiner's answer. In almost
every appeal where a supplemental examiner's answer is
[[Page 68000]]
provided, the applicant submits another reply brief. By eliminating the
supplemental examiner's answer, it eliminates the need for applicant to
respond with another reply brief. Therefore, elimination of the
supplemental examiner's answer saves the applicant the cost of
preparing another reply brief.
To summarize, the potential modifications to the final rule would
result in no economic impact to an applicant, and may result in a net
savings to the applicant when the savings outlined for the appeal
brief, reply brief, and no examiner response to the reply brief are
realized.
Paperwork Reduction Act
Potential modifications to the final rule may involve information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collection of information involved in the
existing rules, currently in effect, is under review and will be
approved by OMB under OMB collection number 0651-0063. The collection
of information involved in this notice would also be covered under OMB
control number 0651-0063. The Office plans to submit any new
information collection request related to modifications to the final
rule to OMB prior to issuing any final rule.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 41
Administrative practice and procedure, Inventions and patents,
Lawyers.
Potential Modifications to the Rule for Discussion at Roundtable and
for Written Comment
For the reasons stated in the preamble, the Under Secretary of
Commerce for Intellectual Property and Director of the United States
Patent and Trademark Office is proposing to amend 37 CFR part 41 as
follows:
PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND
INTERFERENCES
1. The authority citation for part 41 is revised to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 132, 133,
134, 135, 306, and 315.
Subpart A--General Provisions
1. In Sec. 41.2, revise the definitions of ``Board'' and
``Contested case'' to read as follows:
Sec. 41.2 Definitions.
* * * * *
Board means the Board of Patent Appeals and Interferences and
includes:
(1) For a final Board action in an appeal or contested case, a
panel of the Board.
(2) For non-final actions, a Board member or employee acting with
the authority of the Board.
* * * * *
Contested case means a Board proceeding other than an appeal under
35 U.S.C. 134. An appeal in an inter partes reexamination proceeding is
not a contested case.
* * * * *
2. In Sec. 41.3, revise paragraphs (a) and (b) to read as follows:
Sec. 41.3 Petitions.
(a) Deciding official. A petition authorized by this part must be
addressed to the Chief Administrative Patent Judge. The Chief
Administrative Patent Judge may delegate authority to decide petitions.
(b) Scope. This section covers petitions on matters pending before
the Board, petitions authorized by this part and petitions seeking
relief under 35 U.S.C. 135(c); otherwise see Sec. Sec. 1.181 to 1.183
of this title. The following matters are not subject to petition:
(1) Issues committed by statute to a panel.
(2) In pending contested cases, procedural issues. See Sec.
41.121(a)(3) and Sec. 41.125(c).
* * * * *
3. In Sec. 41.4, revise paragraphs (b) and (c) to read as follows:
Sec. 41.4 Timeliness.
* * * * *
(b) Late filings. (1) A request to revive an application which
becomes abandoned or a reexamination proceeding which becomes
terminated under Sec. Sec. 1.550(d) or 1.957(b) or (c) of this title
as a result of a late filing may be filed pursuant to Sec. 1.137 of
this title.
(2) A late filing that does not result in an application becoming
abandoned or a reexamination proceeding becoming terminated under
Sec. Sec. 1.550(d) or 1.957(b) or limited under Sec. 1.957(c) of this
title may be excused upon a showing of excusable neglect or a Board
determination that consideration on the merits would be in the
interests of justice.
(c) Scope. Except to the extent provided in this part, this section
governs proceedings before the Board, but does not apply to filings
related to Board proceedings before or after the Board has jurisdiction
(Sec. 41.35), such as:
(1) Extensions during prosecution (see Sec. 1.136 of this title).
(2) Filing of a notice of appeal, a brief, or a request for oral
hearing (see Sec. Sec. 41.31, 41.37, 41.41, 41.47, 41.61, 41.66,
41.67, 41.68, 41.71, and 41.73).
(3) Seeking judicial review (see Sec. Sec. 1.301 to 1.304 of this
title).
4. Revise Sec. 41.12 to read as follows:
Sec. 41.12 Citation of authority.
(a) Authority. Citations to authority must include:
(1) United States Supreme Court decision. A citation to a single
source in the following order of priority: United States Reports,
West's Supreme Court Reports, United States Patents Quarterly, Westlaw,
or a slip opinion.
