Rules of Practice Before the Board of Patent Appeals and Interferences

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 5, 10, 11, and 41

RIN 0651-AB32

Rules of Practice Before the Board of Patent Appeals and Interferences

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office consolidates and simplifies the rules governing practice before the Board of Patent Appeals and Interferences to reflect developments in case law, legislation, and administrative practice.

DATES:

Effective date: September 13, 2004.

FOR FURTHER INFORMATION CONTACT:

Appeals:

Jeffrey V. Nase or William F. Smith, 703-308-9797.

Otherwise:

Richard Torczon, 703-308-9797.

SUPPLEMENTARY INFORMATION:

Background

The Board of Patent Appeals and Interferences (Board) has significantly overhauled its operations to address concerns about the duration of proceedings before the Board. This final rule reflects these new procedures. A notice of proposed rule making on this topic was published in the

Federal Register

(68 FR 66648, Nov. 26, 2003) and in the Official Gazette of the United States Patent and Trademark Office (1277 OG 139, Dec. 23, 2003). Seventeen comments have been received in response to that notice.

Explanation of changes

In keeping with long-standing patent practice, rules in title 37, part 1, of the Code of Federal Regulations are denominated “Rule x” in this supplementary information.

Rules 1(a)(1)(iii), 5(e), and 8(a)(2)(i)(B), and subpart E of part 1, are removed to consolidate interference information in part 41, subparts D and E.

Rules 1(a)(1)(ii); 4(a)(2); 6(d)(9); 8(a)(2)(i)(C); 9(g); 11(e); 17(b); 36; 59(a)(1); 103(g); 112; 113(a); 114(d); 131(a)(1); 136(a)(1) and (a)(2); 181(a)(3); 191; 248(c); 292(a) and (c); 295(b); 302(b); 303(c); 304(a)(1) and (a)(2); 322(a)(3); 323; 324; 565(e); 701(c)(2)(ii); 703(a)(4), (b)(3)(ii), (b)(4), (d)(2), and (e); 704(c)(9); 959; and 993 are revised to change cross-references to Board proceedings.

Rules 17(b)-(d) and (h) are revised to remove the Board fees, which will be relocated to § 41.20.

Rules 48(a)-(c) and (i) are revised, and Rule 48(j) added, to consolidate the cross-reference correction of inventorship for applications in contested cases before the Board.

Rules 55(a)(3) and (a)(4), and 136(b) are revised to eliminate the cross-references to Board rules.

Rule 116 is amended to limit amendments after a final rejection or other final action (Rule 113) in an application or in an ex parte reexamination filed under Rule 510, or after an action closing prosecution (Rule 949) in an inter partes reexamination filed under Rule 913, to such amendments filed before or with any appeal to the Board under § 41.31 or § 41.61. Amendments after appeal currently treated under Rule 116 are moved to §§ 41.33 and 41.63. Pursuant to § 41.33(a), amendments filed after appeal and prior to the filing of the appeal brief will be treated under the same standard as Rule 116. The section title is revised to reflect the scope of the rule more accurately.

Rule 116(d) is amended to permit only an amendment canceling claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, to be made in an inter partes reexamination proceeding after the right of appeal notice has issued under Rule 953, except as provided in Rule 981 or as permitted by § 41.77(b)(1).

Rule 116(e) is added to set forth a standard for treatment of an affidavit or other evidence submitted after a final rejection or other final action (Rule 113) in an application or in an ex parte reexamination filed under Rule 510, or in an action closing prosecution (Rule 949) in an inter partes reexamination filed under Rule 913, but before or with any appeal (§ 41.31 or § 41.61). The standard would be that such an affidavit or other evidence could be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. This standard is currently in effect under Rule 195 for an affidavit or other evidence submitted after appeal.

Rule 116(f) is added to prohibit affidavits and other evidence in an inter partes reexamination proceeding after the right of appeal notice under Rule 953, except as provided in Rule 981 or as permitted by § 41.77(b)(1).

Rule 191 is amended to direct appellants under 35 U.S.C. 134(a) or (b) to part 41.

Rules 192-196 are removed and reserved.

Rule 197 is amended by changing its title to “Return of jurisdiction from the Board of Patent Appeals and Interferences; termination of proceedings” to reflect the two remaining paragraphs of this section. The subject matter of paragraph (b) is moved to § 41.52 and the subject matter of paragraph (c) is moved to paragraph (b) of Rule 197. Paragraph (a) is amended to return of jurisdiction of the involved application or patent under ex parte reexamination proceeding to the examiner. Rule 41(d)(2), Fed. R. App. Procedure, controls when the mandate of the Court of Appeals will issue in the event that a party filed a petition for writ of certiorari to the United States Supreme Court. Unless a party petitioning for a writ of certiorari seeks and obtains a stay of the appellate court's mandate, proceedings will be considered terminated with the issuance of the mandate, as noted in Rule 197(b)(2).

Rule 198 is amended by changing its title to “Reopening after a final decision of the Board of Patent Appeals and Interferences” to reflect the substance of the section and to clarify that it applies when a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review.

Rule 324(a) and (c) are revised, and Rule 324(d) added, to consolidate cross-references to correction of inventorship for patents in contested cases before the Board.

Rule 959 is revised to direct inter partes reexamination participants to part 41 for information about appeals in such proceedings.

Rules 961-977 are removed to consolidate inter partes reexamination appeal information in part 41.

Rule 979 is amended by changing its title to “Return of Jurisdiction from the Board of Patent Appeals and Interferences; termination of proceedings” to reflect the two paragraphs of this section. Most of the subject matter of current paragraphs (a)-(g) is moved to §§ 41.79, 41.81 and 41.83. Paragraph (a) is amended to recite that jurisdiction over an inter partes reexamination proceeding passes to the examiner after a decision by the Board of Patent Appeals and Interferences upon transmittal of the file to the examiner, subject to each appellant's right of appeal or other review, for such further action as the condition of the inter partes reexamination proceeding may require, to carry into effect the

decision of the Board of Patent Appeals and Interferences. Paragraph (b) is amended to state that upon decision on the appeal before the Board of Patent Appeals and Interferences, if no further appeal has been taken (Rule 983), the inter partes reexamination proceeding will be terminated and the Director will issue a certificate under Rule 997.

Rule 981 is amended by changing its title to “Reopening after a final decision of the Board of Patent Appeals and Interferences” to better reflect the substance of the section and to clarify that it applies when a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review.

Under 37 CFR 5.3, no interference will be declared with an application under a national secrecy order.

In the enrollment and discipline rules, 37 CFR 10.23(c)(7) and 11.6(d) are amended to change the cross-references to the interference rules.

A new part 41 consolidates rules relating to Board practice and simplifies reference to such practices. The Board will continue the practice used in part 1 of this title of citing sections without the part number. In proceedings before the Board, a party may cite “§ 41.x” as “Board Rule x”.

Subpart A states policies, practices, and definitions common to all proceedings before the Board.

Section 41.1 sets forth general principles for part 41. Section 41.1(a) defines the scope of rules. Section 41.1(b) mandates that the Board's rules be construed to achieve just, speedy, and inexpensive resolutions of all Board proceedings, following the model of Rule 601 and Federal Rule of Civil Procedure 1. Section 41.1(c) explicitly extends the requirement for decorum under Rule 3 to Board proceedings, including dealings with opposing parties.

Section 41.2 sets forth definitions for Board proceedings under part 41. The preamble to § 41.2 is based on the preamble of Rule 601, which cautions that context may give a defined word a different meaning.

The definition of “Board” covers three distinct situations. First, for the purposes of a final agency action committed to a panel of Board members, the definition is identical in scope to 35 U.S.C. 6(b). Second, the definition includes action by the Chief Administrative Patent Judge in matters delegated in these rules to the Chief Administrative Patent Judge. Third, the definition recognizes that non-final actions are often performed by officials other than a panel or the Chief Administrative Patent Judge.

The definition of “Board member” follows the definition in 35 U.S.C. 6(a), under which the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, the Commissioner for Patents, and the Commissioner for Trademarks are ex officio members of the Board.

The phrase “contested case” includes patent interferences (35 U.S.C. 135(a)) and proceedings with interference-based procedures (42 U.S.C. 2182 and 2457(d)).

The term “final” is defined pursuant to 5 U.S.C. 704 to assist parties in determining when a Board action is ripe for judicial review.

The definition of “hearing” reflects the holding of In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 4 (Fed. Cir. 1985) that a party is entitled to judicial consideration of properly raised issues, but is not entitled to an oral argument or consideration of improperly raised issues.

The definitions of “panel” and “panel proceeding” reflects the minimum quorum established in 35 U.S.C. 6(b), which reserves action on patentability and priority to panels. 35 U.S.C. 6(b).

The term “party” sets forth a generic term for entities acting in a Board proceeding.

The delegation of petition authority to the Chief Administrative Patent Judge in § 41.3(a) is new as a rule, but follows a delegation already published in the Manual of Patent Examining Procedure (MPEP) at § 1002.02(f).

Under § 41.3(b)(1) decisions committed by statute to the Board are not subject to petitions for supervisory review. Review of such decisions come through a request for rehearing or through judicial review. The provision in § 41.3(b)(2) for petitions in contested cases to be decided by other officials reflects the MPEP's designation of other actions typical in the ordinary course of Board proceedings as “petitions”. See MPEP § 1002.02(g) (various procedural decisions in interferences).

Section 41.3(c) reflects current practice in requiring payment of a standard petition fee.

Section 41.3(d) reflects the current practice of not staying any action for a petition for supervisory review in Rule 181(f).

Section 41.3(e) sets times for filing petitions. As with Rule 181(f), failure to file a timely petition is sufficient basis for dismissing or denying a motion.

Section 41.4(a) and (b) follow the requirements of Rules 136(b) and 645 in providing rules for extensions of time and for acceptance of untimely papers. Section 41.4(c) points parties to timeliness rules that are related to Board proceedings, but not within the scope of the Board rules.

Section 41.5 provides a limited delegation to the Board under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel in Board proceedings. Section 41.5(b) delegates to the Board the authority to conduct counsel disqualification proceedings while the Board has jurisdiction over a proceeding.

Section 41.6(a) relocates into part 41 the portions of Rule 14(e) that apply to the Board. Under § 41.6(a)(1) publicly available materials continue to be publicly available. Section 41.6(a)(2) sets forth the basis for making a determination under 35 U.S.C. 122(a) that special circumstances justify the publication of a Board action.

Section 41.6(b) generalizes to all Board proceedings the practice under Rule 11(e) of making the record of most interference proceedings publicly available eventually, although that availability might not occur until an involved patent application becomes available.

Section 41.7 recodifies the current practice of Rule 618 regarding duplicate papers and the expunging of papers, but generalizes it to all Board proceedings.

Section 41.8(a) reflects the practice under Rules 192(c)(1) and 602 regarding disclosure of the real parties-in-interest. Section 41.8(b) requires parties to provide notice of related proceedings.

Section 41.9 follows Rule 643 regarding action by an assignee to the exclusion of an inventor, but generalizes it to all Board proceedings.

Section 41.10 adds correspondence addresses for Board proceedings.

Section 41.11 codifies existing interference practice prohibiting ex parte communications about a contested case with an official actually conducting the proceeding, but generalizes the practice to include inter partes reexamination appeals as well.

Section 41.12 codifies existing interference practice regarding the citation of authority but generalizes the practice to all Board proceedings.

Section 41.20 consolidates the rules on fees associated with Board practice. Rules 22, 23, and 25-28, which govern fee practice before the Office generally, continue to apply in Board proceedings. Section 41.20(a) sets forth the petition fee, while paragraph (b) sets forth appeals-related fees.

Subpart B is added to set forth rules for the ex parte appeal under 35 U.S.C. 134 of a rejection in either a national

application for a patent, an application for reissue of a patent, or an ex parte reexamination proceeding to the Board.

Section 41.30 sets forth definitions for Board proceedings under subpart B of part 41. The preamble to § 41.30 is based on a similar provision in the preamble of former Rule 601. The term “proceeding” sets forth a generic term for a national application for a patent, an application for reissue of a patent, and an ex parte reexamination proceeding. The term “applicant” sets forth a generic term for either the applicant in a national application for a patent or the applicant in an application for reissue of a patent. The term “owner” sets forth a shorthand reference to the owner of the patent undergoing ex parte reexamination under Rule 510.

Section 41.31 is added to generally incorporate the requirements of former Rule 191(a)-(d). Paragraph (a) is subdivided into three parts to improve readability. Paragraph (d) is amended to refer only to the time periods referred to in paragraphs (a)(1)-(a)(3) of this section, while the current extension of time requirements for Rules 192, 193, 194, 196 and 197, formerly provided in Rule 191(e), is relocated to §§ 41.37, 41.41, 41.47, 41.50 and 41.52.

Section 41.33 is added to replace the requirements of former Rules 116 and 195. Paragraph (a) provides that amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1)-(a)(3) and prior to the date a brief is filed pursuant to § 41.37 may be admitted as provided in § 1.116. Thus, amendments after final but prior to appeal and amendments filed after appeal but prior to the date the brief is filed will be treated under the same standard (i.e, § 1.116). Paragraph (b) provides that amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted: (1) to cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or (2) to rewrite dependent claims into independent form. A dependent claim is rewritten into independent form by including all of the limitations of the base claim and any intervening claims. Thus, no limitation of a dependent claim can be excluded in rewriting that claim into independent form. Paragraph (c) provides that all other amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1)-(a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1) and 41.50(c). Paragraph (d)(1) provides that affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1)-(a)(3) and prior to the date of filing a brief pursuant to § 41.37 may be admitted if the examiner determines that the affidavits or other evidence overcomes all rejections under appeal and that there is a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. Paragraph (d)(2) provides that all other affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1)-(a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1). Paragraph (d) replaces the former practice of permitting such evidence based on a showing of good and sufficient reasons why such evidence was not earlier presented set forth in former Rule 195. The Office believes that prosecution should occur before the examiner prior to an appeal being filed, not after the case has been appealed pursuant to § 41.31(a)(1)-(a)(3).

Section 41.35 is added to generally incorporate the requirements of former Rule 191(e). In addition, this section makes clear that jurisdiction over an application may be relinquished by the Board and the application returned to the examining operation to permit processing to be completed by the examining operation before the Board takes up the appeal for decision. This is consistent with the present practice of returning an appealed application to the examining operation where some matter requiring attention has been identified prior to assignment of the appeal number and docketing of the appeal. In addition, the Board is permitted to take other appropriate action to complete the file.

Section 41.37 is added to generally incorporate the requirements of former Rule 192. In addition, the following changes have been made:

(1) The title of the section has been changed from “Appellant's brief” to “Appeal brief”.

(2) In paragraph (a), one copy of the brief is required rather than three copies consistent with the Office's move to an electronic file wrapper.

(3) In paragraph (a), the brief is required to be filed within two months from the date of the notice of appeal under § 41.31 even if the time allowed for reply to the action from which the appeal was taken is later, which overall simplifies docketing of the due date.

