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

1206
Appeal Brief

1207
Amendment Filed With or After Appeal

1208
Examiner's Answer

1208.01
New Reference, New Objection or 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 the Board to Consider Amendment

1212

Remand by the Board to Consider Affidavits or
Declarations

1213
Decision by Board

1213.01

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Cancellation of Withdrawn Claims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-43]

The Patent and Trademark Office in adminis-
tering the Patent Laws makes many decisions of
a discretionary nature which the applicant may
feel deny him the patent protection to which
he is entitled. The differences of opinion on such
matters can be justly resolved only by prescrib-
ing 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 and Trademark 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
and Trademarks should be carefully observed.
The Board will not ordinarily hear a question
which it believes should be decided by the Com-
missioner, and the Commissioner will not ordi-
narily entertain a petition where the question
presented is an appealable matter. However,
since rule 181(f) states that any petition not
filed within two months from the action com-
plained of may be dismissed as untimely and
since rule 144 states that petitions from restric-
tion requirements must be filed no later than
appeal, petitionable matters will rarely be pres-
ent in a case by the time it is before the Board
for a decision. Note in re Hengehold, 169 USPQ
473, (CCPA 1971).

\-

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## MANUAL OF PATENT EXAMINING PROCEDURE

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Supreme Court

Writ of Certiorari
28 U.S.C. 2101

Writ of Certiorari
28 U.S.C. 1254

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

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

Civil Action in District
Court for the District of
Columbia
35 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

I

30 days to request
reconsideration
Rule 197 (b)

1

Decision by Board
of Appeals

1

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

1

Examiner's Answer filed
preferably within 30 days
Rule 193

Decision by Commissioner
of Patents

1

1

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

Petition to Commissioner
of Patents, Rule 181

1

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

1

Rejection

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

1203 Composition of Board [R-43]
35 U.S.C. 7, provides for a Board of Appeals
as follows:

35 U.S.C. 7 Board of Appeals. The examiners-in-
chief shall be persons of competent legal knowledge

and scientific ability, who shall be appointed under
the classified civil service. The Commissioner, the dep-
uty commissioner, the assistant commissioners, and
the examiners-in-chief shall constitute a Board of Ap-
peals, which, on written appeal of the applicant, shall
review adverse decisions of examiners upon applica-
tions for patents. Each appeal shall be heard by at
least three members of the Board of Appeals, the mem-
bers hearing such appeal to be designated by the Com-
missioner. The Board of Appeals 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 authorized to fix the
per annum rate of basic compensation of each desig-
nated examiner-in-chief in the Patent and Trademark
Office at not in excess of the maximum scheduled rate
provided for positions in grade 16 of the General Sched-
ule of the Classification Act of 1949, as amended. The
per annum rate of basic compensation of each des-
ignated examiner-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- 41]

Ex parte appeals to the Board of Appeals,
and all papers relating thereto, are forwarded
to the examining group 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 processed by the appropriate exam-
ining group.

The application file and jurisdiction of the
application are normally transferred from the

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€

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examining groups to the Board of Appeals at
one of the following times :

1\) After 2 months from the examiner's an-
swer, plus mail room time, if a "new
ground of rejection" has been indicated in
the examiner's Answer and no reply brief
has been timely filed.

2\)
After 20 days from the examiner's answer,
plus mail room time, where no new ground
of rejection has been indicated in the ex-
aminer's Answer and no reply brief has
been timely filed.

3\) After a supplemental examiner's answer
has been mailed in reply to a timely reply
brief.

4\) After the examiner has determined that
he will not prepare a supplemental ex-
aminer's answer in response to a timely
reply brief.

The jurisdiction of an application may be re-
turned to the examining group to consider vari-
ous matters.

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 when it is remanded by the Board of
Appeals. 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 continuation application 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 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 the ap-
peal has been forwarded to the Board of Ap-
peals 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-32]

35 U.S.C. 134. Appeal to the Board of Appeals. An
applicant for a patent, any of whose claims has been
twice rejected, may 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 fees. (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.

Rule 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. (See form
41)

(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 th-
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 i:
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
$ 714.13. Failure to place an application in con-
dition for allowance or to file an appeal after
final rejection will result in the application be-
coming abandoned, even if one or more claims
have been allowed except where claims sug-
gested for interference have been copied.