(2) United States Court of Appeals decision. A citation to a single
source in the following order of priority: West's Federal Reporter (F.,
F.2d or F.3d), West's Federal Appendix (Fed. Appx.), United States
Patents Quarterly, Westlaw, or a slip opinion.
(3) United States District Court decision. A citation to a single
source in the following order of priority: West's Federal Supplement
(F.Supp., F.Supp. 2d), United States Patents Quarterly, Westlaw, or a
slip opinion.
(4) Slip opinions. If a slip opinion is relied upon, a copy of the
slip opinion must accompany the first paper in which an authority is
cited.
(5) Pinpoint citations. Use pinpoint citations whenever a specific
holding or portion of an authority is invoked.
(b) Non-binding authority. Non-binding authority may be cited. If
non-binding authority is not an authority of the Office and is not
reproduced in one of the reporters listed in paragraph (a) of this
section, a copy of the authority shall be filed with the first paper in
which it is cited.
Subpart B--Ex parte Appeals
5. In Sec. 41.30, add the definition ``Record'' to read as
follows:
Sec. 41.30 Definitions.
* * * * *
Record means the official content of the file of an application or
reexamination proceeding on appeal.
6. Revise Sec. 41.31 to read as follows:
Sec. 41.31 Appeal to Board.
(a) Notice of appeal. An appeal is taken to the Board by filing a
notice of appeal.
(b) Fee. The notice of appeal shall be accompanied by the fee
required by Sec. 41.20(b)(1).
[[Page 68001]]
(c) Time for filing notice of appeal. A notice of appeal must be
filed within the time period provided under Sec. 1.134 of this title.
(d) Extensions of time to file notice of appeal. The time for
filing a notice of appeal is extendable under the provisions of Sec.
1.136(a) of this title for applications and Sec. 1.550(c) of this
title for ex parte reexamination proceedings.
(e) Non-appealable issues. A non-appealable issue is an issue not
subject to an appeal under 35 U.S.C. 134. An applicant or patent owner
dissatisfied with a decision of an examiner on a non-appealable issue
shall timely seek review by petition before jurisdiction over an appeal
is transferred to the Board (see Sec. 41.35). Failure to timely file a
petition seeking review of a decision of the examiner related to a non-
appealable issue may constitute a waiver to having that issue
considered in the application or reexamination on appeal.
7. Revise Sec. 41.33 to read as follows:
Sec. 41.33 Amendments and evidence after appeal.
(a) Amendment after notice of appeal and prior to appeal brief. An
amendment filed after the date a notice of appeal is filed and prior to
the date an appeal brief is filed may be admitted as provided in Sec.
1.116 of this title.
(b) Amendment with or after appeal brief. An amendment filed on or
after the date an appeal brief is filed may be admitted:
(1) To cancel claims. To cancel claims provided cancellation of
claims does not affect the scope of any other pending claim in the
application or reexamination proceeding on appeal, or
(2) To convert dependent claim to independent claim. To rewrite
dependent claims into independent form.
(c) Other amendments. No other amendments filed after the date an
appeal brief is filed will be admitted, except as permitted by
Sec. Sec. 41.39(b)(1), 41.50(b)(1), 41.50(d)(1), or 41.50(e) of this
subpart.
(d) Evidence after notice of appeal and prior to appeal brief.
Evidence filed after the date a notice of appeal is filed and prior to
the date an appeal brief is filed may be admitted if:
(1) The examiner determines that the evidence overcomes at least
one rejection under appeal and does not necessitate any new ground of
rejection, and
(2) Appellant shows good cause why the evidence was not earlier
presented.
(e) Other evidence. All other evidence filed after the date an
appeal brief is filed will not be admitted, except as permitted by
Sec. Sec. 41.39(b)(1), 41.50(b)(1) or 41.50(d)(1) of this subpart.
8. Revise Sec. 41.35 to read as follows:
Sec. 41.35 Jurisdiction over appeal.
(a) Beginning of jurisdiction. The jurisdiction of the Board begins
when a docket notice is mailed by the Board.
(b) End of jurisdiction. The jurisdiction of the Board ends when:
(1) The Board mails a remand order (see Sec. 41.50(b) or Sec.
