# Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals

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URL: https://www.frixlaw.com/law-library/documents/fr%3A2011-29446

## Record

- **Collection:** Federal Register
- **Document type:** Rule
- **Published:** November 22, 2011
- **Citation:** 76 FR 72270

## Text

DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1 and 41
[No. PTO-P-2009-0021]
RIN 0651-AC37

Rules of Practice Before the Board of Patent Appeals and Interferences in
Ex Parte
Appeals

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Patent and Trademark Office (USPTO or Office) amends the rules governing practice before the Board of Patent Appeals and Interferences (Board or BPAI) in
ex parte
patent appeals. The Office amends the rules to: Remove several of the briefing requirements for an appeal brief, provide for the Board to take jurisdiction over the appeal earlier in the appeal process, no longer require examiners to acknowledge receipt of reply briefs, create specified procedures under which an appellant can seek review of an undesignated new ground of rejection in either an examiner's answer or in a Board decision, provide that the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancelled by an applicant's amendment, and clarify that, for purposes of the examiner's answer, any rejection that relies upon Evidence not relied upon in the Office action from which the appeal is taken shall be designated as a new ground of rejection. The Office also withdraws a previously published final rule that never went into effect.

DATES:

Effective Date:
This rule is effective on January 23, 2012 except withdrawal of the final rule published June 10, 2008 (73 FR 32938) and delayed indefinitely on December 10, 2008 (73 FR 74972) is effective November 22, 2011.

Applicability Date:
This rule is applicable to all appeals in which a notice of appeal is filed on or after January 23, 2012.

FOR FURTHER INFORMATION CONTACT:

Linda Horner, Administrative Patent Judge, Board of Patent Appeals and Interferences, by telephone at (571) 272-9797, or by mail addressed to: Mail Stop Interference, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Linda Horner.

SUPPLEMENTARY INFORMATION:

Background

On July 30, 2007, the Office published a notice of proposed rulemaking governing practice before the Board in
ex parte
patent appeals (72 FR 41472 (July 30, 2007)). The notice was also published in the Official Gazette. 1321 Off. Gaz. Pat. Office 95 (Aug. 21, 2007). The public was invited to submit written comments. Comments were to be received on or before September 28, 2007.

On June 10, 2008, a final rulemaking was then published in the
Federal Register
(73 FR 32938 (June 10, 2008)). This final rule stated that the effective and applicability date was December 10, 2008. On June 9, 2008, the Office published a 60-day
Federal Register
notice (73 FR 32559 (June 9, 2008)) requesting the Office of Management and Budget (OMB) establish a new information collection for BPAI items in the final rule and requesting public comment on the burden impact of the final rule under the provisions of the Paperwork Reduction Act (PRA). On October 8, 2008, the Office published a 30-day
Federal Register
notice (73 FR 58943 (Oct. 8, 2008)) stating that the proposal for the collection of information under the final rule was being submitted to OMB and requesting that comments on the proposed information collection be submitted to OMB. Because the information collection process had not been completed by the original effective and applicability date of the final rule, the Office published a
Federal Register
notice (73 FR 74972 (Dec. 10, 2008)) notifying the public that the effective and applicability date of the final rule was not December 10, 2008, and that the effective and applicability date would be delayed until a subsequent notice.

On January 20, 2009, the Assistant to the President and Chief of Staff instructed agencies via a memorandum entitled, “Regulatory Review,” (74 FR 4435 (Jan. 26, 2009)) to consider seeking comments for an additional 30 days on rules that were published in the
Federal Register
and had not yet become effective by January 20, 2009. On January 21, 2009, the Office of Management and Budget issued a memorandum entitled, “Implementation of Memorandum Concerning Regulatory Review,” (available at
http://www.whitehouse.gov/sites/default/files/omb/assets/agencyinformation_memoranda_2009_pdf/m09-08.pdf
) which provided agencies further guidance on such rules that had not yet taken effect. For such rules, both memoranda stated that agencies should consider reopening the rulemaking process to review any significant concerns involving law or policy that have been raised.

On December 22, 2009, the Office published an Advance Notice of Proposed Rulemaking (ANPRM) proposing further modifications to the indefinitely delayed 2008 final rule and seeking public comment via a public roundtable and written comment (74 FR 67987 (Dec. 22, 2009)).

In light of the comments received to these notices, the Office then published a notice of proposed rulemaking (NPRM) in the
Federal Register
(75 FR 69828 (Nov. 15, 2010)), which proposed to rescind the indefinitely delayed 2008 final rule and proposed new changes to the rules of practice before the Board in
ex parte
appeals. The public was invited to submit written comments. Comments were to be received on or before January 14, 2011. Comments received on or before January 14, 2011, were considered.

The Office also considered three comments received after January 14, 2011. The Office now publishes this final rule taking into consideration the comments received to the NPRM.

The Office received a comment offering an alternative rendition of the procedural history of these rules and claiming that OMB rejected the Office's original Information Collection Request. The Preamble of the NPRM accurately reflects the history of this rule. Accordingly, no changes have been made to the description of the procedural history in the Preamble of the final rule. Furthermore, OMB approved the Office's original Information Collection Request.
See Notice of Office of Management and Budget Action,
ICR Ref. No. 200809-0651-003 (Dec. 22, 2009),
http://www.reginfo.gov/public/do/PRAMain
hyperlink; then search 0651-0063; then follow “Approved with change” hyperlink. OMB has also pre-approved the Information Collection Request associated with these final rules.
See Notice of Office of Management and Budget Action,
ICR Ref. No. 201010-0651-001 (Jan. 4, 2011),
http://www.reginfo.gov/public/do/PRAMain
hyperlink; then search 0651-0063; then follow “Preapproved” hyperlink.

The Office received two comments suggesting that the Board already implemented the delayed 2008 final rule (73 FR 32938 (June 10, 2008), implementation of which was indefinitely delayed by 73 FR 74972 (Dec. 10, 2008)). This is not true. The Office has not implemented the indefinitely delayed 2008 final rule.

One commenter suggested that the fact that the Board sometimes has stated

that an appellant must “map claims” indicates the delayed 2008 final rule is already in effect. Since 2004, the Office has used this language to indicate that the appellant had not explained the subject matter defined in each independent claim by reference to the specification by page and line number, and to the drawing, if any, by reference characters, as required by the 2004 regulations. The delayed 2008 regulations required annotation in addition to mapping. Those regulations have not been implemented or enforced with respect to any applicant. Another commenter suggested that the indefinitely delayed 2008 regulations must be in effect because the 2004 regulations permitted applicants to raise arguments in either the appeal brief or reply brief. This is an incorrect reading of the 2004 regulations. The inability to raise new arguments in a reply brief is inherent in the nature of a reply brief; it must reply to either an argument or response in an answer or the failure to include a response in an answer. The indefinitely delayed 2008 regulations made this requirement clearer, but it has always been a requirement.

The Board rules as published in 37 CFR 41.1-41.81 (2010) will remain in effect until the changes set forth in the instant final rule take effect on the effective date. The Office also withdraws the indefinitely delayed 2008 final rule (73 FR 32938 (June 10, 2008)) that never went into effect. Therefore, any appeal brief filed in an application or
ex parte
reexamination proceeding in which a notice of appeal is filed on or after the instant effective date must be filed in compliance with final Bd.R. 41.37 set forth in this final rule.

Purposes for the Rule Changes

One purpose of this final rule is to ensure that the Board has adequate information to decide
ex parte
appeals on the merits, while not unduly burdening appellants or examiners with unnecessary briefing requirements. In particular, the goal of this final rule is to effect an overall lessening of the burden on appellants and examiners to present an appeal to the Board. For example, statements of the status of claims, the status of amendments, and the grounds of rejection to be reviewed on appeal are no longer required in the appeal brief (final Bd.R. 41.37) or in the examiner's answer. Similarly, the final rule no longer requires appellants to file an evidence appendix or a related proceedings appendix (final Bd.R. 41.37). Because much of this information is already available in the Image File Wrapper, it is unnecessary for appellants or examiners to provide this information to the Board. Moreover, by eliminating these briefing requirements, the Office expects to reduce the number of non-compliant appeal briefs and the number of examiner's answers returned to the examiner due to non-compliance, which are a significant cause of delays on appeal.
See USPTO, Top Eight Reasons Appeal Briefs are Non-Compliant, http://www.uspto.gov/ip/boards/bpai/procedures/top_8_reasons_appeal_brf_dec09.pdf.

Another purpose of this final rule is to eliminate any gap in time from the end of briefing to the commencement of the Board's jurisdiction. For example, under the final rule, the Board takes jurisdiction upon the earlier of the filing of a reply brief or the expiration of the time in which to file a reply brief (final Bd.R. 41.35(a)). Examiners are no longer required to acknowledge receipt of the reply brief (Bd.R. 41.43 [removed]).

The final rule is also intended to clarify and simplify petitions practice on appeal. For example, except under limited circumstances, any information disclosure statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board's jurisdiction ends (final Bd.R. 41.35(d)). Also, in response to public comments, and based on a comprehensive survey of case law from the United States Court of Appeals for the Federal Circuit (Federal Circuit) and United States Court of Customs and Patent Appeals (CCPA), the Office will provide improved guidance in the Manual of Patent Examining Procedure (MPEP), discussed
infra,
as to what constitutes a new ground of rejection in an examiner's answer. The final rule explicitly sets forth the procedure under which an appellant can seek review of the Office's failure to designate a new ground of rejection in either an examiner's answer (final Bd.R. 41.40) or in a Board decision (final Bd.R. 41.50(c)).

Another purpose of this final rule is to reduce confusion as to which claims are on appeal. For example, under the final rule, the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancelled by an applicant's amendment (final Bd.R. 41.31(c)). This rule simplifies practice for appellants who seek review of all claims under rejection—the majority of appellants—by obviating the need to enumerate the rejected claims that are being appealed. Under the previous practice, if an appellant incorrectly listed the claims on appeal, or was silent in the brief as to some of the claims under rejection, then the Office assumed that such claims were not on appeal, and noted that those non-appealed claims should be cancelled by the examiner.
Ex parte Ghuman,
88 USPQ2d 1478, 2008 WL 2109842 (BPAI 2008) (precedential) (holding that when appellant does not appeal some of the claims under rejection and does not challenge the Examiner's rejection of these claims, the Board will treat these claims as withdrawn from the appeal, which operates as an authorization for the Examiner to cancel those claims from the application). This final rule avoids the unintended cancellation of claims by the Office due to appellant's mistake in the listing of the claims in either the notice of appeal or in the appeal brief. This final rule replaces the Office's procedure under
Ghuman
and also simplifies practice for examiners by no longer requiring examiners to cancel non-appealed claims.

The Supplementary Information in this notice provides: (1) An explanation of the final rule, (2) a discussion of the differences between the final rule and the proposed rule, (3) a discussion of the comments received to the NPRM, (4) a discussion of rule making considerations and comments received regarding the discussion of rule making considerations in the NPRM and (5) a copy of the amended regulatory text.

Rules in 37 CFR part 1 are denominated as “Rule x” in this supplementary information. A reference to Rule 1.136(a) is a reference to 37 CFR 1.136(a) (2010).

Rules in 37 CFR part 11 are denominated as “Rule x” in this supplementary information. A reference to Rule 11.18(a) is a reference to 37 CFR 11.18(a) (2010).

Rules in 37 CFR part 41 are denominated as “Bd.R. x” in this supplementary information. For example, a reference to Bd.R. 41.3 is a reference to 37 CFR 41.3 (2010) (as first published in 69 FR 50003 (August 12, 2004)).

Changes proposed in the NPRM are denominated as “proposed Bd.R. x” in this supplementary information. A reference to “proposed Bd.R. 41.30” is a reference to the proposed rule as set forth in 75 FR 69828, 69846 (Nov. 15, 2010).

Final rules are denominated as “final Bd.R. x” in this supplementary information. A reference to final Bd.R. x is a reference to the rule that will take effect on the effective date of this final rule.

The Board has jurisdiction to consider and decide
ex parte
appeals in patent applications (including reissue, design and plant patent applications) and
ex parte
reexamination proceedings.

The final rule does not change any of the rules relating to
inter partes
reexamination appeals. Nor does the final rule change any of the rules relating to contested cases.