The use of form 41 for filing a notice of ap-
peal is strongly recommended. This form is
reproduced below. Copies for duplication may

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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 Unit :
To Commissioner of Patents
Sir :

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\.
☐
for
An extension of time to respond to the final
rejection was granted on
months (s).

2\.
☐
A timely response to the final rejection has
been filed, 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 §§ 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, § 1103.

The Patent Office does not acknowledge
receipt of a Notice of Appeal by separate letter.
However, if a self-addressed Post Card is in-
cluded with the Notice of Appeal, it will be date
stamped and mailed.

## 1206 Appeal Brief [R-41]

Rule 192. Appellant's brief. (a) The appellant shall,
within two months from the date of the appeal, or

within the time allowed for response to the action
appealed from, if such time is later, file a brief in tripli-
cate, accompanied by the requisite fee, of the author-
ities and arguments on which he will rely to maintain
his appeal, including a concise explanation of the in-
vention which should refer to the drawing by refer-
ence characters, and a copy of the claims involved,
at the same time indicating if he desires an oral hear-
ing. Upon a showing of sufficient cause, the Commis-
sioner may grant extensions of time for filing the brief.
The Commissioner may delegate to appropriate Pat-
ent Office officials the approval of such extensions. All
requests for extensions must be filed prior to the ex-
piration of the period sought to be extended.

(b) On failure to file the brief, accompanied by the
requisite fee, within the time allowed, 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. Amendments should not be
included in the appeal briefs. Amendments
should be filed as separate papers. See §§ 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 two months 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 examining group, requesting addi-
tional time (usually one month), 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 petition is filed prior to
the expiration of the period sought to be ex-
tended (rule 192), the group appeals clerk is

authorized to grant the extension not in excess
of one month. The group directors have au-
thority to grant subsequent extensions. Addi-
tional time, in excess of two months, will not be
granted, 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

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is declared, applicant's brief need not be filed
until two months after either the non-appeal-
able decision of the Patent Interference Exam-
iner or the expiration of the time for appealing
from the Patent Interference Examiner's ap-
pealable decision, the decision of the Board of
Patent Interferences or from any subsequent
decision of a reviewing court. If a petition for
reconsideration 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 §§ 1109.01 and 1109.02.

Likewise, when an application is revived
after abandonment for failure on the part of
the applicant to make appropriate action after
final rejection, and the petition to revive was
accompanied by a Notice of Appeal, applicant
has two months, from the mailing date of the
Commissioner's affirmative decision on the peti-
tion, 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 filing of a petition for supervisory
action under rule 181 :

(3) 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
appeal;

(4) 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 § 1215.04. 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 § 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 inadvertence,
filing a petition, pointing out the error, may be
sufficient.

## APPEAL BRIEF

A $50 fee is required when the brief is filed
for the first time in an application, 35 U.S.C. 41.
Rule 192 provides that the applicant shall file
a brief of the authorities and arguments on
which he will rely to maintain his appeal, in-
cluding 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 desires an oral
hearing. Rule 192(a) requires the submission
of three copies of the appeal 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 examining group to which the application
is assigned and the serial number. When the
brief is received, it is forwarded to the group
where it is entered in the file, and referred to
the examiner.

Applicants are reminded that their briefs in
appealed cases must be responsive to every
ground of rejection stated by the examiner, in-
cluding new grounds stated in his answer.

Where an applicant fails to respond by way
of brief or reply brief to any ground of rejec-
tion, and it appears that the failure is inad-
vertent. applicant shall be notified by the exam-
iner that he is allowed one month to correct the
defect by filing a supplemental brief. Where
this procedure has not been followed, the Board
of Appeals should remand the application to the
examiner for compliance. When the record
clearly indicates intentional failure to respond
by brief to any ground of rejection, for exam-
ple. by failure to file a supplemental brief
within the one-month period allowed for that

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purpose, the examiner should inform the Board
of Appeals of this fact in his answer and merely
specify the claims affected.

Where the failure to respond by brief appears
to be intentional, the Board of Appeals may
dismiss the appeal as to the claims involved.
Oral argument at a hearing will not remedy
such deficiency of a brief.

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 may 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
not justify a failure to point out to the Board
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 the proceed-
ings would work a hardship on the applicant.