(4) In paragraph (c)(1)(i), a statement is required in the brief identifying by name the real party in interest even if the party named in the caption of the brief is the real party in interest. This provides appellant the necessary mechanism for complying with § 41.8(a) in an appeal to the Board.

(5) In paragraph (c)(1)(ii), identification is required of all other prior and pending appeals, interferences or judicial proceedings known to appellant, the appellant'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, as well as to set forth a mechanism for complying with § 41.8(b) in an appeal to the Board.

(6) In paragraph (c)(1)(iii), both a statement of the status of all the claims in the proceeding (

e.g.

, rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims that are being appealed is required.

(7) In paragraph (c)(1)(v), a concise explanation of the invention is required for each of the independent claims involved in the appeal, which explanation shall refer to the specification by page and line number, and to the drawings, if any, by reference characters. For each independent claim involved in the appeal and for each dependent claim argued separately under the provisions of paragraph (c)(1)(vii) of this section, every means plus function and step plus function as permitted by 35 U.S.C. 112, sixth paragraph, must be identified and the structure, material, or acts described in the specification as corresponding to each claimed function be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters. The former requirement of Rule 192(c)(5) to set forth a concise explanation of the invention defined in the claims involved in the appeal by reference to the specification by page and line number, and to the drawings, if any, by reference characters was not being followed in a great number of briefs before the Board.

(8) In paragraph (c)(1)(vi), a concise statement listing each ground of rejection presented for review is required rather than issues for review. An example of a concise statement is “Claims 1 to 10 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. X.”

(9) The grouping of claims requirement set forth in former Rule 192(c)(7) is removed. The general purpose served by former Rule 192(c)(7) is addressed in § 41.37(c)(1)(viii). The existing grouping of claims requirement has led to many problems such as (i) Grouping of claims across multiple rejections (

e.g.

, claims 1-9 rejected under 35 U.S.C. 102 over A while claims 10-15 are rejected under 35 U.S.C. 103 over A and the appellant

states that claims 1-15 are grouped together); (ii) Claims being grouped together but argued separately (

e.g.

, claims 1-9 rejected under 35 U.S.C. § 102 over A, the appellant groups claims 1-9 together but then argues the patentability of claims 1 and 5 separately); and (iii) examiners disagreeing with the appellant's grouping of claims.

(10) In paragraph (c)(1)(vii), any arguments or authorities not included in the brief or a reply brief filed pursuant to § 41.41 will be refused consideration by the Board, unless good cause is shown (requirement found in former Rule 192(a)), and a separate heading is required for each ground of rejection in place of the previous grouping of claims section of the brief. For each ground of rejection applying to two or more claims, the claims may be argued separately or as a group. When an appellant argues as a group multiple claims subject to the same ground of rejection, the Board may select a single claim from that group of claims and treat its disposition of a ground of rejection of that claim as applying to the disposition of that ground of rejection of all claims in the group of claims. Notwithstanding any other provision of this paragraph, an appellant's failure to argue separately claims that the appellant has grouped together constitutes a waiver of any argument that the Board must consider the patentability of any grouped claim separately.

See In re McDaniel

, 293 F.3d 1379, 1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002) (interpreting former Rule 192(c)(7) to require separate treatment of separately rejected claims). Any claim argued separately should be placed under a subheading identifying the claim by number and claims argued as a group should be placed under a subheading identifying the claims by number. For example, if Claims 1 to 5 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Y and appellant is only going to argue the limitations of independent claim 1, and thereby group dependent claims 2 to 5 to stand or fall with independent claim 1, then one possible heading as required by this subsection could be

Rejection under 35 U.S.C. 102(b) over U.S. Patent No. Y

and the optional subheading would be Claims 1 to 5. As another example, where claims 1 to 3 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Z and the appellant wishes to argue separately the patentability of each claim, a possible heading as required by this subsection could be

Rejection under 35 U.S.C. 102(b) over U.S. Patent No. Z

, and the optional subheadings would be

Claim 1, Claim 2,

and

Claim 3.

Under each subheading the appellant would present the argument for patentability of that claim.

(11) Paragraph (c)(1)(vii) states that “Merely pointing out differences in what the claims cover is not an argument as to why the claims are separately patentable”, a statement in slightly different form appeared in former Rule 192(c)(7).

(12) Paragraph (c)(1)(vii) eliminates subparagraphs (i) through (v) of former Rule 192(c)(8) which related to the manner in which arguments were to be made. Although they provided useful advice as to what an effective argument ought to include, these provisions have often been ignored by appellants and, for the most part, have not been enforced as set forth in paragraph (d) of that rule.

(13) Paragraph (c)(1)(ix) is added to require appellant to include an evidence appendix of any evidence relied upon by appellant in the appeal with a statement setting forth where that evidence was entered in the record by the examiner so that the Board will be able to easily reference such evidence during consideration of the appeal.

(14) Paragraph (c)(1)(x) is added to require appellant to include a related proceedings appendix containing copies of decisions rendered by a court or the Board in any proceeding identified pursuant to paragraph (c)(1)(ii) of this section so that the Board can take into consideration such decisions.

(15) Paragraph (c)(2) is added to exclude any new or non-admitted amendment, affidavit or other evidence from being included in the brief.

(16) Paragraph (d) is added to provide that appellants will be notified of reasons for non-compliance and given a period of time to file an amended brief.

(17) Paragraph (e) is added to provide notice that the periods set forth in this section are extendable under the provisions of Rule 136 for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision appeared in former Rule 191(d).

Section 41.39 is added to generally incorporate requirements found in former Rule 193(a).

Section 41.39(a)(2) is added to permit a new ground of rejection to be included in an examiner's answer eliminating the former prohibition of new grounds of rejection in examiner's answers. Many appellants are making new arguments for the first time in their appeal brief (apparently stimulated by a former change to the appeal process that inserted the prohibition on new grounds of rejection in the examiner's answer). Because the current appeal rules only allow the examiner to make a new ground by reopening prosecution, some examiners have allowed cases to go forward to the Board without addressing the new arguments. Thus, the revision would improve the quality of examiner's answers and reduce pendency by providing for the inclusion of the new ground of rejection in an examiner's answer without having to reopen prosecution. By permitting examiners to include a new ground of rejection in an examiner's answer, newly presented arguments can now be addressed by a new ground of rejection in the examiner's answer when appropriate. Furthermore, if new arguments can now be addressed by the examiner by incorporating a new ground of rejection in the examiner's answer, the new arguments may be able to be addressed without reopening prosecution and thereby decreasing pendency.

It is envisioned that new grounds of rejection in examiner's answers would be rare, rather than a routine occurrence. The Office plans to issue instructions that will be incorporated into the MPEP requiring that any new ground of rejection made by an examiner in an answer must be personally approved by a Technology Center Director or designee and that any new ground of rejection made in an answer be prominently identified as such. It is the further intent of the Office to provide guidance to examiners that will also be incorporated into the MPEP as to what circumstances,

e.g.

, responding to a new argument or new evidence submitted prior to appeal, would be appropriate for entry of a new ground of rejection in an examiner's answer rather than the reopening of prosecution. Where, for example, a new argument(s) or new evidence cannot be addressed by the examiner based on the information then of record, the examiner may need to reopen prosecution rather than apply a new ground of rejection in an examiner's answer to address the new argument(s) or new evidence.

Paragraph (b) of § 41.39 is added to set forth the responses an appellant may make when an examiner's answer sets forth a new ground of rejection. Appellant is required within two months from the date of the examiner's answer containing a new ground of rejection either:

(1) To request that prosecution be reopened by filing a reply under Rule 111 with or without amendment or submission of affidavits (Rules 130, 131 or 132) or other evidence, which would

result in prosecution being reopened before the examiner, or

(2) To file a reply brief under § 41.41, which would act as a request that the appeal be maintained. Such a reply brief could not be accompanied by any amendment, affidavit (Rules 130, 131, or 132) or other evidence. If such a reply brief were accompanied by any amendment or evidence, it would be treated as a request that prosecution be reopened before the examiner under paragraph (b)(1) of this section. Any reply brief would have to specify the error in each new ground of rejection as set forth in § 41.37(c)(1)(viii) and should generally follow the other requirements of a brief set forth in § 41.37(c).

If in response to the examiner's answer containing a new ground of rejection, appellant decides to reopen prosecution of the application before the examiner, the Office will treat the decision to reopen prosecution also as a request to withdraw the appeal. If appellant fails to exercise one of the two options within two months from the date of the examiner's answer, the appeal will be sua sponte dismissed (

i.e.

, terminated) as to the claims subject to the new ground of rejection.

Paragraph (c) of § 41.39 is added to provide notice that the period set forth in paragraph (b) of this section is extendable under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision appeared in former Rule 191(d).

Section 41.41 is added to generally incorporate requirements found in former Rule 193(b). In addition:

(1) Paragraph (a)(2) is added to make explicit that a reply brief cannot include any new or non-admitted amendment, affidavit or other evidence.

(2) Paragraph (b) is added to make clear that a reply brief not in compliance with paragraph (a) would not be considered. The examiner would notify the appellant in this event.

(3) Paragraph (c) is added to provide notice that the period set forth in this section would be extendable under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision appeared in former Rule 191(d).

Section 41.43 is added to permit the examiner to furnish a supplemental examiner's answer to respond to any new issue raised in the reply brief. This would dispense with the need for the Board to remand the proceeding to the examiner to treat any new issue raised in the reply brief. The MPEP will provide that each supplemental examiner's answer must be approved by a Technology Center Director or designee. A supplemental examiner's answer may not include a new ground of rejection. If a supplemental examiner's answer is furnished by the examiner, the appellant is permitted to file another reply brief under § 41.41 within two months from the date of the supplemental examiner's answer.

The former prohibition against a supplemental examiner's answer in other than a remand situation is removed to permit use of supplemental examiner's answers where the examiner is responding only to new issues raised in the reply brief. As a consequence, the requirements pertaining to appellants when prosecution is reopened under former Rule 193(b)(2) are removed.

Section 41.43(a)(1) permits the examiner to furnish a supplemental examiner's answer to respond to any new issue raised in a reply brief. It should be noted that an indication of a change in status of claims (

e.g.

, that certain rejections have been withdrawn as a result of a reply brief) is not a supplemental examiner's answer and therefore would not give appellant the right to file a reply brief. Such an indication of a change in status may be made on form PTOL-90. The Office will develop examples to help the examiner determine what would or would not be considered a new issue warranting a supplemental examiner's answer. An appellant who disagrees with an examiner's decision that a supplemental examiner's answer is permitted under this rule may petition for review of the decision under Rule 181. Examples of new issues raised in a reply brief include the following:

Example 1

: The rejection is under 35 U.S.C. 103 over A in view of B. The brief argues that element 4 of reference B cannot be combined with reference A as it would destroy the function performed by reference A. The reply brief argues that B is nonanalogous art and therefore the two references cannot be combined.

Example 2

: Same rejection as in Example 1. The brief argues only that the pump means of claim 1 is not taught in the applied prior art. The reply brief argues that the particular retaining means of claim 1 is not taught in the applied prior art.

Paragraph (a)(1) of § 41.43 also sets forth the ability of the examiner to withdraw the final rejection and reopen prosecution as an alternative to the use of a supplemental examiner's answer. The primary examiner's decision to withdraw the final rejection and reopen prosecution to enter a new ground of rejection requires approval from the supervisory patent examiner as currently set forth in MPEP 1208.02.

Paragraph (b) of § 41.43 permits appellant to file a supplemental reply brief in response to a supplemental examiner's answer within two months from the date of the supplemental examiner's answer. That two-month time period may be extended under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings as set forth in § 41.43(c).

Section 41.47 is added to generally incorporate the requirements of former Rule 194. In addition:

(1) Paragraph (b) requires the separate paper requesting the oral hearing to be captioned “REQUEST FOR ORAL HEARING” and sets forth that such a request can be filed within two months from the date of the examiner's answer or supplemental examiner's answer.

(2) Paragraph (d) is added to set forth the procedure for handling the request for oral hearing when an appellant has complied with all the requirements of paragraph (b) of this section. Since notice to the primary examiner is a matter internal to the Office, the requirement for notice to the primary examiner has been removed from the rule. It is anticipated that the primary examiner will be sent notice of the hearing time and date by e-mail.

(3) Paragraph (e)(1) is added to specifically provide that at the oral hearing (i) appellant may only rely on evidence that has been previously considered by the primary examiner and present argument that has been relied upon in the brief or reply brief except as permitted by paragraph (e)(2) of this section; (ii) the primary examiner may only rely on argument and evidence raised in the answer or a supplemental answer except as permitted by paragraph (e)(2) of this section; and (iii) that appellant opens and concludes the argument (

i.e.

, the order of the argument at the hearing is: Appellant opens, then the primary examiner argues, then the appellant concludes presuming that appellant has reserved some time for a concluding argument).

(4) Paragraph (e)(2) is added to specifically provide that upon a showing of good cause, appellant and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.

(5) Paragraph (f) is added to incorporate the substance found in former Rule 194. Exemplary situations where the Board may decide no hearing is necessary include those where the Board has become convinced, prior to hearing, that an application must be

remanded for further consideration prior to evaluating the merits of the appeal or that the examiner's position cannot be sustained in any event.

(6) Paragraph (g) is added to provide notice that the periods set forth in this section are extendable under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision appeared in former Rule 191(d).

Section 41.50 is added to generally incorporate the requirements of former Rule 196. In addition:

(1) Paragraph (a)(1) explicitly provides that the Board, in its principal role under 35 U.S.C. 6(b) of reviewing adverse decisions of examiners, may in its decision affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed. The Board may also remand an application to the examiner.

(2) Paragraph (a)(2) is added to require appellant to respond to any supplemental examiner's answer issued in response to a remand from the Board to the examiner for further consideration of a rejection to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. Appellant must exercise one of the following two options to avoid such sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding: (i) Request that prosecution be reopened before the examiner by filing a reply under Rule 111 with or without amendment or submission of affidavits (Rules 130, 131 or 132) or other evidence, or (ii) request that the appeal be maintained by filing a reply brief as provided in § 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the examiner under § 41.50(a)(2)(i). Any request that prosecution be reopened under this paragraph would be treated as a request to withdraw the appeal.

(3) Paragraph (b)(2) eliminates the provision relating to requests that the application or patent under ex parte reexamination be reheard, since that provision is included in § 41.52(a).

(4) Paragraph (c) provides that the opinion of the Board may include an explicit statement how a claim on appeal could be amended to overcome a specific rejection and that when the opinion of the Board included such a statement, appellant would have the right to amend in conformity therewith. Such an amendment in conformity with such statement would overcome the specific rejection, but an examiner could still reject a claim so-amended, provided that the rejection constituted a new ground of rejection.

(5) Paragraph (d) provides that appellant's failure to timely respond to an order of the Board of Patent Appeals and Interferences could result in the dismissal of the appeal.

(6) Paragraph (f) is added to provide notice that the periods set forth in this section are extendable under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision appeared in former Rule 191(d).

