United States Patent and Trademark Office OG Notices: 07 September 2004
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 5, 10, 11, and 41
RIN 0651-AB32
Rules of Practice Before the
Board of Patent Appeals and Interferences
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office consolidates
and simplifies the rules governing practice before the Board of Patent
Appeals and Interferences to reflect developments in case law,
legislation, and administrative practice.
DATES: Effective date: September 13, 2004.
FOR FURTHER INFORMATION CONTACT: Appeals: Jeffrey V. Nase or William F.
Smith, 703-308-9797.
Otherwise: Richard Torczon, 703-308-9797.
SUPPLEMENTARY INFORMATION:
Background
The Board of Patent Appeals and Interferences (Board) has
significantly overhauled its operations to address concerns about the
duration of proceedings before the Board. This final rule reflects
these new procedures. A notice of proposed rule making on this topic
was published in the Federal Register (68 FR 66648, Nov. 26, 2003) and
in the Official Gazette of the United States Patent and Trademark
Office (1277 OG 139, Dec. 23, 2003). Seventeen comments have been
received in response to that notice.
Explanation of changes
In keeping with long-standing patent practice, rules in title 37,
part 1, of the Code of Federal Regulations are denominated "Rule x"
in this supplementary information.
Rules 1(a)(1)(iii), 5(e), and 8(a)(2)(i)(B), and subpart E of part
1, are removed to consolidate interference information in part 41,
subparts D and E.
Rules 1(a)(1)(ii); 4(a)(2); 6(d)(9); 8(a)(2)(i)(C); 9(g); 11(e);
17(b); 36; 59(a)(1); 103(g); 112; 113(a); 114(d); 131(a)(1); 136(a)(1)
and (a)(2); 181(a)(3); 191; 248(c); 292(a) and (c); 295(b); 302(b);
303(c); 304(a)(1) and (a)(2); 322(a)(3); 323; 324; 565(e);
701(c)(2)(ii); 703(a)(4), (b)(3)(ii), (b)(4), (d)(2), and (e);
704(c)(9); 959; and 993 are revised to change cross-references to Board
proceedings.
Rules 17(b)-(d) and (h) are revised to remove the Board fees, which
will be relocated to Sec. 41.20.
Rules 48(a)-(c) and (i) are revised, and Rule 48(j) added, to
consolidate the cross-reference correction of inventorship for
applications in contested cases before the Board.
Rules 55(a)(3) and (a)(4), and 136(b) are revised to eliminate the
cross-references to Board rules.
Rule 116 is amended to limit amendments after a final rejection or
other final action (Rule 113) in an application or in an ex parte
reexamination filed under Rule 510, or after an action closing
prosecution (Rule 949) in an inter partes reexamination filed under
Rule 913, to such amendments filed before or with any appeal to the
Board under Sec. 41.31 or Sec. 41.61. Amendments after appeal
currently treated under Rule 116 are moved to Secs. 41.33 and
41.63. Pursuant to Sec. 41.33(a), amendments filed after appeal and
prior to the filing of the appeal brief will be treated under the same
standard as Rule 116. The section title is revised to reflect the scope
of the rule more accurately.
Rule 116(d) is amended to permit only an amendment canceling
claims, where such cancellation does not affect the scope of any other
pending claim in the proceeding, to be made in an inter partes
reexamination proceeding after the right of appeal notice has issued
under Rule 953, except as provided in Rule 981 or as permitted by Sec.
41.77(b)(1).
Rule 116(e) is added to set forth a standard for treatment of an
affidavit or other evidence submitted after a final rejection or other
final action (Rule 113) in an application or in an ex parte
reexamination filed under Rule 510, or in an action closing prosecution
(Rule 949) in an inter partes reexamination filed under Rule 913, but
before or with any appeal (Sec. 41.31 or Sec. 41.61). The standard
would be that such an affidavit or other evidence could be admitted
upon a showing of good and sufficient reasons why the affidavit or
other evidence is necessary and was not earlier presented. This
standard is currently in effect under Rule 195 for an affidavit or
other evidence submitted after appeal.
Rule 116(f) is added to prohibit affidavits and other evidence in
an inter partes reexamination proceeding after the right of appeal
notice under Rule 953, except as provided in Rule 981 or as permitted
by Sec. 41.77(b)(1).
Rule 191 is amended to direct appellants under 35 U.S.C. 134(a) or
(b) to part 41.
Rules 192-196 are removed and reserved.
Rule 197 is amended by changing its title to "Return of
jurisdiction from the Board of Patent Appeals and Interferences;
termination of proceedings" to reflect the two remaining paragraphs of
this section. The subject matter of paragraph (b) is moved to Sec.
41.52 and the subject matter of paragraph (c) is moved to paragraph (b)
of Rule 197. Paragraph (a) is amended to return of jurisdiction of the
involved application or patent under ex parte reexamination proceeding
to the examiner. Rule 41(d)(2), Fed. R. App. Procedure, controls when
the mandate of the Court of Appeals will issue in the event that a
party filed a petition for writ of certiorari to the United States
Supreme Court. Unless a party petitioning for a writ of certiorari
seeks and obtains a stay of the appellate court's mandate, proceedings
will be considered terminated with the issuance of the mandate, as
noted in Rule 197(b)(2).
Rule 198 is amended by changing its title to "Reopening after a
final decision of the Board of Patent Appeals and Interferences" to
reflect the substance of the section and to clarify that it applies
when a decision by the Board of Patent Appeals and Interferences on
appeal has become final for judicial review.
Rule 324(a) and (c) are revised, and Rule 324(d) added, to
consolidate cross-references to correction of inventorship for patents
in contested cases before the Board.
Rule 959 is revised to direct inter partes reexamination
participants to part 41 for information about appeals in such
proceedings.
Rules 961-977 are removed to consolidate inter partes reexamination
appeal information in part 41.
Rule 979 is amended by changing its title to "Return of
Jurisdiction from the Board of Patent Appeals and Interferences;
termination of proceedings" to reflect the two paragraphs of this
section. Most of the subject matter of current paragraphs (a)-(g) is
moved to Secs. 41.79, 41.81 and 41.83. Paragraph (a) is amended to
recite that jurisdiction over an inter partes reexamination proceeding
passes to the examiner after a decision by the Board of Patent Appeals
and Interferences upon transmittal of the file to the examiner, subject
to each appellant's right of appeal or other review, for such further
action as the condition of the inter partes reexamination proceeding
may require, to carry into effect the decision of the Board of Patent
Appeals and Interferences. Paragraph (b) is amended to state that upon
decision on the appeal before the Board of Patent Appeals and
Interferences, if no further appeal has been taken (Rule 983), the inter
partes reexamination proceeding will be terminated and the Director will
issue a certificate under Rule 997.