For reply brief see $ 1208.01. [R-42]

## 1207 Amendment Filed With or After Appeal [R-42]

To expedite the resolution of cases under final
rejection, an amendment filed at any time after
final rejection but before an appeal brief is filed,
may be entered upon or after filing of an appeal

provided the total effect of the amendment is
to (1) remove issues from appeal, and/or (2)
adopt examiner suggestions. Of course, if the
amendment necessitates a new search, raises the
issue of new matter, presents additional claims
without cancelling a corresponding number of
finally rejected claims, or otherwise introduces
new issues, it will not be entered. Examiners
must respond to all non-entered amendments
after final rejection, and indicate the status of
each claim of record or proposed, including the
designation of claims that would be entered on
the filing of an appeal if filed in a separate
paper. It should be noted that an amendment
placing a case in condition for allowance will
be enterable by the examiner at any stage prior
to forwarding the answer on appeal. Except
where an amendment merely cancels claims
and/or adopts examiner suggestions, removes
issues from appeal, or in some other way re-
quires only a cursory review by the examiner,
compliance with the requirement of a showing
under rule 116(b) will be expected of all
amendments after final rejection.

If after appeal has been taken. a paper is pre-
sented which on its face clearly places the appli-
cation in condition for allowance, such paper
should be entered and a notice of allowability
(POL-327) or an examiner's amendment
promptly sent to applicant.

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 § 1201. No new ground of rejection
or objection should be incorporated in the ex-
aminer's answer without express approval in
each case by the group director. See § 1003,
(15) and 1208.01. See § 714.13 for procedure on
handling amendments filed after final action
and before appeal.

### 1208 Examiner's Answer [R-42]

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

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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 two months 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 may be reviewed by conference in the
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.

The group director has the discretion as to
whether or not appeal conferences are necessary
in his group and, if so, in which instances they
are to be held.

If a conference is held, the primary exam-
iner responsible for signing the examiner's an-
swer 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, including those to the draw-
ing, have in fact been physically entered. The
clerk of the Board will return to the group any
application in which approved 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 2 months after the filing
of the brief.

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, declarations
or exhibits in accordance with rule 195, report-
ing his conclusions only on those admitted. Any
affidavits or declarations 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 Appeals will usu-
ally consider holdings on rule 131 affidavits or
declarations but not on rule 204 affidavits or
declarations.

If the brief fails to respond to any or all
grounds of rejection advanced by the examiner,
he should follow the indicated procedure for
handling such briefs set forth in § 1206. If the
failure to respond appears intentional or is not
corrected within the period allowed by the notice
calling the defect to applicant's attention,
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 frequently 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 supersedes 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 posi-
tion 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 of rejection
merely by reference to the final rejection (or a
single other action on which it is based,
§ 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 answer. 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

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to describe the reference, the examiner is no
longer required to provide these omissions.
The examiner should, however, include such
description and explanation in the answer if he
feels it necessary to present properly and effec-
tively his case to the Board of Appeals.

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, especially if the rejec-
tion was made in an action which is incorpo-
rated by reference. This should be done even
though any rejection not repeated and discussed
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.

All correspondence with the Board of Ap-
peals, whether by the examiner or the applicant
must be on the record. No unpublished decisions
which are unavailable to the general public by
reason of 35 U.S.C. 122 can be cited by the
examiner or the applicant except that either
the examiner or the applicant has the right to
cite an unpublished decision in an application
having common ownership with the application
on appeal.

When files are forwarded, soft copies and
prints of references 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, see § 1003. item 16. If ap-
proved by the group director, the examiner's
answer should be forwarded to the Office of the
Assistant Commissioner for Patents for final
approval.

A form suitable for the examiner's answer
is as follows:

POL-84

IN RE APPLICATION OF

Ser. No.
Filed
For

Before the Board of Appeals

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## 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 § 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 may be made to a final rejection or
single prior action for a clear exposition of the
rejection. If not all of the prior rejections in
such a referred to prior action are maintained,
they should be specifically noted as not being
applied. If necessary, a description and ex-
planation of the alleged invention and refer-
ences may be made to present the examiner's
case properly. If pertinent. a statement should
be included that a new ground of rejection is
contained in the answer.

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
§ 1208.01.

