1200

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1200 Appeal

1201

Introduction

1202
Channels of Ex Parte Review

1203
Composition of Board

1204
Administrative Handling

1205
Notice of Appeal

1208
Appeal Brief

1207
Amendment Filed With or After Appeal

1208
Examiner's Answer

1208.01
New Ground of Rejection in Examiner's
Answer

1208.02
Withdrawal of Final Rejection

1209
Oral Hearing

1210

Actions Subsequent to Examiner's Answer But
Before Board's Decision

1211
Remand by Board to Consider Amendment

1212

Remand by Board to Consider Affidavits

1213
Decision by Board

1218.01

Recommendations of Board

1214
Actions following Decision by Board

1214.01
New Ground of Rejection

1214.02

Procedure after Decision

1214.03
Rehearing and Reconsideration

1214.04
Examiner Reversed

1214.05
Cancellation of Withdrawn Claims

1214.06
Examiner Sustained in Whole or in Part

1214.07
Reopening of Prosecution

1215
Withdrawal or Dismissal of Appeal

1215.01
Withdrawal of Appeal

1215.02
Claims Standing Allowed

1215.03
Partial Withdrawal

1215.04
Dismissal of Appeal

1215.05
Case Before the Court

1216
Appeals to Courts

1216.01
To Court of Customs and Patent Appeals
1216.02
Civil Suits

## 1201 Introduction [R-20]

The Patent Office in administering the Pat-
ent Laws makes many decisions of a discretion-
ary nature which the applicant may feel deny
him the patent protection to which he is en-
titled. The differences of opinion on such mat-
ters can be justly resolved only by prescribing
and following judicial procedures. Where the
differences of opinion concern the denial of
patent claims because of prior art or material
deficiencies in the disclosure set forth in the
application, the questions thereby raised are
said to relate to merits, and appeal procedure
within the Patent Office and to the courts has
long been provided by statute.

The line of demarcation between appealable
matters for the Board of Appeals and petition-
able matters for the Commissioner of Patents
should be carefully observed. The Board will
not ordinarily hear a question which it believes
should be decided by the Commissioner, and the
Commissioner will not ordinarily entertain a
petition where the question presented is an ap-
pealable matter. However, since Rule 181 (f)
states that any petition not filed within sixty
days from the action complained of may be dis-
missed as untimely and since Rule 144 states
that petitions from restriction requirements
must be filed no later than appeal, petitionable
matters will rarely be present in a case by the
time it is before the Board for a decision.

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# 1202 Channels of Ex Parte Review 1203 Composition of Board [R-20] [R-20]

Supreme Court

Writ of Certiorari
28 U.S.C. 2101

Writ of Certiorari
28 C.S.C. 1254

Appeal to Court of Cus-
toms and Patent Appeals
85 U.S.C. 141

Appeal to U.S. Court of
Appeals
28 C.B.C. 1291

Civil Action In District
Court for the District of
Columbia
85 U.S.C. 145

5.U.S.C. 704

or

30 days to file appeal
Rule 304

60 days to file appeal
Rule 304

Decision on
reconsideration

30 days to request
reconsideration
Rule 197 (b)

Decision by Board
of Appeals

Oral hearing, Rule 194, if
requested in brief. Rule
192

Examiner's Answer filed
within 60 days, preferably
within 30 days Rule 193

Decision by Commissioner
of Patents

1

Brief and $50 fee must be
filled within 60 days of
appeal or within period
for response to action,
Rule 192. 35 U.S.C. 41

Petition to Commissioner
of Patents, Rule 181

Notice of appeal to Board
of Appeals and $50 fee
must be filed within
period for response to
action. Rule 191

Rejection

Requirement. objection or
alleged abuse of discretion
Primary Examiner's Final Action

35 U.S.C. 7, provides for a Board of Appeals
as follows:

$5 U.S.C. 7 Board of Appeals. The examiners-in-
chief shall be persons of competent legal knowledge
and scientific ability. The Commissioner, the assistant
commissioners, and the examiners-in-chief shall con-
stitute a Board of Appeals, which, on written appeal
of the applicant, shall review adverse decisions of
examiners upon applications for patents. Each appeal
shall be heard by at least three members of the Board
of Appeals, the members hearing such appeal to be
designated by the Commissioner. The Board of Ap-
peals has sole power to grant rehearings.

Whenever the Commissioner considers it necessary
to maintain the work of the Board of Appeals current.
he may designate any patent examiner of the primary
examiner grade or higher, having the requisite ability.
to serve as examiner-in-chief for periods not exceeding
six months each. An examiner so designated shall be
qualified to act as a member of the Board of Appeals.
Not more than one such primary examiner shall be a
member of the Board of Appeals hearing an appeal.
The Secretary of Commerce is anthorized to fix the
per annum rate of basic compensation of each desig-
nated examiner-in chief in the Patent Office at not
in excess of the maximum scheduled rate provided for
positions in grade 16 of the General Schedule of the
Classification Act of 1949, as amended. The per annum
rate of basic compensation of each designated ex-
aminer-in-chief shall be adjusted, at the close of the
period for which he was designated to act as examiner-
in-chief. to the per annum rate of basic compensation
which he would have been receiving at the close of
such period if such designation had not been made.

If subsequent to the hearing, but prior to the
decision, a Board member who heard the case
becomes unable to participate in the decision for
some reason, the applicant will be given the
choice of having a rehearing or of having a dif-
ferent Board member substituted for the one
who is incapacitated.

Should a member die or otherwise become un-
available (for example, retirement) to recon-
sider a decision, it is the Board's practice to have
the remaining two Board members reconsider
the case. However, if there is disagreement con-
cerning the position of the Board on reconsider-
ation, a third member may be designated as a
substitute for the absent member.

## 1204 Administrative Handling [R- 20]

Ex parte appeals to the Board of Appeals,
and all papers relating thereto, are forwarded
directly to the Board for docketing. All ap-
peal papers, such as the notice of appeal, appeal
brief and request for extension of time to file
the brief, are first processed, without the ap-
plication file, by the Service Branch of the

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Board of Appeals and then transmitted to the
appropriate Examining Group for association
with the application file. An application under
appeal is retained in the Examining Group until
the Examiner has written his answer to the
brief, at which time the application is sent to
the Board of Appeals.

The clerk in charge of handling appeals in
the Examining Group is solely responsible for
completion of all phases of appeal clerical pro-
cedure. All communications from the Board and
all signed Office communications relating to ap-
peals from the Primary Examiners should be
given to the Group appeals clerk.

To insure that all records are current, memo-
randum form PO-262 is attached to the file
wrapper after the notice of appeal has been filed.
It is important that this memorandum be
promptly completed and forwarded by the
Group if the application is allowed, the prosecu-
tion is reopened, a streamlined continuation ap-
plication is filed or if the appeal is discontinued
for any other reason.

Complete clerical instructions appear in
Chapter 700 of the Manual of Clerical
Procedure.

If the brief is not filed within the time des-
ignated by Rule 192, the Clerk of the Board
will notify the applicant that the appeal stands
dismissed.

"SPECIAL" CASE

Subject alone to diligent prosecution by the
applicant, an application for patent that once
has been made special and advanced out of
turn by the Commissioner or an Assistant
Commissioner for examination will continue to
be special throughout its entire course of prose-
cution in the Patent Office, including appeal.
if any. to the Board of Appeals.

A petition to make a case special after appeal
may be addressed to the Board. However, no
such petition will be granted unless the brief
has been filed and applicant has made the same
type of showing required by the Commissioner
under Rule 102. Therefore, diligent prosecu-
tion is essential to a favorable decision on a peti-
tion to make special.

## 1205 Notice of Appeal [R-21]

35 U.S.C. 134. Appeal to the Board of Appeals. An
applicant for a patent, any of whose claims has been
twice rejected, mas appeal from the decision of the
primary examiner to the Board of Appeals, having
once paid the fee for such appeal.

Extract from 35 U.S.C. 41, Patent frex. (a) The
Commissioner shall charge the following fees: 6. On
appeal for the first time from the examiner to the

Board of Appeals, $50; in addition, on filing a brief in
support of the appeal, $50.

Kule 191. Appeal to Board of Appeals. (a) Every
applicant for a patent or for reissue of a patent, any
of the claims of which have been twice rejected, or who
has been given a final rejection (rule 113), may, upon
the payment of the fee required by law, appeal from the
decision of the primary examiner to the Board of Ap-
peals within the time allowed for response.

(b) The appeal must identify the rejected claim or
claims appealed, and must be signed by the applicant
or his duly authorized attorney or agent.

(c) Except as otherwise provided by rule 206, appeal
when taken must be taken from the rejection of all
claims under rejection which applicant proposes to
contest. Questions relating to matters not affecting
the merits of the invention may be required to be
settled before an appeal can be considered.

An applicant dissatisfied with the Primary
Examiner's decision in the second or final rejec-
tion of his claims may appeal to the Board of
Appeals for review of the Examiner's rejection
by filing a notice of appeal, signed by the appli-
cant or his attorney, and the required fee of $50.