41.50(d)(1) of this subpart),
(2) The Board mails a final decision (see Sec. 41.2 of this part)
and judicial review is sought or the time for seeking judicial review
has expired,
(3) An express abandonment is filed which complies with Sec. 1.138
of this title, or
(4) A request for continued examination is filed which complies
with Sec. 1.114 of this title.
(c) Remand ordered by the Director. Prior to entry of a decision on
the appeal by the Board (see Sec. 41.50), the Director may sua sponte
order an application or reexamination proceeding on appeal to be
remanded to the examiner.
9. Revise Sec. 41.37 to read as follows:
Sec. 41.37 Appeal brief.
(a) Requirement for appeal brief. An appeal brief shall be timely
filed to perfect an appeal. Upon failure to file an appeal brief, the
proceedings on the appeal are terminated without further action on the
part of the Office.
(b) Fee. The appeal brief shall be accompanied by the fee required
by Sec. 41.20(b)(2) of this subpart.
(c) Time for filing appeal brief. Appellant must file an appeal
brief within two months from the date of the filing of the notice of
appeal (see Sec. 41.31(a)).
(d) Extension of time to file appeal brief. The time for filing an
appeal brief is extendable under the provisions of Sec. 1.136(a) of
this title for applications and Sec. 1.550(c) of this title for ex
parte reexamination proceedings.
(e) Content of appeal brief. The appeal brief must contain, under
appropriate headings and in the order indicated, the following items:
(1) Statement of the real party in interest (see paragraph (f) of
this section).
(2) Statement of related cases (see paragraph (g) of this section).
(3) [Reserved.]
(4) [Reserved.]
(5) [Reserved.]
(6) [Reserved.]
(7) Status of amendments (see paragraph (l) of this section).
(8) Grounds of rejection to be reviewed (see paragraph (m) of this
section).
(9) [Reserved.]
(10) Argument (see paragraph (o) of this section).
(11) An appendix containing a claims section (see paragraph (p) of
this section), a claim support and drawing analysis section (see
paragraph (r) of this section), a means or step plus function analysis
section (see paragraph (s) of this section), an evidence section (see
paragraph (t) of this section), and a related cases section (see
paragraph (u) of this section).
(f) Statement of real party in interest. The ``statement of the
real party in interest'' shall identify the name of the real party in
interest. The real party in interest must be identified in such a
manner as to readily permit a member of the Board to determine whether
recusal would be appropriate. Appellant is under a continuing
obligation to update this item during the pendency of the appeal. If an
appeal brief does not contain a statement of real party in interest,
the Office will assume that the named inventors are the real party in
interest.
(g) Statement of related cases. The ``statement of related cases''
shall identify, by application, patent, appeal, interference, or court
docket number, all prior or pending appeals, interferences or judicial
proceedings, known to any inventors, any attorneys or agents who
prepared or prosecuted the application on appeal and any other person
who was substantively involved in the preparation or prosecution of the
application on appeal, and that are related to, directly affect, or
would be directly affected by, or have a bearing on the Board's
decision in the appeal. A related case includes any continuing
application of the application on appeal. A copy of any final or
significant interlocutory decision rendered by the Board or a court in
any proceeding identified under this paragraph shall be included in the
related cases section (see paragraph (u) of this section) in the
appendix. Appellant is under a continuing obligation to update this
item during the pendency of the appeal. If an appeal brief does not
contain a statement of related cases, the Office will assume that there
are no related cases.
(h) [Reserved.]
(i) [Reserved.]
(j) [Reserved.]
(k) [Reserved.]
(l) Status of amendments. The ``status of amendments'' shall
indicate the status of all amendments filed after final
[[Page 68002]]
rejection (e.g., whether entered or not entered).
(m) Grounds of rejection to be reviewed. The ``grounds of rejection
to be reviewed'' shall set out the grounds of rejection to be reviewed,
including the statute applied, the claims subject to each rejection and
references relied upon by the examiner.
(n) [Reserved.]
(o) Argument. The ``argument'' shall explain why the examiner erred
as to each ground of rejection to be reviewed. Any explanation must
address all points made by the examiner with which the appellant
disagrees. Any finding made or conclusion reached by the examiner that
is not challenged will be presumed to be correct. Each ground of
rejection shall be separately argued under a separate heading.
