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

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 41

[Docket No. PTO-P-2007-0006]

RIN 0651-AC12

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 Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office amends the rules governing practice before the Board of Patent Appeals and Interferences in

ex parte

patent appeals. Amendments to the rules governing practice before the Board in

ex parte

appeals are needed to permit the Board to handle an increasing number of

ex parte

appeals in a timely manner.

DATES:

Effective Date:

December 10, 2008.

Applicability Date:

The final rule shall apply to all appeals in which an appeal brief is filed on or after the effective date.

FOR FURTHER INFORMATION CONTACT:

Fred E. McKelvey or Allen R. MacDonald at 571-272-9797.

SUPPLEMENTARY INFORMATION:

Background

A notice of proposed rulemaking was published in the

Federal Register

(72 FR 41,472-41,490 (Jul. 30, 2007)). The notice was also published in the Official Gazette. 1321 Off. Gaz. Pat. Office 95 (Aug. 21, 2007). The public was invited to submit written comments. Comments were to be received on or before September 30, 2007. Comments received on or before October 15, 2007, were considered. Comments received after October 15, 2007, were not considered.

Existing rules in Part 1 are denominated as “Rule x” in this

supplementary information

. A reference to Rule 136(a) is a reference to 37 CFR 1.136(a) (2007).

Existing rules in Part 41 are denominated as “Rule 41.x” in this

supplementary information

. A reference to Rule 41.3 is a reference to 37 CFR 41.3 (2007).

Proposed rules in the notice of proposed rulemaking and this final rule are denominated as “Bd.R. x” in this

supplementary information

. A reference to Bd.R. 41.3 is a reference to Bd.R. 41.3, as proposed to be amended in the notice of proposed rulemaking, or Bd.R. 41.3 as amended by this final rule.

A portion of the Board's jurisdiction is to consider and decide

ex parte

appeals in patent applications (including reissue, design and plant patent applications) and

ex parte

reexamination proceedings.

Presently, the Board is experiencing a rapid increase in

ex parte

appeals. In FY 2007, the Board received 4639

ex parte

appeals. The number of appeals received in FY 2007 exceeded the appeals received in FY 2006 by more than 1000 appeals. In FY 2008, the Board expects to receive more than 6000

ex parte

appeals. The amendments to the rules governing

ex parte

appeals are one item of a five point plan to ensure that the Board will be able to handle an increasing number of

ex parte

appeals in a timely manner. Some of the changes are modeled after the Federal Circuit rules.

The amended rules make clear that the Board is not a tribunal for

de novo

examination. The rules establish procedures to determine whether an appellant has established that the examiner erred. For example, the rules require the appellant's argument shall explain why the examiner is believed to have erred as to each rejection to be reviewed. Arguments not made are waived.

A major objective of the amended rules is to avoid unnecessary returns to examiners by the Appeals Center and the Board, along with the resulting delays in application and appeal pendency. The requirements of the amended rules are believed to be more objective and, therefore, both appellants and examiners will have a better understanding of what is required, thereby minimizing, if not eliminating, a need to hold appeal briefs defective. If a rule does not require an action to be taken in connection with an appeal brief, then a brief will not be held defective for failure to take that action. Some former rules have turned out in practice to be too subjective. For example, the former rules require a summary of the invention. Appellants, as well as examiners, have given different interpretations to the requirement for a summary of the invention. The amended rules replace the requirement for a summary of the invention with a claims and drawing analysis and a means or step plus function analysis. Appellants have also had difficulty complying with the evidence appendix requirement. Compliance with the amended rules is expected to ensure that the Appeals Center and the Board, working together, can minimize, possibly eliminate, unwarranted returns to examiners based on non-compliant appeal brief requirements.

The amended rules are directed to improving appellant briefing. A 30-page limit for the brief will promote concise and precise writing. Any statement of the real party in interest, statement of related cases, table of contents, table of authorities, status of amendments, jurisdictional statement, signature block, and appendix are excluded from the 30-page limit. The amended rules also require a “statement of facts” section where the appellant is required to set out the material facts relevant to the rejections on appeal.

The amended rules require an “argument” section where an appellant shall explain why the examiner is believed to have erred as to each rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees and must identify where the argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner. By having a clear focus on the dispute and making clear what arguments have been and have not been presented to the examiner, the USPTO reviewers as well as the examiner can make a well-informed decision on (1) whether to proceed with the appeal or (2) whether to withdraw the rejection.

Finally, the amended rules improve uniform enforcement of the rules. Petitions are decided by the Chief Administrative Patent Judge of the Board. Under former rules, petitions are decided by the Director of each Technology Center. The rules also allow for sanctions which may be imposed against an appellant for failure to comply with an applicable rule.

The rules do not amend any of the rules relating to

inter partes

reexamination appeals. Except for citation of authorities, the rules do not amend any of the rules relating to contested cases.

Explanation of New Rules

What follows is a discussion of the new appeal rules. Further information relevant to particular rules appears in the analysis of comments portion of this final rule.

Definitions

Bd.R. 41.2 amends Rule 41.2 to eliminate from the definition of “Board” any reference to a proceeding under Bd.R. 41.3 relating to petitions to the Chief Administrative Patent Judge. Action by the Chief Administrative

Patent Judge is action on behalf of the Director by delegation to the Chief Administrative Patent Judge.

See

MPEP § 1002.02(f) (8th ed., Aug., 2006).

Bd.R. 41.2 also amends Rule 41.2 to eliminate a petition under Bd.R. 41.3 from the definition of contested case. At the present time, there are no petitions authorized in a contested case.

Petitions

Bd.R. 41.3 is amended to include a delegation of authority from the Director to the Chief Administrative Patent Judge to decide certain petitions authorized by Part 41. The delegation of authority would be in addition to that already set out in the MPEP § 1002.02(f) (8th ed., Aug., 2006). The petitions would include (1) seeking an extension of time to file certain papers after an appeal brief is filed in an

ex parte

appeal and (2) enlarging the page limit of an appeal brief, reply brief, or request for rehearing.

Bd.R. 41.3(b) is amended to define the scope of petitions which can be filed pursuant to the rules. Under Bd.R. 41.3(b), a petition could not be filed to seek review of issues committed by statute to a panel.

See,

e.g.

,

In re Dickinson,

299 F.2d 954, 958 (CCPA 1962).

Timeliness

Bd.R. 41.4(c) is amended to add the phrase “Except to the extent provided in this part” and to revise paragraph 2 to read: “Filing of a notice of appeal and an appeal brief (

see

§§ 41.31(c) and 41.37(c)).” The amendment restricts Bd.R. 41.4(c)(2) to the notice of appeal and appeal brief. The Chief Administrative Patent Judge would determine whether extensions are to be granted for the filing of most other papers during the pendency of the appeal.

Citation of Authority

The notice of proposed rulemaking did not propose a change to Bd.R. 41.12 which concerns citation of authority. Rule 41.12 currently requires the public to cite to specific reporters, including some parallel citations. The Board, however, no longer follows the practice specified in Rule 41.12, and does not use parallel citations. Accordingly, Bd.R. 41.12 is being amended to make the rule consistent with Board practice and minimize the citation burden on the public. Under Bd.R. 41.12, as amended, a citation to a single source, in the priority order set out in the rule, will be sufficient.

Definitions

Bd.R. 41.30 is amended to add a definition of “Record.” The Record on appeal would be the official content of the file of an application or reexamination proceeding on appeal. In the rules, a reference to “Record” with a capital R is a reference to the Record as defined in Bd.R. 41.30. The definition advises applicants of what documents the Board will consider in resolving the appeal. The definition also makes it clear to any reviewing court what record was considered by the Board.

Appeal to Board

Bd.R. 41.31(a) provides that an appeal is taken from a decision of the examiner to the Board by filing a notice of appeal. The following language would be acceptable under the rule: “An appeal is taken from the decision of the examiner mailed [specify date appealed rejection was mailed].” An appeal can be taken when authorized by the statute 35 U.S.C. 134. The provision of Rule 41.31(b) that a notice of appeal need not be signed has been removed. Papers filed in connection with an appeal, including the notice of appeal, would need to be signed in accordance with § 1.33 of this title.

Bd.R. 41.31(b) requires that the notice of appeal be accompanied by the fee required by law and would refer to the rule that specifies the required fee.

Bd.R. 41.31(c) specifies the time within which a notice of appeal would have to be filed in order to be considered timely. The time for filing a notice of appeal appears in Rule 134.

Bd.R. 41.31(d) provides that a request for an extension of time to file a notice of appeal in an application is governed by Rule 136(a). Bd.R. 41.31(d) also provides that a request for an extension of time to file a notice of appeal in an

ex parte

reexamination proceeding is governed by Rule 550(c).

Bd.R. 41.31(e) defines a “non-appealable issue” as an issue that is not subject to an appeal under 35 U.S.C. 134. Non-appealable issues are issues (1) over which the Board does not exercise authority in appeal proceedings and (2) which are handled by a petition. Non-appealable issues include such matters as an examiner's refusal to (1) enter a response to a final rejection, (2) enter evidence presented after a final rejection, (3) enter an appeal brief or a reply brief, or (4) withdraw a restriction requirement. The rules contemplate that some petitions relating to non-appealable issues are to be decided by the Chief Administrative Patent Judge. Some of those non-appealable issues include: (1) A petition to exceed the page limit and (2) a petition to extend the time for filing a paper in the appeal after the filing of the appeal brief. An applicant or patent owner dissatisfied with a decision of an examiner on a non-appealable issue would be required to seek review by petition before an appeal is considered on the merits. Failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue would generally constitute a waiver to have those issues considered. The language “[f]ailure to timely file” would be interpreted to mean not filed within the time set out in the rules. For example, Rule 1.181(f) provides that any petition under Rule 181 not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely. The object of the amendment to the rule is to maximize resolution of non-appealable issues before an appeal is considered on the merits. Under current practice, an applicant or a patent owner often does not timely seek to have non-appealable issues resolved, thereby necessitating a remand by the Board to the examiner to have a non-appealable issue resolved. The remand adds to the pendency of an application or reexamination proceeding and, in some instances, may unnecessarily enlarge patent term adjustment. The Office intends to strictly enforce the waiver provisions of Bd.R. 41.31(e) with the view of making the appeal process administratively efficient. While the Office will retain discretion to excuse a failure to timely settle non-appealable issues, it is expected that exercise of that discretion will be reserved for truly unusual circumstances.

Amendments and Evidence Filed After Appeal and Before Brief

Bd.R. 41.33(a) provides that an amendment filed after the date a notice of appeal is filed and before an appeal brief is filed may be admitted as provided in Rule 116.

Bd.R. 41.33(b), under two circumstances, gives the examiner discretion to enter an amendment filed with or after an appeal brief is filed. A first circumstance would be to cancel claims, provided cancellation of claims does not affect the scope of any other pending claim in the proceedings. A second circumstance would be to rewrite dependent claims into independent form.

Bd.R. 41.33(c) provides that all other amendments filed after the date an appeal brief is filed will not be admitted, except as permitted by (1) Bd.R. 41.50(b)(1) (request for amendment after remand), (2) Bd.R.

41.50(d)(1) (request to reopen prosecution after entry of new ground of rejection by the Board), and (3) Bd.R. 41.50(e) (amendment after recommendation by the Board).

Bd.R. 41.33(d) provides that evidence filed after a notice of appeal is filed and before an appeal brief is filed may be admitted if (1) the examiner determines that the evidence overcomes at least one rejection under appeal and (2) appellant shows good cause why the evidence was not earlier presented. The first step in an analysis of whether evidence may be admitted is a showing of good cause why the evidence was not earlier presented. The Office has found that too often an applicant or a patent owner belatedly presents evidence as an afterthought and that the evidence was, or should have been, readily available. Late presentation of evidence is not consistent with efficient administration of the appeal process. Under the rule, the Office would strictly apply the good cause standard.

Cf. Hahn

v.

Wong

, 892 F.2d 1028 (Fed. Cir. 1989). For example, a change of attorneys at the appeal stage or an unawareness of the requirement of a rule would not constitute a showing of good cause. If good cause is not shown, the analysis ends and the evidence would not be admitted. In those cases where good cause is shown, a second analysis will be made to determine if the evidence would overcome at least one rejection. Even where good cause is shown, if the evidence does not overcome at least one rejection, the evidence would not be admitted. Alternatively, the examiner could determine that the evidence does not overcome at least one rejection under appeal and does not necessitate any new ground of rejection and on that basis alone could refuse to admit the evidence.

Bd.R. 41.33(e) provides that evidence filed after an appeal brief is filed will not be admitted except as permitted by (1) Bd.R. 41.50(b)(1) (request to reopen prosecution after entry of a remand by the Board), and (2) Bd.R. 41.50(d)(1) (request to reopen prosecution after new ground of rejection entered by the Board).

Jurisdiction Over Appeal

Bd.R. 41.35(a) provides that the Board acquires jurisdiction when the Board mails a docket notice. At an appropriate time after proceedings are completed before the examiner, a docket notice identifying the appeal number would be entered in the application or reexamination proceeding file and mailed to the appellant. A new docket notice identifying a new appeal number would be mailed upon return of the case to the Board following remand. By delaying the transfer of jurisdiction until the appeal is fully briefed and the position of the appellant is fully presented for consideration by the examiner and the Office reviewers (appeal conferees), the possibility exists that the examiner will find some or all of the appealed claims patentable without the necessity of proceeding with the appeal and invoking the jurisdiction of the Board. For this reason, jurisdiction transfers to the Board only after (1) the appellant has filed an appeal brief, (2) the examiner's answer has been mailed, and (3) the appellant has filed a reply brief or the time for filing a reply brief has expired. Rule 41.35(a) provides that the Board acquires jurisdiction upon transmittal of the file, including all briefs and examiner's answers, to the Board. Under that practice, however, an appellant may or may not know the date when a file is transmitted to the Board. Most files are now electronic files (Image File Wrapper or IFW file) as opposed to a paper file wrapper. Accordingly, a paper file wrapper is no longer transmitted to the Board. Under current practice, the Board prepares a docket notice which is (1) entered in the IFW file and (2) mailed to appellant. Upon receipt of the docket notice, appellant knows that the Board has acquired jurisdiction over the appeal. Bd.R. 41.35(a) codifies current practice and establishes a precise date, known to all involved, as to when jurisdiction is transferred to the Board.

Bd.R. 41.35(b) provides that the jurisdiction of the Board ends when (1) the Board mails a remand order (

see

§ 41.50(b) or § 41.50(d)(1)), (2) the Board mails a final decision (

see

§ 41.50(a) and judicial review is sought or the time for seeking judicial review has expired, (3) an express abandonment is filed which complies with § 1.138 of this title, or (4) a request for continued examination is filed which complies with § 1.114 of this title. The Board knows when it mails a remand order and when it mails a final decision. The Board does not know if an express abandonment or a request for continued examination is filed. One problem the Board has had in the past is that an appellant does not notify the Board that it has filed an express abandonment or a request for continued examination and the Board continues to work on the appeal. Often failure to notify occurs after oral hearing. Accordingly, an appellant should notify the Board immediately if an express abandonment or a request for continued examination is filed. If any notification reaches the Board after a remand order or a final decision is mailed, the remand order or final decision will not be removed from the file.

There are two occasions when a remand is entered. First, a remand is entered when the Board is of the opinion that clarification on a point of fact or law is needed.

See

Bd.R. 41.50(b). Second, a remand is entered when an appellant elects further prosecution before the examiner following entry of a new ground of rejection by the Board.

See

Bd.R. 41.50(d)(1). Upon entry of a remand, the Board's jurisdiction ends.

The Board also no longer has jurisdiction as a matter of law when an appeal to the Federal Circuit is filed in the USPTO.