The notice of appeal must be filed within the
period for response set in the last Office action,
which is normally three months. The timely fil-
ing of a first response to a final rejection having
a shortened statutory period for response is
construed as including a request to extend
the period for response an additional month,
even if an extension has been previously
granted, as long as the period for response does
not exceed six months from the date of the final
rejection. The additional month may be used to
place the application in condition for allowance,
to appeal or to file a continuing application. See
section 714.13. Failure to place an application
in condition for allowance or to file an appeal
after final rejection will result in the applica-
tion becoming abandoned, even if one or more
claims have been allowed unless claims sug-
gested for interference have been copied.

The use of Form 41 for filing a notice of ap-
peal is recommended. This form is reproduced
below. Copies for duplication may be obtained
from the receptionist in the lobby of Building 3
in the Patent Office.

# Revised Form 41

NOTICE OF APPEAL FROM THE PRIMARY EXAMINER
TO THE BOARD OF APPEALS

In re application of :

Serial No. :
For :

Filed :

Group Art U'nit :
To Commissioner of Patents
Sir :

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Applicant hereby appeals to the Board of Appeals
from the decision dated
of the Pri-
mary Examiner finally rejecting claims

The item (s) checked below are appropriate:
1.
☐
An extension of time to respond to the final
rejection was granted on
for
months (s).
2.
☐
A timely response to the final rejection has
been filled, as provided in 841 O.G. 1411.

3\.
☐
Fee $50.00 :
☐
Enclosed
☐
Not required (Fee paid in prior appeal.)

☐
Charge to Deposit Account No.
(One additional copy of this Notice is
enclosed herewith.)

Signature (Rule 191 (b) ).

Post Office Address (to which
correspondence is to be sent).

MATTERS HANDLED CONCURRENTLY WITH
APPEAL

Rule 206 permits partial appeal in cases where
there are both finally rejected claims copied
from a patent and other claims not ready for ap-
peal. See sections 1210 and 1101.02(f).

Ex parte prosecution of an appeal under Rule
191 may proceed concurrently with an inter-
ference proceeding involving the same applica-
tion provided the Primary Examiner who for-
wards the appeal certifies, in a memorandum to
be placed in the file, that the subject matter of
the interference does not conflict with the sub-
ject matter of the appealed claims. See Rule
212, section 1103.

## 1206 Appeal Brief [R-21]

Rule 192. Appellant's brief. (a ) The appellant shall,
within sixty days from the date of the appeal, or within
the time allowed for response to the action appealed
from if such time is later, fille a brief of the authorities
and arguments on which he will rely to maintain his
appeal, including a concise explanation of the invention
which should refer to the drawing by reference char-
acters, and a copy of the claims involved, at the same
time indicating if he desires an oral hearing. Two extra
copies of the brief are required if an oral hearing is
requested. The Board of Appeals may, for sufficient
cause shown, extend the time for filing the brief to a
date not later than sixty days after the original expira-
tion date. Any longer or further extensions must be
sought from the Commissioner. All requests for ex-
tensions must be filed prior to the expiration of the
period sought to be extended.

(b) On failure to file the brief within the time al-
lowed, the appeal shall stand dismissed.

Where the brief is not filed, but within the pe-
riod allowed for filing the brief an amendment
is presented which places the case in condition
for allowance, the amendment may be entered
since the application retains its pending status
during said period. See sections 1207, 1215.01
and 1215.02.

The copy of the claims required in the brief
should be a clean copy and should not include
any brackets or underlining as required by Rule
121(b).

### TIME FOR FILING APPEAL BRIEF

The usual period of time in which applicant
must file his brief is 60 days from the date of
the appeal. However, Rule 192 alternatively
permits the brief to be filed "within the time al-
lowed for response to the action appealed from
if such time is later".

In the event that applicant finds that he is
unable to file a brief within the time allotted
by the rules, he may file a petition, without any
fee, to the Board, requesting up to an additional
30 days and giving his reasons for the request.
The petition should be filed in duplicate and
contain the address to which the response is to
be sent. If sufficient cause is shown and the peti-
tion is filed prior to the expiration of the period
sought to be extended (Rule 192), the Clerk
of the Board is authorized to grant the exten-
sion not in excess of 30 days. The authority
to grant subsequent extensions is retained by
the Office of the First Assistant Commissioner.
Additional time, in excess of 60 days, will not be
granted, even by the Commissioner, unless
extraordinary circumstance are involved. The
time extended is added to the last calendar day
of the original period, as opposed to being added
to the day it would have been due when said
last day is a Saturday, Sunday or holiday.

If after an appeal has been filed, but prior to
the date for submitting a brief, an interference
is declared, applicant's brief need not be filed
until 60 days after either the non-appealable
decision of the Patent Interference Examiner
or the expiration of the time for appealing from
the Patent Interference Examiner's appeal-
able decision, the decision of the Board of Pa-
tent Interferences or from any subsequent deci-
sion of a reviewing court. If a petition for re-
consideration is filed, there is a 30 day appeal
limit following the decision on petition. In the
event that a seasonable petition to the Commis-
sioner is filed with respect to the Patent Inter-
ference Examiner's decision, a 30 day period
begins with the mailing of the decision on the
petition. See sections 1109,01 and 1109.02.

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Likewise, when an application is revived
after abandonment for failure on the part of
the applicant to make appropriate action after
final rejection, applicant has 60 days, from the
mailing date of the Commissioner's affirmative
decision on the petition, in which to file his
brief.

With the exception of the institution of an
interference or the suggestion and timely copy-
ing of claims for an interference, the appeal
ordinarily will be dismissed if the brief is not
filed within the period provided by Rule 192 (a)
or within such additional time as may be prop-
erly granted.

Attention is directed to the fact that a brief
must be filed to preserve applicant's right to the
appealed claims, notwithstanding circum-
stances such as:

(1) the possibility or imminence of an in-
terference involving the subject appli-
cation, but not resulting in withdrawal
of the Final Rejection prior to the
brief's due date;

(2) the absence of, or the late receipt of,
the appeal acknowledgement;

(3) the filing of a petition for supervisory
action under Rule 181;

(4) the filing of an amendment, even if it
is one which the Examiner previously
has indicated may place one or more
claims in condition for allowance, un-
less the Examiner, in acting on the
amendment, disposes of all issues on
.ppeal ;

(5) the receipt of a letter from the Exam-
iner stating that prosecution is sus-
pended, without the Examiner either
withdrawing the final rejection from
which appeal has been taken, institut-
ing an interference with the subject
application or suggesting claims for
an interference.

Although failure to file the brief within the
permissible time will result in dismissal of the
appeal, if any claims stand allowed, the applica-
tion does not become abandoned by the dismis-
sal, but is returned to the Examiner for his
action on the allowed claims. See section 1213.04.
If there are no allowed claims, the case is aban-
doned as of the date the brief was due.

If the time for filing a brief has passed and
the application has consequently become aban-
doned, the applicant may petition to revive the
application, as in other cases of abandonment,
and to reinstate the appeal ; if the appeal is dis-
missed, but the application is not abandoned,
the petition would be to reinstate the claims and
the appeal, but a showing equivalent to that in
a petition to revive under Rule 137 is required.
See section 1215.04. However, the $15 fee for

reviving an application is not required in the
latter case. In either event, a proper brief must
be filed before the petition will be considered on
its merits.

Where the dismissal of the appeal is believed
to be a mistake resulting from the Board's in-
advertence, filing a petition to the Board, point-
ing out its error, may be sufficient.

#### APPEAL BRIEF

A $50 fee is required when the brief is filed, 35
U.S.C. 41. Rule 192 provides that the "appel-
lant shall file a brief of the authorities and argu-
ments on which he will rely to maintain his ap-
peal, including a concise explanation of the
invention which should refer to the drawing by
reference characters, and a copy of the claims
involved, at the same time indicating if he de-
sires an oral hearing." In the event an oral hear-
ing is requested, Rule 192(a) requires the sub-
mission of two extra copies of the appeal brief.
However, the additional copies should be sup-
plied for every appeal since they are of substan-
tial assistance to the Board, even when the
appeal is submitted on brief.

For sake of convenience, the copy of the
claims involved should be double spaced.

The brief, as well as every other paper relat-
ing to an appeal, should indicate the number of
the Group to which the application is assigned,
the Appeal number and the Serial number.

When the brief is received, it is noted on the
Board's records and then forwarded to the
Group where it is entered in the file, and re-
ferred to the Examiner. If the Examiner con-
siders the brief to be defective under Rule 192.
he may (1) point out the defect in his Exam-
iner's answer or (2) if a bona fide attempt has
been made to file a proper brief, he may write
a letter to the applicant notifying him that
he has 1 month to correct the defect by filing
a supplemental brief. If the applicant fails to
correct the brief within the 1 month period, the
Examiner will write his answer and indicate
the defect. All such letters must be approved by
the Group Director.

The mere filing of any paper whatever en-
titled as a brief cannot necessarily be considered
a compliance with Rule 192. The Rule requires
that the brief must set forth the authorities and
arguments relied upon and to the extent that it
fails to do so with respect to any ground of
rejection, the appeal as to that ground must be
dismissed. It is essential that the Board of Ap-
peals should be provided with a brief fully stat-
ing the position of the applicant with respect to
each issue involved in the appeal so that no
search of the record is required in order to deter-
mine that position. The fact that applicant may
consider a ground to be clearly improper does

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not justify a failure to point out to the Bcard
the reasons for that belief.