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

Request by the examiner to present argu-
ments at the oral hearing.

1208.01
New Reference, New Objec-
tion or New Ground of Re-
jection in Examiner's Answer
[R-42]

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

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1208.01

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. See $ 1003, item 15.

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" and sign his name below the stamp

on all copies of the answer prior to mailing if it
meets with his approval. Note § 1003, item 15.
If approval is given to the citation of new refer-
ences, the answer will be mailed by the group
and will include copies of the new references.
Reference Processing Section (RPS) will not-
be involved in these actions. 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 ref-
erence ( for any purpose) or (2) a new ground
of rejection. where such answer does not bear
an approved stamp.

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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 (1) the history of the pros-
ecution, (2) the number of claims affected, (3)
the importance of the new ground of rejection,
(4) the significance of the new reference and
(5) the nature of the response to be expected.
For example, if the reference is basic and ma-
terially better in meeting all of the claims, re-
opening of the prosecution and making the ac-
tion final would ordinarily be approved. Should
applicant desire later to have the Board review
the examiner's new final action, he must file a
new Notice of 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 two months 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 two months within which he
may file a reply to this answer. Such reply
may include any amendment or material ap-
propriate to the new ground. Prosecution
otherwise remains closed. Failure to respond
to the new ground of rejection will result in
dismissal of the appeal of the claims so re-
jected."

### REPLY BRIEF

Where a new ground of rejection is raised
in the examiner's answer, the applicant, un-
der rule 193(b) has two months within which

he may file a reply brief. 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. Considera-
tion will be limited to amendments and facts
pertinent to the new ground of rejection.

The examining group appeal clerks are au-
thorized to grant, upon the first request there-
for, 1-month extensions of time to file the brief
or reply brief. Any further extensions or any
initial request for an extension of more than
1 month may be granted by the group directors.

An amendment limited to the new ground of
rejection is entitled to entry. Ex parte Abseck
et al., 133 USPQ 411.

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.

Applicants are reminded that their briefs in
appealed cases must be responsive to every
ground of rejection stated by the examiner, in-
cluding new grounds stated in his answer.

Where an applicant fails to respond by way
of brief or reply brief to any ground of rejec-
tion, and it appears that the failure is inadvert-
ent, applicant shall be notified by the examiner
that he is allowed one month to correct the
defect by filing a supplemental brief. Where
this procedure has not been followed, the Board
of Appeals should remand the application to
the examiner for compliance. When the record
clearly indicates intentional failure to respond
by brief to any ground of rejection, for example,
by failure to file a supplemental brief within the
one-month period allowed for that purpose, the
examiner should inform the Board of Appeals
of this fact in his answer and merely specify the
claims affected.

Where the failure to respond by brief appears
to be intentional, the Board of Appeals may
dismiss the appeal as to the claims involved.
Oral argument at a hearing will not remedy
such deficiency of a brief.

## SUPPLEMENTAL EXAMINER'S ANSWER

Normally, when a reply brief has been filed
by the applicant following an examiner's an-
swer, the application should be forwarded to
the Board of Appeals without any need for the
preparation of a supplemental answer by the
examiner. The examiner should simply write

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"noted" on the reply brief along with his initials
and the date. This will indicate to the clerical
staff and the Board of Appeals that the exam-
iner has seen the reply brief. However, where
good reason to respond is apparent, the exam-
iner may issue a supplemental answer in re-
sponse to the reply brief before forwarding the
case to the Board.

A supplemental examiner's answer may not
contain a new ground of rejection.

In those situations where a reply brief is
clearly unwarranted (e.g. no new grounds of
rejection or new points of argument in the ex-
aminer's answer), the examiner should refuse
entry of the reply brief. See rule 193 (b). [R-46]

## 1208.02 Withdrawal of Final Rejec- tion [R-46]

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 pass the case to issue. The Group Di-
rector should approve and Board should be
notified whenever a remanded application is
withdrawn from appeal under any circum-
stance. See $$ 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-
jection, the rejection based on that patent
should be withdrawn and the appeal dismissed
as to the involved claims.

### 1209 Oral Hearing [R-46]

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 indicate if he desires an oral hearing.
If no request has been made by applicant, the
appeal will be assigned for consideration and

decision. That is, the decision 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.