See In re Allen

, 115 F.2d 936, 939 (CCPA 1940) and

In re Graves

, 69 F.3d 1147, 1149 (Fed. Cir. 1995). A final decision is a panel decision which disposes of all issues with regard to a party eligible to seek judicial review and does not indicate that further action is needed.

See

Rule 41.2 (definition of “final”). When a party requests rehearing, a decision becomes final when the Board decides the request for rehearing. A decision including a remand or a new ground of rejection is an interlocutory order and is not a final decision. If an appellant elects to ask for rehearing to contest a new ground of rejection, the decision on rehearing is a final decision for the purpose of judicial review.

Bd.R. 41.35(c) would continue current practice and provide that the Director could

sua sponte

order an appeal to be remanded to an examiner before entry of a Board decision has been mailed. The Director has inherent authority to order a

sua sponte

remand to the examiner. Ordinarily, a rule is not necessary for the Director to exercise inherent authority. However, in this particular instance, it is believed that a statement in the rule of the Director's inherent authority serves an appropriate public notice function.

Appeal Brief

Bd.R. 41.37 provides for filing an appeal brief to perfect an appeal and sets out the requirements for appeal briefs. The appeal brief is a highly significant document in an ex parte appeal. Appeal brief experience under Rule 41.37 has been mixed. Bd.R. 41.37 seeks to (1) take advantage of provisions of Rule 41.37 which have proved useful, (2) clarify provisions which have been subject to varying interpretations by counsel, and (3) add provisions which are expected to make the decision-making process more focused and efficient.

Bd.R. 41.37(a) provides that an appeal brief shall be filed to perfect an appeal. Upon a failure to timely file an appeal brief, proceedings on the appeal would be considered terminated. The language “without further action on the part of the Office” gives notice that no action, including entry of a paper by the Office, would be necessary for the appeal to be considered terminated. Bd.R. 41.37(a) does not preclude the Office from entering a paper notifying an applicant or patent owner that the appeal has been terminated. Any failure of the Office to enter a paper notifying an applicant or patent owner that an appeal stands terminated would not affect the terminated status of the appeal. The language “proceedings are considered terminated” provides notice that when (1) no appeal brief is filed and (2) no claims are allowed, the time for filing a continuing application under 35 U.S.C. 120 would be before the time expires for filing an appeal brief. The language “terminated” is used because proceedings on appeal are over prior to mailing of a docket notice pursuant to Bd.R. 41.35(a). Dismissal of an appeal takes place after a docket notice is mailed since only the Board dismisses an appeal (Bd.R. 41.35(b)(2)).

Bd.R. 41.37(b) provides that the appeal brief shall be accompanied by the fee required by Bd.R. 41.20(b)(2).

Bd.R. 41.37(c) provides that an appellant must file an appeal brief within two months from the filing of the notice of appeal.

Bd.R. 41.37(d) provides that the time for filing an appeal brief is extendable under the provisions of Rule 136(a) for applications and Rule 550(c) for

ex parte

reexamination proceedings. Consideration was given to proposing a requirement for a petition to extend the time for filing an appeal brief. However, in view of the pre-appeal conference pilot program (

see

Official Gazette of July 12, 2005;

http://www.uspto.gov/web/offices/com/sol/og/2005/week28/patbref.htm

), and in an effort to encourage continued participation in that pilot program, further consideration on whether to require a petition will be deferred pending further experience by the Office in the pre-appeal conference pilot program.

Bd.R. 41.37(e) provides that an appeal brief must contain, under appropriate headings and in the order indicated, the following items: (1) Statement of the real party in interest, (2) statement of related cases, (3) jurisdictional statement, (4) table of contents, (5) table of authorities, (6) [reserved], (7) status of amendments, (8) grounds of rejection to be reviewed, (9) statement of facts, (10) argument, and (11) an appendix containing (a) claims section, (b) claim support and drawing analysis section, (c) means or step plus function analysis section, (d) evidence section, and (e) related cases section. The items are otherwise defined in other subsections of Bd.R. 41.37 and, where applicable, would apply to appeal briefs and reply briefs (Bd.R. 41.41).

Bd.R. 41.37(f) requires a “statement of real party in interest” which would include an identification of the name of the real party in interest. The principal purpose of an identification of the name of the real party in interest is to permit members of the Board to assess whether recusal is required or would otherwise be appropriate. Another purpose is to assist employees of the Board to comply with the Ethics in Government Act. Since a real party in interest can change during the pendency of an appeal, there would be a continuing obligation to update the real party in interest during the pendency of the appeal. If an appeal brief does not contain a statement of real party in interest, the Office will assume that the named inventors are the real party in interest.

Bd.R. 41.37(g) requires an appeal brief to include a “statement of related cases.” The statement of related cases would identify related cases by (1) application number, patent number, appeal number or interference number or (2) court docket number. The statement would encompass all prior or pending appeals, interferences or judicial proceedings known to any inventors, any attorneys or agents who prepared or prosecuted the application on appeal and any other person who was substantively involved in the preparation or prosecution of the application on appeal. A related case is one which would directly affect, or would be directly affected by or have a bearing on the Board's decision in the appeal. A copy of any final or significant interlocutory decision rendered by the Board or a court in any proceeding identified under this paragraph shall be included in the related cases section in the appendix (Bd.R. 41.37(u)). A significant interlocutory decision would include (1) a decision on a patentability motion in an interference or (2) a decision in an interference or a court interpreting a claim. A related case includes any continuing application of the application on appeal. If an appellant fails to advise the Board that it has filed a continuing application or a request for continued examination, or that it has filed an express abandonment of the application on appeal and the Board mails a decision on appeal in the application on appeal, the appellant should expect that the decision will not be removed from the file. The time to update a statement of related cases, or notify the Board that an application on appeal has been abandoned, is when the continuing application, request for continued examination, or express abandonment is filed. Appellant would be under a continuing obligation to update a statement of related cases during the pendency of the appeal. If an appeal brief does not contain a statement of related cases, the Office will assume that there are no related cases.

Bd.R. 41.37(h) requires an appeal brief to contain a “jurisdictional statement” which would set out why an appellant believes that the Board has jurisdiction to consider the appeal. The jurisdictional statement would include a statement of (1) the statute under which the appeal is taken, (2) the date of the decision from which the appeal is taken, (3) the date the notice of appeal was filed, and (4) the date the appeal brief is being filed. If a notice of appeal or an appeal brief is filed after the time specified in the rules, the appellant also would have to indicate (1) the date an extension of time was requested, and (2) if known, the date the request was granted. A jurisdictional statement will minimize the chance that the Board will consider an appeal when the application on appeal is abandoned or a reexamination proceeding on appeal has terminated. An example of a jurisdictional statement is: “The Board has jurisdiction under 35 U.S.C. 134(a). The Examiner mailed a final rejection on August 1, 2006, setting a three-month shortened statutory period for response. The time for responding to the final rejection expired on November 1, 2006. Rule 134. A notice of appeal and a request for a one-month extension of time under Rule 136(a) was filed on November 15, 2006. The time for filing an appeal brief is two months after the filing of a notice of appeal. Bd.R. 41.37(c). The time for filing an appeal brief expired on January 16, 2007 (Monday, January 15, 2007, being a Federal holiday). The appeal brief is being filed on January 16, 2007.” If during the preparation of a jurisdictional statement, an appellant becomes aware that its application is abandoned, the appellant could then take steps to revive the application, if revival is appropriate.

See

Rule 137.

Bd.R. 41.37(i) requires an appeal brief to contain a “table of contents” identifying the items listed in Bd.R. 41.37(e) along with a page reference where each item begins. In the case of a reply brief, the table of contents would

identify the items required by the reply brief rule (Bd.R. 41.41(d)).

Bd.R. 41.37(j) requires an appeal brief to contain a “table of authorities.” This item would list (1) court and administrative decisions (alphabetically arranged), (2) statutes, and (3) other authorities, along with a reference to the pages of the appeal brief where each authority is cited. A similar requirement applies to a reply brief.

Bd.R. 41.37(k) is reserved.

Bd.R. 41.37(l) requires an appeal brief to indicate the “status of amendments” for all amendments filed after final rejection (e.g., entered or not entered). Examples of a status of amendments might read as follows: (1) “No amendment was filed after final rejection.” (2) “An amendment filed October 31, 2006, was

not

entered by the examiner.” (3) “An amendment filed November 1, 2006, was entered by the examiner.” (4) “An amendment filed October 31, 2006, was not entered by the examiner, but an amendment filed November 1, 2006, was entered by the examiner.”

Bd.R. 41.37(m) requires an appeal brief to set out the grounds of rejection to be reviewed, including the claims subject to each rejection. Examples might read as follows: (1) “Rejection of claim 2 as being anticipated under 35 U.S.C. 102(b) over Johnson.” (2) “Rejection of claims 2-3 as being unpatentable under 35 U.S.C. 103(a) over Johnson and Young.” (3) “Rejection of claim 2 as failing to comply with the written description requirement of the first paragraph of 35 U.S.C. 112.” (4) “Rejection of claim 2 as failing to comply with the enablement requirement of the first paragraph of 35 U.S.C. 112.” (5) “Rejection of claim 3 under 35 U.S.C. 251 based on recapture.”

Bd.R. 41.37(n) requires a “statement of facts.” Appellant will set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal, preferably in numbered paragraphs. A clear, concise and complete statement of relevant facts will clarify the position of an appellant on dispositive issues and assist the examiner in reconsidering the patentability of the rejected claims.

A significant requirement of Bd.R. 41.37(n) is that a fact would be required to be supported by a reference to the page number of the Record. Where appropriate, the citation should also be to a specific line or paragraph and to a drawing figure and element number of the Record (

see

Bd.R. 41.37(t)). Statements of facts should be set out in short declarative sentences, and each sentence should address a single fact. For example, “In rejecting claims 1-5, the examiner cites Jones (col. 4, lines 1-4).” “Jones describes a widget (col. 5, lines 56-61 and Figure 1, elements 12 and 13).” A compound statement of fact is not proper, e.g., “Jones describes a widget (col. 8, lines 3-4) and Smith does not describe a widget.” A statement of facts would have to be non-argumentative, meaning that an appellant would not be able to argue its appeal in the statement of facts. Rather, the statement of facts is designed to require an appellant to set out the facts which the appellant considers material for resolution of the appeal, thereby assisting the examiner initially and, if necessary, the Board thereafter to focus on the dispositive portions of the record. For example, in the case of a rejection for obviousness under section 103, the facts should address at least the scope and content of the prior art, any differences between the claim on appeal and the prior art, and the level of skill in the art. In the past, some appellants have provided minimal factual development in an appeal brief, apparently believing that the Board will scour the record to divine the facts. It should be remembered that when the appeal reaches the Board, the panel members do not know anything about the appellant's invention or the prosecution history of the application on appeal.

Likewise, too often an appellant will not support a statement of fact in an appeal brief by an explicit reference to the evidence. A statement of fact based on the specification would be proper if supported by a reference to page and line or paragraph (and where appropriate also to drawing figure and element number). A statement of fact based on a patent would be proper if it is supported by a reference to a column and line (and where appropriate also to a drawing figure and element number). A statement of fact based on an affidavit would be proper if supported by a reference to a page and line number or to a page and paragraph number of the affidavit; the affidavit would appear in the evidence section (Bd.R. 41.37(t)) in the appendix.

A specific citation is required because an appellant should not expect the examiner or the Board to search the record to determine whether a statement of fact is supported by the evidence. Bd.R. 41.37(n) is consistent with the approaches taken by federal courts concerning appeal brief practice and other briefing practice: (1)

Clintec Nutrition Co.

v.

Baxa Corp.

, 988 F. Supp. 1109, 1114, n.16 (N.D. Ill. 1997) (where a party points the court to a multi-page exhibit without citing a specific portion or page, the court will not pour over the documents to extract the relevant information); (2)

Ernst Haas Studio, Inc.

v.

Palm Press, Inc.

, 164 F.3d 110, 112 (2d Cir. 1999) (“Appellant's Brief is at best an invitation to the court to scour the record, research any legal theory that comes to mind, and serve generally as an advocate for appellant. We decline the invitation.”); (3)

Winner Int'l Royalty Corp.

v.

Wang

, 202 F.3d 1340, 1351 (Fed. Cir. 2000) (“[W]e will not search the record on the chance of discovering * * * whether the district court abused its discretion.”); (4)

Gorence

v.

Eagle Food Centers, Inc.

, 242 F.3d 759, 762-63 (7th Cir. 2001) (“Little has been done * * * to make slogging through the record here either more efficient or more pleasant. And it is simply not true, we want to emphasize, that if a litigant presents an overload of irrelevant or non-probative facts, somehow the irrelevancies will add up to relevant evidence * * *”); and (5)

DeSilva

v.

DiLeonardi

, 181 F.3d 865, 867 (7th Cir. 1999) (“[An appeal] brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”)

See also

(1)

Shiokawa

v.

Maienfisch

, 56 USPQ2d 1970, 1975 (Bd. Pat. App. & Int. 2000) and (2)

LeVeen

v.

Edwards

, 57 USPQ2d 1406, 1413 (Bd. Pat. App. & Int. 2000).

Bd.R. 41.37(o) requires that an appeal brief contain an argument comprising an analysis explaining, as to each rejection to be reviewed, why the appellant believes the examiner erred. The analysis would have to address all points made by the examiner with which the appellant disagrees. The presentation of a concise, but comprehensive, argument in response to the final rejection (1) will efficiently frame any dispute between the appellant and the examiner not only for the benefit of the Board but also for consideration by the examiner and Office reviewers (appeal conferees) and (2) provide the best opportunity for resolution of the dispute without the necessity of proceeding with the appeal.

Where an argument has previously been presented to the examiner, the analysis would have to identify where any argument being made to the Board was made in the first instance to the examiner. Where an argument has not previously been made to the examiner, an appellant would be required to say so in the appeal brief so that the examiner would know that the argument is new. An example where an argument might not have been previously made to an examiner might occur under the following fact scenario. A first Office action rejects claims over Reference A. Applicant amends the

claims to avoid Reference A. The examiner enters a final rejection now relying on References A and B. Applicant elects to appeal without filing a response under Rule 116. While applicants are encouraged to file a response under Rule 116 to possibly avoid an appeal all together, at the present time there is no requirement for an applicant to file a Rule 116 response as a condition to taking an appeal to the Board. Whether such a requirement should be made in the future will be held in abeyance pending experience under the rules. The Board has found that many arguments made in an appeal brief were never earlier presented to the examiner even though they could have been presented (without filing a Rule 116 response). To promote clarity, Bd.R. 41.37(o) also requires that each rejection for which review is sought shall be separately argued under a separate heading. Also, Bd.R. 41.37(o) provides that any finding made or conclusion reached by the examiner that is not challenged would be presumed to be correct.

Bd.R. 41.37(o)(1) provides that when a ground of rejection applies to two or more claims, the claims may be argued separately (claims are considered by appellant as separately patentable) or as a group (claims stand or fall together). When two or more claims subject to the same ground of rejection are argued as a group, the Board may select a single claim from the group of claims that are argued together and decide the appeal on the basis of the selected claim alone with respect to the group of claims as to the ground of rejection. Any doubt as to whether an election has been made would be resolved against the appellant and the claims would be deemed to have been argued as a group.

For each claim argued separately, a subheading identifying the claim by number would be required. The requirement for a separate subheading in the appeal brief is to minimize any chance the examiner or the Board will overlook an argument directed to the separate patentability of a particular claim. In the past, appellants have been confused about whether a statement of what a claim covers is sufficient to constitute an argument that the claim is separately patentable. It is not. A statement that a claim contains a limitation not present in another claim would not in and of itself be sufficient to satisfy the requirement of Bd.R. 41.37(o)(1) that a separate argument be made.