For purposes of the NPRM, some paragraphs that were proposed to be deleted were shown as “reserved.” These “reserved” paragraphs have been deleted entirely in the final rule, and the remaining paragraphs in each section have been renumbered, as appropriate.

Explanation of the Final Rule

The notable changes to the rules are: (1) The Board will presume that an appeal is taken from the rejection of all claims under rejection unless cancelled by an amendment filed by appellant (final Bd.R. 41.31(c)); (2) the Board will take jurisdiction upon the filing of a reply brief or the expiration of time in which to file such a reply brief, whichever is earlier (final Bd.R. 41.35(a)); (3) the requirements to include statements of the status of claims, status of amendments, and grounds of rejection to be reviewed on appeal and the requirements to include an evidence appendix and a related proceedings appendix are eliminated from the appeal brief (final Bd.R. 41.37(c)); (4) the Board may apply default assumptions if a brief omits a statement of the real party-in-interest or a statement of related cases (final Bd.R. 41.37(c)(1)(i) and (ii)); (5) for purposes of the examiner's answer, any rejection that relies upon Evidence not relied upon in the Office action from which the appeal is taken (as modified by any advisory action) shall be designated as a new ground of rejection (final Bd.R. 41.39(a)(2)); (6) an appellant can await a decision on a petition seeking review of an examiner's failure to designate a rejection in the answer as a new ground of rejection prior to filing a reply brief (final Bd.R. 41.40) and thereby avoid having to file a request for extension of time in which to file the reply brief; and (7) the examiner's response to a reply brief is eliminated (final Bd.R. 41.43 [removed]). A more detailed discussion of the final rule follows.

Further information relevant to particular rules appears in the analysis of comments portion of this final rule.

Part 1

Termination of Proceedings

Final Rule 1.197 revises the title of this section and deletes paragraph (a), the provision that sets forth when jurisdiction passes from the Board to the examiner after a decision has been issued by the Board. The operative language of this paragraph has been incorporated into final Bd.R. 41.54, except that “transmittal of the file” has been omitted. Most patent application files are electronic files (Image File Wrapper files), not paper files. Accordingly, a paper file is no longer “transmitted” to the examiner. The changes to final Rule 1.197 and final Bd.R. 41.54 are intended to more accurately reflect the fact that files are handled electronically within the Office, and do not imply that there would be a change in the practice for passing jurisdiction back to the examiner after decision by the Board—the process remains the same under the final rule.

Part 41

Authority

The listing of authority for Part 41 is revised to add references to 35 U.S.C. 132, 133, 306, and 315. Section 132 states that the Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. Section 133 provides that upon failure of the applicant to prosecute the application within six months after any action therein, the application shall be regarded as abandoned. Section 306 establishes the patent owner's right to appeal in an
ex parte
reexamination proceeding. Section 315 establishes the right to appeal in an
inter partes
reexamination proceeding.

Subpart A

Citation of Authority

Bd.R. 41.12 is amended by deleting the following requirements: (1) To cite to particular case law reporters, and (2) to include parallel citations to multiple reporter systems. Because members of the Board have access to both the West Reporter System and the United States Patents Quarterly, it is unnecessary for appellants to cite to both reporters. The rule indicates a Board preference, not a requirement, for citations to certain reporters and for limited use of non-binding authority. The requirement to include pinpoint citations, whenever a specific holding or portion of an authority is invoked, is retained.

The final rule states that appellants should provide a copy of an authority if the authority is not an authority of the Office and is not reproduced in the United States Reports or the West Reporter System. This provision is designed to ensure that a full record is before the judges to allow an efficient and timely decision to be made on the merits of the case. A BPAI precedential decision is binding on the Board and is considered an “authority of the Office” and thus does not fall within the ambit of final Bd.R. 41.12(d).

Subpart B

Definitions

Bd.R. 41.30 is amended to add a definition of “Record” so that, when subsequent sections of Subpart B refer to the “Record”, it is clear what constitutes the official record on appeal. The final rule states that the official record contains the items listed in the content listing of the Image File Wrapper or the official file of the Office if other than the Image File Wrapper, excluding any amendments, Evidence, or other documents that were not entered. Because an examiner's refusal to enter an amendment, Evidence, or other documents is a petitionable matter that is not subject to review by the Board, the exclusion of such un-entered documents from the definition of “Record” reflects the fact that the Board's review of patentability determinations is properly based on the record of all entered documents in the file. An information disclosure statement or petition that is held in abeyance while the Board possesses jurisdiction over the proceeding is not an entered document and therefore is excluded from the definition of “Record” until such time as it is entered. The definition of “Record” includes the items listed in the content listing of the Image File Wrapper because, in some cases, physical items that form part of the official file are not able to be scanned into the Image File Wrapper and are maintained elsewhere, such as in an artifact file. Some examples of such items include original drawings in design patent applications and sequence listings. In such cases, the Image File Wrapper will include an entry in the content listing that points to this artifact file. The final rule further clarifies that in the case of an issued patent being reissued or reexamined, the Record further includes the Record of the patent being reissued or reexamined. The Office further notes that all references listed on an Information Disclosure Statement (
i.e.,
PTO-Form PTO/SB/08a or 08b), which have been indicated as having been considered by the examiner, or listed on a PTO-Form 892 are included in the definition of Record even if each of the so listed references does not separately appear in the content listing of the Image File Wrapper.

Final Bd.R. 41.30 adopts the definition of “Evidence” from Black's Law Dictionary to provide clarity regarding the use of that term in Subpart B. Toward that end, final Bd.R. 41.30

makes clear that for the purposes of Subpart B, “Evidence” does not encompass dictionaries. Excluding dictionaries from the definition of “Evidence” thus allows appellants to refer to dictionaries in their briefs, which would otherwise be precluded under final Bd.R. 41.33(d)(2) (absent existence of one of the enumerated exceptions). It further allows examiners to refer to dictionaries in the examiner's answers without automatically rendering a rejection a new ground under final Bd.R. 41.39(a)(2). Treating dictionaries in this manner is consistent with Supreme Court and Federal Circuit precedent, which contemplate that such materials may be consulted by tribunals “at any time.”
See, e.g.,

Nix
v.
Hedden,
149 U.S. 304, 307 (1893) (citations omitted) (admitting dictionaries to understand the ordinary meaning of terms “not as evidence, but only as aids to the memory and understanding of the court”);
Phillips
v.
AWH Corp.,
415 F.3d 1303, 1322-23 (Fed. Cir. 2005) (
en banc
) (“[J]udges are free to consult dictionaries and technical treatises at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.”) (citation omitted);
In re Boon,
439 F.2d 724, 727-28 (CCPA 1971) (holding citation to dictionary was not tantamount to the assertion of a new ground of rejection “where such a reference is a standard work, cited only to support a fact judicially noticed and, as here, the fact so noticed plays a minor role, serving only to fill in the gaps which might exist in the evidentiary showing made by the Examiner to support a particular ground for rejection.” (emphasis and internal quotations omitted)). Thus, the Office feels it is logical to permit the applicant and examiner to submit them to the Board during the briefing stage.

Appeal to the Board

Bd.R. 41.31(a) is amended to add preamble language to make clear that an appeal to the Board is taken by filing a notice of appeal. This change is not intended to change the current practice of the Office. The Office continues to require appellants to file a notice of appeal in order to appeal an adverse decision of the examiner to the Board.

Bd.R. 41.31(b) is amended to make clear that the signature requirements of Rules 1.33 and 11.18(a) do not apply to the notice of appeal. This change adds a reference to Rule 11.18(a) to avoid any conflict between the rules of practice in
ex parte
appeals and the rules governing practice by registered practitioners before the Office.

Bd.R. 41.31(c) is amended so that an appeal, when taken, is presumed to seek review of all of the claims under rejection unless claims are cancelled by an amendment filed by the applicant and entered by the Office. This change obviates the need for the majority of appellants who seek review of all claims under rejection to affirmatively state (in the notice of appeal and/or in the status of claims section of the appeal brief) which claims are on appeal. Rather, under final Bd.R. 41.31(c), the Board presumes that an appellant intends to appeal all claims under rejection except for those that have been cancelled. This change avoids the unintended cancellation of claims by the Office due to an appellant's mistake in the listing of the claims in either the notice of appeal or in the appeal brief. Under previous practice, if an appellant incorrectly listed the claims on appeal, or was silent in the brief as to any of the claims under rejection, then the Office often assumed that such claims were not on appeal, and noted that those non-appealed claims should be cancelled by the examiner.
Ex parte Ghuman,
88 USPQ2d 1478, 2008 WL 2109842 (BPAI 2008) (precedential) (holding that when appellant does not appeal some of the claims under rejection and does not challenge the Examiner's rejection of these claims, the Board will treat these claims as withdrawn from the appeal, which operates as an authorization for the Examiner to cancel those claims from the application). The final rule avoids potential unintended cancellation of claims due to oversight or mistake by appellants in listing the claims on appeal. This final rule replaces the Office's procedure under
Ghuman
and simplifies practice for examiners by no longer requiring examiners to cancel non-appealed claims. Any appellant who wishes to appeal fewer than all rejected claims should file an amendment cancelling the non-appealed claims. If an appellant does not file an amendment cancelling claims that the appellant does not wish to appeal, but then also fails to provide any argument in the appeal brief directed to those claims, then the Board has discretion to simply affirm any rejections against such claims.
See, e.g.,

Hyatt
v.
Dudas,
551 F.3d 1307, 1314 (Fed. Cir. 2008) (appellant waives any argument about a ground of rejection that he or she does not contest on appeal to the Board, and the Board may simply affirm the rejection).

Amendments and Affidavits or Other Evidence After Appeal

The title of Bd.R. 41.33 is revised by replacing “evidence” with “Evidence” to refer to the definition added in final Bd.R. 41.30.

Bd.R. 41.33(c) is revised to delete the cross-reference to Bd.R. 41.50(c). As noted
infra,
Bd.R. 41.50(c) is amended so that it is no longer applicable to final Bd.R. 41.33(c).

Bd.R. 41.33(d)(1) is revised to replace “evidence” with “Evidence” to refer to the definition added in final Bd.R. 41.30.

Bd.R. 41.33(d)(2) is revised to replace “evidence” with “Evidence” to refer to the definition added in final Bd.R. 41.30.

Bd.R. 41.33 is not substantively changed except as to submission of dictionaries after the date of filing an appeal. Both Bd.R. 41.33 and final Bd.R. 41.33 otherwise restrict the types of amendments and evidence that can be filed after the date of filing an appeal. This approach is designed to promote efficiency of the Board in its review by ensuring that the Board has the benefit of the examiner's final evaluation of the weight and sufficiency of any evidence relied upon by appellants prior to the Board rendering a decision on appeal.

Jurisdiction Over Appeal

Bd.R. 41.35(a) is amended to add a heading and to provide that jurisdiction over the appeal passes to the Board upon the filing of a reply brief or the expiration of the time in which to file such a reply brief, whichever is earlier. This change is necessary because Bd.R. 41.35(a) provides that the Board acquires jurisdiction upon transmittal of the file to the Board. The large majority of patent application files are electronic files (Image File Wrapper files), not paper files. Accordingly, in most cases a paper file is no longer “transmitted” to the Board.

The Board intends to continue sending a docket notice as a courtesy to appellants to indicate that the Board has assigned an appeal number to the appeal. By having the Board's jurisdiction commence immediately upon the filing of a reply brief or the expiration of the time in which to file such a reply brief, the Board must take no affirmative steps prior to assuming jurisdiction and no gap in time will exist from the end of the briefing to the commencement of jurisdiction by the Board.

Bd.R. 41.35(b) is amended by moving some text to final Bd.R. 41.35(e), adding a new paragraph, and by adding new text to make clear when the Board's

jurisdiction ends so that no gaps in time exist between the end of the Board's jurisdiction and further action by the examiner.

Bd.R. 41.35(c) is amended to add a heading and a cross-reference to a relevant section of the rule.