A notice of hearing, stating the date, the time
and the docket, is forwarded to the applicant
in due course. 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 in accordance with rule 34.

Currently, twenty minutes are allowed for
applicant to explain his position. If applicant
believes 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 appeal is
forwarded. The time should be checked a few

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days prior to the hearing to see if any change
has been made. The examiner's request for an
oral hearing should appear in the last para-
graph of his examiner's answer.

## 1210 Actions Subsequent to Examin- er's Answer but Before Board's Decision [R-39]

### JURISDICTION OF BOARD

The application file and jurisdiction of the
application are transferred from the examining
groups to the Board of Appeals at one of the
following times :

1\) After 2 months from the examiner's an-
swer, plus mail room time, if a "new
ground of rejection" has been indicated in
the examiner's answer and no reply brief
has been timely filed.

2\) After 20 days from the examiner's an-
swer, plus mail room time, where no new
ground of rejection has been indicated
in the examiner's answer and no reply
brief has been timely filed.

3\) After a supplemental examiner's answer
has been mailed in reply to a timely reply
brief.

+) After the examiner has determined by ini-
tialing and dating the reply brief, that he
will not prepare a supplemental exam-
iner's answer in response to a timely reply
brief.

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 elaims
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.

## ABANDONMENT OF APPEAL

To avoid the rendering of decisions by the
Board of Appeals in applications which have al-
ready been refiled as continuations, applicants
should promptly inform the clerk of the Board
in writing as soon as they have positively de-
cided to refile or to abandon an application con-
taining an appeal awaiting a decision. Failure
to exercise appropriate diligence in this matter
may result in the Board's refusing an otherwise
proper request to vacate its decision.

Except in those instances where a withdrawal
of an appeal would result in abandonment of the
application, an attorney not of record in an ap-
plication may file a paper under rule 34 (a) with-
drawing an appeal. In such instances where no
allowable claims appear in the application, the
withdrawal of an appeal is in fact an express
abandonment and does not comply with rule
138.

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### 1211 Remand by the Board To Con- sider Amendment [R-39]

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; 58 USPQ 327: 30 CCPA
1124. A proposed amendment, affidavit, decla-
ration, or other paper may be remanded for such
consideration as the examiner may see fit to
give. Such an amendment, unless filed under
rule 193(b), will be treated as an amendment
filed after appeal. See § 1207.

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 by the Board To Con- sider Affidavits or Declarations [R-47]

Rule 195. Affidavits or declarations after appeal.
Affidavits, declarations, or exhibits submitted after the
case has been appealed will not be admitted without a
showing of good and sufficient reasons why they were
not earlier presented.

Affidavits or declarations filed with or after
appeal but before 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. Authority from the Board is not
necessary to consider such affidavits or declara-
tions. Affidavits or declarations filed after a
final rejection and prior to a notice of appeal
are handled as provided in $$ 715.09 and 716.

In the case of affidavits or declarations filed
after the application has been forwarded to the
Board of Appeals but before a decision thereon
by the Board of Appeals, the examiner is with-
out authority to consider the same in the ab-
sence of a remand by the Board. When a case is
remanded to the examiner for the consideration
of such affidavits or declarations, 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 re-
mand, a copy of which should be forwarded to
the applicant. If such an affidavit or declara-
tion is not accompanied by the showing required
under rule 195, the examiner will not consider
its merits. If the delay in filing such affidavit
or declaration is satisfactorily explained, the
examiner will admit the same and consider its
merits. If this affidavit or declaration is ac-
cepted as overcoming the reference, or refer-
ences, 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; 42 USPQ 526.

It is not the custom of the Board to remand
affidavits or declarations offered in connection
with a request for reconsideration of its de-
cision where no rejection has been made under
rule 196 (b). Affidavits or declarations submitted
for this purpose, not remanded to the examiner,
are considered only as arguments. In re Martin,
1946 C.D. 180; 69 USPQ 75; 33 CCPA 842.

For remand to the examiner to consider appli-
cant's remarks relating to a rule 196(b) rejec-
tion see § 1214.01.