Unless an appellant plans to argue the separate patentability of a claim, the appellant should not discuss or refer to the claim in the argument section of the appeal brief. A copy of the claims will be before the Board in the “claims section” (Bd.R. 41.37(p)). In an application containing claims 1-3 where the examiner has made (1) a § 102 rejection or (2) a § 103 rejection or (3) both a § 102 and § 103 rejection, examples of a proper statement of “claims standing or falling together” would be as follows: (1) “With respect to the rejection under § 102, claims 1-3 stand or fall together.” (2) “With respect to the rejection under § 103, claims 1-2 stand or fall together; claim 3 is believed to be separately patentable.” (3) “With respect to the rejection under § 102, claims 1-2 stand or fall together; claim 3 is believed to be separately patentable. With respect to the rejection under § 103, the claims stand or fall together.”

Bd.R. 41.37(o)(2) provides that the Board would only consider arguments that (1) are presented in the argument section of the appeal brief and (2) address claims set out in the claim support and drawing analysis section in the appendix. Appellant would waive all arguments which could have been, but were not, addressed in the argument section of the appeal brief. A first example would be where Argument 1 and Argument 2 are presented in response to a final rejection, but only Argument 1 is presented in the appeal brief. Only Argument 1 would be considered. Argument 2 would be waived. A second example would be where an applicant presents an affidavit under Rule 131 or Rule 132 to the examiner, but does not rely on the affidavit in the argument section of the appeal brief. The Board would not consider the affidavit in deciding the appeal.

Bd.R. 41.37(o)(3) requires that when responding to points made in the final rejection, the appeal brief shall specifically (1) identify each point made by the examiner and (2) indicate where appellant previously responded to each point or state that appellant has not previously responded to the point. In supporting any argument, the appellant shall refer to a page and, where appropriate, a line or paragraph, of the Record. Examples of argument formats that are acceptable under Bd.R. 41.37(o)(3) follow.

Example 1.

In the case where an argument had been previously presented to the examiner, the following format is acceptable under Bd.R. 41.37(o)(3). “The examiner states that Reference A teaches element B. Final Rejection mailed [insert date], page x, lines y-z. In response, appellant previously pointed out to the examiner why the examiner is believed to have erred. Amendment filed [enter date], pages 8-9. The response is [concisely state the response].” A similar format has been successfully used for some years in oppositions and replies filed in interference cases.

Example 2.

Alternatively, in the case where an argument has not been previously made to the examiner, the following format would be acceptable under Bd.R. 41.37(o)(3). “In response to the examiner's reliance on Reference C for the first time in the final rejection (page 4), appellant's response includes a new argument which has not been previously presented to the examiner. The response is [concisely state the response].” Use of this format will minimize any chance that the examiner will overlook an argument when preparing the examiner's answer.

Bd.R. 41.37(p) would require an appeal brief to contain a “claims section” in the appendix which would consist of an accurate clean copy in numerical order of all claims pending in the application or reexamination proceeding on appeal. The claims section in the appendix would include all pending claims, not just those under rejection. The status of each claim would have to be indicated, (e.g., 1 (rejected), 2 (withdrawn), 3 (objected to), 4 (cancelled), and 5 (allowed)).

Bd.R. 41.37(q) is reserved.

Bd.R. 41.37(r) requires an appeal brief to contain a “claim support and drawing analysis section.”

The claim support portion of Bd.R. 41.37(r) replaces Rule 41.37(c)(1)(v) which required a concise explanation of the subject matter defined in each of the independent claims on appeal. The claim support section, for each independent claim involved in the appeal and each dependent claim argued separately (

see

Bd.R. 41.37(o)(1)), would consist of an annotated copy of the claim indicating in bold face between braces ({ }) after each limitation where, by page and line or paragraph numbers, the limitation is described in the specification as filed. Braces ({ }) are used instead of brackets ([ ]) because brackets are used in reissue claim practice. Unlike the “claims section” (

see

Bd.R. 41.37(p)), only those independent claims and dependent claims being argued separately, would need to appear in the “claim support and drawing analysis section.” A significant objective of the claim support requirement is to provide the examiner and the Board with appellant's perspective on where language of the claims (including specific words used in the claims, but not in the specification) finds support in the specification. Finding support for language in the claims can help the examiner and the Board construe claimed terminology and limitations when applying the prior art. The claim support requirement will help the Board

interpret the scope of claims, or the meaning of words in a claim, before applying the prior art. Practice under Rule 41.37(c)(1)(v) has not been efficient because of the diverse manners in which different appellants have attempted to comply with the current rule.

One significant problem faced by the Board under Rule 41.37(c)(1)(v) occurs when the language of a claim does not have direct antecedent language in the specification. In order for the Board to understand the scope of a claim or the meaning of a term in the claim, the Board primarily relies on the specification. Moreover, in practice before the Office, a claim is given its broadest reasonable construction consistent with the specification. However, when the language of the claim does not find correspondence in the specification, as filed, often it is difficult to determine the meaning of a particular word in a claim or to give the claim its broadest reasonable interpretation. The claim support requirement will give the examiner and the Board the appellant's view on where the claim is supported by the application, as filed. The requirement is expected to significantly improve the efficiency of the Board's handling of appeals.

The “claims support and drawing analysis section” also requires for each independent claim on appeal and each dependent claim argued separately (

see

Bd.R. 41.37(o)(1)), that a drawing analysis consist of an annotated copy of the claim in numerical sequence, indicating in bold face between braces ({ }) (the same braces used to identify references to the specification) after each limitation where, by reference or sequence residue number, each limitation is shown in the drawing or sequence. A drawing analysis has been required in interference cases since 1998 and has proven useful to the Board in understanding claimed inventions described in applications and patents involved in an interference. The drawing analysis requirement is expected to be equally useful in

ex parte

appeals.

Bd.R. 41.37(s) requires an appeal brief to contain a “means or step plus function analysis section.” The means or step plus function analysis section replaces the requirement of Rule 41.37(c)(1)(v) relating to identification of structure, material or acts for means or step plus function claim limitations contained in appealed claims. Under Bd.R. 41.37(s), the means or step plus function analysis section would include each independent claim and each dependent claim argued separately (

see

Bd.R. 41.37(o)(1)) that contains a limitation that appellant regards as a means or step plus function limitation in the form permitted by the sixth paragraph of 35 U.S.C. 112. Further, for each such claim, a copy of the claim would be reproduced indicating in bold face between braces ({ }) the specific portions of the specification and drawing that describe the structure material or acts corresponding to each claimed function.

The Office is requiring a particular format for the means or step plus function analysis section to avoid the confusion that arises from the variety of ways appellants employ under current practice in attempting to comply with the requirements of Rule 41.37(c)(1)(v). A means or step plus function analysis essentially tracking Bd.R. 41.37(s) has been used in interference cases since 1998 and has been helpful in determining the scope of claims involved.

Bd.R. 41.37(t) would require an appeal brief to contain an “evidence section” in the appendix. The evidence section essentially continues the practice under Rule 41.37(c)(1)(ix). The evidence section would include (1) table of contents, (2) affidavits and declarations upon which the appellant relied before the examiner, (3) other evidence upon which the appellant relied before the examiner, and (4) evidence relied upon by the appellant and admitted into the file pursuant to Bd.R. 41.33(d).

Documents in the evidence appendix would not have to be reformatted to comply with format requirements of the appeal brief. However, the affidavits, declarations and evidence required by Bd.R 41.37(t) which is otherwise mentioned in the appeal brief, but which does not appear in the evidence section will not be considered. Rule 41.37(c)(1)(ix) has a similar provision, but appellants have not attached the evidence appendix required by that rule. Appellants will now be on notice of the consequence of failing to comply with Bd.R. 41.37(t).

If the examiner believes that other material should be included in the evidence section, the examiner would be able to attach that evidence to the examiner's answer. Pursuant to Bd.R. 41.37(v)(1), all pages of an appeal brief or a reply brief (including appendices to those briefs) will be consecutively numbered beginning with page 1.

Bd.R. 41.37(u) requires an appeal brief to contain a “related cases section” in the appendix. The related cases section consists of copies of orders and opinions required to be cited pursuant to Bd.R. 41.37(g).

Bd.R. 41.37(v) requires an appeal brief to be presented in a particular format. The appeal brief would have to comply with the format of Rule 52 as well as with other requirements set out in Bd.R. 41.37(v)(1), (2) and (4) through (6).

Bd.R. 41.37(v)(1) requires that the pages of an appeal brief, including all sections in the appendix, be consecutively numbered using Arabic numerals beginning with the first page of the appeal brief, which would be numbered page 1. This practice would prevent (1) re-starting numbering with each section in the appendix or (2) using Roman numeral page numbers, e.g., I, II, V, etc., or page numbers with letters, e.g., “a”, “b”, “c”, “i”, “ii”, etc. If an appellant chooses to number the lines, line numbering may be within the left margin. Line numbering has been used for some time in interference cases and has been found to be useful when making reference in oppositions, replies, and opinions of the Board.

Bd.R. 41.37(v)(2) would require that text in an appeal brief would be double spaced except in headings, tables of contents, tables of authorities, signature blocks and certificates of service. Block quotations would be indented, but could be presented in double spaced or space and a half format. Footnotes, which are discouraged, would be double spaced.

Bd.R. 41.37(v)(3) is reserved.

Bd.R. 41.37(v)(4) requires that the font size be 14 point, including the font for block quotations and footnotes.

Bd.R. 41.37(v)(5) provides that an appeal brief may not exceed 30 pages, excluding any (1) statement of the real party in interest, (2) statement of related cases, (3) jurisdictional statement, (4) table of contents, (5) table of authorities, (6) status of amendments, (7) signature block and (8) appendix. To give meaning to the 30-page limitation, an appeal brief would not be permitted to incorporate by reference arguments from other papers in the evidence appendices or from any other source. The prohibition against incorporation by reference is necessary to prevent an appellant from adding to the length of an appeal brief.

Cf. DeSilva

v.

DiLeonardi,

181 F.3d 865, 866-67 (7th Cir. 1999) (“[A]doption by reference amounts to a self-help increase in the length of the appellate brief. * * * [I]ncorporation [by reference] is a pointless imposition on the court's time. A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”) (citation omitted). A prohibition against incorporation by reference has been the practice in interference cases since 1998 and has

minimized the chance that an argument is overlooked.

A request to exceed the 30-page limit would be made by petition under Bd.R. 41.3 at least ten calendar days prior to the date an appeal brief is due.

Bd.R. 41.37(v)(6) requires a signature block which would identify the appellant or appellant's representative, as appropriate, and a mailing address, telephone number, fax number and e-mail address.

Examiner's Answer

Bd.R. 41.39(a) provides that within such time and manner as may be directed by the Director and if the examiner determines that the appeal should go forward, the examiner shall enter an examiner's answer responding to the appeal brief. The specific requirements of what would be required in an examiner's answer would appear in the Manual of Patent Examining Procedure.

Bd.R. 41.39(b) provides that a new ground of rejection can no longer be made in the examiner's answer.

Generally, a new ground of rejection in an Examiner's Answer occurs when an applicant has not had a fair opportunity in the appeal brief to react to the “thrust of the rejection” made in the final rejection.

In re Kronig,

539 F.2d 1300, 1302 (CCPA 1976). Stated in slightly different terms, a test for determining whether a rejection in the Examiner's Answer is “new” vis-à-vis the rejection made in the final rejection is whether the “basic thrust” of “rejection” in the Examiner's Answer and the rejection made in the final rejection “are different.”

In re Ansel,

852 F.2d 1294 (Fed. Cir. 1988) (non-precedential).

In re DeBlauwe,

736 F.2d 699, 706 n.9 (Fed. Cir. 1984) notes that “[w]here the board makes a decision advancing a position or rationale new to the proceedings, an applicant must be afforded an opportunity to respond to that position or rationale by submission of contradicting evidence [or argument].” Whether a new ground of rejection has been made in an Examiner's Answer is evaluated on a case-by-case basis.

See Kronig,

539 F.2d at 1303 (CCPA did not find cited precedent “controlling in view of the distinctive facts at bar”). An applicant met with a new ground of rejection in an Examiner's Answer is entitled to a response to meet the new ground, including an opportunity to present new evidence, an amendment to claims or both. In

Kronig,

there was no new ground of rejection where (1) the Examiner relied on Hoechst, Holzrichter, Yasui and Swift patents and (2) the Board used the same basis as the Examiner, and, without disagreeing with the Examiner's approach, limited its discussion to the evidence contained in Holzrichter, Yasui and Swift. 539 F.2d at 1303. On the other hand in

Ansel,

a new ground of rejection occurred when (1) the Examiner relied on Hodakowski and Bhatia, (2) the Board dismissed Bhatia as superfluous, and (3) for the first time relied on a general and brief description in Hodakowski as to what Hodakowski considered prior art.

In re Bush,

296 F.2d 491 (CCPA 1961), states that where a “rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary” is a matter of “no significance, but merely a matter of exposition” where the relevant part of each can be found. 296 F.2d at 760.

In re Kumar,

418 F.3d 1361 (Fed. Cir. 2005), held that the Board erred in not treating as a new ground of rejection an affirmance based on calculations made by the Board in the first instance and where the Board declined to consider evidence in a petition for rehearing. In

In re Gately,

69 Fed. Appx. 993 (Fed. Cir. 2003) (non-precedential), the Board designated as a new ground of rejection an affirmance based on calculations not previously made. In a request for rehearing to the Board, Gately elected to present only argument. On appeal to the Federal Circuit, Gately urged that he be given a further opportunity on remand to present contrary evidence. The Federal Circuit denied Gately's request, noting that the Board had given Gately the very opportunity he was then requesting, but that Gately had declined the opportunity before the Board. Under the rules, an applicant does not have to file a Rule 116 response after a final rejection citing a new reference to meet a limitation in a claim amended by the applicant in response to the first Office action. If the response to the new reference is made for the first time in the appeal brief, it would

not

be a new ground of rejection in an Examiner's Answer if the Examiner relies on any part of the record, or yet another reference, to meet the new argument made for the first time in the appeal brief.

Cf. In re Plockinger,

481 F.2d 1327, 1330-1332 (CCPA 1973) (“the Solicitor should be allowed to point out to us the facts underlying Peras' concept of the index of basicity, all of which were before the board, in order to rebut appellants' contentions with regard thereto.”). Appellants can avoid the

Plockinger

scenario by filing a Rule 116 response after final rejection. By not filing a Rule 116 response after final rejection, an appellant runs a risk that it will be confronted for the first time in the Examiner's Answer with new rationale in support of the rejection or new evidence or both. The appellant would then have to elect whether to proceed with the appeal or refile the application.

Reply Brief

Bd.R. 41.41(a) provides that an appellant may file a single reply brief responding to the examiner's answer. On too many occasions, appellants have filed a first reply brief and thereafter a second reply brief. Only one reply brief is authorized under Bd.R. 41.41(a). A second reply brief will not be considered.

Bd.R. 41.41(b) provides that the time for filing a reply brief would be within two months of the date the examiner's answer is mailed.

Bd.R. 41.41(c) provides that a request for an extension of time shall be presented as a petition under Bd.R. 41.3(a) and (c). A decision on the petition shall be governed by Bd.R. 41.4(a) of this part. The provisions of Rule 136(a) would no longer apply to extensions of time to file a reply brief.

Bd.R. 41.41(d) provides that a reply brief shall be limited to responding to points made in the examiner's answer. Except as otherwise set out in the rules, the form and content of a reply brief would be governed by the requirements for an appeal brief as set out in Bd.R. 41.37. A reply brief would not be able to exceed 20 pages, excluding any (1) table of contents, (2) table of authorities, and (3) signature block. A reply brief would be required to contain, under appropriate headings and in the order indicated, the following items: (1) Table of contents, (2) table of authorities, (3) statement of additional facts, and (4) argument.

Bd.R. 41.41(e) is reserved.