A distinction must be made between the lack
of any argument and the presentation of argu-
ments which carry no conviction. In the former
case dismissal is in order, while in the latter case
a decision on the merits is made, although it may
well be merely an affirmance based on the
grounds relied on by the Examiner.

Applicant must traverse every ground of re-
jection set forth in the final rejection. Oral
argument at the hearing will not remedy such
a deficiency in the brief. Ignoring or acquiescing
in any rejection, even one based upon formal
matters which could be cured by subsequent
amendment, will invite a dismissal of the appeal
as to the claims affected. If this involves all of
the claims, the proceedings in the case are con-
sidered terminated as of the date of the dis-
missal. Accordingly, any application filed
thereafter will not be copending with the ap-
plication on appeal. If in his brief, applicant
relies on some reference, he is expected to pro-
vide the Board with at least one copy of it.

Once the brief has been filed, a petition to
suspend proceedings may be considered on its
merits, but will be granted only in exceptional
cases, such as where the writing of the Exam-
iner's Answer would be fruitless or would work
a hardship on the applicant.

For reply brief see section 1208.01.

## 1207 Amendment Filed With or After Appeal [R-20]

The record on appeal should be essentially
the record before the examiner at the time ap-
peal is taken. Thus, no amendments, except
under Rule 193(b), presented after appeal has
been taken should be entered for purposes of
appeal, and no exception should be made to
this, see Rule 116(c). Amendments, argu-
ments, or affidavits filed concurrently with or
of even date with appeal notice will be con-
strued as filed after appeal for the purpose of
this procedure, even though they may be the
first response to the final action. In accordance
with Rule 195, affidavits or exhibits submitted
after the case has been appealed should be con-
sidered for entry only if applicant makes the
necessary showing why they were not earlier
presented; Rule 195 should be strictly construed
in this regard. If after appeal has been taken,
a paper is presented which on its face clearly
places the application in condition for allow-
ance, such paper should be entered and a notice
of allowability (POL-327) promptly sent to
applicant. If such paper does not on its face
place the application in condition for allowance,

it should not be considered further and the pro-
posed amendments therein should not be entered,
unless in the Examiner's judgment only minor
matters remain which could be readily resolved.
Notification that such papers do not place the
application in condition for allowance will be
made by use of a form letter (POL-309). If
an amendment places the case in condition for
allowance or causes prosecution to be reopened,
the Examiner should complete form PO-262.

In accordance with the above, the Brief
must be directed to the claims and to the
record of the case as they appeared at the time of
the appeal, but it may, of course, withdraw
from consideration on appeal any claims or is-
sues as desired by applicant.

A timely filed Brief will be referred to the
Examiner for his consideration of its propriety
as to the appeal issues and for preparation of an
Examiner's Answer if the Brief is proper and
the application is not allowable. The Exam-
iner's Answer will normally be of the shortened
type referring to and relying on the final action ;
it may withdraw rejection of claims or any ob-
jection or requirement as desired by the Exam-
iner. Note section 1201. No new ground of
rejection or objection should be incorporated in
the Examiner's Answer without express ap-
proval in each case by the Group Director. See
section 1005. See section 714.13 for procedure
on handling amendments filed after final action
and before appeal.

## 1208 Examiner's Answer [R-20]

Rule 193. Eraminer's answer. (a) The primary ex-
aminer may, within such time as may be directed by
the Commissioner, furnish a written statement in
answer to the appellant's brief including such explana-
tion of the invention claimed and of the references and
grounds of rejection as may be necessary, supplying a
copy to the appellant. If the primary examiner shall
find that the appeal is not regular in form or does not
relate to an appealable action, he shall so state and a
petition from such decision may be taken to the Com-
missioner as provided in rule 181.

(b) The appellant may file a reply brief directed only
to such new points of argument as may be raised in the
examiner's answer, within twenty days from the date
of such answer. However, if the examiner's answer
states a new ground of rejection appellant may file
a reply thereto within sixty days from the date of such
answer; such reply may include any amendment or
material appropriate to the new ground.

# APPEAL CONFERENCE

Appealed cases in which the brief has been
filed should be reviewed by conference in the

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Group, those participating being (1) a Primary
Examiner, (2) the Examiner charged with prep-
aration of the Examiner's Answer and (3) an-
other Examiner, known as the conferee, having
sufficient experience to be of assistance in the
consideration of the merits of the issues on
appeal.

Where the Primary Examiner has, himself,
examined an application and made the final

rejection a conference relative to such a case, if
appealed, is discretionary with him.

If a conference is held, the Primary Exam-
iner should weigh the arguments of the other
Examiners but it is his responsibility to make
the final decision. During the conference, con-
sideration should be given to the possibility of
dropping cumulative art rejections and elimi-
nating technical rejections of doubtful value.

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On the Examiner's Answer, the third person
(conferee) should place his initials below those
of the Examiner who prepared the Answer,
thus: ABC (conf.). This does not indicate,
necessarily, concurrence with the position taken
in the Answer.

If the Examiner charged with the responsi-
bility of preparing the Answer reaches the con-
clusion that the appeal should not be forwarded
and the Primary Examiner approves, no con-
ference is held.

Before preparing the answer, the Examiner
should make certain that all amendments ap-
proved for entry have in fact been physically
entered in the application. This is important
to insure that the claims considered by the
Board are the same as those forming the basis
of the appeal. The Clerk of the Board will re-
turn to the Group any application in which ap-
proved amendments have not been entered.

## ANSWER

The Examiner should furnish the applicant
with a written statement in answer to the ap-
plicant's brief within sixty calendar days after
the filing of the brief, preferably within thirty
days.

The Answer should contain a response to the
allegations or arguments in the brief and
should call attention to any errors in applicant's
copy of the claims. Grounds of rejection not
argued in the Examiner's Answer are usually
treated as having been dropped, but may be con-
sidered by the Board if it desires to do so. The
Examiner should treat affidavits or exhibits in
accordance with Rule 195, reporting his conclu-
sions only on those admitted. Any affidavits in
the application swearing behind a patent should
be clearly identified by the Examiner as being
considered under either Rule 131 or 204. The
distinction is important since the Board of Ap-
peals will usually consider holdings on Rule 131
affidavits but not on Rule 204 affidavits.

If the Brief fails to respond to any or all
grounds of rejection advanced by the Examiner,
the Examiner should simply inform the Board
of Appeals of this fact in his Answer and specify
the particular claims affected. Since such lack
of response to any ground of rejection will re-
sult in dismissal of the appeal as to the claims
affected, the claims involved need not be treated
further by the Examiner in his answer. A dis-
missal of the appeal will result if all the claims
are involved and the Board concurs in the Ex-
aminer's conclusion.

Because of the practice of the Patent Office
in entering amendments after final action un-
der justifiable circumstances for purpose of ap-
peal, many cases coming before the Board of
Appeals for consideration contain claims which
are not the claims treated in the Examiner's

final rejection. They are either entirely new
claims or amended versions of the finally re-
jected claims, or both. The new claims or fi-
nally rejected claims as amended frequently
contain limitations not in the claims treated in
the final rejection and the arguments in the ap-
plicant's brief are directed to the new claims.
Under such circumstances the mere reference
in the Examiner's Answer to the final rejection
for a statement of his position would leave the
Board, insofar as the new claims are concerned,
with an uncrystallized issue and without the
benefit of the Examiner's view, which compli-
cates the task of rendering a decision.

It also not infrequently happens that an
Examiner will state his position in the Answer
in a manner that represents a shift from the
position stated in the final rejection without
indicating that the last stated position super-
sedes the former. Such a situation confuses
the issue and likewise poses difficulties for the
Board since it is not clear exactly what the
Examiner's ultimate position is.

In view of the complete and thorough
development of the issues at the time of final
rejection it is possible to save time in preparing
the Examiner's Answer required by Rule 193
by taking the following steps:

A. Examiners may incorporate in the answer
their statement of the grounds or rejection
merely by reference to the final rejection (or a
single other action on which it is based. Sec-
tion 706.07). Only those statements of grounds
of rejection as appear in single prior action may
be incorporated by reference. An Examiner's
Answer should not refer, either directly or in-
directly, to more than one prior Office action.
Statements of grounds of rejection appearing
in actions other than the aforementioned single
prior action should be quoted in the aswer. The
page and paragraph of the final action or other
single prior action which it is desired to incor-
porate by reference should be explicitly identi-
fied. Of course, if the Examiner feels that some
further explanation of the rejection is necessary
he should include it in the answer but ordinarily
he may avoid another recital of the issues and
another elaboration of the grounds of rejection.
The answer should also include any necessary
rebutal of arguments presented in the appli-
cant's brief if the final action does not adequately
meet the arguments.

B. If the applicant (1) fails to describe the
invention. as required by Rule 192, or (2) fails
to describe the reference, the Examiner is no
longer required to provide these omissions.
The Examiner should, however, incluide such
description and explanation in the Answer if he
feels it necessary to present properly and effer-
tively his case to the Board of Appeals.

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The Examiner should reevaluate his position
in the light of the arguments presented in the
brief, and should expressly withdraw any re-
jections not adhered to. This should be done
even though any rejection not repeated and dis-
cussed in the answer may be taken by the Board
as having been withdrawn.