Section 41.52 is added to generally incorporate the requirements of former Rule 197(b). In addition, paragraph (a)(1) incorporates the matter from former Rule 196(b)(2) relating to the request that the application or patent under ex parte reexamination be reheard. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this section. In addition, the rule would permit the Board to simply deny a request for rehearing in appropriate cases rather than rendering a new opinion and decision on the request for rehearing. Paragraph (a)(2) provides that upon a showing of good cause, appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. Paragraph (a)(3) provides that new arguments responding to a new ground of rejection made pursuant to § 41.50(b) are permitted. Paragraph (b) is added to provide notice that the period set forth in this section is extendable under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision appeared in former Rule 191(d).

Section 41.54 is added to generally incorporate the requirements of former Rule 197(a).

Subpart C is added to provide rules for the inter partes appeal under 35 U.S.C. 315 of a rejection in an inter partes reexamination proceeding to the Board. This subpart does not apply to any other Board proceeding and is strictly limited to appeals in inter partes reexamination proceedings filed under 35 U.S.C. 311.

Section 41.60 sets forth definitions for Board proceedings under subpart C of part 41. The preamble to § 41.60 is based on a similar provision in the preamble of former Rule 601. The term “proceeding” provides a shorthand reference to an inter partes reexamination proceeding. The term “owner” provides a shorthand reference to the owner of the patent undergoing inter partes reexamination under Rule 915. The term “requester” provides a generic term to describe each party other than the owner who requested that the patent undergo inter partes reexamination under Rule 915. The term “appellant” provides a generic term for any party, whether the owner or a requester, filing a notice of appeal or cross appeal under § 41.61. If more than one party appeals or cross appeals, each appealing or cross appealing party is an appellant with respect to the claims to which his or her appeal or cross appeal is directed. The term “respondent” provides a generic term for any requester responding under § 41.68 to the appellant's brief of the owner, or the owner responding under § 41.68 to the appellant's brief of any requester. No requester may be a respondent to the appellant brief of any other requester. The terms “appellant” and “respondent” were defined in former Rule 962. The definition of the term “filing” provides a generic requirement that any document filed in the proceeding by any party must include a certificate indicating service of the document to all other parties to the proceeding as required by Rule 903.

Section 41.61 is added to generally incorporate the requirements of former Rule 959.

Sections 41.63(a) and (b) are added to replace the requirements of former Rule 116 with a prohibition of amendments submitted after the date the proceeding has been appealed pursuant to § 41.61, except for amendments permitted by § 41.77(b)(1) and amendments canceling claims where such cancellation does not affect the scope of any other pending claim in the proceeding. Section 41.63(c) replaces the requirements of former Rule 975 with a prohibition on the admission of affidavits and other evidence submitted after the case has been appealed pursuant to § 41.61 except as permitted by § 41.77(b)(1). This replaces the current practice of permitting such evidence based on a showing of good and sufficient reasons why such evidence was not earlier presented. The Office believes that prosecution of an application should occur before the examiner prior to an appeal being filed, not after the case has been appealed pursuant to § 41.61.

Section 41.64 is added to generally incorporate the requirements of former Rule 961, but would make clear that jurisdiction over a proceeding may be relinquished and the proceeding returned to the examining operation to permit processing to be completed before the Board takes up the appeal for decision.

Section 41.66 is added to generally incorporate the requirements of former Rule 963.

Section 41.67 is added to generally incorporate the requirements of former Rule 965. In addition:

(1) In paragraph (a), one copy of the brief is required rather than three copies consistent with the Office's move to an electronic file wrapper.

(2) In paragraph (c)(1)(i), a statement in the brief is required identifying by name the real party in interest even if the party named in the caption of the brief is the real party in interest. This provides appellant the necessary mechanism of complying with § 41.8(a) in an appeal to the Board;

(3) In paragraph (c)(1)(ii), clear identification is required of all other prior and pending appeals, interferences or judicial proceedings known to appellant, the appellant'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, as well as to provide a mechanism of complying with § 41.8(b) in an appeal to the Board.

(4) In paragraph (c)(1)(iii), both a statement of the status of all the claims in the proceeding (

e.g.

, rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims that are being appealed is required.

(5) In paragraph (c)(1)(v), a concise explanation is required of the subject matter defined in each of the independent claims involved in the appeal and which concise explanation shall refer to the specification by page and line number, and to the drawings, if any, by reference characters. For each independent claim involved in the appeal and each dependent claim argued separately under the provisions of paragraph (c)(1)(vii) of this section, every means plus function and step plus function as permitted by 35 U.S.C. 112, sixth paragraph, must be identified and the structure, material, or acts described in the specification as corresponding to each claimed function be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters.

(6) In paragraph (c)(1)(vi), a concise statement is required listing each issue presented for review. An example of a concise statement is claims 1 to 10 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. X.

(7) The grouping of claims requirement set forth in former Rule 965(c)(7) is removed. The general purpose served by former Rule 965(c)(7) is addressed in § 41.67(c)(1)(viii). The existing grouping of claims requirement has led to many problems as set forth above in the discussion of § 41.37.

(8) In paragraph (c)(1)(vii), any arguments or authorities not included in a brief permitted in this section or filed pursuant to §§ 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown, and a separate heading is required for each ground of rejection in place of the previous grouping of claims section of the brief. For each ground of rejection applying to two or more claims, the claims may be argued separately or as a group. When an appellant argues as a group multiple claims subject to the same ground of rejection, the Board may select a single claim from that group of claims and treat its disposition of a ground of rejection of that claim as applying to the disposition of that ground of rejection of all claims in the group of claims. Notwithstanding any other provision of this paragraph, an appellant's failure to argue separately claims that appellant has grouped together would constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.

See In re McDaniel,

293 F.3d 1379, 1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002) (interpreting analogous former Rule 192(c)(7) to require separate treatment of separately rejected claims). Any claim argued separately should be placed under a subheading identifying the claim by number and that claims argued as a group should be placed under a subheading identifying the claims by number.

(9) Paragraph (c)(1)(vii) states that “Merely pointing out differences in what the claims cover is not an argument as to why the claims are separately patentable.” This statement in slightly different form appeared in former Rule 965(c)(7).

(10) Paragraph (c)(1)(vii) eliminates subparagraphs (i) through (v) of former Rule 965(c)(8) which related to the manner in which arguments were to be made. Although providing useful advice as to what an effective argument ought to include, these provisions have often been ignored by appellants and, for the most part, have not been enforced as provided in former Rule 965(d).

(11) Paragraph (c)(1)(ix) is added to require appellant to include an evidence appendix of any evidence relied upon by appellant in the appeal with a statement setting forth where that evidence was entered in the record by the examiner so that the Board would be able to reference such evidence easily during their consideration of the appeal.

(12) Paragraph (c)(1)(x) is added to require appellant to include a related proceedings appendix containing copies of decisions rendered by a court or the Board in any proceeding identified pursuant to § 41.67(c)(1)(ii) so that the Board can take into consideration such decisions.

(13) Paragraph (c)(2) is added to exclude any new or non-admitted amendment, affidavit or other evidence from being included in an appellant's brief.

Section 41.68 is added to generally incorporate requirements found in former Rule 967 and changes similar to those in § 41.67. In addition, paragraph (b)(2) excludes any new or non-admitted amendment, affidavit or other evidence from being included in a respondent's brief.

Section 41.69 is added to generally incorporate requirements found in former Rule 969.

Section 41.71 is added to generally incorporate requirements found in former Rule 971.

Section 41.73 is added to generally incorporate the requirements of former Rule 973. In addition:

(1) Paragraph (b) requires the separate paper requesting the oral hearing to be captioned “REQUEST FOR ORAL HEARING” and that such a request can be filed within two months from the date of the examiner's answer.

(2) Paragraph (d) is added to provide the procedure for handling the request for oral hearing in which a party has complied with all the requirements of paragraph (b) of this section. Since notice to the primary examiner is a matter internal to the Office, the requirement for notice to the primary examiner has been removed from the rule. It is anticipated that the primary examiner will be sent notice of the hearing time and date by e-mail.

(3) Paragraph (e)(1) is added to specifically provide that at the oral hearing (i) parties may only rely on evidence that has been previously considered by the primary examiner and present argument that has been relied upon in the briefs except as permitted by paragraph (e)(2) of this section; (ii) the primary examiner may only rely on argument and evidence relied upon in the answer except as permitted by paragraph (e)(2) of this section; and (iii)

that the Board will determine the order of the arguments presented at the oral hearing.

(4) Paragraph (e)(2) is added to specifically provide that upon a showing of good cause, appellant, respondent and/or the primary examiner may rely on a new argument based upon a recent relevant decision of either the Board or a Federal Court.

(5) Paragraph (f) is added to incorporate the substance found in former Rule 194. Exemplary situations where the Board might decide no hearing is necessary include those where the Board has become convinced, prior to hearing, that the proceeding must be remanded for further consideration prior to evaluating the merits of the appeal.

Section 41.77 is added to generally incorporate the requirements of former Rule 977.

Section 41.79 is added to generally incorporate the requirements of former Rule 979 concerning rehearing before the Board. Paragraph (b) generally incorporates the requirements of former Rule 979(d). Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this section. Paragraph (b)(2) provides that upon a showing of good cause, appellant and/or respondent may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. Paragraph (b)(3) provides that new arguments responding to a new ground of rejection made pursuant to § 41.77(b) are permitted. Paragraph (c) generally incorporates the requirements of former Rule 979(b). Paragraph (d) generally incorporates the requirements of former Rule 979(c). Paragraph (e) generally incorporates the requirements of former Rule 979(g).

Section 41.81 is added to generally incorporate the requirements of former Rule 979(e).

Subpart D provides rules for contested cases before the Board. Contested cases are predominantly patent interferences under 35 U.S.C. 135(a), but also include United States Government ownership contests under 42 U.S.C. 2182(3) and 2457(d).

Section 41.100 defines two terms. The term “business day” is defined in a manner consistent with 35 U.S.C. 21(b) to exclude Saturday, Sunday, and Federal holidays, when the closure of the Board may affect the Board's, or a party's, ability to perform an action.

The term “involved” appears in 35 U.S.C. 135(a) with respect to claims and is implicitly defined in Rule 601(f) (for claims) and in Rule 601(l) (for applications), but is not explicitly defined in the current rules. The rule expressly defines “involved” as designating any patent application, patent, or claim that is the subject of the contested case.

Section 41.101 follows the practice in Rule 611(a) and (b) for notifying parties of a contested case. As a courtesy, the Board will make reasonable efforts to provide notice to all parties. Failure to maintain a current correspondence address may result in adverse consequences.

Section 41.102 requires completion of examination for most applications (and of reexamination for most patents) before the Board will institute a contested case.

Section 41.103 follows the file jurisdiction practice in Rules 614 and 615 except to generalize the temporary transfer of jurisdiction to include parts of the Office other than the examining corps, including, for example, the Office of Public Records. Such transfers of jurisdiction will generally be for short periods and for limited purposes.

Section 41.104(a) follows the practice of Rule 610(e), which permits an administrative patent judge wide latitude in administering interferences. The decision to waive a procedural requirement is committed to the discretion of the administrative patent judge.

Section 41.104(c) clarifies that any default times set by rule may be changed by order. “Times” in paragraph (c) includes both dates and durations.

Section 41.106 provides guidance for the filing and service of papers. Under § 41.106(a), papers to be filed are required to meet standards very similar to those required in patent prosecution, Rule 52(a), and in filings in the Court of Appeals for the Federal Circuit, Fed. R. App. P. 32. Section 41.106(a)(1) would permit a party to file papers in either A4 format or 8

1/2

-inch × 11-inch format, but not to alternate between formats. At present, the Board prefers papers to be filed in 8

1/2

-inch × 11-inch format because the present filing system is best adapted to this paper format.

Section 41.106(b) provides guidance specific to papers other than exhibits. Section 41.106(b)(1) codifies current practices for the cover sheet of a paper. Section 41.106(b)(2) requires holes at the top of the paper consistent with Local Civil Rule 5.1(f) (1999) of the United States District Court for the District of Columbia to facilitate entry of the paper in the administrative record. The bar in § 41.106(b)(3) against incorporation by reference and combination of papers minimizes the chance that an argument will be overlooked and reduces abuses that arise from incorporation and combination.

Section 41.106(c) requires the filing of a working copy for the Board official administering the proceeding.

Section 41.106(d) provides additional guidance for special modes of filing. Section 41.106(d)(1) encourages the use of the EXPRESS MAIL® service of the United States Postal Service. Section 41.106(d)(2) permits other modes of filing.

Section 41.106(e)(1) requires papers to be served when they are filed if they have not already been served. Section 41.106(e)(3) provides for expedited service.

Section 41.106(f) provides rules for certificates of service. Section 41.106(f)(1) requires the certificate to be incorporated into each paper other than exhibits. When the exhibits are filed at the same time, the certificate may be incorporated into the exhibit list. See § 41.154(d).

Section 41.108 requires each party to identify its counsel, if any. The rule also follows Rule 613(a), which permitted the Board to require the appointment of a lead counsel.

Section 41.109 follows Rule 612 in permitting parties to obtain copies of certain Office files directly related to the contested case. Section 41.109(c) requires a party that has not received copies of a requested file to notify the Board of the problem promptly.

Section 41.110(a) requires a single clean set of the claims, analogous to the requirement for amendments “in clean form” in Rule 121.

Section 41.120 provides for notice of requested relief and the basis for that relief in contested cases.

Section 41.121(a)(1) redefines motions practice under Rule 633(a), (b), (c)(2), (c)(3), (c)(4), (f) and (g) to focus more specifically on the central issue in the contested case. Section 41.121(a)(1)(iii) permits a motion for judgment in the contest, which can include an attack on standing as well as a motion for relief on the central issue of the contest. Section 41.121(a)(2) and (a)(3) modifies the responsive motion and miscellaneous motion practice under Rules 633(i) and (j), 634, and 635 to ensure that the proceeding remains focused. Section 41.121(a)(3) provides for miscellaneous motions, which would offer a mechanism for requesting relief on procedural issues and other issues tangential to patentability and priority.

Section 41.121(b) places the burden of proof on the moving party, following Rule 637(a) (2003).

Section 41.121(c)(1) follows Rule 637(a) regarding the general contents of motions, but would also codify the current practice of requiring a separate paper for each motion. The numbered paragraphs stating material facts in § 41.121(c)(1)(ii) should be short, ideally just a sentence or two, to permit the opposing party to admit or deny each fact readily. Under § 41.121(c)(1)(iii), sloppy motion drafting is held against the moving party. Section 41.121(c)(2) requires the movant to make showings ordinarily required for the requested relief in other parts of the Office.

Section 41.121(d) allows the Board to raise questions of patentability.

Section 41.122 codifies the present practice regarding new arguments in replies.

Section 41.123(a) sets default times for filing motions. Section 41.123(b) provides requirements for miscellaneous motions.

A party may request an oral argument under § 41.124(a), but requests would not be automatically granted. Section 41.124(b), requires the parties to file three working copies of the papers to be considered for the panel if the hearing is set for a panel. Section 41.124(c) provides a default time of 20 minutes per party for oral arguments at the Board because they are not evidentiary hearings. Section 41.124(d) permits the use of demonstrative exhibits. Section 41.124(e) permits the transcription of the argument.

