[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2008]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR41.68]

[Page 404-405]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
  CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF 
                                COMMERCE
 
PART 41_PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES--Table of Contents
 
                     Subpart C_Inter Partes Appeals
 
Sec. 41.68  Respondent's brief.

    (a)(1) Respondent(s) in an appeal may once, within the time limit 
for filing set forth in Sec. 41.66, file a respondent brief and serve 
the brief on all parties in accordance with Sec. 1.903 of this title.
    (2) The brief must be signed by the party, or the party's duly 
authorized attorney or agent, and must be accompanied by the requisite 
fee set forth in Sec. 41.20(b)(2).
    (3) The respondent brief shall be limited to issues raised in the 
appellant brief to which the respondent brief is directed.
    (4) A requester's respondent brief may not address any brief of any 
other requester.
    (b)(1) The respondent brief shall contain the following items under 
appropriate headings and in the order here indicated, and may include an 
appendix containing only those portions of the record on which reliance 
has been made.
    (i) Real Party in Interest. A statement identifying by name the real 
party in interest.
    (ii) Related Appeals and Interferences. A statement identifying by 
application, patent, appeal or interference number all other prior and 
pending appeals, interferences or judicial proceedings known to 
respondent, the respondent's legal representative, or assignee which may 
be related to, directly affect or be directly affected by or have a 
bearing on the Board's decision in the pending appeal. Copies of any 
decisions rendered by a court or the Board in any proceeding identified 
under this paragraph must be included in an appendix as required by 
paragraph (b)(1)(ix) of this section.
    (iii) Status of claims. A statement accepting or disputing 
appellant's statement of the status of claims. If appellant's statement 
of the status of claims is disputed, the errors in appellant's statement 
must be specified with particularity.
    (iv) Status of amendments. A statement accepting or disputing 
appellant's statement of the status of amendments. If appellant's 
statement of the status of amendments is disputed, the errors in 
appellant's statement must be specified with particularity.
    (v) Summary of claimed subject matter. A statement accepting or 
disputing appellant's summary of the subject matter defined in each of 
the independent claims involved in the appeal. If appellant's summary of 
the subject matter is disputed, the errors in appellant's summary must 
be specified.
    (vi) Issues to be reviewed on appeal. A statement accepting or 
disputing appellant's statement of the issues presented for review. If 
appellant's statement of the issues presented for review is disputed, 
the errors in appellant's statement must be specified. A counter 
statement of the issues for review may be made. No new ground of 
rejection can be proposed by a requester respondent.
    (vii) Argument. A statement accepting or disputing the contentions 
of appellant with each of the issues presented by the appellant for 
review. If a contention of the appellant is disputed, the errors in 
appellant's argument must be specified, stating the basis therefor, with 
citations of the statutes, regulations, authorities, and parts of the 
record relied on. Each issue must be treated under a separate heading. 
An argument may be made with each of the issues stated in the counter 
statement of the issues, with each counter-stated issue being treated 
under a separate heading.
    (viii) Evidence appendix. An appendix containing copies of any 
evidence submitted pursuant to Sec. Sec. 1.130, 1.131, or 1.132 of this 
title or of any other evidence entered by the examiner and relied upon 
by respondent in the appeal, along with a statement setting forth where 
in the record that evidence was entered in the record by the examiner.

[[Page 405]]

Reference to unentered evidence is not permitted in the respondent's 
brief. See Sec. 41.63 for treatment of evidence submitted after appeal.
    (ix) Related proceedings appendix. An appendix containing copies of 
decisions rendered by a court or the Board in any proceeding identified 
pursuant to paragraph (b)(1)(ii) of this section.
    (x) Certificate of service. A certification that a copy of the 
respondent brief has been served in its entirety on all other parties to 
the reexamination proceeding. The names and addresses of the parties 
served must be indicated.
    (2) A respondent brief shall not include any new or non-admitted 
amendment, or any new or non-admitted affidavit or other evidence. See 
Sec. 1.116 of this title for amendments, affidavits or other evidence 
filed after final action but before or on the same date of filing an 
appeal and Sec. 41.63 for amendments, affidavits or other evidence 
filed after the date of filing the appeal.
    (c) If a respondent brief is filed which does not comply with all 
the requirements of paragraph (a) and paragraph (b) of this section, 
respondent will be notified of the reasons for non-compliance and given 
a non-extendable time period within which to file an amended brief. If 
respondent does not file an amended respondent brief within the set time 
period, or files an amended respondent brief which does not overcome all 
the reasons for non-compliance stated in the notification, the 
respondent brief and any amended respondent brief by that respondent 
will not be considered.