The Board has authority to remand a case
to the Examiner for a fuller description of the
claimed invention and, in the case of a ma-
chine, a statement of its mode of operation. In
certain cases where the pertinence of the ref-
erences is not clear, the Board may call upon
the Examiner for a further explanation. In
the case of multiple rejections of a cumulative
nature, the Board may also remand for selec-
tion of the preferred or best ground. The
Board may also remand a case to the Exam-
iner for further search where it feels that the
most pertinent art has not been cited.

Whenever an application on appeal presents
substantially the same question as that presented
in other appealed applications, or which has
been previously decided by the Board, a memo-
randum should be prepared for the Board of
Appeals noting this fact and identifying the
other applications. The memorandum should
be sealed in an envelope bearing the notation
"CONFIDENTIAL-Board of Appeals" as
well as the name of the applicant and the Appeal
No. and forwarded to the Board separately at
the time the Examiner's Answer is mailed.

When files are forwarded, soft copies and
prints of references fastened therein should not
be disturbed.

If an Examiner's Answer is believed to con-
tain a new interpretation or application of the
existing patent law, the Examiner's Answer,
application file and an explanatory memoran-
dum should be forwarded to the Group Director
for consideration. If approved by the Group
Director, the Examiner's Answer should be for-
warded to the Office of the Assistant Commis-
sioner for Patent Examining for final approval.

A form suitable for the Examiner's Answer
is as follows:

POL-84
IN RE APPLICATION OF

Filed
For

Ser. No.
Before the Board of Appeals
Appeal No.

# EXAMINER'S ANSWER

"This is an appeal from the final rejection of
claims ______. Claims ______ are allowable."

"A correct copy of the appealed claims ap-
pears on page -- of the applicant's brief." (If
any claims are incorrect, they should be cor.

rectly reproduced in the answer in clean copy
without any underlining or brackets as required
by Rule 121 (b) ).

Statement as to any ground of rejection not
argued or responded to by applicant and the
particular claims affected by such lack of
response.

"The references of record relied on are:

1,736.481 Smith ________ 6-20
1,894,324
Jones
7-23

"New References" See section 1208.01.

(The Examiner's Answer must cite all refer-
ences relied on in the appeal and cannot refer
to other papers for this information. In citing
non-patent references, the current location of
the reference should be specified by class and
subclass or, if not classified, the particular loca-
tion in the Office where a copy can be found. In
addition, the citation should specify the precise
page or pages of the reference relied on. Omit
listing of references not involved in the appeal.)
"Statement of the grounds of rejection."

Reference to final rejection or single prior ac-
tion for a clear exposition of the rejection. If
necessary, description and explanation of the
alleged invention and references to present the
Examiner's case properly. If pertinent, include
a statement that this is a new ground of rejec-
tion.

Response to the allegations and arguments in
the brief not already met by the final rejection.
If a new ground of rejection is raised, see
section 1208.01.

For case having patentability report see
section 705.01 (a).

1208.01 New Reference, New Objec-
tion or New Ground of Re-
jection in Examiner's Answer
[R-20]

At the time of preparing his answer to an
appeal brief, the Examiner may decide that he
should cite a new reference, raise a new objec-
tion, or apply a new ground of rejection (new
reference, double patenting, statutory bar or
other reason for rejection) against some or all
of the appealed claims. The Group Director's
approval must be obtained prior to writing the
Answer for any new reference or new ground
of rejection or objection incorporated in the
Examiner's Answer.

After prior approval of the Group Director
is obtained, all Answers citing new references or
containing new grounds of rejection or objec-
tion must be routed over the Supervisory Pri-
mary Examiner's desk. These should then be
brought to the attention of the Director for his
review and approval. The Director will stamp
"approved" on the file copy of the Answer only

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if it moets with his approval. If approval is
given to the citation of new references, the
Answer will be mailed by the Group and will
include copies of the new references. Reference
Order Section will not be involved in these ac-
tions. Also, a PO-892 must be completed for the
file for use by the printer in case of issuance as
a patent. The Board will return to the Group
Director's Office any Answer containing (1)
any newly cited reference ( for any purpose) or
(2) a new ground of rejection, where such An-
swer does not bear an approved stamp.

In order to introduce a new ground of re-
jection it is necessary either to reopen the ex
parte prosecution before the Examiner or to
include the new rejection in the Examiner s
Answer, depending on existing circumstances.
The choice of action to be followed will depend
on such factors as the history of the prosecution,
the number of claims affected, the importance
of the new ground of rejection, the significance
of the new reference and the nature of the re-
sponse to be expected. For example, if the ref-
erence is basic and materially better in meeting
all of the claims, reopening of the prosecution
and making the action final would ordinarily
be approved. Should applicant desire to have
the Board review the Examiner's action, he
must file a new appeal (without fee) and a new
brief (without fee). On the other hand, if the
new reference anticipates some but not all of the
claims or supplies a minor lack in art already
relied on, inclusion of the new ground in the
Examiner's Answer would normally be the
approved procedure. Of course, if the new
ground of rejection applies to any claim stand-
ing allowed the prosecution should be reopened.

It is important that the new ground with re-
gard to which the Group Director has been
consulted be clearly indicated as such so that
the Board of Appeals can readily identify those
applications where the applicant is entitled to a
period of sixty days for reply. Any new refer-
ence should be cited under the caption "New
Reference (s)."

Likewise when a ground of rejection not in-
volving a new reference is raised for the first
time in the Answer after consultation with the
Group Director the fact that it is a new ground
should be clearly indicated, thus: THIS IS A
NEW GROUND OF REJECTION, or some
equivalent statement.

The Examiner's Answer which includes a
new ground of rejection should conclude with
the following paragraph :

"In view of the new ground of rejection
applicant has sixty days within which he may
file a reply to this Answer. Such reply may
include any amendment or material appro-
priate to the new ground and may request

remand to the Examiner to consider such
amendment or material. Prosecution other-
wise remains closed. Failure to respond to the
new ground of rejection will result in dismis-
sal of the appeal of the claims so rejected if
said failure to respond is construed as an
acquiescence in this rejection."

# REPLY BRIEF

Where a new ground of rejection is raised
in the Examiner's Answer, the applicant, un-
der Rule 193(b) has sixty days within which
he may file a reply. The applicant's reply,
insofar as the new ground of rejection is con-
cerned, may include any amendment or mate-
rial appropriate to the new ground. The Board
of Appeals in its discretion may remand the
case to the Examiner to consider such amend-
ment or material. In the event of remand, con-
sideration will be limited to amendments and
facts pertinent to the new ground of rejection.

Where new points of argument have been
raised in the Examiner's answer, applicant may
file a reply brief within twenty days from the
date of such answer. Applicants should clearly
and specifically indicate in their reply briefs the
new points of argument "raised in the exam-
iner's answer" to which said reply briefs are
directed. Rule 193(b) does not permit general
rebuttal of each statement made in the exam-
iner's answer; consequently a reply brief which
is not restricted to answering "new points" may
be refused consideration in toto. [R-21]

# 1208.02 Withdrawal of Final Rejec- tion [R-20]

The Examiner may withdraw the final re-
jection at any time prior to the mailing of the
Examiner's Answer. It is possible that after
reading the brief, the Examiner may be con-
vinced that some or all of the finally rejected
claims are allowable. Where he is of the opinion
that some of the claims are allowable he should
so specify in the Examiner's Answer and confine
his arguments to the remaining rejected claims.
If he finds, upon reconsideration, that all the re-
jected claims are allowable, or where the ap-
plicant in his brief withdraws the appeal as
to some of the rejected claims and the Exam-
iner finds the remaining claims to be allowable.
he should notify the Board of this fact so that
the appeal may be removed from the records.
Moreover, the Board should be notified when-
ever the application is withdrawn from ap-
peal under any circumstance. See sections
706.07 (c) to 706.07 (e).

In applications where an interference has re-
sulted from the applicant copying claims from
the patent which provided the basis for final re-

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jection, the Examiner should notify the Board
of Appeals of the withdrawal of the rejection
based on that patent so that the appeal may be
dismissed as to the involved claims.

# 1209 Oral Hearing [R-20]

Rule 194. Hearing. If no request for oral hearing
has been made by the appellant, the appeal will be
assigned for consideration and decision. If the ap-
pellant has requested an oral hearing, a day of hearing
will be set, and due notice thereof given to the appel-
lant. Hearing will be held as stated in the notice, and
oral argument will be limited to one-half hour unless
otherwise ordered before the hearing begins.

If applicant desires to argue his case before
the Board, he must file a brief and at the same
time indicating if he desires an oral hearing.
Rule 192. If no request has been made by ap-
plicant, the appeal will be assigned for consid-
eration and decision. Rule 194. That is, the deci-
sion will be rendered on the brief.

Preferably, the request for oral hearing
should appear in the first paragraph of the brief
and should be set out prominently. Although
the Board, through past practice, honors re-
quests included in the notice of appeal, the rules
require inclusion at least in the brief and this
would appear to be the best procedure to follow.

A notice of hearing, stating the date, the time
and the docket, is forwarded to the applicant
in due course after the mailing of the Exam-
iner's Answer, with appropriate delay where
additional time has been given for the filing of
a reply brief. If applicant fails to confirm
within the stated time (14 days), the appeal is
removed from the hearing docket and assigned
on brief in due course. Similarly, after con-
firmation, if no appearance is made at the sched-
uled hearing, the appeal is decided on brief.
Since failure to notify the Board of waiver of
hearing in advance of the assigned date results
in a waste of the Board's resources, applicant
should inform the Board of a change in plans at
the earliest possible opportunity.