Section 41.125(a) maintains the discretion under current practice to address issues in an order that is both fair and efficient. Section 41.125(b) clarifies the current practice that a decision short of judgment is not final. Section 41.125(c) recodifies the time for requesting rehearing from Rule 640(c) and the procedural requirements of the last two sentences of Rule 655(a).

Section 41.126 recodifies the current arbitration practice.

Section 41.127(a)(1) recodifies the existing estoppel provision for interferences. Section 41.127(a)(2) restates the final disposal provision of Rule 663. Section 41.127(b) restates the conditions in Rule 662 under which the Board infers a concession of the contest. Section 41.127(c) restates the recommendation provision of Rule 659. Section 41.127(d) provides a time for requesting a rehearing.

Section 41.128(a) restates Rule 616 on sanctions, but adds the examples of misleading arguments and dilatory tactics to the list of reasons for sanctions. Section 41.128(b) restates the list of sanctions provided in Rule 616, but adds a terminal disclaimer requirement as a sanction.

Section 41.150(a) restates the present policy of limited discovery, consistent with the goal of providing contested proceedings that are fast, inexpensive, and fair. Section 41.150(b) provides for automatic discovery of materials cited in the specification of an involved or benefit disclosure. Section 41.150(c) restates existing practice under Rule 687 regarding additional testimony.

Section 41.151 continues the practice under Rule 671(i) of making failure to comply with the rules a basis for challenging admissibility.

Section 41.152 continues the current practice of using the Federal Rules of Evidence in contested cases. Section 41.152(d) permits reliance on official notice and hearsay to determine the scope and effect of foreign law.

Section 41.153 restates the practice under Rule 671(d) of admitting Office records that are available to all parties without certification. Under § 41.154(a), each Office record cited as evidence would have to be submitted as an exhibit.

Section 41.154(a) restates Rule 671(a), which sets the form of evidence, and codifies the existing practice that all evidence must be submitted as an exhibit. Section 41.154(b) restates Rule 647 regarding translation of foreign language evidence. Section 41.154(c) sets forth additional formal requirements for exhibits consistent with current practice. An exhibit list is required under § 41.154(d).

Section 41.155 sets forth rules for objecting to evidence and responding to objections. Under § 41.155(b)(1), the default time for serving an objection to evidence other than testimony is five business days. Section 41.155(b)(2) permits a party that submitted evidence ten business days after service of the objection to cure any defect in the evidence. (Standing Order ¶ 14.2 provides two weeks.) The Board would not ordinarily address an objection unless the objecting party filed a motion to exclude under § 41.155(c). Section 41.155(d) provides for a motion in limine for a ruling on admissibility.

Section 41.156(a) requires a party seeking a subpoena to first obtain authorization from the Board. Section 41.156(b) imposes additional requirements on a party seeking testimony or production outside the United States because the use of foreign testimony generally increases the cost and complexity of the proceeding for both the parties and the Board.

Section 41.157 restates existing practice regarding the taking of testimony. The time period for cross-examination set in § 41.157(c)(2) follows the current practice and sets a norm for the conference held under § 41.157(c)(1). Section 41.157(c)(3) clarifies the practice of providing documents in advance by limiting the practice to direct testimony. Since direct testimony is generally in the form of a declaration, the circumstance in which § 41.157(c)(3) would apply should rarely occur apart from compelled testimony. Section 41.157(d) codifies the existing requirement for a conference before a deposition with an interpreter.

Section 41.157(e) adopts “officer”, the term used in 35 U.S.C. 23, to refer to the person qualified to administer testimony. The certification of § 41.157(e)(6)(vi) substantially adopts the standard of Rule 674 for disqualifying an officer from administering a deposition. Section 41.157(e)(7) requires the proponent of the testimony to file the transcript of the testimony.

Section 41.157(f) codifies the existing practice of requiring the proponent of testimony to pay the reasonable costs associated with making the witness available for cross examination, including the costs of the reporter and transcript.

Section 41.158 codifies the current practice regarding expert testimony and scientific tests and data.

Subpart E provides rules specific to patent interferences. Section 41.200(a) would specifically identify patent interferences as contested cases subject to the rules in subpart D.

Section 41.200(b) continues the practice under Rule 633(a) of looking at the applicant's specification to determine the meaning of a copied claim, not the specification from which the claim was copied.

Section 41.200(c) sets forth the policy now found in Rule 610(c) setting two years as the maximum normal pendency for patent interferences.

Section 41.201 sets forth definitions specific to patent interferences. The phrase “accorded benefit” is defined as the Board's designation of an application as providing a proper constructive reduction to practice for a party.

A definition is set forth for the phrase “constructive reduction to practice” because this phrase is used in the rules instead of “earliest effective filing date” to explain more precisely how benefit is accorded for the purpose of determining priority.

The term “count” is redefined to emphasize the relationship of the count to admissible proofs of priority under § 102(g).

The definition of “involved claim” is based on a similar definition in Rule 601(f) and is consistent with the definition of “involved” for contested cases in § 41.100 because only claims that correspond to the count are at risk in an interference, except to the extent a question is raised as to whether a claim that does not correspond should.

The definition of “senior party” would depart from the current definition in Rule 601(m) by focusing on the earliest constructive reduction to practice to determine which party, if any, is senior.

The phrase “threshold issue” is defined to include three specific issues that directly affect whether a party may participate in an interference. The first identified threshold issue is no interference-in-fact. The other two specifically identified issues, the bar under 35 U.S.C. 135(b) and lack of written description under 35 U.S.C. 112(1), are directed to the prevention of spuriously provoked interferences and would consequently be limited to motions from a party with a patent or published application against a party with an involved application.

Section 41.202(a) restates the requirements of Rules 604, 607, and 608 for applicants provoking an interference. Section 41.202(a)(5) continues the practice under Rule 633(a) of looking at the applicant's specification to determine the meaning of a copied claim, not the specification from which the claim was copied.

Section 41.202(c) restates the practice under Rule 605 of requiring an applicant to add a claim to provoke an interference, but adds requirements for applicants copying claims from patents.

Section 41.202(d) sets forth the basis for a summary proceeding when an applicant does not appear to be able to show it would prevail on priority. Section 41.202(d)(1) restates Rule 608, but eliminates the distinction between Rule 608(a) and Rule 608(b). Section 41.202(d)(2) restates Rule 617 by providing a basis for a summary proceeding on priority when the applicant fails to make a sufficient showing of priority. Under § 41.202(e), the showing must by itself, if unrebutted, warrant a determination of priority favorable to the applicant.

Section 41.203(a) states the standard for declaring a patent interference. The Director uses a two-way unpatentability test to determine whether claimed inventions interfere. Under § 41.203(b) an administrative patent judge declares the interference. Section 41.203(c) authorizes an administrative patent judge to redeclare the interference sua sponte or in response to a decision on motions. Section 41.203(d) permits a party to suggest that an administrative patent judge exercise discretion to declare a new interference or to redeclare the existing interference to accommodate such files.

Section 41.204 would define notices of requested relief in interferences. Section 41.204(a) simplifies the formal requirements for the principal notice on priority, the preliminary statement (which is renamed a “priority statement”). Section 41.204(b) codifies the existing practice of requiring a list of motions, but under the rule a party would ordinarily be limited to filing substantive motions consistent with its notice of requested relief. No default times is set for statements in § 41.204(c).

Section 41.205 restates practice under Rule 666 regarding the filing of settlement agreements and would implement the requirements of 35 U.S.C. 135(c). Section 205(a) incorporates Rule 661. In addition, § 41.205(a) provides that after a final decision is entered by the Board, an interference is considered terminated when no appeal (35 U.S.C. 141) or other review (35 U.S.C. 146) has been or can be taken or had. If an appeal to the U.S. Court of Appeals for the Federal Circuit (under 35 U.S.C. 141) or a civil action (under 35 U.S.C. 146) has been filed the interference is considered terminated when the appeal or civil action is terminated. A civil action is terminated when the time to appeal the judgment expires. An appeal to the U.S. Court of Appeals for the Federal Circuit, whether from a decision of the Board or a judgment in a civil action, is terminated when the mandate is issued by the Court. Rule 41(d)(2), Fed. R. App. Procedure, controls when the mandate of the Court of Appeals will issue in the event that a party filed a petition for writ of certiorari to the United States Supreme Court. Unless a party petitioning for a writ of certiorari seeks and obtains a stay of the appellate court's mandate, proceedings will be considered terminated with the issuance of the mandate, as noted in § 41.205(a).

Section 41.206 revises practice regarding commonly owned patents and applications in an interference to address cases involving a real party-in-interest with the ability to control the conduct of more than one party.

Section 41.207(a)(1) recodifies the presumption regarding order of invention from Rule 657(a). Section 41.207(a)(2) recodifies the evidentiary standards for proving priority stated in Rule 657(b) and (c), but restates the standard of Rule 657(c) in terms of the date of the earliest constructive reduction to practice.

Section 41.207(b) clarifies claim correspondence practice and explicitly states the effect of claim correspondence. Section 41.207(b)(1) reflects current practice under which patentability must be determined for claims, not counts. Under § 41.207(b)(2), a claim would correspond to the count if the subject matter of the claim would have been anticipated by or obvious (alone or in combination with prior art) in view of the subject matter of the count.

The presumption in § 41.207(c) restates the presumption in Rule 637(a) that prior art cited against an opponent is presumed to apply against the movant's claims.

Section 41.208(a) focuses substantive motions on the core questions of priority.

Section 41.208(b) places the burden of proof on the movant and provides guidance on how to satisfy the burden of going forward.

Section 41.208(c)(1) requires a movant seeking to add or amend a claim to show that the added or amended claim is patentable. Section 41.208(c)(2) similarly requires a movant seeking to add or amend a count to show that the count does not include unpatentable subject matter.

Discussion of Comments

Generally

Unless otherwise indicated, rule references are to rules within chapter I of title 37, Code of Federal Regulations. Comments directed to formal errors in the proposed rule making have been gratefully considered, but will not be separately discussed.

Comment 1:

One comment suggests that the Board rules are confusing because some of them apply to activities that take place before an examiner rather than during the Board proceeding itself. The comment suggests that such rules be restored to Part 1 rather than moved to Part 41 as proposed.

Answer:

The problem identified is common to any set of rules covering transitions or interfaces between separate processes. For instance, the Federal Rules of Appellate Procedure (FRAP) provide directions to the clerk of the district court on what to do (FRAP 3) before the appeal is docketed (FRAP 12(a)). A choice must be made between keeping such rules with the patent prosecution rules, moving them to the Board rules, or even creating an additional part.

The best choice is to keep such rules with the Board rules. At least one such rule is triggered in relation to every Board proceeding. For instance, § 41.37

(appeal briefs) will be implicated in the majority of ex parte appeals to the Board. By contrast, a Board proceeding occurs in only about 1% of all applications. Consequently, the connection of the rules in question to Board practice is much stronger than the connection to prosecution. As a convenience to applicants and other users of the rules, § 1.191 and § 1.959 direct attention to appropriate subparts of Part 41.

Comment 2:

One comment notes that § 1.1(a)(1)(iii), which provides an address for patent interference correspondence was removed but was not replicated in Part 41.

Answer:

The interference address was located in proposed § 41.106(d). In view of the confusion that the proposed approach caused for the person making the comment, both § 1.1(a)(1)(ii) and § 1.1(a)(1)(iii) (and the address portion of § 41.106(d)) have been moved to a new § 41.10. Section 1.1(a)(1)(ii) has been rewritten to direct readers to § 41.10.

Comment 3:

One comment notes that § 1.6(d)(9) and § 1.8(a)(2)(i)(B), which ban facsimiles and certificates of mailing in interferences, are removed. The comment suggests that the removal means these practices are now permitted.

Answer:

Section 41.106 provides directions on filing papers with the Board in contested cases, including interferences. Sections 1.6(d)(9) and 1.8(a)(2)(i)(B) have been revised to direct readers to § 41.106.

Comment 4:

One comment opposes moving § 1.14(e) to § 41.6 because the comment urges that this important function should remain under the control of the Director.

Answer:

Several observations are in order. First, the rule is limited to Board actions, not all patent related matters. Second, the rule simply implements access that is already available under a variety of statutes. Third, the Board's administration of this provision occurs under a delegation from the Director and remains subject to the Director's ultimate supervision. Indeed, § 41.6(a)(2) expressly reserves to the Director the determination of whether special circumstances justify releasing information about an application otherwise entitled to confidentiality under 35 U.S.C. 122(a). With the advent of pre-grant publication under 35 U.S.C. 122(b), the vast majority of final Board decisions are soon expected to be routinely available at the time they are issued or shortly afterward. It is impracticable for the Director to administer disclosure of all of these decisions personally. The Board is the logical delegate to administer disclosure of Board actions.

Section 1.11(e) has been amended to simplify the language of the rule and to provide a cross reference to § 41.6.

Comment 5:

One comment opposes the additional discretion in § 1.14(e)(2) to publish petition decisions.

Answer:

The only changes to § 1.14 intended in this rule making were ministerial deletions of references to decisions of the Board. Another rule making, 68 FR 38624, has changed § 1.14 in a way that appears to address the concerns of the comment.

Comment 6:

One comment suggests that extension of time practice in the proposed rules is confusing because it is not always clear whether § 1.136 or § 41.4 would apply.

Answer:

As proposed, § 41.4(c) explained that § 41.4 applied to Board proceedings, but not during prosecution or during the time for judicial review. The rule has been amended to clarify that § 41.4 applies when a matter is actually pending before the Board. For instance, an extension of time to file an appeal brief, which is due before jurisdiction transfers to the Board, would be subject to § 1.136, while a request for additional time to file a request for reconsideration of a Board decision would be subject to § 41.4.

Comment 7:

Two comments suggest that § 1.292(a) be modified to permit delegation of the conduct of public use proceedings to the Board of Patent Appeals and Interferences.

Answer:

This suggestion falls outside the scope of the present rule making, in which § 1.292(a) was included simply to change a cross reference. The comments have been forwarded to the Deputy Commissioner for Patent Examination Policy for further consideration. Note, however, that § 1.292(a) would permit such a delegation without amendment.

Comment 8:

One comment suggests additional modifications to § 1.292(a) as well as to subpart D of part 41 to authorize action by a single Board member and to provide relief in proceedings under 42 U.S.C. 2182(4) and 2457(d).

Answer:

Subpart D provides sufficient flexibility to permit such actions without amendment.

Comment 9:

Three comments suggest that the cross-reference to § 41.121(a)(2) in §§ 1.322-1.324 is too narrow because it would only permit corrections in a responsive motion. The suggested cure is to generalize the reference to § 41.121(a) because the need to correct can arise at various times and may not be in response to anything filed in a contested case.

Answer:

The comments' reasoning is consistent with the filing of a miscellaneous motion (§ 41.121(a)(3)), but not with the filing of a substantive motion (§ 41.121(a)(1)). Consequently, Rules 322 to 324 have been revised to refer to § 41.121(a)(2) and (3).