Bd.R. 41.41(f) would require a statement of additional facts that appellant believes are necessary to respond to points raised in the examiner's answer. When there is a statement of additional facts, and the appellant has elected to number the facts in the appeal brief, any numbering of facts in the reply brief should start with the number following the last number in the appeal brief. For example, if Facts 1-10 are set out in the appeal brief and a statement of additional facts is required with a reply brief, the statement of additional facts in the reply brief should start with Fact 11.

Bd.R. 41.41(g) requires that an argument made in the reply brief be limited to responding to points made in the examiner's answer. Any argument raised in a reply brief which is not

responsive to a point made in the examiner's answer will not be considered and will be treated as waived. An example of an acceptable format for presenting an argument in a reply brief (where there was no new ground of rejection in the examiner's answer) might read as follows: First paragraph: “This is a reply to the examiner's answer mailed [insert the date the answer was mailed].” Last paragraph: “For the reasons given in this reply brief and in the appeal brief, reversal of the examiner's rejection is requested.” All paragraphs between the first and last paragraphs should read: “On page x, lines y-z of the examiner's answer, the examiner states that [state what the examiner states]. The response is [concisely state the response].” As part of each response, the appellant should refer to the page number and line or paragraph and drawing element number of any document relied upon to support the response. Frequently, new details and arguments surface in reply briefs. Bd.R. 41.41(g) seeks to confine reply briefs to what they ought to be—a response to points raised in the examiner's answer. If it turns out that too many resources of the Office are needed to enforce the reply brief rule and considerable time is wasted in resolving improper reply brief issues, consideration may be given to further limiting the nature of replies filed in

ex parte

appeals.

Bd.R. 41.41(h) is reserved.

Bd.R. 41.41(i) provides that an amendment or new evidence may not accompany a reply brief. The Office has found that appellants continue to attempt to file amendments and evidence with reply briefs. If an appellant, after reviewing the examiner's answer, believes that an amendment is appropriate, the appellant may file a continuing application or a request for continued examination or, in the case of a reexamination proceeding, ask that the proceeding be reopened.

Examiner's Response to Reply Brief

Bd.R. 41.43 is reserved. An examiner will no longer be responding to a reply brief.

Supplemental Reply Brief

Bd.R. 41.44 is reserved. A supplemental reply brief is no longer authorized because the examiner will no longer be filing a response to a reply brief.

Oral Hearing

Bd.R. 41.47(a) provides that if the appellant desires an oral hearing, appellant must file, as a separate paper, a written request captioned: “REQUEST FOR ORAL HEARING.”

Bd.R. 41.47(b) provides that a request for oral hearing shall be accompanied by the fee required by § 41.20(b)(3).

Bd.R. 41.47(c) provides that the time for filing a request for an oral hearing would be within two months from the date the examiner's answer is mailed.

Bd.R. 41.47(d) provides that a request for an extension of time to request an oral hearing would have to be presented as a petition as specified in Bd.R. 41.3(a) and (c). A decision on the petition shall be governed by Bd.R. 41.4(a).

Bd.R. 41.47(e) provides that if an oral hearing is properly requested, a date for the oral hearing would be set.

Bd.R. 41.47(f) provides that if an oral hearing is set, then within such time as the Board may order, appellant shall confirm attendance at the oral hearing. Failure to timely confirm attendance would be taken as a waiver of any request for an oral hearing.

Bd.R. 41.47(g) provides that at the time appellant confirms attendance at the oral hearing, appellant would be required to supply a list of technical terms and other unusual words which can be provided to any individual transcribing an oral hearing. The current practice of the Board is to transcribe all oral arguments. A list of technical terms provided by appellant should improve the accuracy of any transcript.

Bd.R. 41.47(h) provides that unless otherwise ordered by the Board, argument on behalf of appellant at an oral hearing would be limited to 20 minutes.

Bd.R. 41.47(i) provides that at oral hearing only the Record will be considered. No additional evidence may be offered to the Board in support of the appeal. Any argument not presented in a brief cannot be made at the oral hearing.

Bd.R. 41.47(j) provides that notwithstanding Bd.R. 41.47(i), an appellant could rely on and call the Board's attention to a recent court or Board opinion which could have an effect on the manner in which the appeal is decided.

Bd.R. 41.47(k) provides that visual aids may be used at an oral hearing. However, visual aids must be limited to copies of documents or artifacts in the Record or a model or exhibit presented for demonstration purposes during an interview with the examiner. When an appellant seeks to use a visual aid, one copy of each visual aid (photograph in the case of an artifact, a model or an exhibit) should be provided for each judge and one copy to be added to the Record.

Bd.R. 41.47(l) provides that failure of an appellant to attend an oral hearing would be treated as a waiver of the oral hearing. Over the years, the Board has become concerned with the large number of requests for postponements. In some cases, multiple requests in a single appeal are submitted for postponement of an oral hearing. Apart from the fact that a postponement can lead to large patent term adjustments, efficiency dictates that the Board be able to set an oral hearing schedule with an expectation that in a large majority of the cases the oral hearing will timely occur or the appellant will waive oral hearing. The Board will continue to handle requests for postponement of oral hearings on an

ad hoc

basis. However, postponements would no longer be granted on a routine basis. A request for a postponement made immediately after a notice of oral hearing is mailed is more likely to receive favorable treatment, particularly since it may be possible to set an oral hearing date prior to the originally scheduled oral hearing date.

Decisions and Other Actions by the Board

Bd.R. 41.50(a) provides that the Board may affirm or reverse a decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner. Bd.R. 41.50(a) continues a long-standing practice that an affirmance of a rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.

Bd.R. 41.50(b) provides that the Board may remand an application to the examiner. Upon entry of a remand, the Board would no longer have jurisdiction unless an appellant timely files a request for rehearing. If the request for rehearing does not result in modification of the remand, the Board would then lose jurisdiction. Upon remand, should the examiner enter an examiner's answer in response to the remand, appellant would be required to exercise one of two options to avoid abandonment of the application or termination of the reexamination proceeding. Either option would have to be exercised within two months from the date of any examiner's answer mailed in response to the remand.

Bd.R. 41.50(b)(1) specifies a first option and provides that appellant could request that prosecution be reopened before the examiner by filing a reply under Rule 111, with or without amendment or submission of evidence. Any amendment or evidence would have to be relevant to the issues set forth

in the remand or raised in any examiner's answer mailed in response to the remand. A request that complies with this paragraph would be entered and the application or patent under reexamination would be reconsidered by the examiner under the provisions of Rule 112. A request under Bd.R. 41.50(b)(1) would be treated as a request to dismiss the appeal.

Bd.R. 41.50(b)(2) specifies a second option and provides that appellant could request that the appeal be re-docketed. The request would have to be accompanied by a reply brief as set forth in Bd.R. 41.41. An amendment or evidence could not accompany the reply brief. A reply brief that is accompanied by an amendment or evidence would be treated as a request to reopen prosecution pursuant to Bd.R. 41.50(b)(1).

Bd.R. 41.50(c) provides that a remand is not a final decision. Following proceedings on remand, and with respect to affirmed rejections and claims not involved in the remand, an appellant could request the Board to enter a final decision so that the appellant could then seek judicial review as to those rejections and claims. Only a final decision of the Board is subject to judicial review.

Copelands' Enter., Inc.

v.

CNV, Inc.,

887 F.2d 1065 (Fed. Cir. 1989) (

en banc

).

Bd.R. 41.50(d) provides that, should the Board have knowledge of a basis not involved in the appeal for rejecting a pending claim, the Board may enter a new ground of rejection. The pending claim could be a claim not rejected by the examiner. A new ground of rejection would not be considered final for purposes of judicial review. A new ground of rejection is not considered a final agency action because the appellant has not explained to the Board, without amendment or new evidence, or to the Office, with an amendment or new evidence or both, why the rejection is not proper. Bd.R. 41.50(d) places an appellant under a burden to explain to the Board or the Office why a new ground of rejection is not proper before it burdens a court with judicial review. A response by an appellant may convince the Office that a new ground of rejection should be withdrawn. If the Board enters a new ground of rejection, appellant would have to exercise one of two options with respect to the new ground of rejection to avoid dismissal of the appeal as to any claim subject to the new ground of rejection. Either option would have to be exercised within two months from the date of the new ground of rejection.

Bd.R. 41.50(d)(1) specifies that a first option would be to submit an amendment of the claims subject to a new ground of rejection or new evidence relating to the new ground of rejection or both and request that the matter be reconsidered by the examiner. The proceedings would be remanded to the examiner. A new ground of rejection would be binding on the examiner unless, in the opinion of the examiner, the amendment or new evidence overcomes the new ground of rejection. In the event the examiner maintains the rejection, appellant would be able to again appeal to the Board.

Bd.R. 41.50(d)(2) specifies that a second option would be to request rehearing pursuant to Bd.R. 41.52. The request for rehearing would have to be based on the record before the Board and no new evidence or amendments would be permitted.

Bd.R. 41.50(e) continues a long-standing practice that the Board, in its opinion in support of its decision, could include a recommendation, explicitly designated as such, of how a claim on appeal may be amended to overcome a specific rejection. For the recommendation to be binding, it would have to be explicitly designated as a recommendation. For example, a conclusion or comment by the Board that a claim, notwithstanding appellant's argument, is so broad as to read on the prior art should not be taken as a recommendation that if some undefined limitation is added the claim would be patentable. When the Board makes a recommendation, appellant may file an amendment in conformity with the recommendation. An amendment in conformity with the recommendation would be deemed to overcome the specific rejection. An examiner would have authority to enter a rejection of a claim amended in conformity with a recommendation provided that the additional rejection constitutes a new ground of rejection. For example, the examiner may know of additional prior art not known to the Board that would meet the claim as amended. It is because of the possibility that an examiner may know of additional prior art that a recommendation would be expected to be a relatively rare event.

Bd.R. 41.50(f) provides that the Board could enter an order requiring appellant to brief additional issues or supply additional evidence or both if the Board believes doing so would be of assistance in reaching a decision on the appeal. Bd.R. 41.50(f) continues a practice which has been in existence since 1999.

See, e.g.

, (1) 37 CFR 1.196(d) (1999) and (2) Rule 41.50(d). Practice under Rule 41.50(d) has been highly useful and complements the authority of Office personnel to request additional material under Rule 105. Appellant would be given a non-extendable time period within which to respond to the order. In setting the length of the non-extendable time period, the Board would take into account the extent of the information requested and the time of year a response would be due. For example, it is not likely that the Board would set a date for response between Christmas Day and New Year's Day. Failure of appellant to timely respond to the order could result in dismissal of the appeal in whole or in part. An appeal might be dismissed-in-part if the order sought further briefing or evidence or both related to one rejection but not another rejection, particularly where the two rejections apply to different claims.

Bd.R. 41.50(g) provides for extensions of time to respond to actions of the Board under Bd.R. 41.50(b) and (d). Bd.R. 41.50(g) provides that a request for an extension of time to respond to a request for briefing and information under Bd.R. 41.50(f) is not authorized. A request for an extension of time to respond to Board action under Bd.R. 41.50(b) and (d) would be presented as a petition under Bd.R. 41.3(a) and (c). A decision on the petition shall be governed by Bd.R. 41.4(a).

Rehearing

Bd.R. 41.52(a) authorizes an appellant to file a single request for rehearing. In the past, appellants have filed a second request for rehearing, in effect supplementing a first request for rehearing. Filing a second or subsequent request for rehearing is not authorized. Any second or subsequent request for rehearing will not be considered.

Bd.R. 41.52(b) provides that a request for rehearing is due within two months from the date the decision by the Board is mailed.

Bd.R. 41.52(c) provides that a request for an extension of time would have to be presented as a petition under Bd.R. 41.3(a) and (c). A decision on the petition would be governed by Bd.R. 41.4(a).

Bd.R. 41.52(d) provides that the form of a request for rehearing is governed by Bd.R. 41.37(v) except that a request for rehearing could not exceed 10 pages, excluding any table of contents, table of authorities, and signature block. A request for rehearing would have to contain, under appropriate headings and in the order indicated, the following items: (1) Table of contents, (2) table of authorities, and (3) argument.

Bd.R. 41.52(e) is reserved.

Bd.R. 41.52(f) provides that a request for rehearing shall state with particularity the points believed to have

been misapprehended or overlooked by the Board. In filing a request for rehearing, the argument shall adhere to the following format: “On page x, lines y-z of the Board's opinion, the Board states that [set out what was stated]. The point misapprehended or overlooked was made to the Board in [identify paper, page and line where argument was made to the Board]. The response is [state response].” As part of each response, appellant shall refer to the page number and line or drawing element number of the Record. A general restatement of the case will not be considered an argument that the Board misapprehended or overlooked a point. A new argument cannot be made in a request for rehearing, except in two instances.

Bd.R. 41.52(f)(1) would authorize in a first instance an appellant to respond to a new ground of rejection entered pursuant to Bd.R. 41.50(d)(2).

Bd.R. 41.52(f)(2) would authorize an appellant to rely on and call the Board's attention to a recent decision of a court or the Board that is relevant to an issue decided in the appeal. Generally, the recent court decision would be a decision of the Supreme Court or the Court of Appeals for the Federal Circuit.

Bd.R. 41.52(g) provides that an amendment or new evidence could not accompany a request for rehearing.

Bd.R. 41.52(h) provides that a decision will be rendered on a request for rehearing. The decision on rehearing would be deemed to incorporate the decision sought to be reheard except for those portions of the decision sought to be reheard specifically modified on rehearing. A decision on rehearing would be considered final for purposes of judicial review, except when otherwise noted in the decision on rehearing.

Action Following Decision

Bd.R. 41.54 provides that, after a decision by the Board and subject to appellant's right to seek judicial review, the proceeding will be returned to the examiner for such further action as may be consistent with the decision by the Board.

Sanctions

Bd.R. 41.56 is new and provides for sanctions. The rule is designed to put the public on notice of actions which the Office believes are detrimental to the efficient handling of

ex parte

appeals.

Bd.R. 41.56(a) provides that the Chief Administrative Patent Judge or an expanded panel of the Board may impose a sanction against an appellant for misconduct. Misconduct would include (1) failure to comply with an order entered in the appeal or an applicable rule, (2) advancing or maintaining a misleading or frivolous request for relief or argument or (3) engaging in dilatory tactics. A sanction would be entered by the Chief Administrative Patent Judge (for matters not before a panel) or an expanded panel of the Board (for matters before a panel). A sanction would be applied against the appellant, not against a registered practitioner. Conduct of a registered practitioner could result in a sanction against an appellant. Conduct of a registered practitioner believed to be inappropriate would be referred to the Office of Enrollment and Discipline for such action as may be appropriate.

Bd.R. 41.56(b) provides that the nature of possible sanctions includes entry of (a) an order declining to enter a docket notice, (b) an order holding certain facts to have been established in the appeal, (c) an order expunging a paper or precluding an appellant from filing a paper, (d) an order precluding an appellant from presenting or contesting a particular issue, (e) an order excluding evidence, (f) an order holding an application on appeal to be abandoned or a reexamination proceeding terminated, (g) an order dismissing an appeal, (h) an order denying an oral hearing or (i) an order terminating an oral hearing.

Whether and what sanction, if any, should be imposed against an appellant in any specific circumstance would be a discretionary action.

Changes Made to Rules as Proposed

Several changes have been made to the rules as proposed in the notice of proposed rulemaking. Those changes follow with additions shown in [brackets] and deletions shown in {braces}. Only the paragraph of a rule where a change was made is reproduced.

Petitions (§ 41.3)

§ 41.3(a), as proposed, would be revised as follows:

Deciding official.

A petition authorized by this part must be addressed to the Chief Administrative Patent Judge. {In addition to complying with all other requirements of this title, a copy of the petition must also be forwarded to the Office addressed to: Chief Administrative Patent Judge, Board of Patent Appeals and Interferences, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.} The Chief Administrative Patent Judge may delegate authority to decide petitions.