If the time set in the notice conflicts with
prior commitments or if subsequent events make
appearance impossible, the hearing may be re-
scheduled on written request. However, post-
ponements are discouraged and will not be
granted in the absence of convincing reasons in
support of the requested change.

If applicant has any special request, such as
for a particular date or day of the week, this
will be taken into consideration in setting the
cases, if made known to the Board in advance,
as long as such request does not unduly delay
a decision in the case.

The arguments at the hearing may be pre-
sented by applicant's attorney or agent if he is

duly authorized of record prior to the hearing,
in accordance with Rule 34. If a firm has a writ-
ten power to act in the case, compliance with
Rule 346 is required.

Usually a half hour is allowed for applicant to
explain his position. Rule 194. If applicant be-
lieves that additional time will be necessary, a
request for such time should be made well in
advance and will be taken into consideration in
assigning the hearing date. The final decision
on whether additional time is to be granted
rests within the discretion of the senior member
of the panel hearing the case.

Primary Examiners are permitted to present
oral arguments before the Board of Appeals in
appeals where the applicant has been granted
an oral hearing. After the applicant has made
his presentation, the Examiner will be allowed
fifteen minutes to reply as well as to present a
statement which clearly sets forth his position
with respect to the issues and rejections of
record. Applicant may utilize any allotted time
not used in the initial presentation for rebuttal.
Currently, up to two Examiners are permitted
to attend any one hearing as observers, where
the case is related to the Examiners' field of tech-
nology. The time of a hearing may be obtained
by the Examiners by telephoning the Board of
Appeals about one month after the Examiner's
Answer is forwarded. The time should be
checked a few days prior to the hearing to see
if any change has been made.

## 1210 Actions Subsequent to Examin- er's Answer but Before Board's Decision [R-20]

### JURISDICTION OF BOARD

Upon mailing of the Examiner's answer on
appeal, jurisdiction of the case with respect to
the appeal rests exclusively with the Board of
Appeals. Any amendment, affidavit, or other
paper relating to the appeal, filed thereafter
but prior to the decision of the Board, may be
considered by the Examiner only in the event
the case is remanded to him by the Board for
that purpose.

### DIVIDED JURISDICTION

Where appeal is taken from the final rejec-,
tion of one or more copied claims only, jurisdic-
tion of the rest of the case remains with the Ex-
aminer, and prosecution of the remaining claims
may proceed as though the entire case was un-
der his jurisdiction. Also, where the Exam-
iner certifies in writing that there is no conflict
of subject matter, an appeal to the Board of
Appeal may proceed concurrently with an
interference.

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### ABANDONMENT OF APPEAL

To avoid the rendering of decisions by the
Board of Appeals in applications which have al-
ready been refiled as streamlined continuations,
applicants should promptly inform the Clerk
of the Board in writing as soon as they have

positively decided to refle or to abandon an
application containing an appeal awaiting a
decision. Failure to exercise appropriate dili-
gence in this matter may result in the Board's
refusing an otherwise proper request to vacate
its decision.

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#### 1211 Remand by the Board To Con- sider Amendment [R-20]

There is no obligation resting on the Board
to consider new or amended claims submitted
while it has jurisdiction of the appeal. In re
Sweet, 1943 C.D. 535; 556 O.G. 726. A pro-
posed amendment, affidavit or other paper may
be remanded for such consideration as the
Examiner may see fit to give. Such an amend-
ment, unless filed under Rule 193(b), will be
treated in the same way as an amendment after
final rejection.

If the proposed amendment is in effect an
abandonment of the appeal, as, by canceling
the appealed claims, other claims being present
which are patentable in the opinion of the Ex-
aminer, the amendment should be entered and
the Clerk of the Board notified in order that the
case may be removed from the Board's docket.

### 1212 Remand To Consider Affidavits [R-20]

Rule 195. Affidavits after appeal. Affidavits or ex-
hibits submitted after the case has been appealed will
not be admitted without a showing of good and suff-
cient reasons why they were not earlier presented.

Affidavits filed with or after appeal but be-
fore the mailing of the Examiner's Answer will
be considered for entry only if the applicant
makes the necessary showing under Rule 195 as
to why they were not earlier presented. Au-
thority from the Board is not necessary to con-
sider such affidavits. Affidavits filed as a first
response to a final rejection and prior to a notice
of appeal should be entered and considered
without a showing as to why they were not filed
earlier. Affidavits filed as a second response to
a final rejection and prior to a notice of appeal
should be entered and considered only if accom-
panied by a proper showing under Rule 116(b).
See section 714.13.

In the case of affidavits filed after the mail-
ing of the Examiner's Answer, the Examiner
is without authority to consider the same in the
absence of a remand by the Board. When a
case is remanded to the Examiner for the con-
sideration of such affidavits, the Examiner, after
having given such consideration as the facts in
the case require, will return the case to the Board
of Appeals with his Answer on Remand, a copy
of which should be forwarded to the applicant.
If such an affidavit is not accompanied by the
showing required under Rule 195, the Examiner
will not consider its merits. If the delay in fil-
ing such affidavit is satisfactorily explained, the
Examiner will admit the same and consider its
merits. If this affidavit is accepted as overcom-
ing the reference, or references, used in the final
rejection, and a new reference having a filing

date prior to the date of invention established in
the record, or having a publication date more
than one year prior to the applicant's filing
date, is found, it may be substituted for the one
overcome without thereby reopening the case
to further prosecution before the Examiner.
Ex parte Bowyer, 1939 C.D. 5; 505 O.G. 759.

It is not the custom of the Board to remand
affidavits offered in connection with & request
for reconsideration of its decision. Affidavits
submitted for this purpose, not remanded to
the Examiner, are considered only as argu-
ments. In re Martin, 1946 C.D. 180; 586 O.G.
347.

### 1213 Decision by Board [R-20]

Extract of Rule 196. Decision by the Board of
Appeals. (a) The Board of Appeals, in its decision,
may affirm or reverse the decision of the primary ex-
aminer in whole or in part on the grounds and on the
claims specified by the examiner. The afirmance of
the rejection of a claim on any of the grounds specified
constitutes & general afirmance of the decision of the
primary examiner on that claim, except as to any
ground specifically reversed.

After consideration of the record including
applicant's Brief and the Examiner's Answer,
the Board writes its decision, affirming the
Examiner in whole or in part, or reversing his
decision, sometimes also setting forth a new
ground of rejection.

On occasion the Board of Appeals has refused
to consider an appeal until after the conclu-
sion of a pending civil action or appeal to the
C.C.P.A. involving issues identical with and/or
similar to those presented in the later appeal.
Such suspension of action, postponing consid-
eration of the appeal until the Board has the
benefit of a court decision which may be deter-
minative of the issues involved, has been rec-
ognized as sound practice. An applicant is not
entitled, after obtaining a final decision by the
Patent Office on an issue in a case, to utilize the
prolonged pendency of a court proceeding as a
means for avoiding res judicata while relitigat-
ing the same, or substantially the same issue in
another application.

An applicant may request that the decision
be withheld to permit the refiling of the appli-
cation at any time prior to the mailing of the
decision. Up to 30 days may be granted, al-
though the time is usually limited as much as
possible. The Board will be more prone to enter-
tain the applicant's request where the request is
filed early, obviating the necessity for an oral
hearing or even for the setting of the oral hear-
ing date. If the case has already been set for oral
hearing, the petition should include a request
to vacate the hearing date, not to postpone it.
In a situation where a withdrawal of the ap-

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peal is filed on the same day that the decision is
mailed, a petition to vacate the decision will be
denied.

Since review of the decisions of the Board is
committed by statute to the courts, its decisions
are properly reviewable on petition only to the
extent of determining whether they involve
obvious error or abuse of discretion. Reasonable
rulings made by the Board on matters resting
in its discretion will not be disturbed upon peti-
tion. Thus, for example, the Board's opinion as
to whether it has employed a new ground of
rejection will not be set aside on petition unless
said opinion is found to be clearly unwarranted.

# 1213.01 Recommendations of Board [R-20]

Ertract of Rule 196. Decision by the Board of Ap-
peals. ... (c) Should the decision of the Board of
Appeals include an explicit statement that a claim may
be allowed in amended form, applicant shall have the
right to amend in conformity with such statement,
which shall be binding on the primary examiner in the
absence of new references or grounds of rejection.

If the Examiner knows of references or rea-
sons which were not before the Board, such a
favorable recommendation is not binding upon
him. Likewise, any change in a favorably rec-
ommended claim other than the amendments
recommended would tend to destroy the force
of such recommendation. Ex parte Young, 18
Gour. 24 : 31.

In the absence of an express recommenda-
tion, a remark by the Board that a certain
feature does not appear in a claim is not to
be taken as a recommendation that the claim
be allowed if the feature is supplied by amend-
ment. Ex parte Norlund, 1913 C.D. 161; 192
O.G. 989.

Applicant's right to amend in conformity
with the recommendation may only be exercised
within the period allowed for seeking court
review, ordinarily sixty days from the date of
the Board's decision.