Comment 10:

One comment suggests that § 1.565(e) be amended to reflect the balance between the need for special dispatch in reexaminations and the need for the Office to ensure orderly proceedings, citing

Ethicon

v.

Quigg,

849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988).

Answer:

The proposed revision of § 1.565(e) only changed the cross-reference. The comment suggests a change that is outside the scope of this rule making. Nevertheless, the Office is keenly aware of the need for balance on this point.

Part 41, Subpart A—General Provisions

Comment 11:

One comment suggests that the lack of paragraph designations in § 41.2 for each definition is confusing, particularly since subparagraphs are numbered.

Answer:

The rule conforms to the guidance the Office of the Federal Register provides for drafting definitions.

Federal Register

Document Drafting Handbook section 8.15. Given that the defined terms are listed alphabetically and italicized, in practice the format should not be confusing.

Comment 12:

One comment suggests that the definition of “Board of Patent Appeals and Interferences” in § 41.2, which includes both Board members and Board employees for non-final actions, is inconsistent with an Office rule making published 4 December 2003 at 68 FR 67818. The comment prefers the approach taken in this final rule. The comment is more relevant to the other rule making and has been forwarded to the Deputy Commissioner for Patent Examination Policy. Note that Board employees other than Board members are only defined as the Board for the purposes of non-final actions.

Comment 13:

Two comments urge that § 41.3 creates confusion for petitions relating to rules in part 41 but arising while the Board does not have jurisdiction, for example, supervisory review of an examiner's answer for failure to comply with a rule.

Answer:

Section 41.3 is amended to include a scope provision that limits its scope to actions by the Board or to proceedings pending before the Board.

Comment 14:

One comment suggests that § 41.3(a) be amended to bar the Chief Administrative Patent Judge from delegating authority to enter a decision on a petition to a person who

participated in the matter being petitioned.

Answer:

The suggestion involves matters of Board management, which are better treated in management documents like standard operating procedures.

Comment 15:

One comment notes that proposed § 41.4(a) sets a “good cause” standard for obtaining an extension of time, whereas § 1.136(b), relating to non-fee extensions of time, sets a “sufficient cause” standard. The comment suggests either the commentary describe the differences, if any, between these two standards or adopt the “sufficient cause” standard in proposed § 41.4(a).

Answer:

The “good cause” standard for obtaining an extension of time under § 41.4(a) will be maintained to distinguish it from the “sufficient cause” standard of § 1.136(b). An extension of time under § 41.4(a) for “good cause” is decided by the Board while an extension of time under § 1.136(b) for “sufficient cause” is decided outside of the Board. The “good cause” standard for obtaining an extension of time has previously been used by the Board in former § 1.645 (2003) and will be maintained even though there is little, if any, difference between the standards.

To establish good cause for a filing delay, a party must show that the delay was excusable under the circumstances and that the appellant exercised due diligence in attempting to meet the filing deadline. The factors bearing on whether there is good cause for an untimely filing include the length of the delay, knowledge of the time limit, circumstances beyond the party's control that affected its ability to comply with the deadline, the party's negligence, if any, and any unavoidable harm that might have prevented timely filing. Zamot v. MSPB, 332 F.3d 1374, 1377 (Fed. Cir. 2003).

Comment 16:

One comment notes that extensions of time for certain deadlines in interferences can generally be obtained by stipulation according to the current Standing Order. The comment suggests changing proposed § 41.4(a) by adding at the end “or Order of the Board”.

Answer:

The practice of permitting stipulated changes is unaffected by this provision (which existed under § 1.645(a) (2003)). An authorized, stipulated change in a deadline is not an extension of the deadline. The suggested addition could create the misapprehension that the standard itself can be changed by order. The suggestion will not be adopted.

Comment 17:

One comment states that proposed § 41.4(b) is particularly confusing in that it indicates that late filings “will not be considered absent a showing of excusable neglect or a Board determination that consideration on the merits would be in the interest of justice.” Under current practice, when a notice of appeal or appeal brief is filed late, an applicant has the option of petitioning to revive that application under § 1.137 by showing that the delay in filing an appropriate paper or fee was unavoidable or unintentional. The comment states that it is not clear from the proposed § 41.4(b) whether the provisions of § 1.137 will be available for late filings of papers and fees after a notice of appeal is filed, or in what circumstances they will be available.

Answer:

Section 41.4(b) has been revised to reflect that a late filing that results in either an application becoming abandoned or a reexamination proceeding becoming terminated under §§ 1.550(d) or 1.957(b) or (c) will be excused if the application or reexamination proceeding is revived as set forth in § 1.137. A late filing that does not result in either an application becoming abandoned or a reexamination proceeding becoming terminated under §§ 1.550(d) or 1.957(b) or (c) will be excused upon a showing of excusable neglect or a Board determination that consideration on the merits would be in the interest of justice.

Comment 18:

One comment objects to the provision in § 41.5(b) of a disqualification proceeding before the Board as ill-defined and beyond the Board's competence.

Answer:

The disqualification proceeding already exists in contested cases (see now-removed § 1.613 (2003)) where it appears to have worked well. The objection may be based on a misapprehension that this provision governs suspension or exclusion from practice before the Office generally rather than the special case of a suspension or exclusion from a specific case before the Board. Disqualifications at the Board typically arise out of conflicts of interest and, consequently, are more of a feature of contested cases.

The advent of appeals in inter partes reexaminations makes this provision relevant to appeals, too. Moreover, a disqualification might be appropriate in an ex parte appeal, for instance, when a former Office employee appears as counsel in a case in which he or she acted while at the Office. Note that disqualification could be in addition to other appropriate sanctions under 37 CFR part 10.

Although the comment suggests unease with the level of due process the disqualification proceeding would provide, at least two checks exist. A disqualification would not become final until the Chief Administrative Patent Judge certified the result. Counsel could seek to moot any disqualification by requesting to withdraw before the result is certified. If the Chief Administrative Patent Judge certifies the disqualification, the case becomes ripe for judicial review under 35 U.S.C. 32.

Comment 19:

One comment opposes the requirement in § 41.5(c) that requires Board approval to withdraw as counsel in a Board proceeding.

Answer:

The rule should not create any practical difference for counsel since approval is required for any withdrawal. The approval should come from the part of the agency with jurisdiction over the application or patent at the time of the withdrawal.

Comment 20:

Two comments oppose § 41.7(a), which permits the Board to expunge unauthorized papers, because of the scope of the rule.

Answer:

The rule has been clarified to state that it only applies to papers filed as part of a proceeding before the Board (§ 41.1(a)) or while the Board has jurisdiction over the file and will not be used to prune applications arbitrarily.

Comment 21:

One comment suggests that expungement of papers under § 41.7(a) be limited to exceptional circumstances.

Answer:

Violation of a rule or Board order, the triggers for expungement, should be an exceptional circumstance in patent practice.

Comment 22:

One comment expresses concern that § 41.7(a) would prevent the entry of evidence and would result in an incomplete record. This, the comment suggests, would result in more judicial review being sought in district court rather than through direct appeal to the United States Court of Appeals for the Federal Circuit (Federal Circuit). The comment suggests that such filings are useful as a way to place papers in the record, knowing that they will not be considered by the Office, simply to get them in front of a court.

Answer:

Such filings are not proper. Two remedies exist for expungement of a paper. In some cases, it may be appropriate to seek entry of new evidence in a district court under 35 U.S.C. 145 or 146. In most cases, however, the remedy would be to challenge the expungement directly by petition showing either that the paper was properly filed or that it should be retained in the interest of justice.

Comment 23:

One comment recommends that a definition of “Board proceeding” be included in proposed § 41.2, to avoid possible inconsistencies

between the requirements of proposed § 41.7(b) and those of proposed § 41.37(c)(1)(ix).

Answer:

Section 41.7(b) has been changed to read “A party may not file a paper previously filed in the same Board proceeding, not even as an exhibit or appendix, without Board authorization or as provided by rule” so as to avoid an inconsistency with the requirement of § 41.37(c)(1)(ix) to provide an appendix containing copies of evidence previously submitted and entered by the examiner.

Comment 24:

One comment suggests that § 41.7(b) creates a burden by requiring a party to request entry of a duplicate paper that the Board may wish to have.

Answer:

Parties should assume that the Board does not want the duplicate paper in the absence of a specific request or as provided by rule as discussed above.

Comment 25:

Two comments suggest that § 41.8, which requires prompt reporting of changes in real party-in-interest or in related cases, is onerous as applied to appellants. In particular, they oppose the requirement to advise the Board of any change in the real party-in-interest or in related cases within 20 days of the change.

Answer:

Section 41.8 has been reformatted so that the last clause referring to judicial review is now its own subsection. Proposed §§ 41.8(a) and (b) are now §§ 41.8(a)(1) and (a)(2), respectively.

The Federal Circuit requires any change in the real party-in-interest to be reported within seven days. Federal Circuit Rule (Fed. Cir. R.) 47.4(c). Section 41.8(a)(1) provides nearly triple the time the court provides in recognition of the greater number of appeals to the Board than to the court, but the Board needs to know such information just as much as the court does.

The burden to report changes in related cases is not onerous since most such changes are entirely under the control of the affected party. Such changes would include the filing of a continuation application claiming benefit of an application on appeal or the filing of a reissue application for a patent that is before the Board in a reexamination appeal. The amount of due diligence involved should be small for any party with an effective docketing system.

The last clause of § 41.8(a)(2) is now § 41.8(b) to raise its profile, but has been limited to contested cases because it is in that context, particularly in the case of judicial review under 35 U.S.C. 146, where the problems arise. Lack of adequate notice of judicial review in contested cases can result in applications that should be suspended pending the outcome of the judicial review being held abandoned or being allowed and other administrative complications.

Comment 26:

One comment requests clarification of what constitutes a related case under § 41.8.

Answer:

The requirement is substantially the same in scope as the requirement in Fed. Cir. R. 47.5. Now-removed § 1.656(b)(2) (2003) also imposed a similar requirement. The Board needs to know of related cases for several reasons. First, awareness of related cases facilitates scheduling and panel assignment, which can increase efficiencies for both the Board and the party. Second, a decision in a related judicial or administrative case may affect the outcome in the case before the Board.

For instance, a definition of a claim term in a related case may limit or expand the scope for the same term in a case before the Board. See

Ballard Med. Prods.

v.

Allegiance Healthcare Corp.,

268 F.3d 1352, 1362, 60 USPQ2d 1482, 1501 (Fed. Cir. 2001) (claim limitations need not be the same);

Augustine Med., Inc.

v.

Gaymar Indus., Inc.,

181 F.3d 1291, 1300, 50 USPQ2d 1900, 1907 (Fed. Cir. 2000) (holding that the prosecution history of a parent application may limit the scope of a later application using the same term);

Elkay Mfg. Co.

v.

Ebco Mfg. Co.,

192 F.3d 973, 980, 52 USPQ2d 1007, 1107, 1114 (Fed. Cir. 1999) (prosecution history can apply to claim in different subsequent patent). Claims in the related case might be estopped by an adverse judgment in the interference (§ 41.127(a)(1)). A party that is aware of a related case, but nevertheless fails to disclose the case may fall short of its duty of candor to the Office. If the facts of the other case are materially different, then the related case might have no material effect on the case before the Board.

Georgia-Pacific Corp.

v.

United States Gypsum Co.,

195 F.3d 1322, 1333, 52 USPQ2d 1590, 1599 (Fed. Cir. 1999) (inconsistent positions did not affect outcome).

Comment 27:

Five comments oppose § 41.11 (which was proposed as § 41.105), the bar on ex parte communications, as too restrictive.

Answer:

Proposed § 41.105 has been moved to § 41.11 in subpart A and has been revised to refer to inter partes reexaminations under subpart C and contested cases under subpart D because the concern about ex parte communications in adversarial cases is common to both types of proceedings.

The bar on ex parte communications in § 41.11 is stricter than the bar on ex parte interviews in § 1.955. Section 1.955 allows ex parte communications with an official acting on the merits as long as the merits are not discussed during the ex parte communication. Section 41.11 bars all ex parte communications with all administrative patent judges and with any Board employee acting on the merits. Non-merits ex parte communications may take place with other Board employees who are not acting on the merits of the case.

Section 41.11 is intended to be restrictive because experience has shown that ex parte communications are easily abused and easily shift from permissible topics to impermissible topics. The rule prohibits any ex parte contact about a pending case with an administrative patent judge because the administrative patent judge might be assigned to a panel in the proceeding.

Comment 28:

Three comments urge that ex parte communications with Board staff can be helpful to practitioners without being injurious to the integrity of the proceeding. One comment recommends the establishment of a help desk. One of the comments suggested that the phrase “Board employee conducting the proceeding” be clarified.

Answer:

The prohibition regarding other Board employees in § 41.11 has been clarified to say “assigned to the proceeding” to give parties a measure of confidence in contacting Board officials, other than administrative patent judges, that have not been expressly assigned to the case. As a general rule, support staff are not assigned to a proceeding. Other Board employees, like administrators, might be assigned an interlocutory role in a proceeding, but the party would have notice of the assignment. The Office agrees that informal contacts with support staff can be of great benefit to the parties. The rule is not intended to prohibit, and does not prohibit, such contacts.

Comment 29:

Three comments note that the supplementary information in the notice of proposed rule making provides examples that appear to be more liberal than the rule. One of the comments recommended moving the examples from the supplementary information into the rule.

Answer:

The examples are not exceptions to the rule. For example, when a party declines to participate in a hearing or conference, there is not an exception to the rule. Instead, it is a waiver by the non-participating party of the protections of the rule. A party cannot be permitted a heckler's veto on

the opposing party's ability to communicate with the Board. Even so, the Board will treat such one-sided communications with caution. For instance, a transcript of the communication may be required.

In another example, informing the Board in one proceeding of a related proceeding is not an ex parte communication about the contested case as long as the information does not extend beyond identifying information about the other proceeding. Such information is required under § 41.8.

Finally, citing a pending case in support of a more general proposition, again is not an ex parte communication about the contested case as long as the focus is on the general proposition and not on the merits of the cited case. For instance, citing a published opinion from a pending case has never been considered an ex parte communication. Similarly, a complaint to the Chief Administrative Patent Judge about delays in interferences generally, with a list of examples, is appropriate provided the complaint stays focused on the general problem of delays rather than issues in a particular cited proceeding. Any discussion of a particular aspect of a particular pending case must be treated formally in accordance with § 41.11.

Comment 30:

One comment suggests that the rules were inconsistent in requiring parallel citation to the West Reporter System (West) and to the United States Patents Quarterly (USPQ) in contested cases, § 41.106(b)(4)(ii)(B), but not in appeals.

Answer:

Proposed § 41.106(b)(4) has been relocated to new § 41.12 in subpart A to eliminate the inconsistency.

Comment 31:

Three comments note that the Federal Circuit has changed its rules to eliminate the requirement for parallel citations to a West reporter and the USPQ. Two of the comments object that parallel citation imposes additional costs on parties. Two of the comments express a preference for not using the USPQ. One of the comments notes that Westlaw, the on-line West service provides much more complete coverage of current Board decisions than does the USPQ. The comments do not address the use of any other reporter or database service.