#### 1213 Decision by Board [R-46]

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 affirmance of
the rejection of a claim on any of the grounds specified
constitutes a general affirmance 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 and Trademark Office on an issue in a
case, to utilize the prolonged pendency of a
court proceeding as a means for avoiding res
judicata while relitigating the same, or sub-
stantially 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

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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-
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]

Extract 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-28]

Board of Appeals decisions may be published,
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-47]

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 claim, it may include in its
decision a statement to that effect with its reasons for
so holding, which statement shall constitute a rejection
of the claims. The appellant may submit an appropri-
ate amendment of the claims 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, avoids
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(b).
By proceeding in this manner the applicant
waives his right to further prosecution before
the examiner. In re Greenfield, 1930 C.D. 531;
5 USPQ 474.

However, an applicant's request for recon-
sideration accompanied by an affidavit contain-
ing a showing of facts to be added to the record
does not afford reconsideration by the Board as
a matter of right under rule 196(b). The Board
of Appeals has authority to remand the applica-
tion to the examiner and the examiner has au-
thority to consider a new showing of facts fol-
lowing a new rejection by the Board and with-
draw the Board's rejection based on the appli-
cant's affidavit and accompanying remarks. In
such an instance, the examiner also has author-
ity to make any appropriate new rejection under
rule 198 with the Group Director's approval.

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

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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.

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 35 U.S.C. 145. In re
Crowell, 1930 C.D. 360; 397 O.G. 3. 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-47]

Extract from rule 197. Action following decision.
(b) Any request 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 Appeals so
states. Such time may be extended by the Board of
Appeals upon a showing of sufficient cause.

"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.

All copies of references in the file wrapper
should be retained therein.

For requests for reconsideration by the ex-
aminer see section 1214.04.

### 1214.04 Examiner Reversed [R-46]

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
particularly so where the application has
meanwhile been transferred or assigned to an
examiner other than the one who finally re-
jected the claims. The second examiner
should give full faith and credit to his prede-
cessor's search.

If the examiner has specific knowledge of the
existence of a particular reference or references
which indicate non-patentability of any of the
appealed claims as to which the examiner was
reversed, he should submit the matter to the
group director for authorization to reopen
prosecution under rule 198 for the purpose of
entering the new rejection. Note §§ 1002.02(c),
item 2, and 1214.07. The group director's ap-
proval is placed on the action reopening
prosecution.

The examiner may request reconsideration of
the Board decision. Such a request should nor-
mally be made within one month of the receipt
of the Board decision in the group. The group
director's secretary should therefore date stamp
all Board decisions upon receipt in the group.

All requests by the examiner to the Board of
Appeals for reconsideration of a decision, must
be approved by the group director and must also
be forwarded to the Office of the Deputy Assist-
ant Commissioner for Patents for approval be-
fore mailing.

If approved, the Office of the Deputy Assist-
ant Commissioner for Patents will mail a copy
of the request, for reconsideration to the appli-
cant and forward the application file and the
request to the Board of Appeals.

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## 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-39]

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 filed,
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 $ 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
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 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 ink 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
seeking court review of the decision by the
Board of Appeals rendered (date of decision)
has expired 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 reversing the rejection of generic
claims in a case containing claims to nonelected
species not previously 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
$ 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-

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uations A, B, or C, depending on which is ap-
propriate to the case. See § 1213.01.

F. Appeal dismissed. Where the appeal has
been dismissed for failure to argue a ground of
rejection involving all the appealed claims see
§ 1215.04.

The practice under situations A, B, and C is
similar to the practice after a decision of the
court outlined in § 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" or "Rejection
Reversed" on "Contents" of file wrapper im-
mediately below endorsement "Decision by
Board".

See §§ 1216.01 and 1216.02 for procedure
where court review is sought.

## 1214.07 Reopening of Prosecution [R-47]

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-
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. Note
$ 1003, item 14.

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 § 1214.06
(paragraph B), the case should be passed to
issue.

Petitions under rule 198 to reopen or recon-
sider prosecution of a patent application after
decision by the Board of Appeals, where no
court action has been filed, are decided by the
group director, § 1002.02(c), item 2.