Final Bd.R. 41.35(d) is added to provide that, except for petitions authorized by part 41 of this title, the Board will not return or remand an application for consideration of an information disclosure statement or a petition filed while the Board possesses jurisdiction, and that consideration of such filings will be held in abeyance until the Board's jurisdiction ends. The Board's jurisdiction begins upon the filing of the reply brief or upon the expiration of the time for filing a reply brief. Therefore, under both Bd.R. 41.33(d)(2) and final Bd.R. 41.33(d)(2), the filing of an information disclosure statement during the Board's jurisdiction constitutes the introduction of untimely Evidence before the Board. Similarly, because Rule 1.181 provides that petitions must be filed within two months of the mailing date of the action or notice from which relief is requested, and because the Board's jurisdiction begins up to two months after the mailing date of the examiner's answer (assuming no petition under Rule 1.181 is filed), it follows that all petitions relating to the examination phase of the application or reexamination proceeding ought to be filed prior to the time the Board takes jurisdiction. It is in the interest of compact prosecution that the Office not delay a decision on appeal for consideration of untimely Evidence and petitions. Final Bd.R. 41.35(d) excludes “petitions authorized by this part.” For example, petitions authorized by part 41 include petitions under Bd.R. 41.3 to the Chief Administrative Patent Judge.

Final Bd.R. 41.35(e) is added with a new heading and it contains the text previously in Bd.R. 41.35(b). This provision gives the Board the authority to return an appeal to the examiner if the Board deems that a file is not complete or is not in compliance with the requirements of Subpart B.

Appeal Brief—Timing and Fee; and Failure to File a Brief

Bd.R. 41.37(a) and (b) are amended by adding new headings.

Appeal Brief—Content of Appeal Brief—Preamble

Bd.R. 41.37(c)(1) is amended to add a heading, and to add the introductory phrase “Except as otherwise provided in this paragraph” to clarify that several of the content requirements listed in paragraph (c)(1) contain exceptions that may result in an appeal brief containing fewer than all items listed in paragraph (c)(1). Bd.R. 41.37(c)(1) is further amended to correct the cross-references in light of further changes to this section, discussed
infra.

Appeal Brief—Content of Appeal Brief—Real Party in Interest

Bd.R. 41.37(c)(1)(i) is amended to provide that the statement identifying the real party in interest should be accurate as of the date of filing of the appeal brief. Bd.R. 41.37(c)(1)(i) is also amended to allow the Board to assume that, if the statement of real party in interest is omitted from the appeal brief, then the named inventors are the real party in interest. This final rule states that the Office “may” make the assumption. Thus, the Office is not required to make the assumption if it is aware of information to the contrary. These changes are intended to decrease the burden on appellants by allowing appellants to omit this statement if the named inventors are the real party in interest. The purpose of this section is to enable judges to determine whether they have a conflict of interest with the real parties in the case and then to appropriately recuse themselves if such a conflict of interest is found. The information required in final Bd.R. 41.37(c)(1)(i) is the minimum information needed by the Board to effectively make this determination.

Appeal Brief—Content of Appeal Brief—Related Appeals and Interferences

Bd.R. 41.37(c)(1)(ii) is amended to limit the required disclosure of related appeals, interferences and judicial proceedings (collectively “related cases”) to only those which: (1) Involve an application or patent owned by the appellant or assignee, (2) are known to appellant, the appellant's legal representative, or assignee, and (3) may be related to, directly affect or be directly affected by, or have a bearing on the Board's decision. Bd.R. 41.37(c)(1)(ii) is also amended to allow appellants to omit the statement entirely if there are no such related cases, and to provide a default assumption for the Office in the event the statement is omitted, so that a statement that there are “no known related cases” is not required and that fact “may” be inferred from the absence of a statement. The final rule also no longer requires filing of copies of decisions in related cases.

Appeal Brief—Content of Appeal Brief—Status of Claims [Deleted]

Bd.R. 41.37(c)(1)(iii) is amended to delete the requirement for the appeal brief to contain an indication of the status of claims.

Appeal Brief—Content of Appeal Brief—Status of Amendments [Deleted]

Bd.R. 41.37(c)(1)(iv) is amended to delete the requirement for the appeal brief to contain an indication of the status of amendments filed subsequent to final rejection.

Appeal Brief—Content of Appeal Brief—Summary of Claimed Subject Matter

Bd.R. 41.37(c)(1)(v) is renumbered as final Bd.R. 41.37(c)(1)(iii) and is further amended to require that appellants provide a concise explanation of the subject matter defined in each of “the rejected independent claims” rather than “each of the independent claims involved in the appeal.” Similarly, final Bd.R. 41.37(c)(1)(iii) is amended to further require that the concise explanation identify the corresponding structure, material, or acts for each “rejected independent claim” when the claim contains a means or step plus function recitation as permitted by 35 U.S.C. 112, sixth paragraph. Under final Bd.R. 41.31(c), discussed
supra,
the Board will presume that all rejections made in the Office Action from which the appeal was taken are before it on appeal, unless appellant cancels the claim(s) subject to a particular rejection. Final Bd.R. 41.37(c)(1)(iii) also maintains the requirement that the concise explanation identify the corresponding structure, material, or acts for each dependent claim argued separately when the claim contains a means or step plus function recitation as permitted by 35 U.S.C. 112, sixth paragraph.

Final Bd.R. 41.37(c)(1)(iii) is further amended to require that the concise explanation refer to the specification “in the Record” by page and line number “or by paragraph number.” The change incorporates the definition of
Record
from final Bd.R. 41.30 and makes clear that reference to the specification by paragraph number in lieu of page and line number is permissible.

Additionally, final Bd.R. 41.37(c)(1)(iii) is amended to clarify that reference to the pre-grant patent application publication is not sufficient to satisfy the requirements of the summary of claimed subject matter.

Appeal Brief—Content of Appeal Brief—Grounds of Rejection to be Reviewed on Appeal [Removed]

Bd.R. 41.37(c)(1)(vi) which required appellants to provide a statement of the grounds of rejection from the brief is removed. Under final Bd.R. 41.31(c), discussed
supra,
the Board will

presume that all claims under rejection are before it on appeal, unless applicant cancels the claim(s) subject to a particular rejection. Under final Bd.R. 41.39(a)(1), discussed
infra,
the examiner's answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision), unless the answer expressly withdraws a ground of rejection. Moreover, under final Bd.R. 41.37(c)(1)(iv), discussed
infra,
the headings of the argument section of the brief shall reasonably identify the ground of rejection being contested. Therefore, it is unnecessary for the appeal brief to contain a separate statement of the grounds of rejection on appeal.

Appeal Brief—Content of Appeal Brief—Argument

Bd.R. 41.37(c)(1)(vii) is renumbered as final Bd.R. 41.37(c)(1)(iv). Subparagraph (vii) is deleted. Final Bd.R. 41.37(c)(1)(iv) is amended to clarify that the argument section should specifically explain why the examiner erred as to each ground of rejection contested by appellants. The final rule also provides that, except as provided for in final Bd.R. 41.41, 41.47, and 41.52, any arguments not included in the appeal brief will not be considered by the Board “for purposes of the present appeal.” Additionally, final Bd.R. 41.37(c)(1)(iv) further requires that each ground of rejection argued be set forth in a separate section with a heading that reasonably identifies the ground being argued therein. Further, the final rule requires that any claim(s) argued separately or as a subgroup be placed under a separate subheading that identifies the claim(s) by number.

The Board will treat as waived, for purposes of the present appeal, any arguments not raised by appellant.
See Hyatt
v.
Dudas,
551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived);
In re Watts,
354 F.3d 1362, 1368 (Fed. Cir. 2004) (declining to consider the appellant's new argument regarding the scope of a prior art patent when that argument was not raised before the Board); and
In re Schreiber,
128 F.3d 1473, 1479 (Fed. Cir. 1997) (declining to consider whether prior art cited in an obviousness rejection was non-analogous art when that argument was not raised before the Board).

The final rule permits the Board to refuse to consider arguments not raised in the appeal brief, except as provided in final Bd.R. 41.41, 41.47, and 41.52. This language in the final rule is substantially the same as in Bd.R. 41.37(c)(1)(vii), which states that “[a]ny 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.” Final Bd.R. 41.41, 41.47, and 41.52 have provisions allowing certain new arguments in reply briefs, at oral hearing, or in requests for rehearing which ensure that appellants have a full and fair opportunity to be heard before the Board. The final rule clarifies that the Board's right to refuse consideration of arguments not raised is “for purposes of the present appeal” so as to clarify that such right of refusal does not extend to subsequent Board appeals in the same or related applications.
See Abbott Labs.
v.
TorPharm, Inc.,
300 F.3d 1367, 1379 (Fed. Cir. 2002) (“[P]recedent has long supported the right of an applicant to file a continuation application despite an unappealed adverse Board decision, and to have that application examined on the merits. Where the Patent Office has reconsidered its position on patentability in light of new arguments or evidence submitted by the applicant, the Office is not forbidden by principles of preclusion to allow previously rejected claims.” (internal citation omitted)).

Final Bd.R. 41.37(c)(1)(iv) is also amended to clarify the proper use of headings and to require the use of subheadings in order to clearly set out the ground of rejection and the specific claims to which each argument presented applies. These headings and subheadings will make certain that arguments are not overlooked by the examiner or the Board. The content requirements of this paragraph will not be interpreted as requiring verbatim recitation of the ground being contested and briefs will not be held non-compliant for minor formatting issues.

Appeal Brief—Content of Appeal Brief—Claims Appendix

Bd.R. 41.37(c)(1)(viii) is renumbered as final Bd.R. 41.37(c)(1)(v). Subparagraph (viii) is deleted. Final Bd.R. 41.37(c)(1)(v) is identical to Bd.R. 41.37(c)(1)(viii) and requires appellants to include a claims appendix with the appeal brief containing “a copy of the claims involved in the appeal.” Because final Bd.R. 41.31(c) requires the Board to presume that all rejections made in the Office Action from which the appeal was taken are before it on appeal unless appellant cancels the claim(s) subject to a particular rejection, the claims appendix must include all claims under rejection in the Office action from which the appeal is taken unless cancelled by an amendment filed by the applicant and entered by the Office.

Appeal Brief—Content of Appeal Brief—Evidence Appendix

Bd.R. 41.37(c)(1)(ix), which required appellants to include an evidence appendix with the brief, is deleted.

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

Appeal Brief—Content of Appeal Brief—Related Proceedings Appendix

Bd.R. 41.37(c)(1)(x), which required appellants to include a related proceedings appendix with the brief, is deleted.

While it is no longer a requirement to include a related proceedings appendix, the Office appreciates receiving copies of decisions or relevant papers from related proceedings. This ensures that the Board can efficiently consider the related proceedings information. In the alternative, the Board recommends that appellants clearly identify in the appeal brief any decisions or relevant documents from related proceedings using a clear description of the related proceeding, so that the Board can quickly and efficiently obtain copies of any such relevant documents.

Appeal Brief—New or Non-Admitted Amendments or Evidence

Bd.R. 41.37(c)(2) is amended to add a sentence to make clear in the rule the current Office procedure for review of an examiner's refusal to admit an amendment or Evidence by petition to the Director under Rule 1.181. Final Bd.R. 41.37(c)(2) further replaces instances of “evidence” with “Evidence” where appropriate to incorporate the definition of “Evidence” provided in final Bd.R. 41.30.

Appeal Brief—Notice of Non-Compliance

Bd.R. 41.37(d) is amended to add a heading and to provide that under the Office's new streamlined procedure for review of
ex parte
appeal briefs for

compliance with the rule, review of a determination of non-compliant appeal brief should be requested via a petition to the Chief Administrative Patent Judge under Bd.R. 41.3.

Appeal Brief—Extensions of Time

Bd.R. 41.37(e) is amended to add a heading.

Examiner's Answer

Bd.R. 41.39(a) is amended to add a heading and preamble.

Bd.R. 41.39(a)(1) is amended to provide that the examiner's answer, by default, incorporates all the grounds of rejection set forth in the Office action which is the basis for the appeal, including any modifications made via advisory action or pre-appeal brief conference decision, except for any grounds of rejection indicated by the examiner as withdrawn in the answer. Bd.R. 41.39(a)(1) is also amended to delete the requirement that the answer include an explanation of the invention claimed and of the grounds of rejection, since the Board will rely on appellant's specification and summary of claimed subject matter for an explanation of the invention claimed and will rely on the statement of the rejection(s) in the Office action from which the appeal is taken, as modified by advisory action or pre-appeal brief conference decision. In light of the streamlined review of appeal briefs for compliance with the rules, Bd.R. 41.39(a)(1) is further amended to delete the requirement for the primary examiner to make any determination that an appeal does not comply with the provisions of final Bd.R. 41.31 and 41.37.