(1) Claims standing or falling together. For each ground of
rejection applicable to two or more claims, the claims may be argued
separately (claims are considered by appellants as separately
patentable) or as a group (claims stand or fall together). When two or
more claims subject to the same ground of rejection are argued as a
group, the Board may select a single claim from the group of claims
that are argued together to decide the appeal on the basis of the
selected claim alone with respect to the group of claims as to the
ground of rejection. Any doubt as to whether claims have been argued
separately or as a group as to a ground of rejection will be resolved
against appellant and the claims will be deemed to have been argued as
a group. Any claim argued separately as to a ground of rejection shall
be placed under a subheading identifying the claim by number. A
statement that merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.
(2) Arguments considered. Only those arguments which are presented
in the argument section of the appeal brief and that address claims set
out in the claim support and drawing analysis section in the appendix
will be considered. Appellant waives all other arguments in the appeal.
(p) Claims section. The ``claims section'' in the appendix shall
consist of an accurate clean copy in numerical order of all claims
pending in the application or reexamination proceeding on appeal. The
status of every claim shall be set out after the claim number and in
parentheses (e.g., 1 (rejected), 2 (withdrawn), 3 (objected to), 4
(cancelled), and 5 (allowed)). A cancelled claim need not be
reproduced.
(q) [Reserved.]
(r) Claim support and drawing analysis section. For each
independent claim involved in the appeal and each dependent claim
argued separately (see paragraph (o)(1) of this section), the claim
support and drawing analysis section in the appendix shall consist of
an annotated copy of the claim (and, if necessary, any claim from which
the claim argued separately depends) indicating in boldface between
braces ({ {time} ) the page and line or paragraph after each limitation
where the limitation is described in the specification as filed. If
there is a drawing or amino acid or nucleotide material sequence, and
at least one limitation is illustrated in a drawing or amino acid or
nucleotide material sequence, the ``claims support and drawing analysis
section'' in the appendix shall also contain in boldface between the
same braces ({ {time} ) where each limitation is shown in the drawings
or sequence.
(s) Means or step plus function analysis section. For each
independent claim involved in the appeal and each dependent claim
argued separately (see paragraph (o)(1) of this section) having a
limitation that appellant regards as a means or step plus function
limitation in the form permitted by the sixth paragraph of 35 U.S.C.
112, for each such limitation, the ``means or step plus function
analysis section'' in the appendix shall consist of an annotated copy
of the claim (and, if necessary, any claim from which the claim argued
separately depends) indicating in boldface between braces ({ {time} )
the page and line of the specification and the drawing figure and
element numeral that describes the structure, material or acts
corresponding to each claimed function.
(t) Evidence section. The ``evidence section'' shall contain only
papers which have been entered by the examiner. The evidence section
shall include:
(1) [Reserved.]
(2) [Reserved.]
(3) [Reserved.]
(4) [Reserved.]
(5) Affidavits and declarations. Affidavits and declarations, if
any, and attachments to declarations, before the examiner and which are
relied upon by appellant in the appeal. An affidavit or declaration
otherwise mentioned in the appeal brief which does not appear in the
evidence section will not be considered.
(6) Other evidence filed prior to the notice of appeal. Other
evidence, if any, before the examiner and filed prior to the date of
the notice of appeal and relied upon by appellant in the appeal. Other
evidence filed before the notice of appeal that is otherwise mentioned
in the appeal brief and which does not appear in the evidence section
will not be considered.
(7) Other evidence filed after the notice of appeal. Other evidence
relied upon by the appellant in the appeal and admitted into the file
pursuant to Sec. 41.33(d) of this subpart. Other evidence filed after
the notice of appeal that is otherwise mentioned in the appeal brief
and which does not appear in the evidence section will not be
considered.
(u) Related cases section. The ``related cases section'' shall
consist of copies of orders and opinions required to be cited pursuant
to paragraph (g) of this section.
10. Revise Sec. 41.39 to read as follows:
Sec. 41.39 Examiner's answer.
(a)(1) Answer. If the examiner determines that the appeal should go
forward, then within such time and manner as may be established by the
Director the examiner may enter an examiner's answer responding to the
appeal brief.