The Commissioner also entertains petitions
under rule 198 to reopen certain cases in which
an applicant has sought review under 35 U.S.C.
141 or 145. This procedure is restricted to cases
which have been decided by the Board of Ap-
peals and which are amenable to settlement
without the need for going forward with the
court proceeding. Such petitions will ordinarily
be granted only in the following categories of
cases :

1\. When the decision of the Board of Appeals
asserts that the rejection of the claims is proper
because the claims do not include a disclosed
limitation or because they suffer from some
other curable defect, and the decision reason-
ably is suggestive that claims including the lim-
itation or devoid of the defect will be allowable;

2\. When the decision of the Board of Appeals
asserts that the rejection of the claims is proper
because the record does not include evidence of
a specified character, and is reasonably sugges-
tive that if such evidence were presented, the
appealed claims would be allowable, and it is
demonstrated that such evidence presently
exists and can be offered; or

3\. When the decision of the Board of Ap-
peals is based on a practice, rule, law, or judicial
precedent which, since the Board's decision, has
been rescinded, repealed, or overruled.

Any such petition must be accompanied by
the proposed amendment, evidence, or argu-
ment said to justify allowance of the claims.
The petition further must point out how the
case falls within one of the preceding cate-
gories. Failure to do so or failure of the case to
qualify as coming within one of the categories
will usually constitute basis for denying the
petition. In any event, no case will be reopened
unless it is for the consideration of matters not
already adjudicated, and sufficient cause has
been shown.

Such petitions will not be ordinarily enter-
tained after the filing of the Commissioner's
brief in cases in which review has been sought
under 35 U.S.C. 141, or after trial in a 35 U.S.C.
145 case.

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In the case of an appeal under 35 U.S.C. 141,
if the petition is granted, steps will be taken to
request the court to remand the case to the Pat-
ent and Trademark Office and if so remanded
the proposed amendments, evidence, and argu-
ments will be entered of record in the applica-
tion file for consideration, and further action
will be taken by the Board of Appeals in the
first instance or by the examiner as may be ap-
propriate. In the case of civil action under 35
U.S.C. 145, steps will be taken for obtaining
dismissal of the action without prejudice to con-
sideration of the proposals.

## 1215 Withdrawal or Dismissal of Ap- peal

## 1215.01 Withdrawal of Appeal [R- 42]

Except in those instances where a withdrawal
of an appeal would result in abandonment of
the application, an attorney not of record in an
application may file a paper under rule 34(a)
withdrawing an appeal. In such instances where
no allowable claims appear in the application,
the withdrawal of an appeal is in fact an express
abandonment and does not comply with rule 138.

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.

To avoid the rendering of decisions by the
Board of Appeals in applications which have
already been refiled as continuations, ap-
plicants should promptly inform the clerk
of the Board in writing as soon as they
have positively decided to refile or to abandon
an application containing an appeal awaiting
a decision. Failure to exercise appropriate
diligence in this matter may result in the
Board's refusing an otherwise proper request
to vacate its decision.

# 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-42]

If no brief is filed within the time prescribed
by rule 192, the appeal stands dismissed by
operation of the rule. The letter (form POL-
333) 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 application is con-
sidered 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 application, the failure
to file a brief and consequent 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 forth-
with.

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.

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 proceed-
ings as to the rejected claims are considered
terminated; see rule 197(c).

"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 pe-
riod 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

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35 U.S.C. 145, the status of the application in
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-46]

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 hereinabove provided. The times specified
hercin 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 and Trademark 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.

# Service of Court Papers on Commissioner of Patents and Trademarks

Those having occasion to serve on the Com-
missioner of Patents and Trademarks papers
having to do with court proceedings are re-
minded that proper service by mail may be
effected only by mailing the papers to the
Solicitor of the Patent and Trademarks Office
as counsel for the Commissioner. Rule 5(b) of
the Federal Rules of Civil Procedure provides
in pertinent part :

Whenever under these rules service is required or
permitted to he made upon a party represented by an

attorney the service shall be made upon the attorney
unless service upon the party himself is ordered by
the court. Service upon the attorney . . . shall be
made by delivering a copy to him or by mailing it to
him at his last known address

Rule 25 (b) of the Federal Rules of Appellate
Procedure similarly provides, "Service on a
party represented by counsel shall be made on
counsel." The clerk of the U.S. Court of Customs
and Patent Appeals has stated that, inasmuch as
the rules of the Court are not specific on the
manner of service in patent cases, the procedure
outlined herein has the Court's approval.