Bd.R. 41.39(a)(2) is amended to provide that if a rejection set forth in the answer relies on any Evidence not relied on in the Office action from which the appeal is taken, then the rejection must be designated as a new ground of rejection, and any answer that contains such a new ground of rejection must be approved by the Director. The Director may choose to delegate this authority as appropriate. Bd.R. 41.39(a)(2), as amended, refers to “Evidence” as defined in final Bd.R. 41.30.

Bd.R. 41.39(b) is amended to add a heading.

Bd.R. 41.39(b)(1) is amended to replace instances of “evidence” with “Evidence” where appropriate to refer to “Evidence” as defined in final Bd.R. 41.30.

Bd.R. 41.39(b)(2) is amended to move the phrase “each new ground of rejection” to a different location in the sentence to increase the clarity of the sentence. Bd.R. 41.39(b)(2) is also amended to replace instances of “evidence” with “Evidence” where appropriate to refer to “Evidence” as defined in final Bd.R. 41.30. Bd.R. 41.39(b)(2) is further amended to replace the cross-reference to Bd.R. 41.37(c)(1)(vii) with a reference to final Bd.R. 41.37(c)(1)(iv) in light of the renumbering of paragraphs within final Bd.R. 41.37(c)(1).

Final Bd.R. 41.39(b)(1) and (b)(2) continue to provide appellants the option to reopen prosecution or maintain the appeal by filing a reply brief to respond to the new ground of rejection.

Bd.R. 41.39(c) is amended to add a heading.

Content requirements for the examiner's answer are not included in the rule, because the Office needs to retain flexibility to add content requirements as needed by revision of the MPEP. The Office plans to continue to require that the examiner's answer contain a grounds of rejection section that would set forth any rejections that have been withdrawn and any new grounds of rejection, and the answer would further be required to contain a response to the arguments section to include any response the examiner has to arguments raised in the appeal brief.
See
MPEP § 1207.02. The answer would no longer be required to restate the grounds of rejection being maintained. The Board would instead rely on the statement of the grounds of rejection in the Office action from which the appeal was taken (as modified by any subsequent advisory action or pre-appeal brief conference decision).

The following discussion provides guidance to appellants and examiners as to the Office's view of what constitutes a new ground of rejection. This discussion is for the limited “purposes of the examiner's answer,” as per final Bd.R. 41.39(a)(2). This discussion does not apply to final rejections under Rule 1.113. The reason for this distinction is that Rule 1.116 affords applicants the opportunity to submit rebuttal evidence after a final rejection but before or on the same date of filing a notice of appeal. An appellant's ability to introduce new evidence after the filing of an appeal is more limited under final Bd.R. 41.33(d) than it is prior to the appeal. Thus, applicants are able to present rebuttal evidence in response to a final rejection, while they are not permitted to do so in response to an examiner's answer on appeal, unless an answer is designated as containing a new ground of rejection.

If Evidence (such as a new prior art reference) is applied or cited for the first time in an examiner's answer, then final Bd.R. 41.39(a)(2) requires that the rejection be designated as a new ground of rejection. If the citation of a new prior art reference is necessary to support a rejection, it must be included in the statement of rejection, which would be considered to introduce a new ground of rejection. Even if the prior art reference is cited to support the rejection in a minor capacity, it should be positively included in the statement of rejection and be designated as a new ground of rejection.
In re Hoch,
428 F.2d 1341, 1342 n.3 (CCPA 1970).

Relying on new Evidence, however, is not the only way to trigger a new ground of rejection in an examiner's answer. A position or rationale that changes the “basic thrust of the rejection” will give rise to a new ground of rejection.
In re Kronig,
539 F.2d 1300, 1303 (CCPA 1976). However, the examiner need not use identical language in both the examiner's answer and the Office action from which the appeal is taken to avoid triggering a new ground of rejection. It is not a new ground of rejection, for example, if the examiner's answer responds to appellant's arguments using different language, or restates the reasoning of the rejection in a different way, so long as the “basic thrust of the rejection” is the same.
In re Kronig,
539 F.2d at 1303;
see also

In re Jung,
637 F.3d 1356, 1364-65 (Fed. Cir. 2001) (additional explanation responding to arguments offered for the first time “did not change the rejection” and appellant had fair opportunity to respond);
In re Noznick,
391 F.2d 946, 949 (CCPA 1968) (no new ground of rejection made when “explaining to appellants why their arguments were ineffective to overcome the rejection made by the examiner”);
In re Krammes,
314 F.2d 813, 817 (CCPA 1963) (“It is well established that mere difference in form of expression of the reasons for finding claims unpatentable or unobvious over the references does not amount to reliance on a different ground of rejection.” (citations omitted));
In re Cowles,
156 F.2d 551, 1241 (CCPA 1946) (holding that the use of “different language” does not necessarily trigger a new ground of rejection).

The following examples are intended to provide guidance as to what constitutes a new ground of rejection in an examiner's answer. What constitutes a “new ground of rejection” is a highly fact-specific question.
See, e.g.,

Kronig,
539 F.2d at 1303 (finding new ground entered based upon “facts of this case” and declining to find other cases controlling given “the distinctive facts at bar”);
In re Ahlert,
424 F.2d 1088, 1092 (CCPA 1970) (“[l]ooking at the facts of this case, we are constrained to hold” that a new ground was entered).

If a situation arises that does not fall neatly within any of the following examples, it is recommended that the examiner identify the example below that is most analogous to the situation at hand, keeping in mind that “the ultimate criterion of whether a rejection is considered `new' * * * is whether appellants have had fair opportunity to react to the thrust of the rejection.”
Kronig,
539 F.2d at 1302.

Factual Situations That Constitute a New Ground of Rejection

1.
Changing the statutory basis of rejection from § 102 to § 103.
If the examiner's answer changes the statutory basis of the rejection from § 102 to § 103, then the rejection should be designated as a new ground of rejection. For example, in
In re Hughes,
345 F.2d 184 (CCPA 1965), the Board affirmed an examiner's rejection under § 102 over a single reference. On appeal, the Solicitor argued that the Board's decision should be sustained under § 103 over that same reference. The court declined to sustain the rejection under § 103, holding that a change in the statutory basis of rejection would constitute a new ground of rejection, and observed that “the issues arising under the two sections [§§ 102 and 103] may be vastly different, and may call for the production and introduction of quite different types of evidence.”
Hughes,
345 F.2d at 186-87.

2.
Changing the statutory basis of rejection from § 103 to § 102, based on a different teaching.
If the examiner's answer changes the statutory basis of the rejection from § 103 to § 102, and relies on a different portion of a reference which goes beyond the scope of the portion that was previously relied upon, then the rejection should be designated as a new ground of rejection. For example, in
In re Echerd,
471 F.2d 632 (CCPA 1973), the examiner rejected the claims under § 103 over a combination of two references. The Board then changed the ground of rejection to § 102 over one of those references, relying on a different portion of that reference for some claim limitations, and asserted that the remaining claim limitations were inherently present in that reference. The court held that the Board's affirmance constituted a new ground of rejection.
Echerd,
471 F.2d at 635 (“[A]ppellants should have been accorded an opportunity to present rebuttal evidence as to the new assumptions of inherent characteristics. * * *” (citation omitted)).

3.
Citing new calculations in support of overlapping ranges.
If a claim reciting a range is rejected as anticipated or obvious based on prior art that falls within or overlaps with the claimed range (
see
MPEP §§ 2131.03 and 2144.05), and the rejection is based upon range values calculated for the first time in the examiner's answer, then the rejection should be designated as a new ground of rejection. For example, in
In re Kumar,
418 F.3d 1361 (Fed. Cir. 2005), the examiner rejected the claims under § 103 based on overlapping ranges of particle sizes and size distributions. The Board affirmed the rejection, but included in its decision an appendix containing calculations to support the prima facie case of obviousness. The court held the Board's reliance upon those values to constitute a new ground of rejection, stating that “the Board found facts not found by the examiner regarding the differences between the prior art and the claimed invention, which in fairness required an opportunity for response.”
Kumar,
418 F.3d at 1368 (citation omitted).

4.
Citing new structure in support of structural obviousness.
If, in support of an obviousness rejection based on close structural similarity (
see
MPEP § 2144.09), the examiner's answer relies on a different structure than the one on which the examiner previously relied, then the rejection should be designated as a new ground of rejection. For example, in
In re Wiechert,
370 F.2d 927 (CCPA 1967), the examiner rejected claims to a chemical composition under § 103 based on the composition's structural similarity to a prior art compound disclosed in a reference. The Board affirmed the rejection under § 103 over that same reference, but did so based on a different compound than the one the examiner cited. The court held that the Board's decision constituted a new ground of rejection, stating, “Under such circumstances, we conclude that when a rejection is factually based on an entirely different portion of an existing reference the appellant should be afforded an opportunity to make a showing of unobviousness vis-a-vis such portion of the reference.”
Wiechert,
370 F.2d at 933.

5.
Pointing to a different portion of the claim to maintain a “new matter” rejection.
If, in support of a claim rejection under 35 U.S.C. 112, first paragraph, based on new matter (
see
MPEP § 2163.06), a different feature or aspect of the rejected claim is believed to constitute new matter, then the rejection should be designated as a new ground of rejection. For example, in
In re Waymouth,
486 F.2d 1058 (CCPA 1973), the claims included the limitation “said sodium iodide * * * present in amount of at least 0.17 mg./cc. of said arc tube volume.” The examiner's rejection stated that the claimed “sodium iodide” constituted new matter because the specification was alleged only to disclose “sodium.” The Board affirmed the rejection, but did so on a “wholly different basis,” namely, that the specification failed to disclose the claimed “0.17 mg./cc.” volume limitation.
Waymouth,
486 F.2d at 1060. The court held that the Board's rationale constituted a new ground of rejection, “necessitating different responses by appellants.”
Id.
at 1061.

Factual Situations That Do Not Constitute a New Ground of Rejection

1.
Citing a different portion of a reference to elaborate upon that which has been cited previously.
If the examiner's answer cites a different portion of an applied reference which goes no farther than, and merely elaborates upon, what is taught in the previously cited portion of that reference, then the rejection does not constitute a new ground of rejection. For example, in
In re DBC,
545 F.3d 1373 (Fed. Cir. 2008), the examiner rejected the claims under § 103 over a combination of references, including the English translation of the abstract for a Japanese patent. The examiner cited the English abstract for two claim limitations: (1) Mangosteen rind, and (2) fruit or vegetable juice. The Board affirmed the rejection under § 103 over the same references, but instead of citing the abstract, the Board cited an Example on page 16 of the English translation of the Japanese reference, which was not before the examiner.
DBC,
545 F.3d at 1381. Importantly, the Board cited the Example for the same two claim limitations taught in the abstract, and the Example merely elaborated upon the medicinal qualities of the mangosteen rind (which medicinal qualities were not claimed) and taught orange juice as the preferred fruit juice (while the claim merely recited fruit or vegetable juice). Hence, the Example merely provided a more specific disclosure of the same two generic limitations that were fully taught by the abstract. The court held that this did not constitute a new ground of rejection because “the example in the translation goes no farther than, and merely elaborates upon, what is taught by the abstract.”
DBC,
545 F.3d at 1382 n.5.

2.
Changing the statutory basis of rejection from § 103 to § 102, but relying on the same teachings.
If the examiner's answer changes the statutory basis of the rejection from § 103 to § 102, and relies on the same teachings of the remaining reference to support the § 102 rejection, then the rejection does not

constitute a new ground of rejection. For example, in
In re May,
574 F.2d 1082 (CCPA 1978), a claim directed to a genus of chemical compounds was rejected under § 103 over a combination of references. The primary reference disclosed a species that fell within the claimed genus. Both the examiner and the Board cited the species to reject the claim under § 103. The court affirmed the rejection, but did so under § 102, stating that “lack of novelty is the epitome of obviousness.”
May,
574 F.2d at 1089 (citing
In re Pearson,
494 F.2d 1399, 1402 (CCPA 1974)). Because the court relied on the same prior art species as both the examiner and Board, the court held that this did not constitute a new ground of rejection.
May,
574 F.2d at 1089.