(2) New ground of rejection. An examiner's answer may include a new
ground of rejection.
(b) Response to new ground of rejection. If an examiner's answer
contains a rejection designated as a new ground of rejection, appellant
shall within two months from the date of the examiner's answer exercise
one of the following two options to avoid dismissal of the appeal as to
the claims subject to the new ground of rejection:
(1) Request to reopen prosecution. Request that prosecution be
reopened before the examiner by filing a reply under Sec. 1.111 of
this title with or without amendment or submission of evidence. Any
amendment or evidence must be relevant to the new ground of rejection.
A request that complies with this paragraph will be entered and the
application or the patent under ex parte reexamination will be
reconsidered by the examiner under the provisions of Sec. 1.112 of
this title. Any request under this paragraph will be treated as a
request to dismiss the appeal.
(2) Request to docket the appeal. Request that the Board docket the
appeal (see Sec. 41.35(a) of this subpart) and file a reply brief as
set forth in Sec. 41.41 of this subpart. Such a reply brief must
address each new ground of rejection. A reply brief may not be
accompanied by any amendment or evidence. If a reply brief filed
pursuant to this section is accompanied by any amendment or evidence,
it shall be treated as a request to reopen prosecution under paragraph
(b)(1) of this section.
[[Page 68003]]
(c) Extension of time to file reply brief. Extensions of time under
Sec. 1.136(a) of this title for patent applications are not applicable
to the time period set forth in this section. See Sec. 1.136(b) of
this title for extensions of time to reply for patent applications and
Sec. 1.550(c) of this title for extensions of time to reply for ex
parte reexamination proceedings.
(d) No supplemental examiner's answer. The examiner shall not enter
a supplemental examiner's answer in response to any reply brief filed
under Sec. Sec. 41.39(b)(2) and/or 41.41.
11. Revise Sec. 41.41 to read as follows:
Sec. 41.41 Reply brief.
(a) Reply brief authorized. An appellant may file a single reply
brief responding to the points made in the examiner's answer.
(b) Time for filing reply brief. If the appellant elects to file a
reply brief, the reply brief must be filed within two months of the
date of the mailing of the examiner's answer.
(c) Extension of time to file reply brief. Extensions of time under
Sec. 1.136(a) of this title for patent applications are not applicable
to the time period set forth in this section. See Sec. 1.136(b) of
this title for extensions of time to reply for patent applications and
Sec. 1.550(c) of this title for extensions of time to reply for ex
parte reexamination proceedings.
(d) Content of reply brief. Except as otherwise set out in this
section, the form and content of a reply brief are governed by the
requirements for an appeal brief as set out in Sec. 41.37 of this
subpart. A reply brief must contain, under appropriate headings and in
the order indicated, the following items:
(1) [Reserved.]
(2) [Reserved.]
(3) [Reserved.]
(4) [Reserved.]
(5) Argument--see paragraph (g) of this section.
(e) [Reserved.]
(f) [Reserved.]
(g) Argument. Any arguments raised in the reply brief which are not
responsive to points made in the examiner's answer will not be
considered and will be treated as waived.
(h) [Reserved.]
(i) No amendment or new evidence. No amendment or new evidence may
accompany a reply brief.
Sec. 41.43 [Removed]
12. Remove Sec. 41.43.
13. Revise Sec. 41.47 to read as follows:
Sec. 41.47 Oral hearing.
(a) Request for oral hearing. If appellant desires an oral hearing,
appellant must file, as a separate paper, a written request captioned:
``REQUEST FOR ORAL HEARING''.
(b) Fee. A request for oral hearing shall be accompanied by the fee
required by Sec. 41.20(b)(3) of this part.
(c) Time for filing request for oral hearing. Appellant must file a
request for oral hearing within two months from the date of the
examiner's answer.
(d) Extension of time to file request for oral hearing. Extensions
of time under Sec. 1.136(a) of this title for patent applications are
not applicable to the time period set forth in this section. See Sec.
1.136(b) of this title for extensions of time to reply for patent
applications and Sec. 1.550(c) of this title for extensions of time to
reply for ex parte reexamination proceedings.
(e) Date for oral hearing. If an oral hearing is properly
requested, the Board shall set a date for the oral hearing.