Rule 981 is amended by changing its title to "Reopening after a
final decision of the Board of Patent Appeals and Interferences" to
better reflect the substance of the section and to clarify that it
applies when a decision by the Board of Patent Appeals and
Interferences on appeal has become final for judicial review.
Under 37 CFR 5.3, no interference will be declared with an
application under a national secrecy order.
In the enrollment and discipline rules, 37 CFR 10.23(c)(7) and
11.6(d) are amended to change the cross-references to the interference
rules.
A new part 41 consolidates rules relating to Board practice and
simplifies reference to such practices. The Board will continue the
practice used in part 1 of this title of citing sections without the
part number. In proceedings before the Board, a party may cite "Sec.
41.x" as "Board Rule x".
Subpart A states policies, practices, and definitions common to all
proceedings before the Board.
Section 41.1 sets forth general principles for part 41. Section
41.1(a) defines the scope of rules. Section 41.1(b) mandates that the
Board's rules be construed to achieve just, speedy, and inexpensive
resolutions of all Board proceedings, following the model of Rule 601
and Federal Rule of Civil Procedure 1. Section 41.1(c) explicitly
extends the requirement for decorum under Rule 3 to Board proceedings,
including dealings with opposing parties.
Section 41.2 sets forth definitions for Board proceedings under
part 41. The preamble to Sec. 41.2 is based on the preamble of Rule
601, which cautions that context may give a defined word a different
meaning.
The definition of "Board" covers three distinct situations.
First, for the purposes of a final agency action committed to a panel
of Board members, the definition is identical in scope to 35 U.S.C.
6(b). Second, the definition includes action by the Chief
Administrative Patent Judge in matters delegated in these rules to the
Chief Administrative Patent Judge. Third, the definition recognizes
that non-final actions are often performed by officials other than a
panel or the Chief Administrative Patent Judge.
The definition of "Board member" follows the definition in 35
U.S.C. 6(a), under which the Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office, the Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the United States Patent
and Trademark Office, the Commissioner for Patents, and the
Commissioner for Trademarks are ex officio members of the Board.
The phrase "contested case" includes patent interferences (35
U.S.C. 135(a)) and proceedings with interference-based procedures (42
U.S.C. 2182 and 2457(d)).
The term "final" is defined pursuant to 5 U.S.C. 704 to assist
parties in determining when a Board action is ripe for judicial review.
The definition of "hearing" reflects the holding of In re Bose
Corp., 772 F.2d 866, 869, 227 USPQ 1, 4 (Fed. Cir. 1985) that a party
is entitled to judicial consideration of properly raised issues, but is
not entitled to an oral argument or consideration of improperly raised
issues.
The definitions of "panel" and "panel proceeding" reflects the
minimum quorum established in 35 U.S.C. 6(b), which reserves action on
patentability and priority to panels. 35 U.S.C. 6(b).
The term "party" sets forth a generic term for entities acting in
a Board proceeding.
The delegation of petition authority to the Chief Administrative
Patent Judge in Sec. 41.3(a) is new as a rule, but follows a
delegation already published in the Manual of Patent Examining
Procedure (MPEP) at Sec. 1002.02(f).
Under Sec. 41.3(b)(1) decisions committed by statute to the Board
are not subject to petitions for supervisory review. Review of such
decisions come through a request for rehearing or through judicial
review. The provision in Sec. 41.3(b)(2) for petitions in contested
cases to be decided by other officials reflects the MPEP's designation
of other actions typical in the ordinary course of Board proceedings as
"petitions". See MPEP Sec. 1002.02(g) (various procedural decisions
in interferences).
Section 41.3(c) reflects current practice in requiring payment of a
standard petition fee.
Section 41.3(d) reflects the current practice of not staying any
action for a petition for supervisory review in Rule 181(f).
Section 41.3(e) sets times for filing petitions. As with Rule
181(f), failure to file a timely petition is sufficient basis for
dismissing or denying a motion.
Section 41.4(a) and (b) follow the requirements of Rules 136(b) and
645 in providing rules for extensions of time and for acceptance of
untimely papers. Section 41.4(c) points parties to timeliness rules
that are related to Board proceedings, but not within the scope of the
Board rules.
Section 41.5 provides a limited delegation to the Board under 35
U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel in Board
proceedings. Section 41.5(b) delegates to the Board the authority to
conduct counsel disqualification proceedings while the Board has
jurisdiction over a proceeding.
Section 41.6(a) relocates into part 41 the portions of Rule 14(e)
that apply to the Board. Under Sec. 41.6(a)(1) publicly available
materials continue to be publicly available. Section 41.6(a)(2) sets
forth the basis for making a determination under 35 U.S.C. 122(a) that
special circumstances justify the publication of a Board action.
Section 41.6(b) generalizes to all Board proceedings the practice
under Rule 11(e) of making the record of most interference proceedings
publicly available eventually, although that availability might not
occur until an involved patent application becomes available.
Section 41.7 recodifies the current practice of Rule 618 regarding
duplicate papers and the expunging of papers, but generalizes it to all
Board proceedings.
Section 41.8(a) reflects the practice under Rules 192(c)(1) and 602
regarding disclosure of the real parties-in-interest. Section 41.8(b)
requires parties to provide notice of related proceedings.
Section 41.9 follows Rule 643 regarding action by an assignee to
the exclusion of an inventor, but generalizes it to all Board
proceedings.
Section 41.10 adds correspondence addresses for Board proceedings.
Section 41.11 codifies existing interference practice prohibiting
ex parte communications about a contested case with an official
actually conducting the proceeding, but generalizes the practice to
include inter partes reexamination appeals as well.
Section 41.12 codifies existing interference practice regarding the
citation of authority but generalizes the practice to all Board
proceedings.
Section 41.20 consolidates the rules on fees associated with Board
practice. Rules 22, 23, and 25-28, which govern fee practice before the
Office generally, continue to apply in Board proceedings. Section
41.20(a) sets forth the petition fee, while paragraph (b) sets forth
appeals-related fees.