Timeliness (§ 41.4)

§ 41.4(b), as proposed, would be revised as follows:

Late filings.

(1) A request to revive an application which becomes abandoned or a reexamination proceeding which becomes terminated under §§ 1.550(d) or 1.957(b) or (c) of this title as a result of a late filing may be filed pursuant to § 1.137 of this title.

(2) A late filing that does not result in an application becoming abandoned or a reexamination proceeding becoming terminated under §§ 1.550(d) or 1.957(b) or [limited under § 1.957] (c) of this title may be excused upon a showing of excusable neglect or a Board determination that consideration on the merits would be in the interests of justice.

Citation of Authority (§ 41.12)

§ 41.12 (a), as proposed, would be revised as follows:

Authority.

Citations to authority must include:

(1)

United States Supreme Court decision.

A citation to a single source in the following order of priority: United States Reports, West's Supreme Court Reports, United States Patents Quarterly, Westlaw, or a slip opinion.

(2)

United States Court of Appeals decision.

A citation to a single source in the following order of priority: West's Federal Reporter (F., F.2d or F.3d), West's Federal Appendix (Fed. Appx.), United States Patents Quarterly, Westlaw, or a slip opinion.

(3)

United States District Court decision.

A citation to a single source in the following order of priority: West's Federal Supplement (F.Supp., F.Supp. 2d), United States Patents Quarterly, Westlaw, or a slip opinion.

(4)

Slip opinions.

If a slip opinion is relied upon, a copy of the slip opinion must accompany the first paper in which an authority is cited.

(5)

Pinpoint citations.

Use pinpoint citations whenever a specific holding or portion of an authority is invoked.

§ 41.12(b), as proposed, would be revised as follows:

Non-binding authority.

Non-binding authority may be cited. If non-binding authority is not an authority of the Office and is not reproduced in one of the reporters listed in paragraph (a) of this section, a copy of the authority shall be filed with the first paper in which it is cited.]

Definitions (§ 41.30)

§ 41.30, as proposed, would be revised as follows:

[

Record

means the official content of the file of an application or

reexamination proceeding an appeal.] {

Record on appeal.

The record on appeal consists of the specification, drawings, if any, U.S. patents cited by the examiner or appellant, published U.S. applications cited by the examiner or appellant, the appeal brief, including all appendices, the examiner's answer, any reply brief, including any supplemental appendix, any supplemental examiner's answer, any supplemental reply brief, any request for rehearing, any order or decision entered by the Board or the Chief Administrative Patent Judge, and any other document or evidence which was considered by the Board as indicated in any opinion accompanying any order or decision.}

Appeal to Board (§ 41.31)

§ 41.31(e), as proposed, would be revised as follows:

Non-appealable issues.

A non-appealable issue is an issue not subject to an appeal under 35 U.S.C. 134. An applicant or patent owner dissatisfied with a decision of an examiner on a non-appealable issue shall timely seek review by petition before jurisdiction over an appeal is transferred to the Board (

see

§ 41.35). Failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue may constitute a waiver to [having] {have} that issue considered [in the application or reexamination on appeal].

Amendments and Evidence After Appeal (§ 41.33)

§ 41.33(c), as proposed, would be revised as follows:

Other amendments.

No other amendments filed after the date an appeal brief is filed will be admitted, except as permitted by §§ {41.39(b)(1),} 41.50(b)(1), 41.50(d)(1) or 41.50(e) of this subpart.

§ 41.33(d), as proposed, would be revised as follows:

Evidence after notice of appeal and prior to appeal brief.

Evidence filed after the date a notice of appeal is filed and prior to the date an appeal brief is filed may be admitted if:

[(1)] the examiner determines that the evidence overcomes [at least one rejection] {some or all rejections} under appeal [and does not necessitate any new ground of rejection], and

[(2)] appellant shows good cause why the evidence was not earlier presented. § 41.33(e), as proposed, would be revised as follows:

Other evidence.

All other evidence filed after the date an appeal brief is filed will not be admitted, except as permitted by §§ {41.39(b)(1),} 41.50(b)(1) or 41.50(d)(1) of this subpart.

Jurisdiction Over Appeal (§ 41.35)

§ 41.35(a), as proposed, would be revised as follows:

Beginning of jurisdiction.

The jurisdiction of the Board begins when a docket notice is [mailed] {entered} by the Board.

§ 41.35(b), as proposed, would be revised as follows:

End of jurisdiction.

The jurisdiction of the Board ends when[:

(1) The Board mails a remand order (see § 41.50(b) or § 41.50(d)(1) of this subpart),

(2) The Board mails a final decision (see § 41.2 of this part) and judicial review is sought or the time for seeking judicial review has expired,

(3) An express abandonment is filed which complies with § 1.138 of this title, or

(4) A request for continued reexamination is filed which complies with § 1.114 of this title.] {the Board orders a remand (see § 41.50(b) or § 41.50(d)(1) of this subpart) or enters a final decision (see § 41.2 of this subpart) and judicial review is sought or the time for seeking judicial review has expired.}

Appeal Brief (§ 41.37)

§ 41.37(e), as proposed, would be revised as follows:

Content of appeal brief.

The appeal brief must contain, under appropriate headings and in the order indicated, the following items:

(1) Statement of the real party in interest [(

see

paragraph (f) of this section)].

(2) Statement of related cases [(

see

paragraph (g) of this section)].

(3) Jurisdictional statement [(

see

paragraph (h) of this section)].

(4) Table of contents [(

see

paragraph (i) of this section)].

(5) Table of authorities [(

see

paragraph (j) of this section)].

(6) [[Reserved.]] {Status of claims.}

(7) Status of amendments [(

see

paragraph (l) of this section)].

(8) [Grounds of rejection] {Rejections} to be reviewed (

see

paragraph (m) of this section)].

(9) Statement of facts [(

see

paragraph (n) of this section)].

(10) Argument [(

see

paragraph (o) of this section)].

(11) An appendix containing a claims section [(

see

paragraph (p) of this section)], [a claim support and drawing analysis section (

see

paragraph (r) of this section)], {a claim support section, a drawing analysis section,} a means or step plus function analysis section [(

see

paragraph (s) of this section)], an evidence section [(

see

paragraph (t) of this section)], and a related cases section [(

see

paragraph (u) of this section)].

§ 41.37(f), as proposed, would be revised as follows:

Statement of real party in interest.

The “statement of the real party in interest” shall identify the name of the real party in interest. The real party in interest must be identified in such a manner as to readily permit a member of the Board to determine whether recusal would be appropriate. Appellant is under a continuing obligation to update this item during the pendency of the appeal. [If an appeal brief does not contain a statement of real party in interest, the Office will assume that the named inventors are the real party in interest.]

§ 41.37(g), as proposed, would be revised as follows:

Statement of related cases.

The “statement of related cases” shall identify, by application, patent, appeal, interference, or court docket number, all prior or pending appeals, interferences or judicial proceedings, known to [any inventors, any attorneys or agents who prepared or prosecuted the application on appeal and any other person who was substantively involved in the preparation or prosecution of the application on appeal,] {appellant, appellant's legal representative or any assignee,} and that are related to, directly affect, or would be directly affected by, or have a bearing on the Board's decision in the appeal. [A related case includes any continuing application of the application on appeal.] A copy of any final or significant interlocutory decision rendered by the Board or a court in any proceeding identified under this paragraph shall be included in the related cases section [(

see

paragraph (u) of this section) in] {of} the appendix. Appellant is under a continuing obligation to update this item during the pendency of the appeal. [If an appeal brief does not contain a statement of related cases, the Office will assume that there are no related cases.]

§ 41.37(h), as proposed, would be revised as follows:

Jurisdictional statement.

The “jurisdictional statement” shall establish the jurisdiction of the Board to consider the appeal. The jurisdictional statement shall include a statement of the statute under which the appeal is taken, [the date of the Office action setting out the rejection on appeal from which the appeal is taken,] {the date of the decision from which the appeal is taken,} the date the notice of appeal was filed, and the date the appeal brief is being filed. If a notice of appeal or an

appeal brief is filed after the time specified in this subpart, appellant must also indicate the date an extension of time was requested and, if known, the date the request was granted.

§ 41.37(i), as proposed, would be revised as follows:

Table of contents.

A “table of contents” shall list, along with a reference to the page where each item begins, the items required to be listed in the appeal brief (

see

paragraph (e) of this section) [or]{,} reply brief (

see

§ 41.41(d) of this subpart) {or supplemental reply brief (see § 41.44(d) of this subpart)}, as appropriate.

§ 41.37(j), as proposed, would be revised as follows:

Table of authorities.

A “table of authorities” shall list cases (alphabetically arranged), statutes and other authorities along with a reference to the pages where each authority is cited in the appeal brief [or]{,} reply brief, {or supplemental reply brief,} as appropriate. § 41.37(k), as proposed, would be revised as follows:

[[Reserved.]] {

Status of pending claims.

The “status of pending claims” shall include a statement of the status of all pending claims (

e.g.

, rejected, allowed, cancelled, withdrawn from consideration, or objected to).}

§ 41.37(m), as proposed, would be revised as follows:

[

Grounds of rejection

] {

Rejections

}

to be reviewed.

The “[grounds of rejection] {rejections} to be reviewed” shall set out the [grounds of rejection] {rejections} to be reviewed, including the [statute applied, the claims subject to each rejection and references relied upon by the examiner] {claims subject to each rejection}.

§ 41.37(n), proposed, would be revised as follows:

Statement of facts.

The “statement of facts” shall set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal. A fact shall be supported by a reference to a specific page number [of a document in the Record] and, where applicable, a specific line or [paragraph, and] drawing numerals {of the record on appeal}. A general reference to a document as a whole or to large portions of a document does not comply with the requirements of this paragraph.

§ 41.37(o), as proposed, would be revised as follows:

Argument.

The “argument” shall explain why the examiner {is believed to have} erred as to each [ground of] rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees. Any finding made or conclusion reached by the examiner that is not challenged will be presumed to be correct. For each argument, an explanation {and} must identify where the argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner. {Any finding made or conclusion reached by the examiner that is not challenged will be presumed to be correct.} Each [ground of] rejection shall be separately argued under a separate heading. {For arguments traversing a rejection made under 35 U.S.C. 102, 103 or 112, see also paragraphs (o)(4) through (o)(7) of this section. For arguments traversing other rejections, see also paragraph (o)(8) of this section.}

(1)

Claims standing or falling together.

[For each ground of rejection applicable to two or more claims, the claims may be argued separately (claims are considered by appellants as separately patentable) or as a group (claims stand or fall together). When two or more claims subject to the same ground of rejection are argued as a group, the Board may select a single claim from the group of claims that are argued together to decide the appeal on the basis of the selected claim alone with respect to the group of claims as to the ground of rejection. Any doubt as to whether claims have been argued separately or as a group as to a ground of rejection will be resolved against appellant and the claims will be deemed to have been argued as a group. Any claim argued separately as to a ground of rejection shall be placed under a subheading identifying the claim by number.]{When a rejection applies to two or more claims, as to that rejection, the appellant may elect to have all claims stand or fall together, or argue the separate patentability of individual claims. If the appeal brief fails to make an explicit election, the Board will treat all claims subject to a rejection as standing or falling together, and select a single claim to decide the appeal as to that rejection. Any doubt as to whether an election has been made or whether an election is clear will be resolved against the appellant. Any claim argued separately shall be placed under a subheading identifying the claim by number.} A statement that merely points out what a claim recites will not be considered an argument for separate patentability of the claim.

(2)

Arguments considered.

Only those arguments which are presented in the argument section of the appeal brief and that address claims set out in the claim support [and drawing analysis] section of the appendix will be considered. Appellant waives all other arguments [in the appeal].

(3)

Format of argument.

Unless a response is purely legal in nature, when responding to a point made in the examiner's rejection, the appeal brief shall specifically identify the point made by the examiner and indicate where appellant previously responded to the point or state that appellant has not previously responded to the point. In identifying any point made by the examiner, the appellant shall refer to a page and, where appropriate, a line [or paragraph], of [a document in] the [Record]{record on appeal}.

{(4)

Rejection under 35 U.S.C. 112, first paragraph.

For each rejection under 35 U.S.C. 112, first paragraph, the argument shall also specify the errors in the rejection and how the rejected claims comply with the first paragraph of 35 U.S.C. 112 including, as appropriate, how the specification and drawings, if any, describe the subject matter defined by the rejected claims, enable any person skilled in the art to which the invention pertains to make and use the subject matter of the rejected claims, or set forth the best mode contemplated by the inventor of carrying out the claimed invention.}

{(5)

Rejection under 35 U.S.C. 112, second paragraph.

For each rejection under 35 U.S.C. 112, second paragraph, the argument shall also specify how the rejected claims particularly point out and distinctly claim the subject matter which appellant regards as the invention.}

{(6)

Rejection under 35 U.S.C. 102.

For each rejection under 35 U.S.C. 102 (anticipation), the argument shall also specify why the rejected claims are patentable by identifying any specific limitation in the rejected claims which is not described in the prior art relied upon in support of the rejection.}

{(7)

Rejection under 35 U.S.C. 103.

For each rejection under 35 U.S.C. 103, if appropriate, the argument shall specify the errors in the rejection and, if appropriate, specify the specific limitations in the rejected claims that are not described in the prior art relied upon in support of the rejection, and explain how those limitations render the claimed subject matter unobvious over the prior art. A general argument that all limitations are not described in a single prior art reference does not satisfy the requirements of this paragraph.}

{(8)

Other rejections.

For each rejection other than those referred to in paragraphs (o)(4) through (o)(7), the argument shall specify the errors in the rejection, including where appropriate, the specific limitations in the rejected claims upon which the appellant relies to establish error.}

§ 41.37(p), as proposed, would be revised as follows:

Claims section.

The “claims section” of the appendix shall consist of an accurate clean copy in numerical order of all claims pending in the application or reexamination proceeding on appeal. The status of [every]{each} claim shall be set out after the claim number and in parentheses (

e.g.

, 1 (rejected), 2 (withdrawn), 3 (objected to), [4 (cancelled), and 5 (allowed)]). {and 4 (allowed)).} [A cancelled claim need not be reproduced.]

§ 41.37(q), as proposed, would be revised as follows:

[[Reserved.]] {

Claim support section.

For each claim argued separately (see paragraph (o)(1) of this section), the “claim support section” of the appendix shall consist of an annotated copy of the claim indicating in bold face between braces ({ }) the page and line after each limitation where the limitation is described in the specification as filed.}

§ 41.37(r), as proposed, would be revised as follows:

[

Claim support and

]

drawing analysis section.

[For each independent claim involved in the appeal and each dependent claim argued separately (

see

paragraph (o)(1) of this section), the claim support and drawing analysis section in the appendix shall consist of an annotated copy of the claim (and, if necessary, any claim from which the claim argued separately depends) indicating in bold face between braces ({ }) the page and line or paragraph after each limitation where the limitation is described in the specification as filed. If there is a drawing or amino acid or nucleotide material sequence, and at least one limitation is illustrated in a drawing or amino acid or nucleotide material sequence, the “claims support and drawing analysis section” in the appendix shall also contain in bold face between the same braces ({ }) where each limitation is shown in the drawings or sequence.] {For each claim argued separately (see paragraph (o)(1) of this section) and having at least one limitation illustrated in a drawing or amino acid or nucleotide material sequence, the “drawing analysis section” of the appendix shall consist of an annotated copy of the claim indicating in bold face between braces ({ }) where each limitation is shown in the drawings or sequence. If there is no drawing or sequence, the drawing analysis section shall state that there is no drawing or sequence.}

§ 41.37(s), as proposed, would be revised as follows:

Means or step plus function analysis section.