# 1214 Actions Following Decision by Board [R-20]

Board of Appeals decisions may be published
in the Patent Office Official Gazette, if requested
by the Board or Group. In the event that the
application has become abandoned, applicant's
permission is sought prior to publication.

# 1214.01 New Ground of Rejection [R-20]

Extract from Rule 196. Decisions by the Board of
Appeals . .. (b) Should the Board of Appeals have
knowledge of any grounds not involved in the appeal

for rejecting any appealed claira, it may ineinde in Itas
decision a statement te that effect with its reasons for
so holding, which statement shall constitute e rejection
of the clatmas"The appellant may submit an appropri-
ate amendment of the ciaims so rejected or a showing
of facts, or both, and have the matter considered by
the primary examiner. The statement shall be bind-
ing upon the primary examiner unless an amendment
or showing of facts not previously of record be made
which, In the opinion of the primary examiner, avoida
the additional ground for rejection stated in the deci-
sion. The applicant may waive such reconsideration
before the primary examiner and have the case re-
considered by the Board of Appeals upon the same
record before them. Where request for such recon-
sideration is made the Board of Appeals shall, if nec-
essary, render a new decision which shall include all
grounds upon which a patent is refused. The applicant
may waive reconsideration by the Board of Appeals
and treat the decision, including the added grounds
for rejection given by the Board of Appeals, as a final
decision in the case.

A. A request for reconsideration by the Board
must be filed within thirty days from the date
of the decision, the period set by Rule 197,
second paragraph. By proceeding in this man-
ner the applicant waives his right to further
prosecution before the Examiner. In re Green-
field, 1930 C.D. 531; 400 O.G. 226.

B. Where the Board's decision completely re-
moves the Examiner's rejection as to one or
more claims and substitutes a new one under
Rule 196(b), the applicant, if he elects to pro-
ceed before the Examiner, must take such
action within the period for response set in the
Board's decision, which may not exceed six
months from the Board's decision. See In re ap-
plication filed July 13, 1950 at 693 O.G. 136;
1955 C.D. 3. A shortened period for response
of thirty days ordinarily is set in the Board's
decision.

The applicant may amend the claims in-
volved. or substitute new claims to avoid the
art or reasons adduced by the Board. Ex
parte Burrowes, 1904 C.D. 155; 110 O.G. 599.
Such amended or new claims must be directed
to the same subject matter as the appealed
claims, Ex parte Comstock, 1923 C.D. 82;
317 O.G. 4.

Argument without amendment of the claims
so rejected can result only in a final rejection
of the claims, since the Examiner is without
authority to allow the claims unless amended
or unless the rejection is overcome by a show-
ing of facts not before the Board. The new
ground of rejection raised by the Board does
not reopen the prosecution except as to that
subject matter to which the new rejection was
applied.

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C. As a third option, applicant may treat such
decision of the Board as final and file either a
direct appeal therefrom to the C.C.P.A., or
a civil action under 85 U.S.C. 145. In re
Crowell, 1930 C.D. 860; 397 O.G. 8. Where
the applicant avails himself of the third op-
tion, he waives his right to reconsideration by
the Board, or by the Examiner, discussed
above. In re Heinz, 1910 C.D. 292; 151 O.G.
1014.

# 1214.02 Procedure After Decision [R-20]

Extract from Rule 197. Action following decision.
(a) After decision by the Board of Appeals, the case
shall be returned to the primary examiner, subject to
the applicant's right of appeal or other review, for such
further action by the applicant or by the primary ex-
aminer, as the condition of the case may require, to
carry into effect the decision.

After an appeal to the Board of Appeals has
been decided, a copy of the decision is mailed
to the applicant and the original placed in the
file. The Clerk of the Board notes the decision
on the file wrapper and in the record of appeals,
and then forwards the file to the Primary Ex-
aminer through the office of the Group Director
immediately if the Examiner is reversed, and
after 30 days if the Examiner is affirmed.

# 1214.03 Rehearing and Reconsidera- tion [R-20]

Under Rule 197, any request or petition for
rehearing or reconsideration, or modification of
the decision, must be filed within thirty days
from the date of the original decision, unless
that decision is so modified as to become, in
effect, a new decision, and the Board of Ap-
peals so states.

"No petition for rehearing or reconsideration
filed outside the time specified shall operate to
extend the period of sixty days" for appeal to
the U.S. Court of Customs and Patent Appeals
or for commencing a civil action, Rule 304. The
Commissioner may suspend or waive the sixty
day limit of Rule 304, Eckey v. Watson, 122
USPQ 5; 1959 C.D. 119. In such a petition an
adequate showing under Rule 183 is demanded.

Any soft copies in the file wrapper should
not be removed until the period of reconsidera-
tion expires.

1214.04 Examiner Reversed [R-20]

A complete reversal of the Examiner's re-
jection brings the case up for immediate action
by the Examiner.

The Examiner should never regard such a
reversal as a challenge to make a new search to

uncover other and better references. This is
particulari; so where the application has
meanwhile been transferred or assigned to an
Examiner other than the one who finally ro-
jected the claims. The second Examiner
should give full faith and credit to his prede-
cessor's search. Of course, if the Examiner
has specific knowledge of the existence of a
particular reference which obviously meets the
terms of any of the appealed claims as to
which the Examiner was reversed, he should
submit the matter to the Group Director to
determine whether the Commissioner should
be requested to authorize the reopening of pros-
ecution under Rule 198 for the purpose of en-
tering the new rejection.

# 1214.05 Cancellation of Withdrawn Claims [R-20]

Where an applicant withdraws some of the
appealed claims, and the Board reverses the
Examiner on the remaining appealed claims,
the withdrawal is treated as an authorization
to cancel the withdrawn claims. It is not nec-
essary to notify the applicant of the cancel-
lation of the withdrawn claims.

# 1214.06 Examiner Sustained in Whole or in Part [R-20]

Extract from Rule 197. Action following decision
... (c) When an appeal is or stands dismissed, or
when the time for appeal to the court or review by
civil action (rule 304) has expired and no such appeal
or civil action has been filed, proceedings in the ap-
plication are considered terminated as of the dismissal
or expiration date except in those applications in which
claims stand allowed or in which the nature of the
decision requires further action by the examiner. If
an appeal to the court or a civil action has been flied,
proceedings in the application are similarly considered
terminated when the appeal or civil action is termi-
nated.

If the Examiner was sustained either in
whole or in part, it is improper to notify ap-
plicant of the status of the case unless asked
to do so. See Ex parte Buchenberg 1924 C.D.
55 : 327 O.G. 216.

The time for seeking review of a decision of
the Board of Appeals by the C.C.P.A. or the
District Court is the same for both tribunals,
that is, sixty days, or sixty days with the ex-
tension provided by Rule 304 in the event a peti-
tion for reconsideration or rehearing is sea-
sonably filed before the Board, or as extended
by the Commissioner. See section 1214.03.
When the time for seeking court review (plus
two weeks to allow for information as to the
filing of an appeal or civil action, if any, to

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reach the Examiner) has passed without such
review being sought, the Examiner must take
up the case for consideration. The situations
which can arise will involve one or more of the
following six circumstances :

A. No claims stand allowed. The proceed-
ings in the application are terminated as of the
date of the expiration of the time for filing court
action. The application is no longer con-
sidered as pending. It is to be stamped
abandoned and sent to the Abandoned Files
without notifying applicant.

B. Claims stand allowed. The applicant is
not required to file a response. The Examiner
takes the case up and passes it to issue on the
claims which stand allowed. A red link line
should be drawn through the refused claims and
the notation "Board Decision" written in the
margin in red ink.

If uncorrected matters of form which cannot
be handled without written correspondence re-
main in the case, the Examiner should take ap-
propriate action but prosecution is otherwise
closed. A letter such as the following is
suggested :

"In view of the fact that the period for seek-
ing court review of the decision by the Board
of Appeals rendered (date of decision) has ex-
pired and no further action has been taken
by applicant, the proceedings as to the rejected
claims are considered terminated ; see Rule 197
(c)."

"The application will be passed to issue on
claims (identify) which stand allowed pro-
vided the following formal matter (s) is (are)
promptly corrected. Prosecution is otherwise
closed."

(Set out formal matter (s) requiring cor-
rection.)

(Set a thirty day Shortened Statutory Period
for response.)

C. Claims require action. If the decision of
the Board is an affirmance in part and includes
a reversal of a rejection that brings certain
claims up for action on the merits, such as a
decision allowing generic claims in a case con-
taining claims to nonelected species not pre-
viously acted upon, the Examiner will take the
case up for appropriate action on the matters
thus brought up, but the case is not considered
open to further prosecution except as to such
matters.

D. Rule 196(b) rejection. Where the Board
makes a new rejection under Rule 196(b) and
no action is taken with reference thereto by the
applicant within six months, or such shortened
period as may be set in the Board's decision.
the Examiner should proceed in the manner
indicated for situations A, B, or C, depending

on which is appropriate to the case. See
section 1214.01.

If the Board sustains the Examiner's rejec-
tion, but also enters a new ground of rejection
under Rule 196(b), the filing of a request for
reconsideration on the affirmed rejection will
defer the end of the period for appeal to the
courts until 30 days after the decision on re-
consideration, to allow time for the Examiner
to consider any amendments and/or evidence
offered to traverse the new ground of rejection.