Subpart B is added to set forth rules for the ex parte appeal under
35 U.S.C. 134 of a rejection in either a national
application for a patent, an application for reissue of a patent, or an
ex parte reexamination proceeding to the Board.
Section 41.30 sets forth definitions for Board proceedings under
subpart B of part 41. The preamble to Sec. 41.30 is based on a similar
provision in the preamble of former Rule 601. The term "proceeding"
sets forth a generic term for a national application for a patent, an
application for reissue of a patent, and an ex parte reexamination
proceeding. The term "applicant" sets forth a generic term for either
the applicant in a national application for a patent or the applicant
in an application for reissue of a patent. The term "owner" sets
forth a shorthand reference to the owner of the patent undergoing ex
parte reexamination under Rule 510.
Section 41.31 is added to generally incorporate the requirements of
former Rule 191(a)-(d). Paragraph (a) is subdivided into three parts to
improve readability. Paragraph (d) is amended to refer only to the time
periods referred to in paragraphs (a)(1)-(a)(3) of this section, while
the current extension of time requirements for Rules 192, 193, 194, 196
and 197, formerly provided in Rule 191(e), is relocated to Secs.
41.37, 41.41, 41.47, 41.50 and 41.52.
Section 41.33 is added to replace the requirements of former Rules
116 and 195. Paragraph (a) provides that amendments filed after the
date of filing an appeal pursuant to Sec. 41.31(a)(1)-(a)(3) and prior
to the date a brief is filed pursuant to Sec. 41.37 may be admitted as
provided in Sec. 1.116. Thus, amendments after final but prior to
appeal and amendments filed after appeal but prior to the date the
brief is filed will be treated under the same standard (i.e, Sec.
1.116). Paragraph (b) provides that amendments filed on or after the
date of filing a brief pursuant to Sec. 41.37 may be admitted: (1) to
cancel claims, where such cancellation does not affect the scope of any
other pending claim in the proceeding, or (2) to rewrite dependent
claims into independent form. A dependent claim is rewritten into
independent form by including all of the limitations of the base claim
and any intervening claims. Thus, no limitation of a dependent claim
can be excluded in rewriting that claim into independent form.
Paragraph (c) provides that all other amendments filed after the date
of filing an appeal pursuant to Sec. 41.31(a)(1)-(a)(3) will not be
admitted except as permitted by Secs. 41.39(b)(1), 41.50(a)(2)(i),
41.50(b)(1) and 41.50(c). Paragraph (d)(1) provides that affidavits or
other evidence filed after the date of filing an appeal pursuant to
Sec. 41.31(a)(1)-(a)(3) and prior to the date of filing a brief
pursuant to Sec. 41.37 may be admitted if the examiner determines that
the affidavits or other evidence overcomes all rejections under appeal
and that there is a showing of good and sufficient reasons why the
affidavit or other evidence is necessary and was not earlier presented.
Paragraph (d)(2) provides that all other affidavits or other evidence
filed after the date of filing an appeal pursuant to Sec. 41.31(a)(1)-
(a)(3) will not be admitted except as permitted by Secs.
41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1). Paragraph (d) replaces the
former practice of permitting such evidence based on a showing of good
and sufficient reasons why such evidence was not earlier presented set
forth in former Rule 195. The Office believes that prosecution should
occur before the examiner prior to an appeal being filed, not after the
case has been appealed pursuant to Sec. 41.31(a)(1)-(a)(3).
Section 41.35 is added to generally incorporate the requirements of
former Rule 191(e). In addition, this section makes clear that
jurisdiction over an application may be relinquished by the Board and
the application returned to the examining operation to permit
processing to be completed by the examining operation before the Board
takes up the appeal for decision. This is consistent with the present
practice of returning an appealed application to the examining
operation where some matter requiring attention has been identified
prior to assignment of the appeal number and docketing of the appeal.
In addition, the Board is permitted to take other appropriate action to
complete the file.
Section 41.37 is added to generally incorporate the requirements of
former Rule 192. In addition, the following changes have been made:
(1) The title of the section has been changed from "Appellant's
brief" to "Appeal brief".
(2) In paragraph (a), one copy of the brief is required rather than
three copies consistent with the Office's move to an electronic file
wrapper.
(3) In paragraph (a), the brief is required to be filed within two
months from the date of the notice of appeal under Sec. 41.31 even if
the time allowed for reply to the action from which the appeal was
taken is later, which overall simplifies docketing of the due date.
(4) In paragraph (c)(1)(i), a statement is required in the brief
identifying by name the real party in interest even if the party named
in the caption of the brief is the real party in interest. This
provides appellant the necessary mechanism for complying with Sec.
41.8(a) in an appeal to the Board.
(5) In paragraph (c)(1)(ii), identification is required of all
other prior and pending appeals, interferences or judicial proceedings
known to appellant, the appellant's legal representative, or assignee
which may be related to, directly affect or be directly affected by or
have a bearing on the Board's decision in the pending appeal, as well
as to set forth a mechanism for complying with Sec. 41.8(b) in an
appeal to the Board.
(6) In paragraph (c)(1)(iii), both a statement of the status of all
the claims in the proceeding (e.g., rejected, allowed or confirmed,
withdrawn, objected to, canceled) and an identification of those claims
that are being appealed is required.
(7) In paragraph (c)(1)(v), a concise explanation of the invention
is required for each of the independent claims involved in the appeal,
which explanation shall refer to the specification by page and line
number, and to the drawings, if any, by reference characters. For each
independent claim involved in the appeal and for each dependent claim
argued separately under the provisions of paragraph (c)(1)(vii) of this
section, every means plus function and step plus function as permitted
by 35 U.S.C. 112, sixth paragraph, must be identified and the
structure, material, or acts described in the specification as
corresponding to each claimed function be set forth with reference to
the specification by page and line number, and to the drawing, if any,
by reference characters. The former requirement of Rule 192(c)(5) to
set forth a concise explanation of the invention defined in the claims
involved in the appeal by reference to the specification by page and
line number, and to the drawings, if any, by reference characters was
not being followed in a great number of briefs before the Board.
(8) In paragraph (c)(1)(vi), a concise statement listing each
ground of rejection presented for review is required rather than issues
for review. An example of a concise statement is "Claims 1 to 10 stand
rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No.
X."