[For each independent claim involved in the appeal and each dependent claim argued separately (

see

paragraph (o)(1) of this section) having a limitation that appellant regards as a means or step plus function limitation in the form permitted by the sixth paragraph of 35 U.S.C. 112, for each such limitation, the “means or step plus function analysis section” in the appendix shall consist of an annotated copy of the claim (and, if necessary, any claim from which the claim argued separately depends) indicating in bold face between braces ({ }) the page and line of the specification and the drawing figure and element numeral that describes the structure, material or acts corresponding to each claimed function.] {For each claim argued separately (see paragraph (o)(1) of this section) and for each limitation that appellant regards as a means or step plus function limitation in the form permitted by the sixth paragraph of 35 U.S.C. 112, the “means or step plus function analysis section” of the appendix shall consist of an annotated copy of the claim indicating in bold face between braces ({ }) the page and line of the specification and the drawing figure and element numeral that describes the structure, material or acts corresponding to each claimed function. If there is no means or step plus function limitation, the means or step plus function analysis section shall state that there are no means or step plus function limitations in the claims to be considered.}

§ 41.37(t), as proposed, would be revised as follows:

Evidence section

. The “evidence section” shall contain only papers which have been entered by the examiner. The evidence section shall include:

(1) A table of contents.

(2) [[Reserved.]] {The Office action setting out the rejection on appeal. If the Office action incorporates by reference any other Office action, then the Office action incorporated by reference shall also appear in the evidence section.}

(3) [[Reserved.]] {All evidence relied upon by the examiner in support of the rejection on appeal (including non-patent literature and foreign application and patent documents), except the specification, any drawings, U.S. patents or published U.S. applications.}

(4) [[Reserved.]] {The relevant portion of a paper filed by the appellant before the examiner which shows that an argument being made on appeal was made in the first instance to the examiner.}

(5) [

Affidavits and declarations.

] Affidavits and declarations, if any, and attachments to declarations, [before the examiner and which are relied upon by appellant in the appeal. An affidavit or declaration otherwise mentioned in the appeal brief which does not appear in the evidence section will not be considered.] {relied upon by appellant before the examiner.}

(6) [

Other evidence filed prior to the notice of appeal.

] Other evidence, if any, [before the examiner and filed prior to the date of the notice of appeal and relied upon by appellant in the appeal. Other evidence filed before the notice of appeal that is otherwise mentioned in the appeal brief and which does not appear in the evidence section will not be considered.] {relied upon by the appellant before the examiner.}

[(7)

Other evidence filed after the notice of appeal.

Other evidence relied upon by the appellant in the appeal and admitted into the file pursuant to § 41.33(d) of this subpart. Other evidence filed after the notice of appeal that is otherwise mentioned in the appeal brief and which does not appear in the evidence section will not be considered.]

§ 41.37(v), as proposed, would be revised as follows:

Appeal brief format requirements

. An appeal brief shall comply with § 1.52 of this title and the following additional requirements:

(1)

Page and line numbering

. The pages of the appeal brief, including all sections [in] {of} the appendix, shall be consecutively numbered using Arabic numerals beginning with the first page of the appeal brief, which shall be numbered page 1. [If the appellant chooses to number the lines, line numbering may be within the left margin.] {The lines on each page of the appeal brief and, where practical, the appendix shall be consecutively numbered beginning with line 1 at the top of each page.}

(2)

Double spacing

. Double spacing shall be used except in headings, tables of contents, tables of authorities, [signature blocks and certificates of service.] {and signature blocks.} Block quotations must be {double spaced and} indented [and can be one and one half or double spaced].

(3) [[Reserved.]] {

Margins

. Margins shall be at least one inch (2.5 centimeters) on all sides. Line numbering may be within the left margin.}

(4)

Font

. The font [size] shall be [14 point,] {readable and clean, equivalent to 14 point Times New Roman,} including the font for block quotations and footnotes.

(5)

Length of appeal brief

. An appeal brief may not exceed [30] {25} pages, excluding any statement of the real party in interest, statement of related

cases, [jurisdictional statement,] table of contents, table of authorities, [statement of amendments,] signature block, and appendix. An appeal brief may not incorporate another paper by reference. A request to exceed the page limit shall be made by petition under § 41.3 filed at least ten calendar days prior to the date the appeal brief is due.

Examiner's Answer (§ 41.39)

§ 41.39(b), as proposed, would be revised as follows:

[

No new ground of rejection.

] {

New rejection in examiner's answer.

} [An examiner's answer shall not include a new ground of rejection.] {An examiner's answer may include a new rejection. If an examiner's answer contains a rejection designated as a new rejection, appellant must, within two months from the date of the examiner's answer, exercise one of the following two options or the application will be deemed to be abandoned or the reexamination proceeding will be deemed to be terminated.}

{(1)

Request to reopen prosecution

. Request that prosecution be reopened before the examiner by filing a reply under § 1.111 of this title with or without amendment or submission of evidence. Any amendment or evidence must be responsive to the new rejection. A request that complies with this paragraph will be entered and the application or patent under reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. A request under this paragraph will be treated as a request to withdraw the appeal.}

{(2)

Request to maintain the appeal

. Request that the appeal be maintained by filing a reply brief as set forth in § 41.41 of this subpart. A reply brief may not be accompanied by any amendment or evidence, except an amendment canceling one or more claims which are subject to the new rejection. A reply which is accompanied by evidence or any other amendment will be treated as a request to reopen prosecution pursuant to paragraph (b)(1) of this section.}

§ 41.39(c), as proposed, would be revised as follows:

Extension of time to file request

. The time for filing a request under § 41.39(b)(1) is extendable under the provisions of § 1.136(a) of this title as to applications and under the provisions of § 1.550(c) of this title as to reexamination proceedings. A request for an extension of time for filing a request under paragraph (b)(2) of this section shall be presented as a petition under § 41.3 of this part.}

Reply Brief (§ 41.41)

§ 41.41(c), as proposed, would be revised as follows:

Extension of time to file reply brief

. A request for an extension of time to file a reply brief shall be presented as a petition under § 41.3 of this {sub}part.

§ 41.41(d), as proposed, would be revised as follows:

Content of reply brief

. {A reply brief shall be limited to responding to points made in the examiner's answer.} Except as otherwise set out in this section, the form and content of a reply brief are governed by the requirements for an appeal brief as set out in § 41.37 of this subpart. A reply brief may not exceed [20] {fifteen} pages, excluding any table of contents, table of authorities, {statement of timeliness,} [and] signature block, {and supplemental appendix} required by this section. {If the examiner enters and designates a rejection as a new rejection, the reply brief may not exceed twenty-five pages, excluding any table of contents, table of authorities, statement of timeliness, signature block, and supplemental appendix required by this section.} A request to exceed the page limit shall be made by petition under § 41.3 of this part and filed at least ten calendar days before the reply brief is due. A reply brief must contain, under appropriate headings and in the order indicated, the following items:

(1) Table of contents—

see

§ 41.37(i) of this subpart.

(2) Table of authorities—

see

§ 41.37(j) of this subpart.

(3) [[Reserved.]] {Statement of timeliness—

see

paragraph (e) of this section}.

(4) Statement of [additional] facts—

see

paragraph (f) of this section.

(5) Argument[—

see

paragraph (g) of this section.]

{(6) Supplemental appendix.}

§ 41.41(e), as proposed, would be revised as follows:

[[Reserved.]] {

Statement of timeliness

. The “statement of timeliness” shall include the date that the examiner's answer was entered and the date that the reply is being filed. If the reply brief is filed after the time specified in this subpart, appellant must indicate the date an extension of time was requested and the date the request was granted.}

§ 41.41(g), as proposed, would be revised as follows:

Argument

. [Any arguments raised in the reply brief which are not responsive to points made in the examiner's answer will not be considered and will be treated as waived. {A reply brief is limited to responding to points made in the examiner's answer. Arguments generally restating the case will not be permitted in a reply brief.}

§ 41.41(h), as proposed, would be revised as follows:

[[Reserved.]] {

Supplemental appendix

. If the examiner entered a new rejection in the examiner's answer and appellant elects to respond to the new rejection in a reply brief, this item shall include:

(1) A table of contents—

see

§ 41.37(i) of this subpart.

(2) The examiner's answer.

(3) All evidence upon which the examiner relied in support of the new rejection that does not already appear in the evidence section accompanying the appeal brief, except the specification, any drawings, U.S. patents and U.S. published applications.}

{Examiner's response to reply brief (§ 41.43)}

§ 41.43, as proposed, would be removed:

{Upon consideration of a reply brief, the examiner may withdraw a rejection and reopen prosecution or may enter a supplemental examiner's answer responding to the reply brief.}

{Supplemental reply brief (§ 41.44). [new rule number]}

§ 41.44(a), as proposed, would be removed:

{

Supplemental reply brief authorized

. If an examiner enters a supplemental examiner's answer, an appellant may file a single supplemental reply brief responding to the supplemental examiner's answer.}

§ 41.44(b), as proposed, would be removed:

{

Time for filing supplemental reply brief

. Appellant must file a supplemental reply brief within two months from the date of the mailing of the examiner's supplemental answer.}

§ 41.44(c), as proposed, would be removed:

{

Extension of time to file supplemental reply brief

. A request for an extension of time shall be presented as a petition under § 41.3.}

§ 41.44(d), as proposed, would be removed:

{

Content of supplemental reply brief

. Except as otherwise set out in this subparagraph, the form and content of a supplemental reply brief are governed by the requirements for appeal briefs as set out in § 41.37 of this subpart. A supplemental reply brief may not exceed ten pages, excluding the table of contents, table of authorities, and statement of timeliness and signature block. A request to exceed the page limit shall be made by petition under § 41.3 of this part and filed at least ten

calendar days before the supplemental reply brief is due. A supplemental reply brief must contain, under appropriate headings and in the order indicated, the following items:

(1) Table of contents—

see

§ 41.37(i) of this subpart.

(2) Table of authorities—

see

§ 41.37(j) of this subpart.

(3) Statement of timeliness—

see

paragraph (e) of this section.

(4) Argument—

see

paragraph (f) of this section.}

§ 41.44(e), as proposed, would be removed:

{

Statement of timeliness

. The “statement of timeliness” shall establish that the supplemental reply brief was timely filed by including a statement of the date the supplemental examiner's answer was entered and the date the supplemental reply brief is being filed. If the supplemental reply brief is filed after the time specified in this subpart, appellant must indicate the date an extension of time was requested and the date the request was granted.}

§ 41.44(f), as proposed, would be removed:

{

Argument

. The “argument” shall be limited to responding to points made in the supplemental examiner's answer. Arguments generally restating the case will not be permitted in a supplemental reply brief.}

§ 41.44(g), as proposed, would be removed:

{

No amendment or new evidence

. No amendment or new evidence may accompany a supplemental reply brief.}

Oral Hearing (§ 41.47)

§ 41.47(c), as proposed, would be revised as follows:

Time for filing request for oral hearing

. Appellant must file a request for oral hearing within two months from the date of the examiner's answer {or supplemental examiner's answer}.

§ 41.47(i), as proposed, would be revised as follows:

Oral hearing limited to [Record] {record}

. At oral hearing only the [Record] {record on appeal} will be considered. No additional evidence may be offered to the Board in support of the appeal. Any argument not presented in a brief cannot be raised at an oral hearing.

§ 41.47(j), as proposed, would be revised as follows:

Recent legal development

. Notwithstanding {sub}paragraph (i) of this section, an appellant or the examiner may rely on and call the Board's attention to a recent court or Board opinion which could have an effect on the manner in which the appeal is decided.

§ 41.47(k), as proposed, would be revised as follows:

Visual aids

. Visual aids may be used at an oral hearing, but must be limited to {copies of} documents [or artifacts] in the [Record] {record on appeal} [or a model or an exhibit presented for demonstration purposes during an interview with the examiner]. At the oral hearing, appellant should provide one copy of each visual aid [(photograph in the case of an artifact, a model or an exhibit)] for each judge and one copy [to be added to the Record] {for the record}.

Decisions and Other Actions by the Board (§ 41.50)

§ 41.50(b), as proposed, would be revised as follows:

Remand

. The Board may remand an application to the examiner. If in response to [a] {the} remand [for further consideration of a rejection], the examiner enters [an] {supplemental} examiner's answer, within two months the appellant shall exercise one of the following two options to avoid abandonment of the application or termination of a reexamination proceeding:

(1)

Request to reopen prosecution

. Request that prosecution be reopened before the examiner by filing a reply under § 1.111 of this title with or without amendment or submission of evidence. Any amendment or evidence must be responsive to the remand or issues discussed in the {supplemental} examiner's answer. A request that complies with this paragraph will be entered and the application or patent under reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. A request under this paragraph will be treated as a request to dismiss the appeal.

(2)

Request to [re-docket] {maintain} the appeal

. The appellant may request that the Board re-docket the appeal (

see

§ 41.35(a) of this subpart) and file a reply brief as set forth in § 41.41 of this subpart. A reply brief may not be accompanied by any amendment or evidence. A reply brief which is accompanied by an amendment or evidence will be treated as a request to reopen prosecution pursuant to paragraph (b)(1) of this section.

§ 41.50(d), as proposed, would be revised as follows:

New [ground of] rejection

. Should the Board have a basis not involved in the appeal for rejecting any pending claim, it may enter a new [ground of] rejection. A new [ground of] rejection shall be considered an interlocutory order and shall not be considered a final decision. If the Board enters a new [ground of] rejection, within two months appellant must exercise one of the following two options with respect to the new [ground of] rejection to avoid dismissal of the appeal as to any claim subject to the new [ground of] rejection:

(1)

Reopen prosecution

. Submit an amendment of the claims subject to a new [ground of] rejection or new evidence relating to the new [ground of] rejection or both, and request that the matter be reconsidered by the examiner. The application or reexamination proceeding on appeal will be remanded to the examiner. A new [ground of] rejection by the Board is binding on the examiner unless, in the opinion of the examiner, the amendment or new evidence overcomes the new [ground of] rejection. In the event the examiner maintains the new [ground of] rejection, appellant may again appeal to the Board.

(2)

Request for rehearing.

Submit a request for rehearing pursuant to § 41.52 of this subpart relying on the [Record]{record on appeal}.

§ 41.50(e), as proposed, would be revised as follows:

Recommendation.

In its opinion in support of its decision, the Board may include a recommendation, explicitly designated as such, of how a claim on appeal may be amended to overcome a specific rejection. When the Board makes a recommendation, appellant may file an amendment or take other action consistent with the recommendation. An amendment or other action, otherwise complying with statutory patentability requirements, will overcome the specific rejection. An examiner, however, [upon return of the application or reexamination proceeding to the jurisdiction of the examiner,] may enter a new [ground of] rejection of a claim amended in conformity with a recommendation, when appropriate.

§ 41.50(g), as proposed, would be revised as follows:

Extension of time to take action.

A request for an extension of time to respond to a request for briefing and information under paragraph (f) of this section is not authorized. A request for an extension of time to respond to Board action under paragraphs (b) and (d) of this section shall be presented as a petition under § 41.3 of this {sub}part.

Rehearing (§ 41.52)

§ 41.52(b), as proposed, would be revised as follows:

Time for filing request for rehearing.

Any request for rehearing must be filed within two months from the date of the

decision [mailed]{entered} by the Board.

§ 41.52(c), as proposed, would be revised as follows:

Extension of time to file request for rehearing.

A request for an extension of time shall be presented as a petition under § 41.3 of this {sub}part.

§ 41.52(d), as proposed, would be revised as follows:

Content of request for rehearing.

{A request for rehearing shall state with particularity the points believed to have been misapprehended or overlooked by the Board.} The form of a request for rehearing is governed by the requirements of § 41.37(v) of this subpart, except that a request for rehearing may not exceed [10] {ten} pages, excluding any table of contents, table of authorities, {statement of timeliness,} and signature block. A request to exceed the page limit shall be made by petition under § 41.3 at least ten calendar days before the request for rehearing is due. A request for rehearing must contain, under appropriate headings and in the order indicated, the following items:

(1) Table of contents—

see

§ 41.37(i) of this subpart.