(f) Confirmation of oral hearing. Within such time as may be
ordered by the Board, appellant shall confirm attendance at the oral
hearing. Failure to timely confirm attendance will be taken as a waiver
of any request for an oral hearing.
(g) [Reserved.]
(h) Length of argument. Unless otherwise ordered by the Board,
argument on behalf of appellant shall be limited to 20 minutes.
(i) Oral hearing limited to Record. At oral hearing only the Record
will be considered. No additional evidence may be offered to the Board
in support of the appeal. Any argument not presented in a brief cannot
be raised at an oral hearing.
(j) Recent legal development. Notwithstanding paragraph (i) of this
section, an appellant or the examiner may rely on and call the Board's
attention to a recent court or Board opinion which could have an effect
on the manner in which the appeal is decided.
(k) Visual aids. Visual aids may be used at an oral hearing, but
must be limited to documents or artifacts in the Record or a model or
an exhibit presented for demonstration purposes during an interview
with the examiner. At the oral hearing, appellant shall provide one
copy of each visual aid (photograph in the case of an artifact, a model
or an exhibit) for each judge and one copy to be added to the Record.
(l) Failure to attend oral hearing. Failure of an appellant to
attend an oral hearing will be treated as a waiver of oral hearing.
14. Revise Sec. 41.50 to read as follows:
Sec. 41.50 Decisions and other actions by the Board.
(a) Affirmance and reversal. The Board may affirm or reverse an
examiner's rejection in whole or in part. Affirmance of a rejection of
a claim constitutes a general affirmance of the decision of the
examiner on that claim, except as to any rejection specifically
reversed.
(b) Remand. The Chief Administrative Patent Judge may remand an
application to the examiner. If in response to a remand for further
consideration of a rejection, the examiner enters an examiner's answer,
within two months the appellant shall exercise one of the following two
options to avoid abandonment of the application or termination of a
reexamination proceeding:
(1) Request to reopen prosecution. Request that prosecution be
reopened before the examiner by filing a reply under Sec. 1.111 of
this title with or without amendment or submission of evidence. Any
amendment or evidence must be responsive to the remand or issues
discussed in the examiner's answer. A request that complies with this
paragraph will be entered and the application or patent under
reexamination will be reconsidered by the examiner under the provisions
of Sec. 1.112 of this title. A request under this paragraph will be
treated as a request to dismiss the appeal.
(2) Request to re-docket the appeal. The appellant may request that
the Board re-docket the appeal (see Sec. 41.35(a) of this subpart) and
file a reply brief as set forth in Sec. 41.41 of this subpart. A reply
brief may not be accompanied by any amendment or evidence. A reply
brief which is accompanied by an amendment or evidence will be treated
as a request to reopen prosecution pursuant to paragraph (b)(1) of this
section.
(c) Remand not final action. Whenever a decision of the Board
includes a remand, the decision shall not be considered a final
decision of the Board. When appropriate, upon conclusion of proceedings
on remand before the examiner, the Board may enter an order making its
decision final.
(d) New ground of rejection. Should the Board have a basis not
involved in the appeal for rejecting any pending claim, it may enter a
new ground of rejection. A new ground of rejection shall be considered
an interlocutory order and shall not be considered a final decision. If
the Board enters a new ground of rejection, within two months appellant
must exercise one of the following two options with respect to the new
ground of rejection to avoid
[[Page 68004]]
dismissal of the appeal as to any claim subject to the new ground of
rejection:
(1) Reopen prosecution. Submit an amendment of the claims subject
to a new ground of rejection or new evidence relating to the new ground
of rejection or both, and request that the matter be reconsidered by
the examiner. The application or reexamination proceeding on appeal
will be remanded to the examiner. A new ground of rejection by the
Board is binding on the examiner unless, in the opinion of the
examiner, the amendment or new evidence overcomes the new ground of
rejection. In the event the examiner maintains the new ground of
rejection, appellant may again appeal to the Board.
(2) Request for rehearing. Submit a request for rehearing pursuant
to Sec. 41.52 of this subpart relying on the Record.
(e) Recommendation. In its opinion in support of its decision, the
Board may include a recommendation, explicitly designated as such, of
how a claim on appeal may be amended to overcome a specific rejection.