E. Rule 196(c) recommendation. Where the
Board makes a recommendation under Rule
196(c) and no action is taken with reference
thereto by the applicant within the time per-
mitted for court review, ordinarily sixty days
from the date of the decision, the Examiner
should proceed in the manner indicated for sit-
uations A, B, or C, depending on which is ap-
propriate to the case. See section 1213.01.

F. Appeal dismissed. The appeal has been dis-
missed for failure to argue a ground of rejec-
tion involving all the appealed claims. See sec-
tion 1215.04.

The practice under situations A, B, and C is
similar to the practice after a decision of the
court outlined in section 1216.01.

In view of the above practice, Examiners
must be very careful that applications which
come back from the Board of Appeals are not
overlooked because every case, except those in
which all claims stand rejected after the
Board's decision, is up for action by the Ex-
aminer in the event no court review has been
sought. Consequently, when a file is received
after decision by the Board of Appeals, it
must be examined and appropriate precautions
taken to indicate the presence of allowed
claims, if any. This may be done by writing
the notation "Allowed Claims" on "Contents"
of file wrapper immediately below endorsement
"Decision by Board".

See sections 1216.01 and 1216.02 for proce-
dure where court review is sought.

# 1214.07 Reopening of Prosecution [R-20]

Rule 198. Reopening after decision . Cases which
have been decided by the Board of Appeals will not be
reopened or reconsidered by the primary examiner, ex-
cept under the provisions of rule 196, without the writ-
ten authority of the Commissioner, and then only for
the consideration of matters not already adjudicated.
sufficient cause being shown.

Sometimes an amendment is filed after the
Board's decision which does not carry into ef-
fect any recommendation made by the Board
and which presents a new or amended claim or
claims. In view of the fact that the prosecu-
tion of the case is definitely closed, the appli-

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cant clearly is not entitled to have such amend-
ment entered as a matter of right. However,
if the amendment obviously places the case in
condition for allowance, the Primary Exam-
iner should endorse on the amendatory paper a
recommendation that the amendment be ad-
mitted, and with the concurrence of the Group
Director, the amendment will be entered.

Where the amendment cannot be entered, the
Examiner should write to the applicant noti-
fying him that the amendment cannot be en-
tered and stating the reason why. The refusal
should never be made to appear arbitrary or
capricious. A letter such as the following
might be used :

"The amendment filed
after the
Board's decision is refused entry because the
prosecution is closed and the new claims (or
claims as amended) raise new issues which
require further consideration or search."

In the event that claims stand allowed in the
case under the conditions set forth in section
1214.06 (paragraph B), the case should be
passed to issue.

## 1215 Withdrawal or Dismissal of Ap- peal

## 1215.01 Withdrawal of Appeal [R- 20]

Where, after appeal has been filed and be-
fore decision by the Board of Appeals, an
applicant withdraws his appeal after the period
for response to the final rejection has expired,
the application is to be considered abandoned as
of the date on which the appeal was with-
drawn unless there are allowed claims in the
case.

Where a letter abandoning the application is
filed in accordance with Rule 138, the effective
date of abandonment is the date of filing of
such letter.

If a brief has been filed within the time per-
mitted by Rule 192 (or any extension thereof)
and an Answer mailed and applicant withdraws
the appeal, the case is returned to the Examiner.
If there are no allowed claims in the case, the
Examiner writes a letter of abandonment.

## 1215.02 Claims Standing Allowed [R-20]

If the application contains allowed claims.
as well as claims on appeal, the withdrawal of
the appeal does not operate as an abandon-
ment of the application. but is considered a
withdrawal of the appeal as to those claims and
authority to the Examiner to cancel the same.

An amendment canceling the appealed claims is
equivalent to a withdrawal of the appeal.

## 1215.03 Partial Withdrawal [R-20]

A withdrawal of the appeal as to some of the
claims on appeal operates as a cancelation of
those claims from the case and the appeal con-
tinues as to the remaining claims. The with-
drawn claims will be canceled by direction of the
Examiner when necessary without further ac-
tion by the applicant.

## 1215.04 Dismissal of Appeal [R-20]

If no brief is filed within the time prescribed
by Rule 192, the appeal stands dismissed by
operation of the rule. The letter from the
Board of Appeals notifying the applicant that
the appeal stands dismissed is not an action in
the case and does not start any period for
reply. If no claims stand allowed the appli-
cation is considered as abandoned on the date
the brief was due. No notification to the
applicant that the application is abandoned is
necessary. If claims stand allowed in the ap-
plication, the failure to file a brief and conse-
quent dismissal of the appeal is to be treated
as a withdrawal of the appeal and of any
claim not standing allowed. The application
should be passed to issue forthwith when the
file is received from the Board of Appeals.
However, if formal matters remain to be at-
tended to, the Examiner should take appropri-
ate action on such matters, setting a shortened
period for reply. but the application is to be
considered closed to further prosecution except
as to such matters. Note section 1201.

A letter such as the following is suggested :
"In view of applicant's failure to file a brief
within the time prescribed by Rule 192. the
appeal stands dismissed and the proceedings
as to the rejected claims are considered termi-
nated; see Rule 197, third paragraph.

"This application will be passed to issue on
claims (identify) which stand allowed pro-
vided the following formal matter(s) is (are)
corrected. Prosecution is otherwise closed."

(Set out formal matter(s) requiring cor-
rection.)

(Set a thirty day Shortened Statutory Period
for response.)

# 1215.05 Case Before the Court [R- 20]

When the case is before the court either on
appeal, 35 U.S.C. 141, or in a civil action under
35 U.S.C. 145, the status of the application in

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the event of a dismissal must be determined
according to the circumstances leading to the
dismissal. In no event will the application be
considered abandoned as of a date prior to the
date of the dismissal by reason of the dismissal
alone.

# 1216 Appeals to Courts [R-20]

Rule 304. Time for appeal or civil action. The time for
filing the notice and reasons of appeal to the U.S.
Court of Customs and Patent Appeals (rule 302) or
for commencing a civil action (rule 303) is sixty days
from the date of the decision of the Board of Appeals
or the Board of Patent Interferences. If a petition for
rehearing or reconsideration is filed within thirty days
after the date of the decision of the Board of Appeals
or Board of Patent Interferences, the time is extended
to thirty days after action on the petition. No petition
for rehearing or reconsideration filed outside the time
specified herein after such decision, nor any proceed-
ings on such petition shall operate to extend the period
of sixty days hereinabore provided. The times specified
herein are calendar days. If the last day of the time
specified for appeal or commencing a civil action falls
on a Saturday, Sunday, or legal holiday, the time is
extended to the next day which is neither a Saturday,
Sunday nor a holiday. If a defeated party to an inter-
ference has taken an appeal to the U.S. Court of Cus-
toms and Patent Appeals and an adverse party has
filed notice under 35 U.S.C. 141 that he elects to have
all further proceedings conducted under 35 U.S.C. 146
(rule 303(c) ), the time for filing a civil action there-
after is specified in 35 U.S.C. 141.

Files of cases carried to the courts, either by
appeal to the Court of Customs and Patent
Appeals or by civil action in the District Court
for the District of Columbia, are not opened
by the Patent Office to the public.

During the pendency of a suit the application
is not under the jurisdiction of the Examiner :
and any amendment, as one copying claims from
a patent for interference purposes, can be ad-
mitted only under the provisions of Rule 198.

# 1216.01 To Court of Customs and Pat- ent Appeals [R-20]

Rule 301. Appeal to U.S. Court of Customs and Patent
Appeals. Any applicant dissatisfied with the decision
of the Board of Appeals, and any party to an inter-
ference dissatisfied with the decision of the Board of
Patent Interferences, may appeal to the U.S. Court
of Customs and Patent Appeals. The appellant must
take the following steps in such an appeal : (a) In the
Patent Office give notice to the Commissioner and file
the reasons of appeal ( see rules 302 and 304) ; (b) in
the court, file a petition of appeal and a certified tran-
script of the record within a specified time after filing
the reasons of appeal, and pay the fee for appeal. as

provided by the rules of the court. The transcript will
be transmitted to the Court by the Patent Office on
order of and at the expense of the appellant.

35 U.S.C. 141. Appeal to Court of Customs and Patent
Appeals. An applicant dissatisfied with the decision of
the Board of Appeals may appeal to the United States
Court of Customs and Patent Appeals, thereby waiving
his right to proceed under section 145 of this title. A
party to an interference dissatisfied with the decision
of the board of patent interferences on the question of
priority may appeal to the United States Court of
Customs and Patent Appeals, but such appeal shall be
dismissed if any adverse party to such interference,
within twenty days after the appellant has filed notice
of appeal according to section 142 of this title, files
notice with the Commissioner that he elects to have
all further proceedings conducted as provided in sec-
tion 146 of this title. Thereupon the appellant shall
have thirty days thereafter within which to file a civil
action under section 146, in default of which the de-
cision appealed from shall govern the further
proceedings in the case.

35 U.S.C. 142. Notice of appeal. When an appeal is
taken to the United States Court of Customs and Patent
Appeals, the appellant shall give notice thereof to the
Commissioner, and shall file in the Patent Office his
reasons of appeal, specifically set forth in writing
within such time after the date of the decision an-
pealed from, not less than sixty days, as the Commis-
sioner appoints.