(9) The grouping of claims requirement set forth in former Rule
192(c)(7) is removed. The general purpose served by former Rule
192(c)(7) is addressed in Sec. 41.37(c)(1)(viii). The existing
grouping of claims requirement has led to many problems such as (i)
Grouping of claims across multiple rejections (e.g., claims 1-9
rejected under 35 U.S.C. 102 over A while claims 10-15 are rejected
under 35 U.S.C. 103 over A and the appellant states that claims 1-15 are
grouped together); (ii) Claims being grouped together but argued separately
(e.g., claims 1-9 rejected under 35 U.S.C. Sec. 102 over A, the appellant
groups claims 1-9 together but then argues the patentability of claims 1
and 5 separately); and (iii) examiners disagreeing with the appellant's
grouping of claims.
(10) In paragraph (c)(1)(vii), any arguments or authorities not
included in the brief or a reply brief filed pursuant to Sec. 41.41
will be refused consideration by the Board, unless good cause is shown
(requirement found in former Rule 192(a)), and a separate heading is
required for each ground of rejection in place of the previous grouping
of claims section of the brief. For each ground of rejection applying
to two or more claims, the claims may be argued separately or as a
group. When an appellant argues as a group multiple claims subject to
the same ground of rejection, the Board may select a single claim from
that group of claims and treat its disposition of a ground of rejection
of that claim as applying to the disposition of that ground of
rejection of all claims in the group of claims. Notwithstanding any
other provision of this paragraph, an appellant's failure to argue
separately claims that the appellant has grouped together constitutes a
waiver of any argument that the Board must consider the patentability
of any grouped claim separately. See In re McDaniel, 293 F.3d 1379,
1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002) (interpreting former
Rule 192(c)(7) to require separate treatment of separately rejected
claims). Any claim argued separately should be placed under a
subheading identifying the claim by number and claims argued as a group
should be placed under a subheading identifying the claims by number.
For example, if Claims 1 to 5 stand rejected under 35 U.S.C. 102(b) as
being anticipated by U.S. Patent No. Y and appellant is only going to
argue the limitations of independent claim 1, and thereby group
dependent claims 2 to 5 to stand or fall with independent claim 1, then
one possible heading as required by this subsection could be Rejection
under 35 U.S.C. 102(b) over U.S. Patent No. Y and the optional
subheading would be Claims 1 to 5. As another example, where claims 1
to 3 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S.
Patent No. Z and the appellant wishes to argue separately the
patentability of each claim, a possible heading as required by this
subsection could be Rejection under 35 U.S.C. 102(b) over U.S. Patent
No. Z, and the optional subheadings would be Claim 1, Claim 2, and
Claim 3. Under each subheading the appellant would present the argument
for patentability of that claim.
(11) Paragraph (c)(1)(vii) states that "Merely pointing out
differences in what the claims cover is not an argument as to why the
claims are separately patentable", a statement in slightly different
form appeared in former Rule 192(c)(7).
(12) Paragraph (c)(1)(vii) eliminates subparagraphs (i) through (v)
of former Rule 192(c)(8) which related to the manner in which arguments
were to be made. Although they provided useful advice as to what an
effective argument ought to include, these provisions have often been
ignored by appellants and, for the most part, have not been enforced as
set forth in paragraph (d) of that rule.
(13) Paragraph (c)(1)(ix) is added to require appellant to include
an evidence appendix of any evidence relied upon by appellant in the
appeal with a statement setting forth where that evidence was entered
in the record by the examiner so that the Board will be able to easily
reference such evidence during consideration of the appeal.
(14) Paragraph (c)(1)(x) is added to require appellant to include a
related proceedings appendix containing copies of decisions rendered by
a court or the Board in any proceeding identified pursuant to paragraph
(c)(1)(ii) of this section so that the Board can take into
consideration such decisions.
(15) Paragraph (c)(2) is added to exclude any new or non-admitted
amendment, affidavit or other evidence from being included in the
brief.
(16) Paragraph (d) is added to provide that appellants will be
notified of reasons for non-compliance and given a period of time to
file an amended brief.
(17) Paragraph (e) is added to provide notice that the periods set
forth in this section are extendable under the provisions of Rule 136
for patent applications and Rule 550(c) for ex parte reexamination
proceedings. This provision appeared in former Rule 191(d).
Section 41.39 is added to generally incorporate requirements found
in former Rule 193(a).
Section 41.39(a)(2) is added to permit a new ground of rejection to
be included in an examiner's answer eliminating the former prohibition
of new grounds of rejection in examiner's answers. Many appellants are
making new arguments for the first time in their appeal brief
(apparently stimulated by a former change to the appeal process that
inserted the prohibition on new grounds of rejection in the examiner's
answer). Because the current appeal rules only allow the examiner to
make a new ground by reopening prosecution, some examiners have allowed
cases to go forward to the Board without addressing the new arguments.
Thus, the revision would improve the quality of examiner's answers and
reduce pendency by providing for the inclusion of the new ground of
rejection in an examiner's answer without having to reopen prosecution.
By permitting examiners to include a new ground of rejection in an
examiner's answer, newly presented arguments can now be addressed by a
new ground of rejection in the examiner's answer when appropriate.
Furthermore, if new arguments can now be addressed by the examiner by
incorporating a new ground of rejection in the examiner's answer, the
new arguments may be able to be addressed without reopening prosecution
and thereby decreasing pendency.
It is envisioned that new grounds of rejection in examiner's
answers would be rare, rather than a routine occurrence. The Office
plans to issue instructions that will be incorporated into the MPEP
requiring that any new ground of rejection made by an examiner in an
answer must be personally approved by a Technology Center Director or
designee and that any new ground of rejection made in an answer be
prominently identified as such. It is the further intent of the Office
to provide guidance to examiners that will also be incorporated into
the MPEP as to what circumstances, e.g., responding to a new argument
or new evidence submitted prior to appeal, would be appropriate for
entry of a new ground of rejection in an examiner's answer rather than
the reopening of prosecution. Where, for example, a new argument(s) or
new evidence cannot be addressed by the examiner based on the
information then of record, the examiner may need to reopen prosecution
rather than apply a new ground of rejection in an examiner's answer to
address the new argument(s) or new evidence.