3.
Relying on fewer than all references in support of a § 103 rejection, but relying on the same teachings.
If the examiner's answer removes one or more references from the statement of rejection under § 103, and relies on the same teachings of the remaining references to support the § 103 rejection, then the rejection does not constitute a new ground of rejection. For example, in
In re Kronig,
539 F.2d 1300, 1302 (CCPA 1976), the examiner rejected the claims under § 103 over four references. The Board affirmed the rejection under § 103, but limited its discussion to three of the references applied by the examiner.
Id.
The Board relied upon the references for the same teachings as did the examiner. The court held that this did not constitute a new ground of rejection.
Kronig,
539 F.2d at 1303 (“Having compared the rationale of the rejection advanced by the examiner and the board on this record, we are convinced that the basic thrust of the rejection at the examiner and board level was the same.”).
See also

In re Bush,
296 F.2d 491, 495-96 (CCPA 1961) (Examiner rejected claims 28 and 29 under § 103 based upon “Whitney in view of Harth;” Board did not enter new ground of rejection by relying only on Whitney).

4.
Changing the order of references in the statement of rejection, but relying on the same teachings of those references.
If the examiner's answer changes the order of references in the statement of rejection under § 103, and relies on the same teachings of those references to support the § 103 rejection, then the rejection does not constitute a new ground of rejection. For example, in
In re Cowles,
156 F.2d 551, 552 (CCPA 1946), the examiner rejected the claims under § 103 over “Foret in view of either Preleuthner or Seyfried.” The Board affirmed the rejection under § 103, but styled the statement of rejection as to some of the rejected claims as “Seyfried in view of Foret,” but relied on the same teachings of Seyfried and Foret on which the examiner relied. The court held that this did not constitute a new ground of rejection.
Cowles,
156 F.2d at 554.
See also In re Krammes,
314 F.2d 813, 816-17 (CCPA 1963) (holding that a different “order of combining the references” did not constitute a new ground of rejection because each reference was cited for the “same teaching” previously cited).

5.
Considering, in order to respond to applicant's arguments, other portions of a reference submitted by the applicant.
If an applicant submits a new reference to argue, for example, that the prior art “teaches away” from the claimed invention (
see
MPEP § 2145), and the examiner's answer points to portions of that same reference to counter the argument, then the rejection does not constitute a new ground of rejection. In
In re Hedges,
783 F.2d 1038 (Fed. Cir. 1986), the claimed invention was directed to a process for sulfonating diphenyl sulfone at a temperature above 127° C.
Id.
at 1039. The examiner rejected the claims under § 103 over a single reference. The applicant submitted three additional references as evidence that the prior art teaches away from performing sulfonation above 127° C, citing portions of those references which taught lower temperature reactions. The Board affirmed the rejection, finding the applicant's evidence unpersuasive. On appeal, the Solicitor responded to the applicant's “teaching away” argument by pointing to other portions of those same references which, contrary to applicant's argument, disclosed reactions occurring above 127° C. The court held that this did not constitute a new ground of rejection because “[t]he Solicitor has done no more than search the references of record for disclosures pertinent to the same arguments for which [applicant] cited the references.”
Hedges,
783 F.2d at 1039-40.

Tolling of Time Period To File a Reply Brief

Final Bd.R. 41.40 sets forth the exclusive procedure for an appellant to request review of the primary examiner's failure to designate a rejection as a new ground of rejection via a petition to the Director under Rule 1.181. This procedure should be used if an appellant feels an answer includes a new ground of rejection that has not been designated as such and wishes to reopen prosecution so that new amendments or evidence may be submitted in response to the rejection. However, if appellant wishes to submit only arguments, the filing of a petition under Rule 1.181 would not be necessary because appellant may submit the arguments in a reply brief.

Final Bd.R. 41.40(a) provides that any such petition under Rule 1.181 must be filed within two months from the entry of the examiner's answer and prior to the filing of a reply brief.

Final Bd.R. 41.40(b) provides that a decision granting such a Rule 1.181 petition requires appellants to file a reply under Rule 1.111 within two months from the date of the decision to reopen prosecution. If appellant fails to timely file a reply, then the appeal will be dismissed.

Final Bd.R. 41.40(c) provides that a decision refusing to grant such a Rule 1.181 petition allows appellants a two-month time period in which to file a single reply brief under final Bd.R. 41.41.

Final Bd.R. 41.40(d) provides that if a reply brief is filed prior to a decision on the Rule 1.181 petition, then the filing of the reply brief acts to withdraw the petition and maintain the appeal. Jurisdiction passes to the Board upon the filing of the reply brief, and the petition under Rule 1.181 will not be decided on the merits.

Final Bd.R. 41.40(e) provides that the time periods described in this section are not extendable under Rule 1.136(a) and appellant must seek any extensions of time under the provisions of Rules 1.136(b) and 1.550(c) for extensions of time to reply for patent applications and
ex parte
reexaminations, respectively.

Final Bd.R. 41.40 provides the proper manner for appellants to address a situation where an appellant believes that an examiner's answer contains an undesignated new ground of rejection. The rule does not create a new right of petition—appellants have always had the opportunity to file a petition under Rule 1.181 if an appellant felt that the examiner's answer contained a new ground of rejection not so designated. This final rule merely lays out the process to better enable appellants to address such concerns. The final rule also now tolls the time period for filing a reply brief, so appellants can avoid the cost of preparing and filing a reply brief prior to the petition being decided, and can avoid the cost altogether if the petition is granted and prosecution is reopened. Similarly, the tolling provision will spare examiners the burden of having to act on appellants' requests under Rule 1.136(b) for extension of the two-month time period for filing a reply brief while the Rule 1.181 petition is being decided.

Reply Brief

Bd.R. 41.41(a) is amended to add a heading and to clarify that appellants may file only one reply brief and that such a reply brief must be filed within the later of two months of either the examiner's answer or a decision refusing to grant a petition under Rule 1.181 to designate a new ground of rejection in an examiner's answer.

Bd.R. 41.41(b) is amended to add a heading and subsections, and to delete the provision that a reply brief which is not in compliance with the provisions of the remainder of final Bd.R. 41.41 will not be considered by the Board. Specifically, final Bd.R. 41.41(b)(1) is added, which prohibits a reply brief from including new or non-admitted amendments or Evidence, which is the same language as in Bd.R. 41.41(a)(2). Final Bd.R. 41.41(b) refers to “Evidence” as defined in final Bd.R. 41.30. Final Bd.R. 41.41(b)(2) is also added, which provides that any arguments which were not raised in the appeal brief or are not made in response to arguments raised in the answer will not be considered by the Board, absent a showing of good cause. The final rule allows new arguments in the reply brief that are responsive to arguments raised in the examiner's answer, including any designated new ground of rejection.

Bd.R. 41.41(c) is amended to add a heading.

Examiner's Response to Reply Brief

Bd.R. 41.43 is deleted.

Oral Hearing

Bd.R. 41.47 is amended by removing references to the supplemental examiner's answer in paragraphs (b) and (e)(1), as the final rule does not allow for supplemental examiner's answers. Bd.R. 41.47(b) is further amended to change the time period in which a request for oral hearing is due to take into account the potential for the time period for filing a reply brief to be tolled under final Bd.R. 41.40. Bd.R. 41.47(e)(1) is further amended to replace instances of “evidence” with “Evidence” to incorporate the definition provided in final Bd.R. 41.30.

Decisions and Other Actions by the Board

Bd.R. 41.50(a)(1) is amended by adding a heading.

Bd.R. 41.50(a)(2) is amended by allowing the examiner to write a “substitute” examiner's answer in response to a remand by the Board for further consideration of a rejection.

Bd.R. 41.50(a)(2)(i) and 41.50(a)(2)(ii) are amended by replacing instances of “evidence” with “Evidence” to incorporate the definition provided in final Bd.R. 41.30. Bd.R. 41.50(a)(2)(i) is further amended by replacing “supplemental” with “substitute” examiner's answer.

Bd.R. 41.50(b) is amended by adding a heading and is further amended to clarify the Board's authority to enter a new ground of rejection. Bd.R. 41.50(b)(1) is amended by incorporating the definitions of “Record” and “Evidence” provided in final Bd.R. 41.30, and by clarifying the language of the rule. Bd.R. 41.50(b)(2) is amended to incorporate the definition of “Record” as provided for in final Bd.R. 41.30.

Bd.R. 41.50(c) is amended by removing the Board's power to suggest in a decision how a claim may be amended to overcome a rejection and by adding new language to the rule explaining the procedure by which appellants can seek review of a panel's failure to designate a decision as containing a new ground of rejection. The final rule provides that review of decisions which appellants believe contain a new ground of rejection should be requested through a request for rehearing consistent with the provisions of final Bd.R. 41.52.

Bd.R. 41.50(d) is amended to add a heading, and to delete the “non-extendable” limitation on the response time period.

Bd.R. 41.50(e) is amended to add a heading.

Bd.R. 41.50(f) is amended to add a heading.

Rehearing

Bd.R. 41.52(a)(1) is amended to add cross-references to relevant sections of the rule and to clarify that arguments which are not raised and Evidence which was not previously relied upon are not permitted in the request for rehearing, except as provided in the remainder of final Bd.R. 41.52(a). Bd.R. 41.52(a)(1) is further amended to incorporate the definition of “Evidence” provided in final Bd.R. 41.30.

Bd.R. 41.52(a)(2) is amended to delete the requirement for appellants to make a showing of good cause to present new arguments based on a recent relevant decision of the Board or the Federal Circuit. It is the Office's position that a new argument based on a recent relevant decision would inherently make a showing of good cause.

Bd.R. 41.52(a)(3) is amended to change the word “made” to “designated” to clarify that new arguments are permitted in response to a new ground of rejection designated as such in the Board's opinion.

Final Bd.R. 41.52(a)(4) is added to make clear that new arguments are permitted in a request for rehearing for appellants seeking to have the Board designate its decision as containing a new ground of rejection that has not been so designated.

Thus, the final rule provides appellants with a mechanism to address Board decisions containing new grounds of rejection through a request for rehearing, whether or not designated as such in a Board decision. Final Bd.R. 41.52(a)(3) allows for new arguments in a request for rehearing responding to the merits of a new ground of rejection designated as such, and final Bd.R. 41.52(a)(4) allows for new arguments in a request for rehearing to argue that the Board's decision contains an undesignated new ground of rejection. If such a request for rehearing under final Bd.R. 41.52(a)(4) is granted, then the Board would modify its original decision to designate the decision as containing a new ground of rejection under final Bd.R. 41.50(b) and provide appellants with the option to either reopen prosecution under final Bd.R. 41.50(b)(1) or request rehearing on the merits of the designated new ground of rejection under final Bd.R. 41.50(b)(2).

The final Bd.R. 41.52(b) does not modify Bd.R. 41.52(b).

Action following decision

Bd.R. 41.54 is amended to specifically state that jurisdiction over an application or a patent under
ex parte
reexamination passes to the examiner after a decision on appeal is issued by the Board. This revision to the language incorporates the language of Rule 1.197(a), which is deleted from the final rule. By incorporating the language of Rule 1.197(a) into final Bd.R. 41.54, the rule for passing jurisdiction back to the examiner after decision by the Board is not substantively changed from the previous practice.

Differences Between the Final Rule and the Proposed Rule

Several changes have been made to the rule as proposed in the NPRM. Because some of these changes add briefing requirements to the appeal brief that the Office had proposed to remove in the NPRM, the estimate of the burden on applicants to produce the appeal brief has also changed. The Office previously estimated that the rules proposed in the NPRM would reduce an applicant's paperwork burden from 34 hours to 31 hours. The Office estimates that the Final Rule will reduce the paperwork burden from 34 hours to 32 hours.

Response to Comments

The Office published a notice of proposed rulemaking proposing changes to the rules of practice before the Board of Patent Appeals and Interferences in
ex parte
appeals.
See
Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals; Notice of proposed rulemaking, 75 FR 69828 (Nov. 15, 2010) (NPRM). The Office received comments from six intellectual property organizations, four corporations and foundations, three law firms, and 21 individuals in response to this notice. The Office's responses to the comments follow.