Answer:

None of the comments explain why the court made this change or explain how it is applicable to Board practice. Of the printed reporters, USPQ provides much better coverage of patent decisions relevant to Board practice than West does. The Board cites to the West system as a courtesy to its reviewing courts, but principally uses the USPQ because of its greater relevance to Board practice.

If the Board were to eliminate the requirement for parallel citation, it would make more sense to eliminate the requirement to cite to the West system reporters. If citation to the USPQ were eliminated, the alternative would not be citation to West's printed reporters but to one of the on-line services, which would also raise issues of access and expense.

No reporter system is authoritative.

Hallco Mfg. Co.

v.

Foster,

256 F.3d 1290, 1297 n.4, 59 USPQ2d 1346, 1350 n.4 (Fed. Cir. 2001) (relating an instance where the West reporter misprinted a paragraph, while the USPQ printed the decision correctly, and noting that only the court's print of the opinion is authoritative). Parallel citation thus also serves as a useful check on privately compiled reporters.

Comment 32:

One comment notes that USPQ no longer provides very good coverage of Office decisions while many Board decisions are available through on-line services.

Answer:

Most of the large volume of Board decisions that are available on-line are not properly citable as precedent. Consequently, the practical differences in coverage between Westlaw and the USPQ are less than the comment purports.

There is no ideal solution for which reporter system or systems should be required. This is a problem that confronts many adjudicative bodies. The Board has imposed a requirement on itself to cite both West reporters and the USPQ: the former to be responsive to the courts, the latter to address its own needs. The citation format used by parties before the Board must be consistent with Board practice.

Comment 33:

One comment interprets proposed § 41.106(b)(4)(ii), now § 41.12(b), to bar citation to the Manual of Patent Examining Procedure (MPEP). The comment suggests that instead great weight should be given to the MPEP.

Answer:

The rule does not bar citation to the MPEP. Rather the rule discourages the citation of authority that is not binding. Primary authority should be cited for legal issues in papers directed to the Board. Unless primary authority is unavailable, primary authority is always preferable to, and more persuasive than, any secondary authority.

Comment 34:

One comment requested that the fee information in § 41.20 be restored to § 1.17, particularly since some of the § 41.20 fees must be paid before jurisdiction passes to the Board.

Answer:

The fees were moved to part 41 to locate them with the rules that require the fees. Note that trademark-specific fees are located with the trademark rules in part 2. Cross-references to § 41.20 in the Board rules that require the fees should prevent confusion about where the fees are located. A cross-reference has been added at § 1.17(b) to offer further guidance.

Part 41, Subpart B—Ex Parte Appeals

Comment 35:

One comment suggests that since appeals are a fairly common procedure, a notice of the changes to the appeal procedures should be mailed to each practitioner warning him or her of these changes.

Answer:

The comment will not be adopted. A mailing of a notice of the changes to the appeal procedures to each practitioner is not required since it is each practitioner's responsibility under 37 CFR Part 10 to stay up-to-date on patent procedures. Nevertheless, the Board will attempt to mail a notice of the final rule making to every appellant with the docketing notice (see the Notice of revised appeal docketing procedures published in the July 2, 2002 OG) for several months.

Comment 36:

One comment suggests that §§ 41.31(a)(1), (a)(2) and (a)(3) be amended to provide for appeal at any time after being twice or finally rejected, as appropriate, during pendency of the proceeding where no time period under § 1.134 is running. The comment states that the suggested change would ensure that § 41.31 would not be interpreted more restrictively than 35 U.S.C. 134, which sets forth no condition regarding when an appeal can be filed, apart from the requirements for claims being twice rejected (as in 35 U.S.C. 134(a)) or finally rejected (as in 35 U.S.C.134(b) and (c)). The comment also states that this amendment would prevent any potential inconsistency of the rules with the Board's precedential opinion, Ex

parte Lemoine

, 46 USPQ2d 1420, 1423 (BPAI 1994).

Answer:

The suggestion will not be adopted. Sections 41.31(a)(1), (a)(2) and (a)(3) were proposed to generally incorporate the requirements of former § 1.191(a) (2003) and to subdivide § 1.191(a) into three parts to improve readability. Both former § 1.191(a) (2003) and §§ 41.31(a)(1), (a)(2) and (a)(3) are more restrictive than 35 U.S.C. 134 in that an appeal must be filed within the time period provided under § 1.134 for response to either a final rejection or a non-final rejection which rejects the claims for a second time, as appropriate. For example, an applicant for a patent whose claims have been twice rejected but not finally rejected, may appeal from the decision of the

examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134. However, if such an applicant files an amendment within the time period provided under § 1.134, the applicant may not file an appeal outside the time period provided under § 1.134. In such a situation, the applicant must wait for a new rejection by the examiner before an appeal can be filed.

Comment 37:

One comment suggests that paragraphs (a)(1) and (a)(2) of § 41.31 be amended to remove the alternative clause (

i.e.

, “or finally”) since this would make it clear that once the examiner rejects a claim for the second time (in the same application or in a continuing application), the decision as to whether to appeal the rejection or continue proceedings before the examiner will rest with the applicant. The comment notes that since a final rejection will never be made in a first rejection of a claim, the alternative language is not necessary and that the change is being suggested to reduce the periodic disputes between examiners and applicants as to whether an application under a non-final rejection was ripe for appeal.

Answer:

The suggestion has been adopted. The Board's precedential opinion in

Ex parte Lemoine

, 46 USPQ2d at 1423, interpreted the language of 35 U.S.C. 134 that gives applicants the statutory right to an administrative appeal to mean that “so long as the applicant has twice been denied a patent, an appeal may be filed.” Thus, the alternative language of the proposed rule (

i.e.

, “or finally (§ 1.113 of this title)” is not necessary.

Comment 38:

One comment suggests that § 41.31(a)(3) be deleted. The comment states that this would eliminate the requirement that the patent owner wait until an examiner makes a second or subsequent rejection final, before being permitted to file an appeal in a reexamination proceeding filed on or after November 29, 1999 and thus would restore to patentee the decision as to when to file an appeal in a reexamination proceeding that is subject to repeated rejections. The comment also notes that the deletion of § 41.31(a)(3) would simplify the regulations as there would no longer be a need to determine filing dates of reexamination proceedings under this section.

Answer:

The suggestion will not be adopted. 35 U.S.C. 134(b) provides that “[a] patent owner in any reexamination proceeding may appeal from the final rejection of any claim by the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.” According to the effective date provisions of Public Law 106-113, the provisions of 35 U.S.C. 134(b) apply to any reexamination proceeding filed on or after November 29, 1999. Accordingly, by law, the patent owner must wait until an examiner makes a second or subsequent rejection final, before being permitted to file an appeal in a reexamination proceeding and therefore both §§ 41.31(a)(2) and (a)(3) are necessary to inform a patent owner when an appeal in a reexamination proceeding may be taken.

Comment 39:

One comment suggests that proposed § 41.33 be amended to refer to the “date of filing an Appeal” as opposed to referring to “after the date the proceeding has been appealed.” This change would ensure consistency with Office language used in other regulations relative to “filing dates.” The original language is confusing as it is not clear whether the date the “proceeding has been appealed” is the date typed by the Applicant on the Notice of Appeal, the date of the Certificate of Mailing affixed on a Notice of Appeal, or the date of filing accorded by the Office to the Notice of Appeal. Similarly, it is not clear what the date is that an amendment was “submitted.” Do certificates of mailing or certificates of facsimile transmission, impact on the date of “submission” or the date that “the proceeding has been appealed”? A well accepted term like “date of filing” used consistently throughout the paragraph would avoid any possible confusion.

Answer:

The suggestions have been adopted in § 41.33 and § 41.63.

Comment 40:

One comment suggests that the word “may” be replaced with the word “will” in § 41.33. The comment states that this suggestion is made to avoid any possible confusion or abuse of the regulations by examiners and that there should be no flexibility given to examiners in entering minor cosmetic amendments as envisioned in this portion of the paragraph.

Answer:

The suggestion will not be adopted. The use of the word “may” in § 41.33 rather then the word “will” is appropriate since it (1) is consistent with the current use of the word “may” in § 1.116; and (2) connotes that entry of amendments and evidence filed after appeal is not a matter of right but that such amendments and evidence filed after appeal may be admitted under certain circumstances set forth in the rule.

Comment 41:

One comment notes that § 41.33(b) should also include a reference to § 41.50(c) as to permitted amendments.

Answer:

The suggestion has been adopted.

Comment 42:

One comment suggests incorporating § 41.33(c) into § 41.33(b), and having § 41.33(b) refer both to “amendments” and “affidavits or other evidence” submitted after filing an appeal. The comment states that this change would avoid separate discussion of amendments, affidavits and other evidence.

Answer:

The suggestion will not be adopted since the prohibition against these filings is no longer the same. See Comment 41.

Comment 43:

Five comments assert that proposed § 41.33 would unduly restrict the types of amendments and evidence that can be made after a Notice of Appeal is filed. One suggested solution was to remove paragraphs (b) and (c) of § 41.33 and instead rely upon (or substitute) the provisions of § 1.116. A second suggested solution was to amend paragraphs (b) and (c) of § 41.33 to take effect once the appeal brief is filed. A third suggested solution was that amendments making claim(s) allowable be permitted thus resolving issues that would otherwise be appealed.

Answer:

The comments have been adopted to the following extent. Amendments submitted on or after the date the proceeding has been appealed may be admitted as provided in § 1.116. Thus, amendments after final but prior to appeal and amendments filed after appeal but prior to the date the brief is filed will be treated under the same standard (i.e, § 1.116). Amendments filed on or after the date of filing a brief may be admitted only to cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or to rewrite dependent claims into independent form. All other amendments submitted after the date the proceeding has been appealed will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1) and 41.50(c). Affidavits or other evidence submitted after the date the proceeding has been appealed and prior to the date a brief is filed overcoming all rejections under appeal may be admitted if the examiner determines that the affidavits or other evidence overcomes all rejections under appeal and a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. All other affidavits or other evidence submitted on or after the date the proceeding has been appealed will not be admitted except as permitted

by §§ 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).

Comment 44:

Two comments state that the proposed rules are unclear as to subsequent appeal procedures after prosecution is reopened subsequent to the filing of a first Notice of Appeal and Appeal Brief. Specifically, the comments question if prosecution is reopened under either § 41.39(b)(1), § 41.50(a)(2)(i) or § 41.50(b)(1), and a subsequent appeal is taken, would applicant be required to again pay the Notice of Appeal and Appeal Brief fees. The comments believe that this extra cost is unfair and burdensome to applicants because the reopening of prosecution would be the result of action by the examiner or the Board, not action by applicants. Accordingly, the comments suggest that provision should be made in the proposed rules that applicants need not twice pay the Notice of Appeal and Appeal Brief Fees in an application where those fees have already been paid but prosecution was then reopened.

Answer:

The comment will not be adopted. The rule making did not propose to change the current procedures in this area. Currently, once a Notice of Appeal and Appeal Brief fee has been paid in a proceeding, a second Notice of Appeal and Appeal Brief fee will not be required except if a final Board decision has been made on the first appeal. For example, in an application for patent, a Notice of Appeal and Appeal Brief fees have been paid and the examiner reopens prosecution in a new Office action, new fees are not required for an applicant to appeal from that new Office action. Another example is in an application for patent, a Notice of Appeal and Appeal Brief fees have been paid and the Board in its decision makes a new ground of rejection and the applicant elects to reopen prosecution before the examiner, then new fees are required for an applicant to appeal from any new Office action by the examiner. The same procedures apply under the rules as implemented in this rule making.

Comment 45:

One comment suggests that it ought to be made clear that the words of § 41.33, “rewrite dependent claims into independent form,” includes both of the following two situations: (1) In conjunction with the rewriting of a dependent claim in independent form, amendment(s) would be allowed changing the dependency of claims which had depended from the independent claim being canceled, and (2) rather than rewriting a dependent claim in independent form, an independent claim can be amended to incorporate therein the subject matter of a dependent claim that has been identified by the examiner as being allowable.

Answer:

The suggestion is adopted to the extent that the Manual of Patent Examining Procedure will provide that rewriting dependent claims into independent form as permitted under § 41.33 includes the following situations: (1) Rewriting a dependent claim in independent form by adding thereto the limitations of the parent claim(s); and (2) rewriting an independent claim to incorporate therein all the subject matter of a dependent claim, canceling the dependent claim and in conjunction therewith changing the dependency of claims which had depended from the dependent claim being canceled to the amended independent claim that incorporate therein all the subject matter of the now canceled dependent claim.

Comment 46:

One comment suggests that § 41.37(a)(1) be amended, as suggested for § 41.33, to reference the “date of filing the notice of appeal,” rather than the uncertainty that might be introduced by the phrase “the date of the notice of appeal.”

Answer:

The suggestion has been adopted.

Comment 47:

One comment inquires if the “date of the notice of appeal” referred to in § 41.37(a) is the date the notice of appeal is signed, is filed, or is received by the Office.

Answer:

As under current practice, the date of filing the notice of appeal is either (1) the date of deposit with the United States Postal Service if the provisions of 37 CFR § 1.10 are followed; or (2) the date of receipt by the Office.

Comment 48:

One comment suggests that the clause “or within the time allowed for reply to the action from which the appeal was taken, if such time is later” be added at the end of paragraph 41.37(a)(1). The comment notes that this language currently appears in former § 1.192(a) (2003), and this additional time is a valuable option to applicants who file a notice of appeal with no intention of filing an appeal brief, but are filing the appeal simply to buy some additional time to permit the examiner to rule on an amendment filed under § 1.116. The comment states that any docketing benefits gained by the proposed change in this paragraph, as discussed by the proposed rule drafters, is far outweighed by the disadvantage to both applicants and the Office in having applicants file a brief simply as a strategy to maintain pendency, while the examiner renders a decision on an amendment filed under § 1.116.

Answer:

The suggestion will not be adopted. The suggestion is based on the belief that the two-month period for filing an appeal brief that runs from the date of filing of the notice of appeal would expire before applicants have received a decision from the examiner on an amendment filed under § 1.116 (

i.e.

, an amendment filed after a final rejection but before or with the filing of a notice of appeal). It is expected that such a situation would be rare. In that rare situation, applicants can obtain an extension of time as provided in § 41.37(e). In addition, applicants can delay filing the notice of appeal until they have received a decision from the examiner on the amendment filed under § 1.116 especially if the amendment filed under § 1.116 is filed within two months from the date of mailing of any final rejection setting a three-month shortened statutory period for reply since it is Office policy (see MPEP 714.13) that if the advisory action is not mailed until after the end of the three-month shortened statutory period, the period for reply to the final rejection for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period for reply to the final rejection extend beyond six months from the date of the final rejection.

Comment 49:

One comment inquires how the real party in interest should be identified in the appeal brief when the application involved in the appeal is assigned to a subsidiary corporation which corporation is owned by either a parent corporation or a joint venture between corporations.