(2) Table of authorities—

see

41.37(j) of this subpart.

(3) [[Reserved.]] {Statement of timeliness—

see

paragraph (e) of this section.}

(4) Argument—

see

paragraph (f) of this section.

§ 41.52(e), as proposed, would be revised as follows:

[[Reserved.]] {

Statement of timeliness.

The “statement of timeliness” shall establish that the request for rehearing was timely filed by including a statement of the date the decision sought to be reheard was entered and the date the request for rehearing is being filed. If the request for rehearing is filed after the time specified in this subpart, appellant must indicate the date an extension of time was requested and the date the request was granted.}

§ 41.52(f), as proposed, would be revised as follows:

Argument.

[A request for rehearing shall state with particularity the points believed to have been misapprehended or overlooked by the Board.] In filing a request for rehearing, the argument shall adhere to the following format: “On page x, lines y-z of the Board's opinion, the Board states that [set out what was stated]. The point misapprehended or overlooked was made to the Board in [identify paper, page and line where argument was made to the Board] [or the point was first made in the opinion of the Board]. The response is [state response].” As part of each response, appellant shall refer to the page number and line or drawing number of [a document in] the [Record] {record on appeal}. [A] {No} general restatement of the case [will not be considered an argument that the Board has misapprehended or overlooked a point.] {is permitted in a request for rehearing.} A new argument cannot be made in a request for rehearing, except:

(1)

New [ground of] rejection.

Appellant may respond to a new [ground of] rejection entered pursuant to § 41.50(d)(2) of this subpart.

(2)

Recent legal development.

Appellant may rely on and call the Board's attention to a recent court or Board opinion which is relevant to an issue decided in the appeal.

Sanctions (§ 41.56)

§ 41.56(a), as proposed, would be revised as follows:

Imposition of sanctions.

[The Chief Administrative Patent Judge or an expanded panel of the Board may impose a sanction] {A sanction may be imposed} against an appellant for misconduct, including:

(1) Failure to comply with an order entered in the appeal or an applicable rule.

(2) Advancing or maintaining a misleading or frivolous request for relief or argument.

(3) Engaging in dilatory tactics.

§ 41.56(b), as proposed, would be revised as follows:

Nature of sanction.

Sanctions may include entry of:

(1) An order declining to enter a docket{ing} notice.

(2) An order holding certain facts to have been established in the appeal.

(3) An order expunging a paper or precluding an appellant from filing a paper.

(4) An order precluding an appellant from presenting or contesting a particular issue.

(5) An order excluding evidence.

(6) [[Reserved.]] {An order requiring terminal disclaimer of patent term.}

(7) An order holding an application on appeal to be abandoned or a reexamination proceeding terminated.

(8) An order dismissing an appeal.

(9) An order denying an oral hearing.

(10) An order terminating an oral hearing.

Discussion of Comments

Generally

Comment 1.

Several comments expressed a concern that many of the appeals rules, as proposed, are not necessary and will not help the Board resolve appeals.

Answer.

A review of the comments as a whole suggests that many have overlooked the fact that (1) the overall appeal process begins with the notice of appeal and ends with a decision of the Board and (2) that the process from notice of appeal to decision of the Board is bifurcated within the Office. The Office bifurcates the overall appeal process because some of the steps are carried out in the Technology Centers while other steps are carried out before the Board. The notice of appeal and appeal brief are filed while the appeal process is before the Technology Center. Many of the requirements of the rules will help the Board and Technology Center personnel. For example, a table of contents and table of authorities helps Technology Center personnel (

e.g.

, the examiner and conferees in appeals) promptly locate information in a brief. A jurisdictional statement will provide a road map on whether an application on appeal is abandoned and will enable Technology Center personnel to promptly advise an applicant in the event an application is abandoned. Identification of whether an argument in an appeal brief is “new” will enable Technology Center personnel to evaluate the new argument and determine whether a rejection should be withdrawn. Additionally, if a “new” argument is made, Technology Center personnel will know that if the appeal is to go forward that the argument will need to be answered. The rules should be viewed as making the overall appeal process, albeit bifurcated, efficient so as to eliminate at an early stage appeals which should not go forward and make appeals which go forward capable of prompt resolution.

Comment 2.

A comment maintained that the proposed rule changes are “substantive and NOT interpretive.”

Answer.

The rules are promulgated pursuant to the Director's authority to establish regulations which govern the conduct of proceedings in the Office, including regulations governing

ex parte

appeals. 35 U.S.C. 2(b)(2)(A). The rules are merely procedural rules, not substantive rules.

Comment 3.

A comment suggested that the proposed appeals rules would increase application pendency,

inter alia,

because examiners would delay examination until the filing of an appeal brief. According to the comment, delays occur under the former rules.

Answer.

The premise of the comment is that under the former rules the examiners are not doing their job and are waiting for an appeal to examine a patent application. The Director has confidence that examiners are doing their job correctly. Furthermore, most

applications are examined without the need for filing a notice of appeal. Therefore the comment is addressing a very small percentage of all applications filed in the Office. If there are some examiners who in the opinion of an applicant are not doing their job, the applicant has a responsibility to call the matter to the attention of a Director in the involved Technology Center. The Office cannot address and respond to general comments about perceived improper behavior of examiners. Like the examination of a patent application, perceived inappropriate examination can be dealt with only on a case-by-case and examiner-by-examiner basis. A Technology Center Director without knowledge of difficulties experienced by an applicant is not likely to be able take to steps to improve the examination process, whether before or after a notice of appeal is filed.

See Keebler Co.

v. M

urray Bakery Products,

866 F.2d 1386, 1388 (Fed. Cir. 1989) (noting that prescience is not a required characteristic of Office personnel). Unless a matter is called to the attention of an Office manager in a position to look into the facts, it is unlikely the behavior which the comment alleges occurs can be corrected.

Comment 4.

A comment indicated that from 40 to 60 percent of appealed cases are reopened or allowed under existing rules. Another comment indicated that only 50% of the appeals are transmitted to the Board after the newly instituted appeal conferences in the Technology Centers. The comments go on to state that applicants should not have to file appeal briefs (either under the former rules or the new rules) when many appeals never reach the Board. Other comments made similar observations.

Answer.

For appellants taking advantage of the Office's newly instituted pre-appeal brief conferences, an appeal brief is not due until the results of the pre-appeal conference are mailed to appellant. Nevertheless, an increasing number of appeals proceed to the Board for resolution. These rules establish procedures which will permit those appeals reaching the Board to be resolved in an efficient manner.

Comment 5.

A comment suggested that many of the appeals rules place a burden on an applicant to establish patentability as opposed to requiring the Office to establish unpatentability.

Answer.

The comment misapprehends the nature of the rules. It is the examiner's function to establish that claims are unpatentable. An applicant dissatisfied with the examiner's unpatentability holding may appeal to the Board. The appeals rules are not designed to make the applicant prove patentability. However, they are designed to require the applicant on appeal to show that the examiner erred. The rules also require the applicant to provide enough information so that the Board can determine what fact or legal matter is in dispute and resolve any dispute. In many appeals, the Board has had to spend considerable time trying to determine what matters are in issue.

Comment 6.

The tenor of many comments is that applicants are concerned with post-issuance matters, such as infringement cases. The premise of the comments is that an applicant (soon to be a patentee) should not have to state its position on various matters, including,

e.g.

, (1) the meaning of claims, (2) the level of skill in the art, and (3) what element in a specification supports a means or step plus function claim. The comments imply that if an applicant has to tell the Board what its claim means, post-issuance doctrine of equivalents positions may be compromised. Some comments suggest that the more which needs to be said, the more likely an applicant will face allegations of inequitable conduct when a patent is sought to be enforced.

Answer.

The Office is not unsympathetic to some of the concerns expressed. However, it is also true that a patent file serves a public notice function. To the extent that an applicant has to explain the meaning of its claims, etc., to the Board to secure a reversal, no applicant should be concerned. The examination process should be a transparent process where prosecution reveals much about the scope and meaning of a patent. Patent prosecution is not a procedure whereby an applicant should be allowed to maneuver during prosecution only to surprise the public when the patent issues. For these reasons, it is difficult to see why an applicant would want to resist providing the information the Board needs to determine whether an examiner erred. In this respect, the Federal Circuit recently made the following observation:

Where the applicant expressly and unambiguously states * * * [an] intention to claim broadly, the claim construction issue is easier and the question becomes one of validity—whether the specification supports the full breadth of the new claims. On the other hand, where—as in this case—the patentee has not been explicit about the scope of the new claims, the case can pose interdependent problems of both claim construction and validity.

Saunders Group, Inc.

v.

Comfortrac, Inc.,

492 F.3d 1326, 1336 (Fed. Cir. 2007). The appeal rules address the Federal Circuit's observation, at least for those cases which require an appeal to be decided by the Board.

Comment 7.

Several comments called attention to events which are said to have transpired in particular patent applications prosecuted by those submitting the comments. According to the comments, examiners are said to have mishandled each of the applications.

Answer.

The rule making process is not a vehicle for correcting errors which are said to have occurred during the prosecution of particular patent applications. The comments were considered only to the extent that they provided general observations and suggestions relevant to a rule under consideration.

Comment 7A.

Several comments called attention to mathematical analysis of data compiled by the comment provider. According to the comments, the analysis argued against implementation of the rules.

Answer.

The data and analysis have been considered only to the extent that each is relevant to a rule under consideration. The data and analysis do not provide any justification for not implementing the rules.

Comment 8.

A comment suggested that a Regulatory Flexibility Act analysis is required. 5 U.S.C. 603.

Answer.

A Regulatory Flexibility Act certification or analysis is required only for proposed rules that are required to be published for notice and comment. Because these rules are procedural, they are not required to be published for notice and comment. Nevertheless, the Office chose to publish these rules for comment prior to adoption of the final rules in order to solicit valuable input from the public. See the Regulatory Flexibility Act section under Rule Making Considerations of this final rule for further information regarding certification of the rules under 5 U.S.C. 605(b).

Comment 8A.

Several comments stated that the notice of proposed rule making should have been published earlier than July 30, 2007.

Answer.

Although prior notice and an opportunity for public comment are not required for the procedural changes in the rules as proposed, the USPTO published a notice of proposed rule making in the

Federal Register

as soon as the proposed rules were in an appropriate form for publication.

Comment 9.

Two comments suggested that the Office has not complied with the Paperwork Reduction Act; specifically with regard to Bd.R. 41.37(t) and (u) and 41.41(h)(2) and (3).

Answer.

Paragraphs (t) and (u) of section 41.37 have been revised and do

not require the collection of information beyond what is already required by the current rules. Paragraph (h), including subparagraphs (2) and (3), of section 41.41 have been reserved.

Comment 9A.

A comment suggested that the Office has not complied with Executive Order 12866.

Answer.

For reasons given at the end of this notice, the Office has complied with Executive Order 12866.

Bd.R. 41.3(a)

Comment 10.

Several comments suggested that delegating authority to the Chief Administrative Patent Judge to decide certain petitions for extensions of time might result in delays. Other comments noted that there have been occasions when petitions have not been promptly forwarded to deciding officials within the Office.

Answer.

Bd.R. 41.3 requires that a petition for an extension be filed with the Office and addressed to the Chief Judge. Consideration of requests for extensions decided by a single Office employee will maximize uniform treatment of petitions for an extension of time.

Comment 11.

A comment suggested that the Chief Administrative Patent Judge would not be in a position to know examiner's hours and schedules and therefore would not be in a good position to decide petitions for an extension of time.

Answer.

An examiner's hours or schedule are not relevant to whether an applicant should receive an extension of time.

Bd.R. 41.4(a)

Comment 12.

A comment observed that the

Federal Register

Notice (72 FR at 41,472), under “Timeliness of Petitions,” states that the Chief Administrative Patent Judge will determine (for the most part) whether extensions of time are to be granted. Other Board rules state that a request for an extension of time must be presented as a petition under Bd.R. 41.3. The comment felt that the Notice gives an impression that all requests for extensions of time under Bd.R. 41.4(a) would have to be by way of a petition under Bd.R. 41.3. If so, then the comment suggests that Bd.R. 41.4(a) should be amended to provide that a petition under Bd.R. 41.3 is required.

Answer.

The suggestion to change Bd.R. 41.4(a) is not being adopted. Bd.R. 41.4(a) provides that extensions of time will be granted only on a showing of good cause except as otherwise provided by rule. Bd.R. 41.3 (1) applies to all cases pending before the Board, including interference cases and requests for an extension of time by petition under Bd.R. 41.4, and (2) sets the standard under which extensions of time are granted. A petition for an extension of time under Bd.R. 41.3 is required only where another rule requires the petition to be filed, e.g. (1) Bd.R. 41.41(c) (reply brief), (2) Bd.R. 41.47(d) (request for oral hearing), and (3) Bd.R. 41.52(c) (request for rehearing).

Comment 13.

A comment noted that possible requests for extensions of time under the current appeal process might lead to unwarranted patent term adjustment. The comment suggests that an amendment could be made to Rule 704(c)(9) to deal with abuses of the extension of time practice and the need for a petition for an extension of time is not necessary.

Answer.

A possible amendment to Rule 704(c)(9) is beyond the scope of the notice of proposed rule making. Nevertheless, one factor in determining whether a petition for an extension of time should be granted is any possible patent term adjustment resulting from any extension. In the case where granting a petition for an extension of time would appear to result in unwarranted patent term adjustment, a decision on petition could make an extension conditioned on an appellant waiving its right to patent term adjustment equivalent to the length of the extension.

Bd.R. 41.20

Comment 14.

A comment suggested that if an examiner makes a new ground of rejection in an examiner's answer and the applicant elects further prosecution before the examiner, then the appeal fees (notice of appeal and appeal brief) should be refunded or applied to any future appeal.

Answer.

The rules are being amended to provide that a new ground of rejection cannot be made in the examiner's answer.

Bd.R. 41.30

Comment 15.

One comment suggested that the transcript of oral argument be considered part of the “record on appeal.”

Answer.

Since any “transcript of oral argument” is entered in the file of the application or reexamination on appeal, it is part of the Record. However, one concern in making the transcript part of the Record will be attempts by appellants at oral hearing to raise “new” issues not previously raised. A new argument raised for the first time at an oral hearing will not be considered.

See

Bd.R. 41.47(i), which is based on principles announced in

Packard Press, Inc.

v.

Hewlett-Packard Co.,

227 F.3d 1352, 1360 (Fed. Cir. 2000);

Henry

v.

Department of Justice,

157 F.3d 863, 865 (Fed. Cir. 1998); and

LeVeen

v.

Edwards,

57 USPQ2d 1406, 1414 (Bd. Pat. App. & Int. 2000).

Comment 16.

A comment suggested that the definition of “record on appeal” is too broad because it could include, for example, U.S. patents cited in an IDS which are not mentioned by either the examiner or the appellant. The comment suggested that the definition be limited to documents relied upon in the appeal.

Answer.

The Record consists of the material in the official file of the application or reexamination on appeal. However, unless a particular document in the Record has been mentioned or relied upon, a document cannot form part of the “evidence” considered by the examiner or the Board. Patents cited in an IDS, but not relied upon by either the examiner or the appellant in the appeal will not be considered by the Board. Likewise, Office actions, responses to Office actions, prior art and evidence cited earlier in the prosecution, but not relied upon in the appeal, would not be considered.

Comment 17.

A comment suggested that the record on appeal (Bd.R. 41.30 and Bd.R. 41.37(t)) should be “the entire administrative record.”

Answer.