Eight entities submitted written comments solely to express the view that they are wholeheartedly in favor of the changes to the rules as proposed in the NPRM. In light of all of the comments received, the USPTO has decided not to adopt a few of the changes proposed in the NPRM and to adopt a few other proposed changes with slight clarification to the language used to make the rule clearer. On balance, however, the rule changes proposed in the NPRM are being adopted substantially as proposed.

Bd.R. 41.12

Comment 1:
Two comments favored extending the list of preferred citations to include other sources, such as United States Patent Quarterly, LEXIS, and Pacer. Two other comments favored the proposed rule changes.

Response:
The USPTO declines to adopt the suggestion to extend the list of preferred citations to other sources. This rule merely indicates to the public which citation sources are “preferred” by the Board but it does not require appellants to cite to any one particular source.

Comment 2:
One comment suggested that paragraph (d) should be amended to make clear that appellants are not required to provide copies of the BPAI's own precedential decisions.

Response:
A BPAI precedential decision is binding on the Board and is considered an “authority of the Office” and thus does not fall within the ambit of paragraph (d). As such, the rule does not require appellants to submit a copy of a BPAI precedential decision.

Bd.R. 41.20

Comment 3:
While no change was proposed to this section of the rule, one comment was submitted suggesting that the USPTO should not charge fees for appeals that do not reach the BPAI for decision.

Response:
The suggestion is beyond the scope of the NPRM and will not be adopted. The USPTO takes this opportunity to note that 35 U.S.C. 42(d) authorizes the USPTO to refund “any fee paid by mistake or any amount paid in excess of that required.” If an applicant chooses to file a notice of appeal and an appeal brief with the accompanying fees, and the case does not reach the Board for a decision, either through actions taken by the examiner or applicant, then the appeal fees have not been paid by mistake or in excess of that required, and the USPTO lacks statutory authority to refund these appeal fees.

Bd.R. 41.30

Comment 4:
Two comments opposed the proposed definition of “Record” because it did not address file wrappers of older cases that are still maintained in paper format.

Response:
The USPTO creates an Image File Wrapper for any appeal to the Board that does not yet have one. Further, the definition of “Record” in final Bd.R. 41.30 addresses a situation where the official file of the Office is other than an Image File Wrapper.

Bd.R. 41.31

Comment 5:
One comment requested clarification of the term “twice rejected” as used in paragraph (a) of this section because MPEP § 1204 is allegedly narrower than the majority Board decision in
Ex Parte Lemoine,
46 USPQ2d 1420 (BPAI 1994).

Response:
This comment is beyond the scope of the NPRM. Bd.R. 41.31 rule uses the same “twice rejected” language. No change will be made to paragraph (a) as a result of this comment.

Comment 6:
One comment was in favor of the proposed retention of the provision in paragraph (b) allowing a notice of appeal to be filed without a signature. Another comment suggested that paragraph (b) be revised to cite more specifically to Rule 1.33(b).

Response:
The USPTO declines to make this change to the rule. Final Bd.R. 41.31(b) applies to
ex parte
appeals in both applications and reexamination proceedings. Rule 1.33(b) applies only to amendments and other papers filed in an application, while Rule 1.33(c) applies to amendments and other papers filed in a reexamination proceeding on behalf of the patent owner. As such, the USPTO will retain the rule as proposed with the more general reference to Rule 1.33 to encompass both types of appeals.

Comment 7:
Three comments were in favor of the proposal in Bd.R. 41.31(c) that an appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by applicant's amendment, and two comments were opposed. One comment opposed to proposed Bd.R. 41.31(c) suggested that claims declared cancelled for purposes of the appeal be automatically reinstated if prosecution is reopened by the examiner.

Response:
The USPTO declines to adopt the suggested change to the proposed rule. If an applicant chooses to cancel a claim to avoid appeal of that claim rejection, the claim remains cancelled. Nothing in this rule prohibits applicants from adding back these cancelled claims by amendment should prosecution be reopened.

Comment 8:
Another comment opposed to Bd.R. 41.31(c) proposed that the USPTO allow appellants to appeal less than all of the claims, and that allowing the USPTO to cancel or deem claims cancelled or requiring cancellation as a quid pro quo for appeal is ultra vires.

Response:
It has long been USPTO practice that an appellant must either appeal from the rejection of all the rejected claims or cancel those claims not being appealed.
See In re Benjamin,
1903 Dec. Comm. Pat. 132, 134 (1903). Final Bd. R. 41.31(c) merely states that an appeal is presumed to be taken from the rejection of all rejected claims that have not been cancelled. Nothing in the rule would require applicants, as a quid pro quo for appeal, to cancel claims. Should an applicant desire to appeal less than all the rejected claims without actually cancelling the claims, applicant may simply say nothing as to the claims applicant does not wish to appeal and the Board may simply affirm the rejection of those claims.

Comment 9:
One comment suggested that the proposed revision to Bd.R. 41.31(c) violates the Paperwork Reduction Act because the commenter claimed the Office had not stated the utility to be gained by presuming applicants are appealing all rejected claims. Additionally, the commenter suggested that a better solution would be to allow the appellant to appeal some claims and leave some claims rejected and pending.

Response:
The NPRM explains that the change to Bd.R. 41.31(c) will save time and paperwork for the “majority of appellants who seek review of all claims under rejection” by eliminating the requirement that each claim on appeal be listed in the notice of appeal.
See
75 FR 69828-01, 2010 WL 4568003, at *69831 (Dep't of Commerce Nov. 15, 2010). The NPRM further explains that the utility of this change is in “avoid[ing] the unintended cancellation of claims by the Office due to an

appellant's mistake in the listing of the claims in either the notice of the appeal or in the appeal brief.”
Id.
Furthermore, the Office rejects the commenter's suggestion of allowing some claims to remain pending. Allowing such a piecemeal approach to appeals would greatly decrease the efficiency of the patent prosecution process.

Comment 10:
One comment requested clarification on the portion of Bd.R. 41.31(c) that states, “Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal can be considered” because it is not clear whether this sentence would apply to questions created by the examiner, the appellant or the Board, or by all three.

Response:
This comment is beyond the scope of the NPRM. This language is in the 2004 version of Bd.R. 41.31(c), and the proposed rule making did not propose any changes to this portion of the rule.

Comment 11:
One comment suggested adding a provision to Bd.R. 41.31(c) to address appeals filed while petitions under Rule 1.181 are pending, specifically that the Chief Judge be able to decide if the appeal can proceed without the petition being decided or a procedure for expediting the petition decisions where that decision is necessary prior to decision on appeal.

Response:
This comment is beyond the scope of the NPRM. The language in the last sentence of paragraph (c) is in the 2004 version of Bd.R. 41.31(c), and the proposed rulemaking did not propose any changes to this portion of the rule.

Bd.R. 41.33

Comment 12:
One comment requested clarification stating that the limitations in Bd.R. 41.37(c)(2) and Bd.R. 41.41(b)(1) to preclude entry of a “new” or “non-admitted” amendments would potentially bar submission of items otherwise permitted under Bd.R. 41.33.

Response:
Final Bd.R. 41.37(c)(2) and final Bd.R. 41.41(b)(1) are intended to preclude reliance on new or non-admitted amendments that are not otherwise admitted by the examiner under final Bd.R. 41.33. If the examiner enters an amendment under final Bd.R. 41.33, appellant may rely on that amendment in the briefs. If the amendment is filed concurrently with a brief, and if it complies with final Bd.R. 41.33, then appellant may refer to the amendment in the brief even prior to the examiner rendering a decision on whether to admit the amendment. Should the examiner subsequently refuse to enter the amendment, then the Board will require appellant to file a substitute brief.

Comment 13:
Four comments opposed the rule in Bd.R. 41.33(d) restricting affidavits or other evidence filed after the date of filing an appeal. One comment suggested allowing appellants, with the payment of an additional fee, to file rebuttal evidence with an appeal brief.

Response:
In response to the comments opposed to any restrictions on the amendments and evidence that appellants can file after final and/or on or after the filing of a brief, the USPTO declines to make any additional changes to the rule. Final Bd.R. 41.33(d) is virtually identical to Bd.R. 41.33(d), the only changes being to incorporate the definition of Evidence from final Bd.R. 41.30. The USPTO rules provide appellants with mechanisms for introduction of new evidence and amendments through petitions to challenge the finality of a rejection, petitions to challenge whether an answer contains an undesignated new ground of rejection, and/or through request for continued examination (RCE) practice. The available mechanisms provide appellants with a full and fair opportunity to present amendments and/or evidence so that the examiner can first consider them prior to the case reaching the Board for review. The Board's main purpose is to review adverse decisions of examiners. The Board's review is not a continuation of the initial examination of a case. To ensure that the Board reviews a complete record that has been fully considered first by the examiner, the USPTO will maintain this rule as proposed, except to add back in a cross-reference to final Bd.R. 41.50(a)(2)(i) and to replace instances of “evidence” with “Evidence” so as to incorporate the definition provided in final Bd.R. 41.30.

Comment 14:
One comment proposed that Bd.R. 41.33(d) be amended to allow appellants to reference encyclopedia or dictionary definitions in the brief because these are materials that may be judicially or officially noticed without being formally admitted into evidence.

Response:
The USPTO agrees that dictionaries can be judicially noticed without being formally admitted into evidence and thus adopts a definition of “Evidence” in final Bd.R. 41.30 for this subpart that excludes dictionaries from this definition. This exclusion allows appellants to submit dictionaries for the first time in an appeal brief, or for the first time in a reply brief if the arguments pertaining thereto are responsive to an argument raised in the examiner's answer or if good cause is shown. This exclusion will likewise allow examiners to cite to a dictionary for the first time in the examiner's answer without such citation automatically resulting in a new ground of rejection under final Bd.R. 41.39(a)(2). The USPTO will determine based on controlling case law and the facts of each case whether citation to a dictionary in the examiner's answer or a Board decision constitutes a new ground of rejection. The USPTO notes that its rules are designed so that the scope of admissible evidence that can be submitted by the applicant narrows as the application progresses toward appeal. In particular, the scope of admissible evidence narrows after mailing of a final rejection, and then narrows further after applicant files a notice of appeal, and then narrows even further after appellant files an appeal brief.
Compare
37 CFR 1.116(e), 41.33(d)(1), and 41.33(d)(2). To ensure that the USPTO is consistent in its treatment of dictionaries and is not more restrictive regarding admission of dictionaries in after-final practice than on appeal under final Bd.R. 41.33(d), the USPTO will not treat dictionaries as “evidence” for purposes of Rule 1.116(e). However, the Office encourages applicants and examiners to cite dictionaries early in the prosecution to aid in narrowing, and possibly resolving, issues before the appeal stage.

Bd.R. 41.35

Comment 15:
One comment suggested that the Board take jurisdiction earlier than proposed in Bd.R. 41.35(a),
i.e.,
at the time of filing of the notice of appeal.

Response:
The USPTO declines to adopt this suggestion. Since examiners may choose to reopen prosecution or allow applications after the filing of a notice of appeal, changing the Board's jurisdiction to the point at which a notice of appeal is filed would foreclose the examiner's options and could result in applicants unnecessarily going through a costly and lengthy appeal process.

Comment 16:
Two comments suggested that the Board take jurisdiction later,
i.e.,
after the examiner has had an opportunity to consider the reply brief, to allow for the instance where the examiner would find some or all of the claims patentable in light of the reply brief.

Response:
USPTO data for the past ten years (FY 2001-FY 2010) shows that examiners allow applications in approximately 1% of all appeals and reopen prosecution in approximately 1% of all appeals after the filing of a reply brief. It is most often the case that once the examiner has held an appeal conference on the case and prepared an

examiner's answer, the examiner simply acknowledges and enters the reply brief and the appeal proceeds to the Board for review and decision. Meanwhile, USPTO data shows over the same time period that in those cases where the examiner simply acknowledged and entered the reply brief, the average pendency from the filing of a reply brief to the time the examiner acknowledged and entered the reply brief was 55 days. As such, the advantage in shorter pendency received by all appellants from the Board taking jurisdiction upon filing a reply brief—at which point, the examiner has held an appeal conference on the case and prepared an examiner's answer—outweighs, in the view of the USPTO, the advantage gained in those rare instances where an appeal may become unnecessary after filing of the reply brief. For these reasons, the USPTO will maintain the language of Bd.R. 41.35(a) as proposed.

Comment 17:
Three comments were in favor of Bd.R. 41.35(a) as proposed.