Paragraph (b) of Sec. 41.39 is added to set forth the responses an
appellant may make when an examiner's answer sets forth a new ground of
rejection. Appellant is required within two months from the date of the
examiner's answer containing a new ground of rejection either:
(1) To request that prosecution be reopened by filing a reply under
Rule 111 with or without amendment or submission of affidavits (Rules
130, 131 or 132) or other evidence, which would
result in prosecution being reopened before the examiner, or
(2) To file a reply brief under Sec. 41.41, which would act as a
request that the appeal be maintained. Such a reply brief could not be
accompanied by any amendment, affidavit (Rules 130, 131, or 132) or
other evidence. If such a reply brief were accompanied by any amendment
or evidence, it would be treated as a request that prosecution be
reopened before the examiner under paragraph (b)(1) of this section.
Any reply brief would have to specify the error in each new ground of
rejection as set forth in Sec. 41.37(c)(1)(viii) and should generally
follow the other requirements of a brief set forth in Sec. 41.37(c).
If in response to the examiner's answer containing a new ground of
rejection, appellant decides to reopen prosecution of the application
before the examiner, the Office will treat the decision to reopen
prosecution also as a request to withdraw the appeal. If appellant
fails to exercise one of the two options within two months from the
date of the examiner's answer, the appeal will be sua sponte dismissed
(i.e., terminated) as to the claims subject to the new ground of
rejection.
Paragraph (c) of Sec. 41.39 is added to provide notice that the
period set forth in paragraph (b) of this section is extendable under
the provisions of Rule 136(b) for patent applications and Rule 550(c)
for ex parte reexamination proceedings. This provision appeared in
former Rule 191(d).
Section 41.41 is added to generally incorporate requirements found
in former Rule 193(b). In addition:
(1) Paragraph (a)(2) is added to make explicit that a reply brief
cannot include any new or non-admitted amendment, affidavit or other
evidence.
(2) Paragraph (b) is added to make clear that a reply brief not in
compliance with paragraph (a) would not be considered. The examiner
would notify the appellant in this event.
(3) Paragraph (c) is added to provide notice that the period set
forth in this section would be extendable under the provisions of Rule
136(b) for patent applications and Rule 550(c) for ex parte
reexamination proceedings. This provision appeared in former Rule
191(d).
Section 41.43 is added to permit the examiner to furnish a
supplemental examiner's answer to respond to any new issue raised in
the reply brief. This would dispense with the need for the Board to
remand the proceeding to the examiner to treat any new issue raised in
the reply brief. The MPEP will provide that each supplemental
examiner's answer must be approved by a Technology Center Director or
designee. A supplemental examiner's answer may not include a new ground
of rejection. If a supplemental examiner's answer is furnished by the
examiner, the appellant is permitted to file another reply brief under
Sec. 41.41 within two months from the date of the supplemental
examiner's answer.
The former prohibition against a supplemental examiner's answer in
other than a remand situation is removed to permit use of supplemental
examiner's answers where the examiner is responding only to new issues
raised in the reply brief. As a consequence, the requirements
pertaining to appellants when prosecution is reopened under former Rule
193(b)(2) are removed.
Section 41.43(a)(1) permits the examiner to furnish a supplemental
examiner's answer to respond to any new issue raised in a reply brief.
It should be noted that an indication of a change in status of claims
(e.g., that certain rejections have been withdrawn as a result of a
reply brief) is not a supplemental examiner's answer and therefore
would not give appellant the right to file a reply brief. Such an
indication of a change in status may be made on form PTOL-90. The
Office will develop examples to help the examiner determine what would
or would not be considered a new issue warranting a supplemental
examiner's answer. An appellant who disagrees with an examiner's
decision that a supplemental examiner's answer is permitted under this
rule may petition for review of the decision under Rule 181. Examples
of new issues raised in a reply brief include the following:
Example 1: The rejection is under 35 U.S.C. 103 over A in view of
B. The brief argues that element 4 of reference B cannot be combined
with reference A as it would destroy the function performed by
reference A. The reply brief argues that B is nonanalogous art and
therefore the two references cannot be combined.
Example 2: Same rejection as in Example 1. The brief argues only
that the pump means of claim 1 is not taught in the applied prior art.
The reply brief argues that the particular retaining means of claim 1
is not taught in the applied prior art.
Paragraph (a)(1) of Sec. 41.43 also sets forth the ability of the
examiner to withdraw the final rejection and reopen prosecution as an
alternative to the use of a supplemental examiner's answer. The primary
examiner's decision to withdraw the final rejection and reopen
prosecution to enter a new ground of rejection requires approval from
the supervisory patent examiner as currently set forth in MPEP 1208.02.
Paragraph (b) of Sec. 41.43 permits appellant to file a
supplemental reply brief in response to a supplemental examiner's
answer within two months from the date of the supplemental examiner's
answer. That two-month time period may be extended under the provisions
of Rule 136(b) for patent applications and Rule 550(c) for ex parte
reexamination proceedings as set forth in Sec. 41.43(c).
Section 41.47 is added to generally incorporate the requirements of
former Rule 194. In addition:
(1) Paragraph (b) requires the separate paper requesting the oral
hearing to be captioned "REQUEST FOR ORAL HEARING" and sets forth
that such a request can be filed within two months from the date of the
examiner's answer or supplemental examiner's answer.
(2) Paragraph (d) is added to set forth the procedure for handling
the request for oral hearing when an appellant has complied with all
the requirements of paragraph (b) of this section. Since notice to the
primary examiner is a matter internal to the Office, the requirement
for notice to the primary examiner has been removed from the rule. It
is anticipated that the primary examiner will be sent notice of the
hearing time and date by e-mail.
(3) Paragraph (e)(1) is added to specifically provide that at the
oral hearing (i) appellant may only rely on evidence that has been
previously considered by the primary examiner and present argument that
has been relied upon in the brief or reply brief except as permitted by
paragraph (e)(2) of this section; (ii) the primary examiner may only
rely on argument and evidence raised in the answer or a supplemental
answer except as permitted by paragraph (e)(2) of this section; and
(iii) that appellant opens and concludes the argument (i.e., the order
of the argument at the hearing is: Appellant opens, then the primary
examiner argues, then the appellant concludes presuming that appellant
has reserved some time for a concluding argument).
(4) Paragraph (e)(2) is added to specifically provide that upon a
showing of good cause, appellant and/or the primary examiner may rely
on a new argument based upon a recent relevant decision of either the
Board or a Federal Court.
(5) Paragraph (f) is added to incorporate the substance found in
former Rule 194. Exemplary situations where the Board may decide no
hearing is necessary include those where the Board has become
convinced, prior to hearing, that an application must be
remanded for further consideration prior to evaluating the merits of
the appeal or that the examiner's position cannot be sustained in any
event.