When the Board makes a recommendation, appellant may file an amendment
or take other action consistent with the recommendation. An amendment
or other action, otherwise complying with statutory patentability
requirements, will overcome the specific rejection. An examiner,
however, upon return of the application or reexamination proceeding to
the jurisdiction of the examiner, may enter a new ground of rejection
of a claim amended in conformity with a recommendation, when
appropriate.
(f) Request for briefing and information. The Board may enter an
order requiring appellant to brief matters or supply information or
both that the Board believes would assist in deciding the appeal.
Appellant will be given a non-extendable time period within which to
respond to the order. Failure of appellant to timely respond to the
order may result in dismissal of the appeal in whole or in part.
(g) Extension of time to take action. A request for an extension of
time to respond to a request for briefing and information under
paragraph (f) of this section is not authorized. A request for an
extension of time to respond to Board action under paragraphs (b) and
(d) of this section shall be presented under the provisions of Sec.
1.136(b) of this title for extensions of time to reply for patent
applications and Sec. 1.550(c) of this title for extensions of time to
reply for ex parte reexamination proceedings.
15. Revise Sec. 41.52 to read as follows:
Sec. 41.52 Rehearing.
(a) Request for rehearing authorized. An appellant may file a
single request for rehearing.
(b) Time for filing request for rehearing. Any request for
rehearing must be filed within two months from the date of the decision
mailed by the Board.
(c) Extension of time to file request for rehearing. Extensions of
time under Sec. 1.136(a) of this title for patent applications are not
applicable to the time period set forth in this section. See Sec.
1.136(b) of this title for extensions of time to reply for patent
applications and Sec. 1.550(c) of this title for extensions of time to
reply for ex parte reexamination proceedings.
(d) Content of request for rehearing. A request for rehearing must
contain, under appropriate headings and in the order indicated, the
following items:
(1) [Reserved.]
(2) [Reserved.]
(3) [Reserved.]
(4) Argument--see paragraph (f) of this section.
(e) [Reserved.]
(f) Argument. A request for rehearing shall state with
particularity the points believed to have been misapprehended or
overlooked by the Board. A general restatement of the case will not be
considered an argument that the Board has misapprehended or overlooked
a point. A new argument cannot be made in a request for rehearing,
except:
(1) New ground of rejection. Appellant may respond to a new ground
of rejection entered pursuant to Sec. 41.50(d)(2) of this subpart.
(2) Recent legal development. Appellant may rely on and call the
Board's attention to a recent court or Board opinion which is relevant
to an issue decided in the appeal.
(g) No amendment or new evidence. No amendment or new evidence may
accompany a request for rehearing.
(h) Decision on rehearing. A decision will be rendered on a request
for rehearing. The decision on rehearing is deemed to incorporate the
underlying decision sought to be reheard except for those portions of
the underlying decision specifically modified on rehearing. A decision
on rehearing is final for purposes of judicial review, except when
otherwise noted in the decision on rehearing.
16. Revise Sec. 41.54 to read as follows:
Sec. 41.54 Action following decision.
After a decision by the Board and subject to appellant's right to
seek judicial review, the application or reexamination proceeding will
be returned to the jurisdiction of the examiner for such further action
as may be appropriate consistent with the decision by the Board.
17. Add Sec. 41.56 to read as follows:
Sec. 41.56 Sanctions.
(a) Imposition of sanctions. The Director may impose a sanction
against an appellant for misconduct, including:
(1) Failure to comply with an order entered in the appeal or an
applicable rule.
(2) Advancing or maintaining a misleading or frivolous request for
relief or argument.
(3) Engaging in dilatory tactics.
(b) Nature of sanction. Sanctions may include entry of:
(1) An order declining to enter a docket notice.
(2) An order holding certain facts to have been established in the
appeal.
(3) An order expunging a paper or precluding an appellant from
filing a paper.
(4) An order precluding an appellant from presenting or contesting
a particular issue.
(5) An order excluding evidence.
(6) [Reserved.]
(7) An order holding an application on appeal to be abandoned or a
reexamination proceeding terminated.
(8) An order dismissing an appeal.
(9) An order denying an oral hearing.
(10) An order terminating an oral hearing.
Dated: December 14, 2009.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. E9-30402 Filed 12-21-09; 8:45 am]
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