Response:
The USPTO adopts the proposed changes to Bd.R. 41.35(a).

Comment 18:
One comment suggested that the USPTO adopt a default assumption for Bd.R. 41.35(b)(5) that appellant wants to proceed on appeal for other appealed claims and abandon claims subject to an action under Bd.R. 41.39 or 41.50 requiring response, akin to the approach taken when some claims are not dealt with in the appeal brief context.

Response:
Under final Bd.R. 41.39(b), 41.50(a)(2) and 41.50(b), if appellant does not file a paper in response to a new ground of rejection or in response to a substitute examiner's answer prepared in response to a remand, the Board will dismiss the appeal “as to the claims subject to the new ground of rejection” or “as to the claims subject to the rejection for which the Board has remanded the proceeding.” If there are remaining claims not subject to the new ground of rejection or remand, then the appeal will proceed as to those remaining claims. The Board's jurisdiction under final Bd.R. 41.35(b)(5) would end only if all of the claims on appeal require action under final Bd.R. 41.39(b), 41.50(a)(2), or 41.50(b) and the appellant fails to take such required action, in which case the Board would enter an order of dismissal for the entire appeal. As to final Bd.R. 41.50(d), if an appellant fails to respond to the Board's request for briefing and information, the Board is entitled, at its discretion, to construe appellant's failure to respond as an indication that appellant no longer wishes to pursue the appeal, in which case the Board may enter an order dismissing the appeal.

Comment 19:
One comment opposed Bd.R. 41.35(c) because, though the proposed rule removed the ability of the Board to remand appeals, as the Director can delegate the authority to remand, this rule would not remedy the problem created by remands,
i.e.,
that examiners can unduly draw out prosecution and not do a complete examination the first time around. The comment proposed that remands take place only at the appellant's request.

Response:
The rule provides for the Director to sua sponte order a proceeding remanded to the examiner prior to entry of a decision on the appeal by the Board. The USPTO declines to adopt the suggestion to change the rule to strip this power from the Director.

Comment 20:
One comment opposed the proposed changes to Bd.R. 41.35(d) because it would prevent consideration by the examiner of newly discovered evidence that is more pertinent than the art used in the rejection on appeal.

Response:
If an appeal needs to be remanded for consideration of Information Disclosure Statements, the remand may result in lengthy delays in the appeal process and ultimately result in no change to the rejections that eventually reach the Board on appeal. As such, the USPTO will maintain the language of proposed Bd.R. 41.35(d) in this final rule.

Comment 21:
One comment stated, with respect to proposed Bd.R. 41.35(d), that petitions filed while the Board possesses jurisdiction are likely to be untimely. The comment requested reconsideration of the two-month deadline for filing petitions.

Response:
This suggestion is outside the scope of the NPRM, and the USPTO declines to adopt any rule changes regarding the deadline for filing petitions.

Comment 22:
One comment suggested that the USPTO adopt a “restatement” clarifying what constitutes appealable subject matter to better enable the examining corps to address procedural issues.

Response:
The USPTO will take this restatement into account when revising the MPEP in accordance with the final rule.

Comment 23:
Another comment was in favor of the proposed changes to Bd.R. 41.35(d).

Response:
The USPTO adopts proposed Bd.R. 41.35(d) as part of this final rule.

Bd.R. 41.37

Comment 24:
Two comments opposed exempting pro se appellants from providing a statement of the last entered amendment under proposed Bd.R. 41.37(c)(1)(iv).

Response:
The USPTO agrees with the comments suggesting requiring pro se appellants to provide the same information as other appellants regarding the claims on appeal. For reasons discussed below, the USPTO has decided to maintain the requirement for a claims appendix in lieu of the statement of last entered amendment. As such, the final rule requires all appellants, including pro se appellants, to provide a claims appendix.

Comment 25:
One comment requested clarification as to whether pro se appellants must comply with all the requirements, but only substantially as to some, or whether the pro se appellant does not need to comply with all the requirements and only substantially as to the identified paragraphs.

Response:
Final Bd.R. 41.37(c) requires pro se appellants to substantially comply with only the requirements in the identified subparagraphs, and pro se appellants are not required to comply with the requirements in the remaining subparagraphs of final Bd.R. 41.37(c).

Comment 26:
Two comments favored the default assumption provided for in Bd.R. 41.37(c)(1)(i), and one comment suggested that absent a statement to the contrary, the Board should assume that the real party in interest consists of one or more of the inventors of the application and/or the assignee of the application as recorded at the USPTO.

Response:
The USPTO declines to adopt this suggested change. The default provision is to address the situation in which the inventor(s) is the real party in interest. In such an instance, the Board will not hold a brief non-compliant if the statement of real party in interest is omitted. In the past, appellants mistakenly thought they could omit this portion of the brief if the named inventor(s) was the real party in interest. This led to briefs being held to be non-compliant based on a technicality. The default provision gives the USPTO the flexibility to assume that the inventor(s) are the real party in interest and avoid having to hold a brief non-compliant.

Comment 27:
One comment was in favor of Bd.R. 41.37(c)(1)(ii) as proposed and another comment suggested we employ the phrase “controlled by” instead of “owned” and “real party in interest” instead of “appellant or assignee” as the real party in interest may be in a better position to know of related appealed cases.

Response:
While under certain circumstances, an entity other than the appellant, appellant's legal representative, or assignee may be in a

better position to know of related cases, the USPTO declines to adopt the suggested change, which would expand the obligations to report related cases beyond this enumerated group.

Comment 28:
Five comments were in favor of deleting the statement of the status of claims from the 2004 version of Bd.R. 41.37(c)(1)(iii) and no comments were received opposed to this proposed change. One comment in favor of the proposed change suggested that appellants should be allowed to cancel a claim in the brief itself, thereby saving the cost of filing a separate document formally cancelling the claim.

Response:
The USPTO declines to adopt this suggested change. The USPTO requires that claim amendments be filed in a separate Amendment under final Bd.R. 41.33, so that they are separately considered and separately entered or refused entry as appropriate by the examiner. Under the new streamlined procedure for review of appeal briefs, the Board now reviews the appeal brief for entry into the Record, but the examiner continues to review Amendments under final Bd.R. 41.33 for entry into the Record.

Comment 29:
One comment opposed proposed Bd.R. 41.37(c)(1)(iv), another comment suggested a change to the proposed rule to make clear that the statement should include the date of filing of the last entered amendment of the claims, as opposed to amendments to the specification, and another comment requested reconsideration of the proposed rule because in reissue and reexamination proceedings the full set of claims is not reproduced in amendments and thus in these instances the latest entered amendments may not reflect all the pending claims on appeal.

Response:
The USPTO agrees with the last comment, and has decided to delete the requirement in proposed Bd.R. 41.37(c)(1)(iv) requiring a statement of last entered amendment and to delete the requirement in Bd.R. 41.37(c)(1)(iv) for a statement of the status of amendments.
Compare
37 CFR 1.121 (requiring all claims ever presented), with 37 CFR 1.173 (reissues) and 37 CFR 1.530 (
ex parte
reexaminations) (requiring only claims being changed/added). As discussed in further detail below, the USPTO will maintain the requirement in Bd.R. 41.37(c)(1)(viii) (renumbered as final Bd.R. 41.37(c)(1)(v)) to provide a claims appendix.

Comment 30:
Five comments were opposed to the proposed changes in Bd.R. 41.37(c)(1)(v), which required a summary of the claimed subject matter to include annotations for each claim limitation “in dispute.” The comments were concerned that the phrase “in dispute” was vague and unclear. Some of the comments suggested eliminating the summary of the claimed subject matter requirement entirely, other comments suggested limiting the requirement to only those appeals where the examiner raised a rejection under 35 U.S.C. 112, while other comments suggested amending the proposed rule to require annotations for each claim limitation. Another comment was concerned that annotating only those claim elements deemed to be “in dispute” would amount to an implied waiver or admission regarding those claim limitations not annotated. Another comment requested clarification of the goal of this briefing requirement.

Response:
In light of the many comments received that expressed concern with determining which claim limitations are “in dispute” and expressed further concern with implied waiver for those limitations not annotated, the USPTO has decided not to amend this portion of the rule relating to the summary of claim subject matter to limit the summary to only those claims “in dispute.” Rather, the USPTO maintains the language of the 2004 rule, which requires a concise explanation of the subject matter defined in each of the independent claims. In light of the change to Bd.R. 41.35, the USPTO retains the proposed change requiring the summary for “each of the rejected independent claims”, whereas the 2004 rule requires the summary for each of the independent claims “involved in the appeal.” The USPTO further retains the proposed changes that clarify that citation to the specification should be to the specification “in the Record” and not to the patent application publication. The USPTO further retains the proposed changes that permit appellant to refer to the specification by page and line number or “by paragraph number.” As to the comment requesting clarification about the goal of this section of the brief, the goal is to familiarize the judges with the claimed subject matter. This summary is helpful to the Board to work through cases as efficiently and expeditiously as possible. It helps to orient the judges so as to quickly and efficiently focus on the determinative aspects of the claims and the corresponding disclosure in the specification.

Comment 31:
One comment suggested amending the language of proposed Bd.R. 41.37(c)(1)(v) to clarify whether annotation of separately argued dependent claims is required, as the language in the 2004 rule could be read as requiring annotation of dependent claims only if they are both argued separately and contain means plus function language.

Response:
The final rule requires a concise explanation of the subject matter of separately argued dependent claims only if such claims include a means plus function or step plus function recitation as permitted by 35 U.S.C. 112, sixth paragraph. However, the rule does not prohibit an appellant from providing a summary of claimed subject matter for all dependent claims argued separately, and the USPTO considers it a best practice for appellants to provide a summary of claimed subject matter for all dependent claims argued separately.

Comment 32:
One comment opposed adoption of a single format of the summary in proposed Bd.R. 41.37(c)(1)(v) as being too rigid and suggested that the drafter of the appeal brief should be allowed to use whatever format they deem to be the most informative. The comment also requested the BPAI to provide examples of confusing and uninformative formats, rather than a single compliant format.

Response:
The USPTO has decided to maintain the 2004 rule in substantial part, which does not require a single format for compliance. The rule does require, however, that regardless of the format provided by appellants, the summary of claimed subject matter must “refer to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters.” The Board will find briefs to be non-compliant if the summary of the claimed subject matter does not include references to the specification by page and line number or by paragraph number, and references to drawings, if any, by reference characters. The Board will post examples on its Web page of both compliant and non-compliant summaries.

Comment 33:
One comment stated that the language in proposed Bd.R. 41.37(c)(1)(v) requiring the summary to be “sufficient to allow the Board to understand the claim” is vague.

Response:
The USPTO has decided to maintain the 2004 rule in substantial part. As such, this language is not incorporated in the final rule (renumbered as final Bd.R. 41.37(c)(1)(iii)).

Comment 34:
One comment opposed the proposed Bd.R. 41.37(c)(1)(v) because it removed the requirement for appellants to identify the structure for all means plus function elements of the independent claims and separately argued dependent claims.

Response:
The USPTO has decided to maintain the 2004 rule in substantial part. The final rule requires: “For each rejected independent claim, and for each dependent claim argued separately under the provisions of paragraph (c)(1)(iv) of this section, if the claim contains a means plus function or step plus function recitation as permitted by 35 U.S.C. 112, sixth paragraph, then the concise explanation must identify the structure, material, or acts described in the specification in the Record as corresponding to each claimed function with reference to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters.”

Comment 35:
Four comments were in favor of the proposed change that eliminates the statement of the grounds of rejection in Bd.R. 41.37(c)(1)(vi), and the USPTO received no comments opposed to this proposed change.

Response:
The USPTO adopts the elimination of the requirement as set forth in Bd.R. 41.37(c)(1)(vi) as proposed.

Comment 36:
Two comments suggested that proposed Bd.R. 41.37(c)(1)(vii) be amended to prohibit appellants from raising arguments in the appeal brief that have not been raised previously in prosecution.

Response:
The USPTO declines to adopt a rule prohibiting appellants from raising arguments in the appeal brief for the first time. In the indefinitely delayed 2008 final rule, the USPTO would have limited appellant's ability to raise new arguments in the appeal brief based on whether the argument had been raised before the examiner.
See
73 FR 32943 (Jun. 10, 2008). Numerous comments were received in opposition to this proposed change. Keeping in mind the comments received in the prior rule making activity, the USPTO declines to set out a rule that limits appellants from raising arguments in the appeal brief for the first time.