Answer:

When an application is assigned to a subsidiary corporation, the real party in interest is both the assignee and either the parent corporation or corporations, in the case of joint ventures. One example of a statement identifying the real party in interest is: The real party in interest is XXXX corporation, the assignee of record, which is a subsidiary of a joint venture between YYYY corporation and ZZZZ corporation.

Comment 50:

One comment suggests that a requirement to identify the real party in interest should be made in contested cases, perhaps as part of a re-named § 41.108.

Answer:

Section 41.8 entitled “Mandatory notices” already requires that at the initiation of a contested case (§ 41.101), and within 20 days of any change during the proceeding, a party must identify its real party-in-interest.

Comment 51:

One comment suggests that the requirement in § 41.37(c)(1)(ii)

to identify related proceedings is ambiguous with respect to its scope. The comment believes that read broadly, it would require an appellant to identify every precedential decision that might bear on the issues on appeal and could expose an appellant to unreasonable allegations of inequitable conduct.

Answer:

The requirement in § 41.37(c)(1)(ii) to identify related proceedings does not require an appellant to identify prior proceedings involving unrelated parties including precedential decisions that might bear on the issues on appeal. The requirement in § 41.37(c)(1)(ii) to identify related proceedings does require an appellant to identify every related proceeding (

e.g.

, commonly owned applications having common subject matter, claim to a common priority application).

Comment 52:

One comment suggests that § 41.37(c)(1)(iii) be deleted in its entirety, as it introduces an unnecessary additional burden on appellants with no discernible benefit to the Office. The comment states that since only rejected claims are subject to an appeal, there seems to be no benefit in identifying the status of claims that are not subject to appeal and that asking appellants to make this type of listing for claims that are not rejected and thus are not subject to appeal, would introduce a risk of inadvertent error by appellants and in any event, would likely be ignored by the examiner and the Board.

Answer:

The suggestion will not be adopted. Section 41.37(c)(1)(iii) generally incorporates only the requirements of former § 1.192(c)(3) (2003) that a statement of the status of all the claims be presented and an identification of those claims that are being appealed. As such it does not introduce an unnecessary additional burden on appellants. Moreover, the benefit to the Office of this requirement is that the Board is directly informed as to the status of all the claims in the proceeding (

e.g.

, rejected, allowed or confirmed, withdrawn, objected to, canceled) and which of those claims that are being appealed. For example, should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, the Board under the authority of § 41.50(b) may make a new ground of rejection.

Comment 53:

One comment expresses concern in regard to the requirement of proposed § 41.37(c)(1)(v) that a concise explanation of the subject matter defined in each of the independent claims involved in the appeal be provided. Specifically the comment asks what is a concise statement, what is required, does the explanation have to show how each claim is different, does the requirement apply to all drawings and embodiments, or only a representative drawing? The comment states that the Office deleted a similar requirement in 1992 relating to documents submitted in an IDS because “concise explanation” descriptions rarely communicated any useful information, improved the quality of patent examination but provided an opportunity to attack the patent on the grounds of inequitable conduct. The comment suggests that the requirement be clarified or dropped.

Answer:

A patentability determination must be performed on a claim-by-claim basis. The first step in a patentability determination is to construe a given claim and determine its metes and bounds. “Analysis begins with a key legal question—what is the invention

claimed

?” since “[c]laim interpretation * * * will normally control the remainder of the decisional process.”

Panduit Corp.

v.

Dennison Manufacturing Co.,

810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir.),

cert. denied,

481 U.S. 1052 (1987). The existing provisions of 37 CFR § 1.192(c)(5) (2003) are directed to providing a summary of the “invention,” not the claims.

See In re Hiniker Co.,

47 USPQ2d 1523 (Fed. Cir. 1998): “The invention disclosed in Hiniker's written description may be outstanding in its field, but the name of the game is the claim.

See

Giles Sutherland Rich,

Extent of Protection and Interpretation of Claims—American Perspectives,

21 Int'l Rev. Indus. Prop.” By statute, the Board reviews “adverse decisions of examiners upon applications for patents.” 35 U.S.C. 6(b). For the Board to reach an informed decision on the merits of a rejection presented for review, the record should reflect the respective positions of the examiner and appellant as to the scope of the claims. It is the experience of the Board that the prosecution and examination in a significant number of appeals forwarded for decision on appeal has taken place in the context of “applicant's invention,” not on a claim-by-claim basis. Thus, the Board is oftentimes confronted with a record in which no significant claim construction has occurred. Those records are not susceptible to meaningful review and result in an inordinate number of remands.

The determination of how “concise” the explanation must be will need to be determined on a case-by-case basis. If the prosecution and examination has been based upon a discussion of the patentability of individual claims instead of the “invention,” it is expected the explanation will be more “concise” than if the prosecution and examination has been conducted on the basis of the “invention.” As to what is required, the proposed rule states that reference to the specification by page and line number, and to the drawing, if any, by reference characters is required. Appellant may include any other information of record which will aid the Board in considering the subject matter of each independent claim. The explanation does not have to show how each claim is different. The purpose of the requirement is to aid the Board in considering the subject matter of the independent claims so that an informed review of the examiner's adverse determination of patentability can be made. Whether the explanation is limited to a single drawing or embodiment or is extended to all drawings and embodiments is a decision appellant will need to make.

The proposed concise explanation of the subject matter defined in each independent claim is different from a concise explanation of a reference. It is the applicant who is responsible for drafting claims and choosing the language and terms used to define the claimed invention. 35 U.S.C. 112(2) (“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”) As the originator of the claim language, applicant should know what is intended by the various words and phrases used to define the claimed subject matter and thus, providing a concise explanation of the subject matter of each independent claim as proposed should not be an undue burden. This is in contrast to explaining the possible relevance of a document that may not have originated from applicant. Another difference is that the number of independent claims presented for review in an appeal is a matter directly within appellant's control, while appellant does not have control over the number of documents that should be cited to the Office.

The subject matter of each independent claim needs to be concisely explained for a number of reasons. For example, if the Board decides that a rejection is to be reversed for a given independent claim, the remaining independent claims must be reviewed to determine if the reasons for reversing the rejection of the first independent claim apply to the remaining independent claims. Furthermore, if appellant chooses to argue a group of claims which includes more than one independent claim, the

Board will need to review, at the least, each independent claim to determine which claim will be selected as representative of the group. Apart from reviewing the examiner's adverse decision on patentability, the Board may also make new grounds of rejection pursuant to former § 1.196(b) (2003) or make an explicit statement that a claim would be allowable if amended under former § 1.196(c) (2003). The concise explanation of the subject matter of each independent claim will aid the Board in making these determinations.

Comment 54:

Several comments address the provision of proposed § 41.37(c)(1)(v) that every means plus function and step plus function as permitted by 35 U.S.C. 112(6) used in the claims be identified and the structure, material, or acts described in the specification as corresponding to each claimed function be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters. A number of comments express concern that this requirement may result in a limiting claim construction or create prosecution history estoppel. The comments also take the position that the requirement would be unduly burdensome in that appellant would need to provide this analysis whether a claim limitation was in “issue” in the appeal. Another comment indicates that the proposed rule is not clear as to whether it applies to “all drawings and embodiments, or only a representative drawing.” Another comment expresses concern that the proposed rule may be subject to abuse, as where an examiner takes the position that claims that are not couched in means-plus-function terminology of 35 U.S.C. 112(6) are nevertheless subject to the provisions of that section and this proposed rule. Suggested changes include using the rule as a procedural tool rather than a substantive requirement or to require only the identification of one or more examples of the support for each independent or separately argued claim, rather than all examples of support for every claim. Another suggested change is that any issues in regard to the Board's need for such an identification in order to reach a reasoned decision be addressed by way of an order under the existing provisions of § 1.196(d) (2003).

Answer:

The suggestion is adopted to the extent that every means plus function and step plus function as permitted by 35 U.S.C. 112(6) must be identified and the structure, material, or acts described in the specification as corresponding to each claimed function must be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters only for each independent claim involved in the appeal and for each dependent claim argued separately under the provisions of § 41.37(c)(1)(vii). Whether a statement made by an applicant during procurement of the patent from the Office results in an estoppel is a matter that is ultimately decided during proceedings outside the Office. The decision to grant the patent by the Office must be based upon a firm and clear understanding of the scope of the individual claims. If the prosecution and examination of claims involving issues under 35 U.S.C. 112(6) has been based upon individual claims and in accordance with the procedures set forth in MPEP 2181 for claim language involving issues under this section of the statute, it is anticipated that this aspect of the rule will be based upon the statements and determinations already of record and thus does not constitute a significant burden. See MPEP 2181 (explaining that the Office must apply 35 U.S.C. 112(6) in appropriate cases, and give claims their broadest reasonable interpretation, in light of and consistent with the written description of the invention in the application, citing

In re Donaldson

, 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1850 (Fed. Cir.1994)). However, if the prosecution and examination has been based upon the “invention” and not individual claims, it may be that appellant will be making statements regarding claim scope for the first time during the appeal proceeding. To the extent this is seen as a burden or creating a possible estoppel, it may be that this is an indication that the case, while eligible for an appeal under the statute and the rules, may not be ready for an appeal.

The comments expressing concern that the proposed rule extends to 35 U.S.C. 112(6) limitations which are not in “issue” are presumably based upon the perspective that appellant and the examiner have agreed upon the correct construction of such characterized limitations during the prosecution and examination of the application up to the appeal stage, not that such characterized limitations have been ignored or not commented upon during the pre-appeal proceedings. If the former has occurred, it should not be an undue burden to provide the needed analysis. If the latter applies, appellant will need to directly address each limitation so that the record is clear as to where the underlying structure, steps or materials are described in the written description of the application so that the Board can understand the subject matter of the individual claims presented for review. The suggestion that this provision apply only to the independent claims or claims that are separately argued is adopted.

Issues regarding whether the language chosen by applicant to define a claim limitation falls within 35 U.S.C. 112(6) are discussed in MPEP 2181. Whether specific claim language invokes the provisions of 35 U.S.C. 112(6) is a merits issue to the extent it involves the determination of claim scope. If an applicant believes that an examiner has not followed proper procedure, relief may be had by way of a petition under § 1.181.

The proposal to make this requirement a procedural tool instead of a substantive requirement is not adopted. Claim construction during any stage of a patentability determination is a substantive matter, not a procedural tool, as it controls the substantive application of the law and facts to the claim language under review.

Comment 55:

A comment was made in regard to proposed § 41.37(c)(1)(vii) that examiners will sometimes only reject the independent claims or make a “jumbled” rejection where it is not clear what arguments apply to which claims. Under these circumstances the comment believes that it is a burden to require appellant to provide separate argument for each and every dependent claim. The comment also states that “it [the rule or the rejection?] pushes Applicants into the position of having to make potentially prejudicial statements regarding claims, where the Examiner has not initially met the burden of providing a prima facie case of obviousness. Where the grounds of rejection are of the nature that the Examiner has failed to indicate what grounds of rejection apply to a group of claims, Applicants should simply be able to say this, without thereby risking that the group of claims stands or falls together.” A second comment expresses concern that failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately may impact the ultimate presumption of each claim in an issued patent under 35 U.S.C. 282, noting that the current rule does not contain any waiver provision.

Answer:

Patentability must be decided on a claim-by-claim basis. Merits decisions of the Board in ex parte appeals must determine the patentability of individual claims, not whether an “invention” is patentable or a group of claims is patentable. Thus, the arguments in the Appeal Brief are

preferably directed to individual claims. If appellant chooses to argue claims as a group as permitted, the Board will pick a single claim to decide the appeal to the group of claims as to that ground of rejection. If the prosecution and examination of a case has proceeded to the point of an appeal without applicant and the examiner discussing the merits of individual claims, that is an indication that the case is not ready for an appeal. If applicant believes that a rejection set forth in an Office action is “jumbled” or in any other manner does not clearly communicate the facts and reasons why the individual claims subject to the rejection are unpatentable, relief may be available by way of a petition under § 1.181.

The waiver provision of the proposed rule reflects the view expressed in In re McDaniel 63 USPQ2d 1462, 1468 (Fed. Cir. 2002) (Mayer, C.J. dissenting-in-part) that “in stating that claims 53-64 stand or fall together, [McDaniel] has waived any argument that claims 55-57 are patentable for reasons independent of claim 53.”

Comment 56:

One comment notes that each appeal is unique and that there “is no good reason for making detailed requirements as to the form of presentation of explanations and arguments in an appeal brief” as proposed in § 41.37(c)(1)(vii). The comment observes that the “Office properly assumes that an examiner is capable of responding to any appeal brief under either the existing rule or the proposed rule each of which simply requires a written statement in answer to appellant's brief including such explanation of the invention claimed and of the references and grounds of rejection as may be necessary. The comment asks the questions “Should not the same simple requirements be in effect as to the appeal brief? What's sauce for the goose should be sauce for the gander?”

Answer:

The structure provided for by the requirements of § 41.37 ensures that Appeal Briefs will provide the information the Board needs to render an informed decision on the issues presented for review. While each appeal is unique in regard to the issues and arguments presented, there is certain information common to each appeal which is amenable to being provided by way of a prescribed format. The view expressed in the comment that examiners are under “simpler requirements in preparing an Examiner's Answer than appellant is in preparing the Appeal Brief” is misplaced. Detailed guidance to examiners as to procedural requirements in performing their duties and preparing Office actions is typically contained in the MPEP, not the rules. The procedural requirements examiners must follow in preparing an Examiner's Answer are found in MPEP 1208.

Comment 57:

One comment suggests that § 41.37(c)(1)(vii) be amended to add the word “separate” prior to “patentability” in the last sentence. The comment states that this would clarify that pointing out what a claim recites will not be considered an argument for “separate” patentability of a claim, since such an argument could in fact establish patentability of that claim without establishing “separate” patentability of the claim.

Answer:

The suggestion to add the word “separate” prior to “patentability” in the last sentence has been adopted in § 41.37(c)(1)(vii) and § 41.67(c)(1)(vii).

Comment 58:

One comment inquires if the requirement in § 41.37(c)(1)(ix) for an evidence appendix containing copies of any evidence submitted to the examiner and relied upon by the appellant in the appeal was inconsistent with the provision in § 41.7(b) that precludes a party from filing a paper previously filed in the same Board proceeding without Board authorization.

Answer:

Section 41.7(b) has been amended so that the requirement in § 41.37(c)(1)(ix) for an evidence appendix containing copies of any evidence submitted to the examiner and relied upon by the appellant in the appeal is consistent with the provisions of § 41.7(b).

Comment 59:

One comment suggests that § 41.37(c)(1)(ix) be amended to require identification of “when the evidence was submitted into the record by Applicants or where in the record that evidence was entered in the record by the Examiner.” The comment states that this suggestion was made since examiners will frequently not make a positive statement indicating approval of entry into the record of evidence presented by applicants. The comment states that absent specific indication by the examiner that any evidence submitted was refused entry, the evidence is presumed to have been entered as of the submission date. Thus, the suggested change would remove any ambiguity regarding how to comply with this requirement should the examiner not make an affirmative entry of the evidence.