35 U.S.C. 143. Proceedings on appeal. The United
States Court of Customs and Patent Appeals shall, be-
fore hearing such appeal, give notice of the time and
place of the hearing to the Commissioner and the
parties thereto. The Commissioner shall transmit to
the court certified copies of all the necessary original
papers and evidence in the case specified by the appel-
lant and any additional papers and evidence specified
by the appellee and in an ex parte case the Commis-
sioner shall furnish the court with the grounds of the
decision of the Patent Office, in writing, touching all
the points involved by the reasons of appeal.

35 U.S.C. 144. Decision on appeal. The United States
Court of Customs and Patent Appeals, on petition, shall
hear and determine such appeal on the evidence pro-
duced before the Patent Office, and the decision shall be
confined to the points set forth in the reasons of appeal.
Upon its determination the court shall return to the
Commissioner a certificate of its proceedings and deci-
sion, which shall be entered of record in the Patent
Office and govern the further proceedings in the case.

Rule 302. Notice and reasons of appeal. (a) When an
appeal is taken to the U.S. Court of Customs and Patent
Appeals, the appellant shall give notice thereof to the
Commissioner, and file in the Patent Office, within the
time specified in rule 304, his reasons of appeal specif-
ically set forth in writing.

(b) In interferences and other contested cases, the
notice and reasons must be served as provided in rule
248.

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If an applicant is dissatisfied with the decision
of the Board of Appeals and desires to have
said decision reviewed on the record, he must
file a "Notice of Appeal" in the Patent Office,
within 60 days after the date of the Board's
decision or 30 days from a decision on recon-
sideration, in order to have the Court of Cus-
toms and Patent Appeals consider his appeal.

When the Office of the Solicitor receives the
notice of appeal, it acknowledges receipt of the
notice and requests that an order (called prae-
cipe) be filed within 20 days. The order or
praecipe states the exact papers to be certified
which forms the transcript of record that is
transmitted to the court.

The transcript of record, petition and $15.00
fee must be filed in the court within 40 days
(exclusive of Sundays and legal holidays) from
the date upon which said "Notice of Appeal"
was filed: provided the Commissioner does not
extend such time.

The appeal is docketed in the Court if the
petition, transcript and fee are timely filed. If
not timely filed, there is no specific order of
dismissal by the Court but the rules of the Court
restore jurisdiction to the Patent Office. If no
claims stand allowed proceedings are consid-
ered terminated on the last day the petition,
transcript and fee were due (since up to this
day the case was alive and applicant could take
some action) Ex parte Vossen, 1967 C.D. 29;
155 USPQ 109.

After restoration of jurisdiction to the Patent
Office the action taken by the Examiner will
be the same as set forth in the paragraphs under
'Action Following Decision by Court" below.

After the court has heard and decided the
appeal, a copy of the decision is sent to the
Patent Office and one to the applicant. Where
the applicant files a petition for rehearing, the
Court's ruling thereon is communicated to the
Office and to the applicant by the Clerk of the
Court.

Finally, the Clerk of the Court forwards to
the Office a certified copy of the Court's deci-
sion on the appealed claims. This copy is a
duplicate of the uncertified copy first for-
warded, unless modified as a result of the peti-
tion for rehearing or, possibly, altered to cor-
rect some minor error. The receipt of this copy
by the Patent Office marks the conclusion of the
appeal. The decision of the Court is published;
but unless the application becomes a patent, the
public is not given access to the application file
itself. Since a transcript of the application
becomes a part of the court record, it may of
course be inspected there by anyone, In re
Mosher. 45 CCPA 701; 115 USPQ 140.

The Solicitor enters the certified copy of the
Court's decision in the application file and

returns it to the Primary Examiner. The So-
licitor uses the uncertified copy as a basis for
publication of the decision in the Official
Gazette.

## ACTION FOLLOWING DECISION BY COURT

1\. All claims rejected. If all claims in the
case stand rejected, proceedings on the applica-
tion are considered terminated on the date of
receipt of the Court's certificate and the appli-
cation is not open to subsequent amendment
and prosecution by the applicant. The appli-
cation is no longer considered pending.

2\. Some claims allowed. If some claims in
the case stand allowed, either by reversal of the
Office decision by the Court or by having been
allowed by the Examiner or the Board of
Appeals, proceedings are considered terminated
as to the rejected claims. Action by the appli-
cant canceling the rejected claims is not con-
sidered necessary. The Examiner will pass the
case for issue forthwith on the allowed claims,
the applicant being advised of such action.
The rejected claims may be cancelled by the
Examiner with an appropriate notation on the
margin, to avoid confusion of the printer.
However, if formal matters remain to be at-
tended to, the Examiner should take appro-
priate action on such matters, setting a 30 day
shortened period for reply, but the application
is considered closed to further prosecution ex-
cept as to such matters. If all claims in the case
stand allowed after the Court's decision formal
matters if any should be taken care of and the
case passed for issue.

3\. Remand. If the decision of the Court is
such that it brings certain claims up for action
on the merits, such as a decision allowing
generic claims in a case containing claims to
non-elected species not previously acted upon.
the Examiner will take the case up for appro-
priate action on the matters thus brought up,
but the case is not considered open to further
prosecution except as to such matters. A re-
mand by the Court is a remand to the Board
of Appeals and not to the Examiner. The
Examiner may only act on the application if
it is remanded to him by the Board.

## DISMISSAL OF APPEAL

After the appeal is docketed in the Court,
failure to prosecute the appeal, as by failure
to print the record or failure to file the brief,
will result in dismissal of the appeal by the
Court : or there may be a dismissal by the Court
at the request of the appellant. The proceed-
ings are considered terminated and the applica-
tion abandoned if applicable as of the date of
dismissal. see section 1215.05.

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1216.02

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After dismissal, if no claims stand allowed
the action taken by the Examiner will be the
same as forth in paragraph 1 above; if claims
stand allowed the action is accordance with
paragraph 2.

### 1216.02 Civil Suits [R-20]

Rule 303. Civil action under 35 U.S.C. 145, 146. (a) Any
applicant dissatisfied with the decision of the Board of
Appeals, and any party dissatisfied with the decision of
the Board of Patent Interferences, may, instead of ap-
pealing to the U.S. Court of Customs and Patent Ap-
peals (rule 301), have remedy by civil action under
35 U.S.C. 145 and 146 respectively. Such civil action
must be commenced within the time specified in rule
301.

(b) If an applicant in an ex parte case has taken
an appeal to the U.S. Court of Customs and Patent
Appeals, he thereby waives his right to proceed under
35 U.S.C. 145.

(c) If a defeated party to an interference proceed-
ing has taken an appeal to the U.S. Court of Customs
and Patent Appeals, and any adverse party to the in-
terference shall, within twenty days after the appel-
Lant shall have filed notice of the appeal to the court
( rule 302), file notice with the Commissioner that he
elects to have all further proceedings conducted as
provided in 35 U.S.C. 146, certified copies of such
notices will be transmitted to the U.S. Court of Cus-
toms and Patent Appeals for such action as may be
necessary. The notice of election must be served as
provided in rule 248.

35 U.S.C. 145. Civil action to obtain patent. An appli-
cant dissatisfied with the decision of the Board of Ap-
peals may unless appeal has been taken to the United
States Court of Customs and Patent Appeals, have rem-
edy by civil action against the Commissioner in the
United States District Court for the District of Colum-
bia if commenced within such time after such decision,
not less than sixty days, as the Commissioner appoints.
The court may adjudge that such applicant is entitled
to receive a patent for his invention, as specified in any
of his claims involved in the decision of the Board of
Appeals, as the facts in the case may appear and such

adjudication shall authorize the Commissioner to issue
such patent on compliance with the requirements of
law. All the expenses of the proceedings shall be paid
by the applicant.

If an applicant is dissatisfied with the deci-
sion of the Board of Appeals and desires to
have said decision reviewed, within 60 days
after the date of the Board's decision or 30 days
after the date of a Board's decision on recon-
sideration, he must file a complaint in the
United States District Court for the District of
Columbia and have the marshall serve a sum-
mons on the Commissioner of Patents.

When a suit under 35 U.S.C. 145 is filed
a notice thereof signed by the Solicitor of the
Patent Office is placed in the application file.
The file is kept in the Solicitor's office pending
termination of the suit. When the suit is ter-
minated, a statement indicating the final dis-
position of it by the Court is placed on the
original notice by the Solicitor and the appli-
cation is returned to the Examiner, whose
subsequent procedure is the same as his action
following appeal, described in section 1216.01.
If the exact date when proceedings were ter-
minated is material, it may be ascertained by
inquiring at the Solicitor's office.

The applicant ordinarily furnishes to the
court a certified copy of the file wrapper and
contents at the time of the trial (28 U.S.C.
1744). If the suit is dismissed before coming
to trial, no disclosure of the application to the
public necessarily results. Unlike an appeal to
the U.S. Court of Customs and Patent Appeals,
the filing of a civil action does not require the
immediate filing of a transcript of the applica-
tion. The complaint, however, is open to the
public.

Files subpoenaed by the Court may be sent
to the Court in care of a Patent Office employee
along with a certified copy, under stipulation
that the copy be retained by the court and the
original brought back to the Ofice by said
employee.

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