Comment 37:
One comment requested further clarification of the proposed Bd.R. 41.37(c)(1)(vii) as it relates to waiver. Specifically, the comment requested the USPTO clarify on what basis the Board will review the examiner's determination of patentability and explain the basis for that standard of review based on statutory authority and judicial precedent. The comment suggested that the Board should act as a fact finder, independently judge the examiner's findings, and conduct an independent review of the entire record, without presuming any part of the examiner's position to be correct. The comment suggested that the Board should review the statement of rejection in the office action from which the appeal is taken and determine whether that establishes a prima facie case of unpatentability, and, only in the instance where the Board determines that a prima facie case has been established would the Board proceed to review the appeal brief and the answer. Another comment suggested amending proposed subparagraph (c)(1)(vii) to provide parity so that any arguments presented by an appellant and not addressed by the examiner in the answer will be treated as waived by the Board.

Response:
The USPTO reiterates its statements on waiver provided in the NPRM. The Board may treat as waived, for purposes of the present appeal, any arguments not raised by appellant.
See Hyatt
v.
Dudas,
551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived);
In re Watts,
354 F.3d 1362, 1368 (Fed. Cir. 2004) (declining to consider the appellant's new argument regarding the scope of a prior art patent when that argument was not raised before the Board);
In re Schreiber,
128 F.3d 1473, 1479 (Fed. Cir. 1997) (declining to consider whether prior art cited in an obviousness rejection was non-analogous art when that argument was not raised before the Board).
See also

Ex parte Frye,
94 USPQ2d 1072 (BPAI 2010). Final Bd.R. 41.37(c)(1)(iv) permits the Board to refuse to consider arguments not raised in the appeal brief, except as provided in final Bd.R. 41.41, 41.47, and 41.52. This language in the final rule is substantially the same as the language of the 2004 version of Bd.R. 41.37(c)(1)(vii), which states that “[a]ny 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.” Any additional discussion of “waiver” as well as “clarification” of how the Board will review appeals is outside the scope of this rule making. Issues of waiver and how the Board will review appeals is uniquely case-specific and thus best left to discussion in future Board decisions as warranted.
See Ex parte Frye,
94 USPQ2d 1072 (BPAI 2010) and
In re Jung,
637 F.3d 1356 (Fed. Cir. 2011) for a general discussion of how the Board conducts its review. As to the comment suggesting that the Board review the statement of the rejection in the Office action from which the appeal is taken and determine whether that establishes a prima facie case of unpatentability, and only in the instance where the Board determines that a prima facie case has been established would the Board proceed to review the appeal brief and the answer, the USPTO declines to adopt this suggestion. The Board is a tribunal of appeal, where the appellant is responsible for pointing out the alleged error in the examiner's decision on appeal.
See Ex parte Frye,
94 USPQ2d at 1075 (“If an appellant fails to present arguments on a particular issue—or, more broadly, on a particular rejection—the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection” (citations omitted));
Jung,
637 F.3d at 1365-66. The Board's role is not to reexamine the application. At the time of filing the notice of appeal, an appellant can request a panel review by experienced examiners using the pre-appeal brief conference program. The appellant can also challenge specific aspects of the prima facie case and merits of the rejection by argument and evidence in the appeal brief.
See generally In re Jung,
637 F.3d 1356 (Fed. Cir. 2011) (discussing nature of challenging rejections during Board appeals).

Comment 38:
One comment questioned whether the Office was shifting the burden of proof of patentability to the applicants by requiring an applicant to plead all grounds for appeal in the appeal brief and considering any grounds that were not pled to be waived, and whether such a rule was substantive and thus outside the Office's rule making authority.

Response:
The Office is not shifting any burden of proof. The burden of proof of unpatentability remains on the Office. The Office is merely clarifying an appellant's responsibility to point out what it is that the appellant wants the Board to review and what the examiner's error is believed to be.
See In re Jung,
637 F.3d 1356, 1356-66 (Fed. Cir. 2011). This requirement merely governs the manner in which appellants present their viewpoints to the agency; it does not foreclose effective opportunity to make one's case on the merits.
See JEM Broad. Co.
v.
F.C.C.,
22 F.3d 320, 326 (DC Cir. 1994) (stating that a “critical feature” of a procedural rule “is that it covers agency actions that do not themselves alter the rights or interests of parties, although it may alter the manner in which the parties present themselves or their viewpoints to the agency.”).

Comment 39:
Four comments were in favor of elimination of the claims appendix from Bd.R. 41.37(c)(1)(viii) because it would decrease the burden on appellants in drafting briefs. Three comments opposed elimination of the

claims appendix because it adds a burden to the public and the Board to search through the Image File Wrapper for the last entered amendment, because Briefs should be reasonably self-contained, and because in reissues and reexaminations the last entered amendment may not include a complete listing of the claims on appeal.

Response:
In order to ensure that the examiner and appellants are presenting arguments as to the same set of claims on appeal, and in light of the comments raised regarding reissues and reexaminations, the USPTO has reconsidered the proposed deletion of the claims appendix and will instead maintain the requirement for appellants to include a claims appendix in the appeal brief (renumbered as final Bd.R. 41.37(c)(1)(v)).

Comment 40:
Three comments were in favor of elimination of the evidence and related proceeding appendices from Bd.R. 41.37(c)(1). One comment proposed that the rule regarding the evidence appendix should clarify that it is appropriate to include materials that are not readily available to the Board including dictionary definitions, encyclopedias, unreported decisions, and administrative materials.

Response:
The USPTO declines to add back the requirement for an evidence appendix simply to clarify what evidence is appropriate to include in such an appendix. The USPTO notes that elimination of this briefing requirement does not prohibit appellants from including an evidence appendix, and that the USPTO views inclusion of an evidence appendix, where warranted, as a best practice. However, the USPTO will determine on a case-by-case basis whether evidence referred to in and/or submitted with a brief should be considered under final Bd.R. 41.33. As discussed previously, the USPTO has adopted a definition of “Evidence” that excludes dictionaries, thus allowing appellants to refer to dictionary definitions in the appeal brief.

Comment 41:
One comment requested clarification as to the prohibition in Bd.R. 41.37(c)(2) against including “new” or “non-admitted” amendments, affidavits or other evidence in briefs, because as written it could be construed to bar the submission of items otherwise permitted under Bd.R. 41.33.

Response:
This comment is addressed above in the response to Comment 12.

Comment 42:
One comment questioned why the proposed rules did not incorporate in Bd.R. 41.37(d) the current streamlined review of briefs for compliance with the rules by the Chief Judge or his designee.

Response:
The USPTO chose not to codify the new streamlined procedure since this procedure relates to an internal management practice. Such practices are not typically codified in rules so as to provide the Office with the flexibility to make changes to the streamlined procedures should the need arise.

Comment 43:
One comment suggested that the penalty for a non-compliant appeal brief in Bd.R. 41.37(d) should be that the non-compliant portion of the brief not be considered for purposes of the appeal. The comment suggested that the “two strikes” rule is harsh and capricious for something that may be a de minimus error, and that this type of response is not a default under the Federal Rules of Appellate Procedure.

Response:
The USPTO declines to adopt the suggested change. The penalty for failure to overcome the reasons for non-compliance, as set forth in final Bd.R. 41.37(d), is the same penalty provided for in the 2004 version of Bd.R. 41.37(d). Further, the rule as proposed clarifies that appellants can petition the Chief Administrative Patent Judge if they feel their brief has been found to be non-compliant in error.

Bd.R. 41.39

Comment 44:
One comment suggested defining or deleting the use of “primary examiner” in Bd.R. 41.39(a) and in Bd.R. 41.39(a)(2), (b)(1), and (b)(2), because this term is not defined in the CFR or the MPEP.

Response:
The suggestion is beyond the scope of the NPRM and will not be adopted. The term “primary examiner” is used in 35 U.S.C. 134, the 2004 version of Bd.R. 41.39 and previous versions of the rule (
e.g.,
Rule 1.193 (1959)). The USPTO is using “primary examiner” in this paragraph to have the same meaning as used in 35 U.S.C. 134.

Comment 45:
One comment opposed the removal in Bd.R. 41.39(a)(1) of the requirement for the examiner to present an integrated statement of the grounds of rejection, because it would place an undue burden on appellant and would discourage the examiner from being consistent.

Response:
By not requiring examiners to restate the grounds of rejection in the answer, this rule will remove the possibility of any inconsistencies between the articulation of the grounds of rejection as stated in the Office action from which the appeal is taken and the articulation of the grounds of rejection in the answer, and will save appellants and the Board the time of having to compare the grounds of rejection in each document to ensure that they are the same. Under the final rule, the examiner will provide only a response to arguments raised in the appeal brief and/or a new ground of rejection, designated as such. The caveat in final Bd.R. 41.39(a)(1), which allows for modification of the grounds of rejection in an advisory action or pre-appeal brief conference decision, was deemed necessary because often appellants raise new arguments after the Office action from which the appeal is taken,
i.e.,
in a reply after final rejection or in a pre-appeal brief conference request, and any modification to the rejections made by the examiner, such as the withdrawal of a ground of rejection, should be taken into account in the grounds of rejection on appeal. Therefore, the examiner cannot reinstate a withdrawn rejection in the examiner's answer without designating it as a new ground of rejection.

Comment 46:
One comment opposed the portion of the proposed Bd.R. 41.39(a)(2) that allows modification of the grounds of rejection in an advisory action or pre-appeal brief conference decision.

Response:
The USPTO incorporates by reference its response to comment 45 provided
supra.

Comment 47:
Two comments favored proposed Bd.R. 41.39(a)(2) because the proposed rule, along with the examples provided in the discussion portion of the notice of proposed rule making, clarify when a new ground of rejection is made in an examiner's answer. Another comment opposed this proposed rule because it would increase burdens to the USPTO and permit delays in prosecution by appellants. This comment suggested that it would be better to address the issue of new evidence by not allowing appellants to make arguments in the briefs that were not presented during prosecution, or, by allowing examiners “by default” to introduce new evidence in the answer.

Response:
The USPTO declines to adopt a rule prohibiting appellants from raising arguments in the appeal brief for the first time. In the indefinitely delayed 2008 final rule, the USPTO would have limited appellant's ability to raise new arguments in the appeal brief based on whether the argument had been raised before the examiner.
See
73 FR 32943 (Jun. 10, 2008). Numerous comments were received in opposition to this proposed change. Keeping in mind the comments received in the prior rule making activity, the USPTO declines to set out a rule that limits appellants from raising arguments in the appeal brief for the first time.

Comment 48:
One comment favored the requirement in Bd.R. 41.39(a)(2) for Director approval of answers containing

new grounds of rejection, but suggested that the rule should include a standard for the approval to include a substantive review of the pertinence of the newly cited prior art.

Response:
The USPTO declines to codify a specific standard to be used by the Director to approve a new ground of rejection. The question of whether to approve an answer that contains a new ground of rejection is case-specific and, as such, is not amenable to a single standard. The USPTO notes that the text of Bd.R. 41.39(a)(2) as contained in this Final Rule reflects a minor modification from the version in the NPRM. The revision was made to clarify that the rule requires that the examiner obtain the Director's approval of an answer containing a new ground of rejection, and that the Director is not required to provide such approval.

Comment 49:
One comment requested clarification of “the references in this rule to modification of a rejection by an advisory action”, the concern being that the “continuation” portion of the advisory action may be used to substantially modify the rejection, and could raise the issue of whether the examiner has entered a new ground of rejection in the advisory action even before the filing of a notice of appeal. The comment stated that it would be especially important to have this language clear because Bd.R. 41.39(a)(1) would not require the examiner to restate the grounds of rejection—which could lead to confusion. The comment suggested that the rule state that the reference to a modification of a rejection in an advisory action would be only with regard to the status of the pending rejections or which claims are subject to a pending rejection, and that modification beyond that should not be encompassed by this rule, but should be achieved through reopening prosecution.

Response:
The USPTO declines to modify the rule to specifically limit the content of an advisory action because it is impossible for the USPTO to foresee every situation that may ari

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/fr%3A2011-29446. Public record. Not legal advice.