Accordingly, all service copies of papers filed
in court proceedings in which the Commissioner
of Patents and Trademarks is a party which are
served by mail should be addressed :

"(Name of Solicitor), Solicitor
UT.S. Patent and Trademark Office
Washington, D.C. 20231."

## 1216.01 To Court of Customs and Pat- ent Appeals [R-46]

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 and Trademark Office give notice to the Com-
missioner and file the reasons of appeal (see rules 302
and 304) ; (b) in the court, file a petition of appeal and
a certified transcript 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 and Trademark Office on order of and at the
expense of the appellant. Such order should be filed
with the notice of appeal, but in no case should it be
filed later than 15 days thereafter.

35 U.S.C. 141. Appcal 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
ali 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-

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### MANUAL OF PATENT EXAMINING PROCEDURE

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 and Trade-
mark Office his reasons of appeal, specifically set forth
in writing within such time after the date of the de-
cision appealed from, not less than sixty days, as the
Commissioner 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
partles 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 and Trademark Office, in writ-
ing, touching all the points involved by 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 and Trademark 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 decision, which shall be entered of
record in the Patent and Trademark Office and govern
the further proceedings in the case.

Rule 802. 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 and Trademark
Office, within the time specified in rule 304, his reasons
of appeal specifically set forth in writing.

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

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 and
Trademark Office, within 60 days after the date
of the Board's decision or 30 days from a de-
cision on reconsideration, in order to have the
Court of Customs and Patent Appeals consider
his appeal. See 35 U.S.C. 142.

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 $50.00
fee must be filed in the court within 40 calendar

days from the date upon which said "Notice
of Appeal" was filed; provided the Commis-
sioner does not extend such time. If the 40th
day falls on a Saturday, Sunday or legal holi-
day, the period runs until the end of the next
day which is not a Saturday, Sunday or legal
holiday. See rules 5.2 and 4.1 of the Rules of the
United States Court of Customs and Patent
Appeals.

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 and Trade-
mark Office. If no claims stand allowed proceed-
ings are considered 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
and Trademark 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 and Trademark Office and one to the ap-
plicant. Where the applicant files a petition for
rehearing, the Court's ruling thereon is com-
municated 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 date of receipt of
this copy by the Patent and Trademark Office
marks the conclusion of the appeal. Continental
Can Company, Inc., et al. v. Schuyler, 168
USPQ 625. The decision of the Court is pub-
lished; but unless the application becomes a
patent, the Patent and Trademark Office does
not give the public access to the application file.
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
COPA 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.

### 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-

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cation is not open to subsequent amendment
and prosecution by the applicant since the appli-
cation is no longer considered pending. Conti-
nental Can Company, Inc., et al. v. Schuyler, 168
USPQ 625 (D.C.D.C. 1970). Exceptions may
occur where the court mandate clearly indicates
that another action is to be taken.

2\. Some claims allowed. If some claims in
the case stand allowed, either by reversal of the
Office decision by the Court or the Board of
Appeals or by having been allowed by the ex-
aminer, 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 canceled 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. Note In
re Fisher, 171 USPQ 292.

4\. Reopening of prosecution. In unusual sit-
nations it may be desirable to reopen prosecu-
tion of an application after a court decision.
Office actions proposing to reopen prosecution
after a court decision must be forwarded to the
Deputy Assistant Commissioner for Patents for
approval. The Deputy Assistant Commissioner
for Patents will indicate his approval to reopen
on the Office action.

#### DISMISSAL OF APPEAL

After the appeal is docketed in the Court,
failure to proseente 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 § 1215.05.

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

### 1216.02 Civil Suits [R-46]

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 appealing to the U.S. Court of Customs and
Patent Appeals (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 304.

(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

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Columbia and have the marshall serve a sum-
mons on the Commissioner of Patents and
Trademarks.

When a suit under 35 U.S.C. 145 is filed
a notice thereof signed by the Solicitor of the
Patent and Trademark Office is placed in the ap-
plication file. The file is kept in the Solicitor's
office pending termination of the suit. When the
suit is terminated, a statement indicating the
final disposition of it by the Court is placed on
the original notice by the Solicitor and the ap-
plication is returned to the examiner, whose
subsequent procedure is the same as his action
following appeal, described in § 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 and Trademark
Office employee along with a certified copy,
under stipulation that the copy be retained by
the court and the original brought back to the
Office by said employee.

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