Answer:

The suggestion is not adopted. Evidence submitted after final rejection is not presumed to have been entered and must be specifically admitted by the examiner as set forth in § 1.116 as amended by this rule making. Evidence submitted either before the first Office action or after a non-final rejection may be presumed to have been entered only when treated by an examiner in an Office action. Accordingly, the requirement of § 41.37(c)(1)(ix) of a statement setting forth where in the record the evidence was entered in the record by the examiner is met by an explicit statement entering the evidence or implicitly by an Office action weighing the evidence. Prior to filing an appeal brief, if applicants have submitted evidence to the examiner and it is not clear if this evidence has been entered or not entered, appellants should contact the examiner to inquire as to the status of that evidence. For example, if a § 1.132 declaration is timely filed in response to non-final Office action and the next action by the examiner is a final rejection which does not mention the § 1.132 declaration, applicants should contact the examiner to inquire as to the status of the § 1.132 declaration before filing an appeal since a brief arguing that evidence is not permitted by § 41.37(c)(1)(ix). The likely result of such an inquiry would be a new Office action treating the § 1.132 declaration or being informed that the Office has no record of the § 1.132 declaration.

Comment 60:

One comment requests clarification as to whether appendixes as required by §§ 41.37(c)(ix-x) are necessary at all when no evidence or related proceedings exist, or whether an appendix must be included with the indication “none.”

Answer:

Sections 41.37(c)(ix-x) require the appeal to contain an evidence appendix and a related proceedings appendix. If no evidence or related proceedings exist, an evidence appendix should be included with the indication “none” and a related proceedings appendix should be included with the indication “none.” In addition, a brief containing a Table of Contents indicating that no evidence appendix is part of the brief or that no related proceedings appendix is part of the brief would be acceptable under the Rule since it would clearly indicate that no evidence is being relied upon by the appellant in the appeal or that no related proceedings having decisions rendered by a court or the Board exist.

Comment 61:

One comment states that it would be useful to have an example of a format and content for an appeal brief that would comply with the new regulations published with the notice of final rule making and ultimately incorporated into the Manual of Patent Examining Procedure.

Answer:

An example of a format and content for an appeal brief is a brief

containing the following items, with each item starting on a separate page:

(1) Identification page setting forth the applicant's name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (

i.e.

, Appeal Brief)

(2) Table of Contents page(s)

(3) Real party in interest page(s)

(4) Related appeals and interferences page(s)

(5) Status of claims page(s)

(6) Status of amendments page(s)

(7) Summary of claimed subject matter page(s)

(8) Grounds of rejection to be reviewed on appeal page(s)

(9) Argument page(s)

(10) Claims appendix page(s)

(11) Evidence appendix page(s)

(12) Related proceedings appendix page(s).

Comment 62:

One comment suggests that the reference to §§ 41.31-41.37 in § 41.39(a)(1) be changed to refer to § 41.31 or § 41.37.

Answer:

The suggestion has been adopted. In addition, a similar change has been made to § 41.69(a)(1).

Comment 63:

One comment recommends that § 41.39(a)(1) be amended to clarify the manner in which the Director will notify the public as to the time within which the primary examiner will be required to furnish a written answer to the appeal brief.

Answer:

The comment will not be adopted. The Director currently notifies the public as to the time within which the primary examiner is expected to furnish a written answer to the appeal brief in the MPEP. Section 1208 of the MPEP provides that “[t]he examiner should furnish the appellant with a written statement in answer to the appellant's brief within 2 months after the receipt of the brief by the examiner.”

Comment 64:

Several comments suggest that any new ground of rejection be approved by the appeal conference in the Technology Center or by a Technology Center Director.

Answer:

The suggestion is adopted to the extent that the MPEP will provide that each examiner's answer containing a new ground of rejection must be approved by a Technology Center Director or designee. An appeal conference is mandatory in all cases in which an acceptable appeal brief has been filed. The participants of the appeal conference should include (1) the examiner charged with the preparation of the examiner's answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal. During the appeal conference, the participants of the appeal conference will decide whether a new ground of appeal is appropriate. On the examiner's answer, the word “conferees” should be included, followed by the typed or printed names of the other appeal conference participants. The appeal conference participants will place their initials next to their name to make clear that the appeal conference has been held. A Technology Center Director or designee must also initial/approve an examiner's answer containing a new ground of rejection.

Comment 65:

One comment suggests that allowing the examiner to institute a new ground of rejection in the examiner's answer is unfair to the appellant and the examiner should be required to reopen prosecution.

Answer:

If the examiner institutes a new ground of rejection in the examiner's answer, then the appellant has two months to either request that prosecution be reopened by filing a reply under § 1.111 or file a reply brief under § 41.41, which would act as a request that the appeal be maintained. Accordingly, although the examiner may in limited situations institute a new ground of rejection on appeal, the appellant has the right to request that prosecution be reopened. An appellant may not wish to have prosecution reopened if the new ground of rejection is similar to a prior rejection or if the evidence of record is sufficient to address the rejection. Moreover, reopening prosecution may prolong examination without any benefit to the appellant.

Comment 66:

One comment suggests that the new arguments are necessary in the appeal brief because the conferees and supervisors are more experienced than the examiner and if the case proceeds to the Board, the audience is an APJ, who has quite different qualifications than either the conferee or the supervisor. Moreover, the comment suggests that the rule is unnecessary because nothing in the rule prevents the examiner from responding to new arguments raised in the appeal brief.

Answer:

Former § 1.193(a)(2) (2003) prohibited an examiner's answer from including a new ground of rejection except under very limited circumstances. Accordingly, an examiner could not respond to a new argument raised in an appeal brief by adding a new ground of rejection in the examiner's answer. Because the former appeal rules only allowed the examiner to make a new ground of rejection by reopening prosecution, some examiners have allowed cases to go forward to the Board without addressing the new argument. Section 41.39(a)(2) will improve the quality of examination and possibly reduce pendency by providing for the inclusion of a new ground of rejection in an examiner's answer.

Comment 67:

One comment suggests that the Office should require the examiner making a new ground of rejection to acknowledge any mistakes the examiner may have made, explain the time and circumstances in which the new ground of rejection became known to the examiner, and explicitly point out to which arguments in the brief the new ground of rejection is responsive.

Answer:

The suggestion will not be adopted. The making of a new ground of rejection in an examiner's answer is in itself an acknowledgment of an error made in the rejection under appeal. Requiring the examiner to explain the time and circumstances in which the new ground of rejection became known to the examiner and to explicitly point out to which argument in the brief the new ground of rejection is responsive would delay prosecution and be of little or no value in determining the appropriateness of the new ground of rejection. As set forth above, a Technology Center Director or designee must initial/approve an examiner's answer containing a new ground of rejection. The Technology Center Director or designee will be aware that allowing a new ground of rejection in an examiner's answer is not open-ended but is envisioned to be rare rather than a routine occurrence. In addition, the Office plans to issue instructions that will be incorporated into the MPEP as to what circumstances would be appropriate for entry of a new ground of rejection in an examiner's answer rather than reopening of prosecution.

Comment 68:

One comment suggests that any new grounds of rejection be limited to new rejections made in response to an argument presented for the first time in an appeal brief.

Answer:

The comment is not adopted. As set forth above, the Office plans to issue instructions that will be incorporated into the MPEP as to what circumstances would be appropriate for entry of a new ground of rejection in an examiner's answer rather than reopening of prosecution. An examiner will be permitted to make a new ground of rejection in an examiner's answer in the situation where an examiner obviously failed to include a dependent claim in a rejection.

For example, in the final rejection, claims 1, 13, and 27 were rejected under 35 U.S.C. 102(b) as being anticipated by

U.S. Patent No. Y. Claim 27 depended upon claim 22 which depended upon claim 13 which depended upon claim 1. No rejection of claim 22 was set forth in the final rejection; however, the summary sheet of the final rejection indicated claims 1, 13, 22 and 27 as being rejected. In this situation, the examiner would be permitted to reject claim 22 under 35 U.S.C. 102(b) as being anticipated by U.S. Patent Y as a new ground of rejection in the examiner's answer. Accordingly, it would not be appropriate to limit new grounds of rejection to only a rejection made in response to an argument presented for the first time in an appeal brief.

Nevertheless, it will be the policy of the Office that, in general, if an appellant has previously submitted an argument during prosecution of the application and the examiner has ignored that argument, the examiner will not be permitted to add a new ground of rejection in the examiner's answer to respond to that argument but would be permitted to reopen prosecution, if appropriate.

Comment 69:

Two comments suggests that if the Office introduces a new ground of rejection, then the appellant should have a full range of prosecution options available and not be limited to amendments and/or evidence responding to the new ground of rejection.

Answer:

The options provided by § 41.39(b) to respond to a new ground of rejection in an examiner's answer give the appellant the choice of maintaining the appeal or reopening prosecution before the primary examiner. Moreover, if prosecution is reopened, it is reasonable to require that any amendment and/or evidence be responsive to the new ground of rejection. Any such responsive amendment and/or evidence may also be directed to claims not subject to the new ground of rejection. Furthermore, it is noted that the appellant can file a request for continued prosecution pursuant to § 1.114 and then the appellant would be able to submit an amendment and/or evidence directed only to claims unrelated to the new ground of rejection and have such considered by the examiner. Therefore, the appellant does have a full range of prosecution options.

Comment 70:

Several comments suggest that although there may be circumstances where the introduction of a new ground of rejection is desirable, the situations where such new ground is introduced should be infrequent.

Answer:

As noted in the proposed rule making, the change to permit new grounds of rejection in the examiner's answer is envisioned to be a rare, rather than routine, occurrence. The Office will provide guidance to the examiners in the MPEP as to what circumstances would be appropriate for entry of a new ground of rejection in an examiner's answer rather than reopening prosecution.

Comment 71:

One comment suggests that § 41.39(c) be changed to state that extensions under § 1.136(a) are not applicable only to the time period for filing a reply brief under § 41.39(b)(2), thereby permitting an appellant to obtain an appropriate extension of time under § 1.136(a) for filing of a response when re-opening prosecution under § 41.39(b)(1).

Answer:

The comment will not be adopted. It is believed to be beneficial to applicant to provide a single mechanism to extend the two-month time period to respond to an examiner's answer containing a new ground of rejection. Having one extension of time provision if the applicant elects to reopen prosecution before the primary examiner and another extension of time provision if the applicant elects to maintain the appeal by filing a reply brief can easily cause problems especially when the applicant has not yet decided which course of action to follow.

Comment 72:

One comment asks whether a reply brief filed in response to a new ground of rejection in accordance with § 41.39(b)(2) has to address only the new ground of rejection or all remaining grounds of rejection including those covered in the original appeal brief. The comment also states that it is not clear what is intended by the requirement that the appeal brief should follow the other requirements of a brief as set forth in § 41.37(c).

Answer:

A reply brief filed in response to a new ground of rejection in accordance with § 41.39(b)(2) only has to address the new ground of rejection. In such an instance, the reply brief should include the following items, with each item starting on a separate page, so as to follow the other requirements of a brief as set forth in § 41.37(c):

(1) Identification page setting forth the applicant's name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (

i.e.

, Reply Brief)

(2) Status of claims page(s)

(3) Grounds of rejection to be reviewed on appeal page(s)

(4) Argument page(s)

However, a reply brief filed in response to a new ground of rejection in accordance with § 41.39(b)(2) can be a substitute brief replacing the original brief by responding to both the new ground of rejection and all remaining grounds of rejection covered in the original appeal brief. In such an instance, the reply brief must meet all the requirements of a brief as set forth in § 41.37(c).

Comment 73:

One comment suggests that proposed § 41.41 be amended to allow a reply brief to include a new or non-admitted amendment, affidavit or other evidence upon a showing of good and sufficient reasons why they are necessary and were not earlier presented.

Answer:

The suggestion is not adopted. An appeal should be decided upon a fixed record, not an ever-changing one. While it is proposed to allow examiners to make a new ground of rejection once again, the appellant may request prosecution be reopened under proposed § 41.39(b)(1) to supplement the record. Absent a new ground of rejection in the Examiner's Answer, the record before the Board should remain fixed as of the date the appeal brief is filed so that a reasoned review of the record may efficiently take place.

Comment 74:

Two comments express concern that the option of permitting a supplemental examiner's answer to respond to a new issue raised in a reply brief could be construed as to permit a supplemental answer in almost any case and lead to a repeated exchange between the examiner and the appellant that would not promote a just, speedy, or inexpensive resolution of the proceeding. One comment notes that there may be rare circumstances when such a supplemental examiner's answer is appropriate. That comment suggests that the number of supplemental examiner's answers be limited to one unless personally approved by the Commissioner for Patents or one of his deputies.

Answer:

The suggestion is adopted to the extent that the MPEP will provide that each supplemental examiner's answer must be approved by a Technology Center Director or designee.

Comment 75:

One comment suggests that the comments made in the background discussion of proposed § 41.43(a)(1) be changed to remove any prohibition on the right by the appellant to file a reply brief. The comment states that appellants should have the right to file a reply brief in any situation. The comment notes that the Office had an earlier procedure that specified situations in which reply briefs could be

filed and that this resulted in disputes and petition filings, where the examiner and the appellant disagreed as to whether the filing of a reply brief was permissible. The comment observes that the now-superseded rules no longer prohibited the filing of a reply brief and suggests that this practice should continue and that appellants should always be permitted to have the last word.

Answer:

Former § 1.193(b) (2003) provided that an appellant may file a reply brief to an examiner's answer or a supplemental examiner's answer within two months from the date of such examiner's answer or supplemental examiner's answer. Section 41.41(a)(1) provides that an appellant may file a reply brief to an examiner's answer within two months from the date of the examiner's answer and § 41.43(b) provides that if a supplemental examiner's answer is furnished by the examiner the appellant may file another reply brief under § 41.41 to any supplemental examiner's answer within two months from the date of the supplemental examiner's answer. Thus, the rules continue to permit the appellant to always have the last word. That is, the appellant may always file a reply brief to an examiner's answer or a supplemental examiner's answer within two months from the date of such examiner's answer or supplemental examiner's answer. The background discussion of proposed § 41.43(a)(1) noted that an indication of a change in status of claims (

e.g.

, that certain rejections have been withdrawn as a result of a reply brief) is not a supplemental examiner's answer and therefore would not give the appellant the right to file a reply brief. This is not a change from current practice where an examiner is permitted to respond to a reply brief by indicating a change in status of claims (

e.g.

, that certain rejections have been withdrawn as a result of a reply brief) on form PTOL-90. This indication of a change of status is not a supplemental examiner's answer and therefore the appellant has no right to file a further reply brief.

Comment 76:

One comment suggests that the second sentence (An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing) of § 41.47(a) be deleted. The comment believes that the statement that an appeal without an oral hearing will be decided the same way as an appeal with an oral hearing denies the fact oral and written presentations differ in many respects and the fact that oral presentations are not cut and dried like many written briefs.

Answer:

The comment will not be adopted. While oral and written presentations do differ in many respects, an appeal decided on the briefs without an oral hearing does receive the same consideration by the Board as appeals decided after an oral hearing.

Comment 77:

Four comments state

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