(6) Paragraph (g) is added to provide notice that the periods set
forth in this section are extendable under the provisions of Rule
136(b) for patent applications and Rule 550(c) for ex parte
reexamination proceedings. This provision appeared in former Rule
191(d).
Section 41.50 is added to generally incorporate the requirements of
former Rule 196. In addition:
(1) Paragraph (a)(1) explicitly provides that the Board, in its
principal role under 35 U.S.C. 6(b) of reviewing adverse decisions of
examiners, may in its decision affirm or reverse the decision of the
examiner in whole or in part on the grounds and on the claims specified
by the examiner. The affirmance of the rejection of a claim on any of
the grounds specified constitutes a general affirmance of the decision
of the examiner on that claim, except as to any ground specifically
reversed. The Board may also remand an application to the examiner.
(2) Paragraph (a)(2) is added to require appellant to respond to
any supplemental examiner's answer issued in response to a remand from
the Board to the examiner for further consideration of a rejection to
avoid sua sponte dismissal of the appeal as to the claims subject to
the rejection for which the Board has remanded the proceeding.
Appellant must exercise one of the following two options to avoid such
sua sponte dismissal of the appeal as to the claims subject to the
rejection for which the Board has remanded the proceeding: (i) Request
that prosecution be reopened before the examiner by filing a reply
under Rule 111 with or without amendment or submission of affidavits
(Rules 130, 131 or 132) or other evidence, or (ii) request that the
appeal be maintained by filing a reply brief as provided in Sec.
41.41. If such a reply brief is accompanied by any amendment, affidavit
or other evidence, it shall be treated as a request that prosecution be
reopened before the examiner under Sec. 41.50(a)(2)(i). Any request
that prosecution be reopened under this paragraph would be treated as a
request to withdraw the appeal.
(3) Paragraph (b)(2) eliminates the provision relating to requests
that the application or patent under ex parte reexamination be reheard,
since that provision is included in Sec. 41.52(a).
(4) Paragraph (c) provides that the opinion of the Board may
include an explicit statement how a claim on appeal could be amended to
overcome a specific rejection and that when the opinion of the Board
included such a statement, appellant would have the right to amend in
conformity therewith. Such an amendment in conformity with such
statement would overcome the specific rejection, but an examiner could
still reject a claim so-amended, provided that the rejection
constituted a new ground of rejection.
(5) Paragraph (d) provides that appellant's failure to timely
respond to an order of the Board of Patent Appeals and Interferences
could result in the dismissal of the appeal.
(6) Paragraph (f) is added to provide notice that the periods set
forth in this section are extendable under the provisions of Rule
136(b) for patent applications and Rule 550(c) for ex parte
reexamination proceedings. This provision appeared in former Rule
191(d).
Section 41.52 is added to generally incorporate the requirements of
former Rule 197(b). In addition, paragraph (a)(1) incorporates the
matter from former Rule 196(b)(2) relating to the request that the
application or patent under ex parte reexamination be reheard.
Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the brief and any reply brief(s) are not
permitted in the request for rehearing except as permitted by
paragraphs (a)(2) and (a)(3) of this section. In addition, the rule
would permit the Board to simply deny a request for rehearing in
appropriate cases rather than rendering a new opinion and decision on
the request for rehearing. Paragraph (a)(2) provides that upon a
showing of good cause, appellant may present a new argument based upon
a recent relevant decision of either the Board or a Federal Court.
Paragraph (a)(3) provides that new arguments responding to a new ground
of rejection made pursuant to Sec. 41.50(b) are permitted. Paragraph
(b) is added to provide notice that the period set forth in this
section is extendable under the provisions of Rule 136(b) for patent
applications and Rule 550(c) for ex parte reexamination proceedings.
This provision appeared in former Rule 191(d).
Section 41.54 is added to generally incorporate the requirements of
former Rule 197(a).
Subpart C is added to provide rules for the inter partes appeal
under 35 U.S.C. 315 of a rejection in an inter partes reexamination
proceeding to the Board. This subpart does not apply to any other Board
proceeding and is strictly limited to appeals in inter partes
reexamination proceedings filed under 35 U.S.C. 311.
Section 41.60 sets forth definitions for Board proceedings under
subpart C of part 41. The preamble to Sec. 41.60 is based on a similar
provision in the preamble of former Rule 601. The term "proceeding"
provides a shorthand reference to an inter partes reexamination
proceeding. The term "owner" provides a shorthand reference to the
owner of the patent undergoing inter partes reexamination under Rule
915. The term "requester" provides a generic term to describe each
party other than the owner who requested that the patent undergo inter
partes reexamination under Rule 915. The term "appellant" provides a
generic term for any party, whether the owner or a requester, filing a
notice of appeal or cross appeal under Sec. 41.61. If more than one
party appeals or cross appeals, each appealing or cross appealing party
is an appellant with respect to the claims to which his or her appeal
or cross appeal is directed. The term "respondent" provides a generic
term for any requester responding under Sec. 41.68 to the appellant's
brief of the owner, or the owner responding under Sec. 41.68 to the
appellant's brief of any requester. No requester may be a respondent to
the appellant brief of any other requester. The terms "appellant" and
"respondent" were defined in former Rule 962. The definition of the
term "filing" provides a generic requirement that any document filed
in the proceeding by any party must include a certificate indicating
service of the document to all other parties to the proceeding as
required by Rule 903.
Section 41.61 is added to generally incorporate the requirements of
former Rule 959.
Sections 41.63(a) and (b) are added to replace the requirements of
former Rule 116 with a prohibition of amendments submitted after the
date the proceeding has been appealed pursuant to Sec. 41.61, except
for amendments permitted by Sec. 41.77(b)(1) and amendments canceling
claims where such cancellation does not affect the scope of any other
pending claim in the proceeding. Section 41.63(c) replaces the
requirements of former Rule 975 with a prohibition on the admission of
affidavits and other evidence submitted after the case has been
appealed pursuant to Sec. 41.61 except as permitted by Sec.
41.77(b)(1). This replaces the current practice of permitting such
evidence based on a showing of good and sufficient reasons why such
evidence was not earlier presented. The Office believes that
prosecution of an application should occur before the examiner prior to
an appeal being filed, not after the case has been appealed pursuant to
Sec. 41.61.