The suggestion is adopted. A definition of “Record” has been added to the definitions in Bd.R. 41.30. However, as the answer to the previous comments makes clear, a document in the Record not called to the attention of the examiner and the Board will not be considered. A document called to the Board's attention the first time in a petition for rehearing will almost always be denied consideration. Experience shows that after an adverse decision by the Board, on appeal to the Federal Circuit an appellant will refer to documents in the court brief which were not called to the attention of the Board. The Federal Circuit is entitled to know that the document relied upon in an appeal before it was addressed in the arguments made to the Board. The appeal brief, reply brief and request for rehearing will establish what part of the Record was relied upon in the appeal by the appellant, the examiner and the Board.

Comment 18.

A comment suggested that the definition of the record on appeal gives preferential status to U.S. patents and published U.S. applications. The comment goes on to say that published foreign applications and technical journal articles are also important.

Answer.

Given the added definition of Record in Bd.R. 41.30, it is believed that

any concern in the comment has been answered.

Bd.R. 41.31(c)

Comment 19.

A suggestion was made that Bd.R. 41.31(c) be amended to permit an appellant to file a notice of appeal without the payment of any “late” fee (

see

Rule 136(a) and Rule 550(c)) when there is a delay in deciding a petition (

see

Bd.R. 41.31(e)).

Answer.

The suggestion is beyond the scope of the notice of proposed rule making and will not be adopted.

Comment 20.

A comment suggested that an applicant should be able to appeal to the Board an examiner's refusal to enter an amendment.

Answer.

The suggestion is not adopted. However, consistent with long-standing practice, review of an examiner's decision not entering an amendment will remain available by petition.

Bd.R. 41.31(e)

Comment 21.

A comment suggested that the “waiver” language of Bd.R. 41.31(e) would apply to a continuing application and a request for continued examination (RCE). The comment suggested that waiver would not be appropriate in a continuation or an RCE.

Answer.

The language “in the application or reexamination on appeal” has been added to the end of Bd.R. 41.31(e). From a practical point of view, however, a waiver in a reexamination may mean the issue has been ultimately waived for all time.

Bd.R. 41.33(b)

Comment 22.

A comment suggested that Bd.R. 41.33(b) would preclude entry of an amendment requested by the examiner. The same comment noted that Bd.R. 41.37(d) would preclude entry of evidence requested by the examiner.

Answer.

The comment misperceives the authority of the examiner and the purpose of the appeal rules in general. Bd.R. 41.33(b) and Bd.R. 41.33(d) advise applicants when they can expect that an amendment or evidence will be entered. The rules advise an applicant when it would be futile to file an amendment or evidence. However, nothing in the rule should be construed as precluding an examiner from suggesting an amendment or evidence and entering the amendment or evidence if timely filed. An appellant should realize that the examiner may reopen the prosecution. With limited exceptions, the appeal rules do not purport to require or not require action by the examiner or other Office personnel. The rules advise applicants what the Office requires and expects from them. Practices applicable to what an examiner should do are best left to administrative orders and the Manual of Patent Examining Procedure. Stated in other terms, the Director does not need a rule to tell Office personnel what they can or cannot do; the Director has inherent authority to issue administrative instructions on how agency business is to be handled by Office personnel.

Bd.R. 41.33(d)

Comment 23.

Several comments noted that Bd.R. 41.33(d) would permit evidence filed after a notice of appeal if the evidence overcomes some or all rejections. On the other hand, the supplementary information states (72 FR at 41,473, col. 3, near the end of the first full paragraph) that even where good cause is shown, if the evidence does not “overcome all rejections,” the evidence would not be admitted.

Answer.

The supplementary information should have said “overcome some or all rejections.” There is a possibility that the language “some or all rejections” could be read to mean that all rejections must be overcome. The language of Bd.R. 41.33(d) has been changed to read “at least one rejection”.

Comment 24.

A comment suggested that after the notice of appeal, if the examiner has considered evidence to the extent that the evidence does not overcome some or all rejections, the evidence should be entered in the record.

Answer

. The suggestion is not being adopted. There are two conditions which must be met for an applicant to have evidence “admitted” into the record after the filing of a notice of appeal. First, an applicant must show good cause for having not earlier presented the evidence. Second, the evidence must be of such weight and character as to overcome some or all rejections. Nothing in the rule should be construed as precluding an examiner from suggesting the presentation of particular evidence and entering the evidence if timely filed. An applicant should realize that the examiner may enter the evidence and reopen the prosecution.

Comment 25

. A comment suggested that an applicant should have a right to file additional evidence after a notice of appeal has been filed.

Answer

. The suggestion is not adopted. The time for evidence to be filed, except as otherwise provided in a rule,

e.g.

, Bd.R. 41.33(d) and (e), is prior to the notice of appeal.

Bd.R. 41.33(e)

Comment 26

. A suggestion was made that an appellant be authorized to submit “new” evidence to respond to a “new” fact or conclusion made by the examiner for the first time in a final rejection or an Examiner's Answer responding to an appeal brief.

Answer

. The suggestion will not be adopted. The notice of proposed rulemaking does not address presentation of evidence in response to a final rejection.

See

Rule 116 for practice after final rejection. If the examiner's answer states a new fact or conclusion, an appellant may take the position that the rejection is a new ground of rejection and request that the examiner reopen prosecution to consider new evidence. If the examiner agrees, prosecution would be reopened and the evidence would be considered. If the examiner disagrees, then the evidence would not be admitted. An appellant dissatisfied with an examiner's decision should seek administrative relief by petition.

Bd.R. 41.35(a)

Comment 27

. Several comments suggested that delays occur in the Office between the filing of the notice of appeal and transmittal of the appeal to the Board. Related comments suggested that the Office should impose a time limit on how long an application may remain with a Technology Center after a reply brief is filed. It was suggested that a maximum period of three months should be “imposed.”

Answer

. Under the rules, the Office expects that an application will be forwarded immediately to the Board after a reply brief is filed. Any delay in forwarding appeals to the Board following filing of a reply brief (or after the time expires for filing a reply brief) are an internal operating matter which is not appropriately addressed in a rule. Nevertheless, the Director agrees with the comment to the extent that a delay in transmitting an appeal to the Board is not appropriate. There are two steps an appellant can take which would help the Office minimize delays. First, if appellant does not intend to file a reply brief, a one-page notice to the Office to that effect would trigger the appeal being forwarded to the Board. Second, if after filing a reply brief, an appellant does not receive within a reasonable time a docket notice from the Board, a one-page notice to the Office to that effect would help the Office promptly transmit the appeal to the Board.

Bd.R. 41.35(a)

Comment 28

. A comment suggested that Bd.R. 41.35(a) should be amended

to provide that jurisdiction over an appeal begins when a notice of appeal is filed. According to the suggestion, transferring jurisdiction when a docket notice is mailed could mean that a successful appellant may not receive all patent term adjustments to which it may be entitled.

Answer

. The suggestion is not being adopted. Patent term adjustment associated with an

ex parte

appeal is governed by Rule 703(b)(4) and other provisions of Subpart F of Part 1 of 37 CFR.

Bd.R. 41.37

Comment 29

. A comment suggested that the appeal brief rules will result in unnecessary exposure to allegations of inequitable conduct. It appears the comment is particularly concerned with evidence in the application file not called to the attention of the Board in the evidence section (Bd.R. 41.37(t)).

Answer

. These rules limit the content of the evidence section compared to the content required by the rules as proposed. In any event, inequitable conduct requires intent to deceive. If in an appeal brief an appellant refers to and explains the significance of a document already in the official file of the application or reexamination on appeal, it is difficult to see how there can be intent to deceive.

Bd.R. 41.37(a)

Comment 30

. A comment suggested that the language “proceedings on the appeal are terminated without further action on the part of the Office” needs clarification.

Answer

. The language is intended to put applicants on notice that if an appeal brief is not timely filed, the appeal is “over” and that no notice to that effect should be expected from the Office.

An applicant knows when an appeal brief is due and whether the appeal brief is to be filed. Bd.R. 41.37(a) advises the applicant that it should not expect a notice that proceedings on the appeal are terminated (although the Office may nevertheless issue a notice in the form of a notice of abandonment). If there are no allowed claims, then any continuing applications (35 U.S.C. 120) would have to be filed before the date the appeal brief was due. If there are allowed claims, the application on appeal continues to be a pending application. The examiner would take such steps as may be needed to advance prosecution to issue, including making a requirement for the applicant to take certain action within a period of time. Rejected claims on appeal would be cancelled since a failure to file an appeal brief constitutes a waiver of any right to those claims in the application on appeal. The rule does not affect the pending status of any application in which there is an allowed claim.

Bd.R. 41.37(c)

Comment 31

. Several comments suggested that a review should be taken in the Technology Center after a notice of appeal is filed and that an appeal brief should not be due until the review is complete. For example, it was suggested that an SPE (supervisory patent examiner) review the claims based on the last amendment filed. Alternatively, an applicant would be permitted to specify one claim for consideration and if that claim turned out to be allowable, the applicant would forego the appeal.

Answer

. The suggestions are not adopted principally on the ground that the reviews involved add to pendency. There are two problems associated with additional pendency. The first is overall pendency of an application. The second is patent term adjustment for time spent in appeals.

Bd.R. 41.37(e)

Comment 32

. Several comments suggested that the appeal brief requirements seem disproportionately burdensome for applicants.

Answer

. The Director recognizes that some additional burden may be imposed by these appeal rules. As a result of comments received from the public, the requirement for content of appeal briefs has been reduced, particularly in the need for an evidence section. Nevertheless, it also must be recognized that the number of appeals is expected to rise significantly in the near future. A rise in the number of appeals should not mean that an applicant taking an appeal should have to wait an unreasonable period to receive a decision on appeal. One possible way to ensure continued prompt decisions is to add judges to the Board so that an increased volume can be handled within current time frames. However, continued hiring of new employees will not by itself reduce backlogs. There is a practical limit to the number of judges and employees the Office can hire. Alternative procedures and techniques must be found to permit the Board to efficiently handle the expected rise in appeals.

Many of the comments are based on an underlying premise that the commentator's appeal will be considered and that the requirements of the rules impose an unwarranted burden in that appeal. Absent some adjustment which permits the agency to efficiently consider and decide appeals, the premise that the commentator's appeal will be considered promptly may turn out to be incorrect; while the appeal eventually will be reached and considered, the appeal may end up in a large backlog only to be reached when time permits. The rules seek to implement procedures which will assist the Office in avoiding delays in deciding appeals. However, to avoid delays, the Office needs help from applicants taking an appeal. The rules set out the help the Office needs.

Comment 33

. A comment made a suggestion that, under certain conditions, the Director consider a “mini-appeal brief” as an alternative to an appeal brief. Those conditions were identified as including (1) a single rejection as to all claims on appeal, (2) all claims stand or fall together, and (3) no evidence is relied upon by the applicant (

e.g.

, declarations or publications). The comment suggested that a “mini-appeal brief” could be limited to 10 pages and would not need to include all the sections required by Bd.R. 41.37(e).

See also

Comment 91.

Answer

. The suggestion is not being adopted, principally because the content of a possible mini-brief was not the subject of the notice of proposed rulemaking. Accordingly and apart from the suggestion, the Office does not have the necessary input or experience under these rules to determine the parameters for a mini-brief. The Office will continue to study the idea of a mini-brief and after some experience under the rules as amended may again consider the viability of a mini-brief.

Comment 34

. A comment suggested that rule changes are not needed because the Board was able to reduce a backlog of 9,000 appeals ten years ago to a manageable number of appeals.

Answer

. The comment is correct that the number of pending appeals was reduced. However, the reduction took place by adding judges. As earlier noted, however, the Office cannot solve all of its obligations by adding personnel. In FY 1998, the Board received 4,466 appeals and had 46 judges (some of whom were assigned to handle interference cases) to handle the appeals. In FY 2000, the Board received only 2,981 appeals, but had increased the number of judges to 65 (some of whom were assigned to handle interference cases). The Board faced a significant challenge in FY 2007. The two-year growth in FY 2006 and FY 2007, of approximately 50%, is by far the largest two-year growth in patent appeal receipts in the years tracked at the Board. In FY 2007, the Board received 4,639 appeals. The FY 2007

receipts represent over a 38% increase from the prior year. In contrast, FY 1994, FY 1995, and FY 1996 receipts were: 3,667; 4,318; and 4,466 appeals, respectively (not including returns). For this three-year growth, the percent rise in patent appeal receipts was only a 21.8% increase, but resulted in a 900 appeal backlog. Adding to the challenge, the Board has lost many experienced judges due to retirement. Since the high point of 66 judges in FY 2002, Board membership fell to 55 judges at the beginning of FY 2007. Of the 66 judges on board in FY 2002, only 40 are here today. Moreover, at the end of FY 2007, approximately 38% of the judges were newly hired within the last two years. This represents the highest proportion of newly hired judges in recent Board history.

Bd.R. 41.37(f)

Comment 35

. A comment suggested that the language in Bd.R. 41.37(f) “in such a manner as to readily permit a member of the Board to determine whether recusal would be appropriate” is not clear. Rather than leaving it to the applicant, the comment suggests that the rule itself spell out what information is required.

Answer

. The requirement for an identification of a real party in interest is to avoid participation in an appeal by an administrative patent judge who has an ethical obligation of recusal. As the comment noted, when the real party in interest is an assignee,

e.g.

, a company, compliance with the rule is straightforward. However, often the real party in interest is a licensee prosecuting an application with the approval of the assignee. Sometimes, the real party in interest is a group of organizations each with varying interests. No rule can specify all possible circumstances under which an entity or individual needs to be identified. Accordingly, the rule identifies the purpose of why information is being requested so that registered practitioners, familiar with the entities and individuals involved, can exercise professional judgment to notify the Board of circumstances which might warrant recusal.

Bd.R. 41.37(g)

Comment 36

. A comment suggested that the related proceedings be made clear. In addition, the comment suggested that the “known to appellant, the appellant's legal representative, or assignee” can be a very large number of people in a large corporate environment.

Answer

. The nature of the related cases to be identified is present in Rule 41.37(c)(1)(ii) and has not presented any known problem to date. Rather than attempt to change the language defining a related case, the Office will leave the language the same in Bd.R. 41.37(g) and observe whether problems arise in the future.

The suggestion concerning large corporate entities has merit. If a corporation has a patent department with units in New York and Colorado or a law firm has offices in Chicago and Los Angeles, the patent department and law firm could find it difficult to comply with the rule. Accordingly, the language in Proposed Bd.R. 41.37(g) “known to appellant, appellant's legal representative or assignee” has been changed to “known to any inventors, any attorneys or agents who prepared or prosecuted the application on appeal and any other person who was substantively involved in the preparation or prosecution of the application on appeal.” The changed language conforms closely to the individuals mentioned in Rule 56(c) and narrows the individuals who need to be consulted.

Bd.R. 41.37(h)

Comment 37

. Several comments suggested that a jurisdictional statement is not necessary.

Answer

. Reference is made to Comment 1 for an explanation of why a jurisdictional statement helps the overall appeal process.

A prudent practitioner will always check prior to filing a notice of appeal that the notice is being timely filed. Likewise, a prudent practitioner will check prior to filing an appeal brief that the appeal brief is timely filed. The jurisdictional statement will simply memorialize the practitioner's check and will help Board personnel confirm that the application or reexamination proceeding on appeal is pending and not “abandoned” or “terminated.” In the event a check reveals that an abandonment or termination has occurred, the applicant or patent owner can take advantage of available revival remedies at an early date and avoid an unnecessary dismissal of an appeal.

Comment 38

. A comment asked the question: When is a petition for an extension of time under Rule 136(a) granted?

Answer

. Assuming that a petition for an extension of time complies procedurally with the rule and that the required fee is paid, a petition for an extension of time under Rule 136(a) is granted “automatically” upon its filing. In a jurisdictional statement it would be appropriate to state that: “A p

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