Section 41.64 is added to generally incorporate the requirements of
former Rule 961, but would make clear that jurisdiction over a
proceeding may be relinquished and the proceeding returned to the
examining operation to permit processing to be completed before the
Board takes up the appeal for decision.
Section 41.66 is added to generally incorporate the requirements of
former Rule 963.
Section 41.67 is added to generally incorporate the requirements of
former Rule 965. In addition:
(1) In paragraph (a), one copy of the brief is required rather than
three copies consistent with the Office's move to an electronic file
wrapper.
(2) In paragraph (c)(1)(i), a statement in the brief is required
identifying by name the real party in interest even if the party named
in the caption of the brief is the real party in interest. This
provides appellant the necessary mechanism of complying with Sec.
41.8(a) in an appeal to the Board;
(3) In paragraph (c)(1)(ii), clear identification is required of
all other prior and pending appeals, interferences or judicial
proceedings known to appellant, the appellant's legal representative,
or assignee which may be related to, directly affect or be directly
affected by or have a bearing on the Board's decision in the pending
appeal, as well as to provide a mechanism of complying with Sec.
41.8(b) in an appeal to the Board.
(4) In paragraph (c)(1)(iii), both a statement of the status of all
the claims in the proceeding (e.g., rejected, allowed or confirmed,
withdrawn, objected to, canceled) and an identification of those claims
that are being appealed is required.
(5) In paragraph (c)(1)(v), a concise explanation is required of
the subject matter defined in each of the independent claims involved
in the appeal and which concise explanation shall refer to the
specification by page and line number, and to the drawings, if any, by
reference characters. For each independent claim involved in the appeal
and each dependent claim argued separately under the provisions of
paragraph (c)(1)(vii) of this section, every means plus function and
step plus function as permitted by 35 U.S.C. 112, sixth paragraph, must
be identified and the structure, material, or acts described in the
specification as corresponding to each claimed function be set forth
with reference to the specification by page and line number, and to the
drawing, if any, by reference characters.
(6) In paragraph (c)(1)(vi), a concise statement is required
listing each issue presented for review. An example of a concise
statement is claims 1 to 10 stand rejected under 35 U.S.C. 102(b) as
being anticipated by U.S. Patent No. X.
(7) The grouping of claims requirement set forth in former Rule
965(c)(7) is removed. The general purpose served by former Rule
965(c)(7) is addressed in Sec. 41.67(c)(1)(viii). The existing
grouping of claims requirement has led to many problems as set forth
above in the discussion of Sec. 41.37.
(8) In paragraph (c)(1)(vii), any arguments or authorities not
included in a brief permitted in this section or filed pursuant to
Secs. 41.68 and 41.71 will be refused consideration by the Board,
unless good cause is shown, and a separate heading is required for each
ground of rejection in place of the previous grouping of claims section
of the brief. For each ground of rejection applying to two or more
claims, the claims may be argued separately or as a group. When an
appellant argues as a group multiple claims subject to the same ground
of rejection, the Board may select a single claim from that group of
claims and treat its disposition of a ground of rejection of that claim
as applying to the disposition of that ground of rejection of all
claims in the group of claims. Notwithstanding any other provision of
this paragraph, an appellant's failure to argue separately claims that
appellant has grouped together would constitute a waiver of any
argument that the Board must consider the patentability of any grouped
claim separately. See In re McDaniel, 293 F.3d 1379, 1384, 63 USPQ2d
1462, 1465-66 (Fed. Cir. 2002) (interpreting analogous former Rule
192(c)(7) to require separate treatment of separately rejected claims).
Any claim argued separately should be placed under a subheading
identifying the claim by number and that claims argued as a group
should be placed under a subheading identifying the claims by number.
(9) Paragraph (c)(1)(vii) states that "Merely pointing out
differences in what the claims cover is not an argument as to why the
claims are separately patentable." This statement in slightly
different form appeared in former Rule 965(c)(7).
(10) Paragraph (c)(1)(vii) eliminates subparagraphs (i) through (v)
of former Rule 965(c)(8) which related to the manner in which arguments
were to be made. Although providing useful advice as to what an
effective argument ought to include, these provisions have often been
ignored by appellants and, for the most part, have not been enforced as
provided in former Rule 965(d).
(11) Paragraph (c)(1)(ix) is added to require appellant to include
an evidence appendix of any evidence relied upon by appellant in the
appeal with a statement setting forth where that evidence was entered
in the record by the examiner so that the Board would be able to
reference such evidence easily during their consideration of the
appeal.
(12) Paragraph (c)(1)(x) is added to require appellant to include a
related proceedings appendix containing copies of decisions rendered by
a court or the Board in any proceeding identified pursuant to Sec.
41.67(c)(1)(ii) so that the Board can take into consideration such
decisions.
(13) Paragraph (c)(2) is added to exclude any new or non-admitted
amendment, affidavit or other evidence from being included in an
appellant's brief.
Section 41.68 is added to generally incorporate requirements found
in former Rule 967 and changes similar to those in Sec. 41.67. In
addition, paragraph (b)(2) excludes any new or non-admitted amendment,
affidavit or other evidence from being included in a respondent's
brief.
Section 41.69 is added to generally incorporate requirements found
in former Rule 969.
Section 41.71 is added to generally incorporate requirements found
in former Rule 971.
Section 41.73 is added to generally incorporate the requirements of
former Rule 973. In addition:
(1) Paragraph (b) requires the separate paper requesting the oral
hearing to be captioned "REQUEST FOR ORAL HEARING" and that such a
request can be filed within two months from the date of the examiner's
answer.
(2) Paragraph (d) is added to provide the procedure for handling
the request for oral hearing in which a party has complied with all the
requirements of paragraph (b) of this section. Since notice to the
primary examiner is a matter internal to the Office, the requirement
for notice to the primary examiner has been removed from the rule. It
is anticipated that the primary examiner will be sent notice of the
hearing time and date by e-mail.
(3) Paragraph (e)(1) is added to specifically provide that at the
oral hearing (i) parties may only rely on evidence that has been
previously considered by the primary examiner and present argument that
has been relied upon in the briefs except as permitted by paragraph
(e)(2) of this section; (ii) the primary examiner may only rely on
argument and evidence relied upon in the answer except as permitted by
paragraph (e)(2) of this section; and (iii)
that the Board will determine the order of the arguments presented at
the oral hearing.
(4) Paragraph (e)(2) is added to specifically provide that upon a
showing of good cause, appellant, respondent and/or the primary
examiner may rely on a new argument based upon a recent relevant
decision of either the Board or a Federal Court.
(5) Paragraph (f) is added to incorporate the substance found in
former Rule 194. Exemplary situations where the Board might decide no
hearing is necessary include those where the Board has become
convinced, prior to hearing, that the proceeding must be remanded for
further consideration prior to evaluating the merits of the appeal.
Section 41.77 is added to generally incorporate the requirements of
former Rule 977.
Section 41.79 is added to generally incorporate the requirements of
former Rule 979 concerning rehearing before the Board. Paragraph (b)
generally incorporates the requirements of former Rule 979(d).
Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the briefs are not permitted in the request
for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of
this section. Paragraph (b)(2) provides that upon a showing of good
cause, appellant and/or respondent may present a new argument based
upon a recent relevant decision of either the Board or a Federal Court.
Paragraph (b)(3) provides that new arguments responding to a new ground
of rejection made pursuant to Sec. 41.77(b) are permitted. Paragraph
(c) generally incorporates the requirements of former Rule 979(b).
Paragraph (d) generally incorporates the requirements of former Rule
979(c). Paragraph (e) generally incorporates the requirements of former
Rule 979(g).
Section 41.81 is added to generally incorporate the requirements of
former Rule 979(e).
Subpart D provides rules for contested cases before the Board.
Contested cases are predominantly patent interferences under 35 U.S.C.
135(a), but also include United States Government ownership contests
under 42 U.S.C. 2182(3) and 2457(d).
Section 41.100 defines two terms. The term "business day" is
defined in a manner consistent with 35 U.S.C. 21(b) to exclude
Saturday, Sunday, and Federal holidays, when the closure of the Board
may affect the Board's, or a party's, ability to perform an action.
The term "involved" appears in 35 U.S.C. 135(a) with respect to
claims and is implicitly defined in Rule 601(f) (for claims) and in
Rule 601(l) (for applications), but is not explicitly defined in the
current rules. The rule expressly defines "involved" as designating
any patent application, patent, or claim that is the subject of the
contested case.
Section 41.101 follows the practice in Rule 611(a) and (b) for
notifying parties of a contested case. As a courtesy, the Board will
make reasonable efforts to provide notice to all parties. Failure to
maintain a current correspondence address may result in adverse
consequences.
Section 41.102 requires completion of examination for most
applications (and of reexamination for most patents) before the Board
will institute a contested case.
Section 41.103 follows the file jurisdiction practice in Rules 614
and 615 except to generalize the temporary transfer of jurisdiction to
include parts of the Office other than the examining corps, including,
for example, the Office of Public Records. Such transfers of
jurisdiction will generally be for short periods and for limited
purposes.
Section 41.104(a) follows the practice of Rule 610(e), which
permits an administrative patent judge wide latitude in administering
interferences. The decision to waive a procedural requirement is
committed to the discretion of the administrative patent judge.
Section 41.104(c) clarifies that any default times set by rule may
be changed by order. "Times" in paragraph (c) includes both dates and
durations.
Section 41.106 provides guidance for the filing and service of
papers. Under Sec. 41.106(a), papers to be filed are required to meet
standards very similar to those required in patent prosecution, Rule
52(a), and in filings in the Court of Appeals for the Federal Circuit,
Fed. R. App. P. 32. Section 41.106(a)(1) would permit a party to file
papers in either A4 format or 8 1/2-inch x 11-inch format, but not to
alternate between formats. At present, the Board prefers papers to be
filed in 8 1/2-inch x 11-inch format because the present filing system
is best adapted to this paper format.
Section 41.106(b) provides guidance specific to papers other than
exhibits. Section 41.106(b)(1) codifies current practices for the cover
sheet of a paper. Section 41.106(b)(2) requires holes at the top of the
paper consistent with Local Civil Rule 5.1(f) (1999) of the United
States District Court for the District of Columbia to facilitate entry
of the paper in the administrative record. The bar in Sec.
41.106(b)(3) against incorporation by reference and combination of
papers minimizes the chance that an argument will be overlooked and
reduces abuses that arise from incorporation and combination.
Section 41.106(c) requires the filing of a working copy for the
Board official administering the proceeding.
Section 41.106(d) provides additional guidance for special modes of
filing. Section 41.106(d)(1) encourages the use of the EXPRESS
MAIL[reg] service of the United States Postal Service. Section
41.106(d)(2) permits other modes of filing.
Section 41.106(e)(1) requires papers to be served when they are
filed if they have not already been served. Section 41.106(e)(3)
provides for expedited service.
Section 41.106(f) provides rules for certificates of service.
Section 41.106(f)(1) requires the certificate to be incorporated into
each paper other than exhibits. When the exhibits are filed at the same
time, the certificate may be incorporated into the exhibit list. See
Sec. 41.154(d).
Section 41.108 requires each party to identify its counsel, if any.
The rule also follows Rule 613(a), which permitted the Board to require
the appointment of a lead counsel.
Section 41.109 follows Rule 612 in permitting parties to obtain
copies of certain Office files directly related to the contested case.
Section 41.109(c) requires a party that has not received copies of a
requested file to notify the Board of the problem promptly.
Section 41.110(a) requires a single clean set of the claims,
analogous to the requirement for amendments "in clean form" in Rule
121.
Section 41.120 provides for notice of requested relief and the
basis for that relief in contested cases.
Section 41.121(a)(1) redefines motions practice under Rule 633(a),
(b), (c)(2), (c)(3), (c)(4), (f) and (g) to focus more specifically on
the central issue in the contested case. Section 41.121(a)(1)(iii)
permits a motion for judgment in the contest, which can include an
attack on standing as well as a motion for relief on the central issue
of the contest. Section 41.121(a)(2) and (a)(3) modifies the responsive
motion and miscellaneous motion practice under Rules 633(i) and (j),
634, and 635 to ensure that the proceeding remains focused. Section
41.121(a)(3) provides for miscellaneous motions, which would offer a
mechanism for requesting relief on procedural issues and other issues
tangential to patentability and priority.
Section 41.121(b) places the burden of proof on the moving party,
following Rule 637(a) (2003).
Section 41.121(c)(1) follows Rule 637(a) regarding the general
contents of motions, but would also codify the current practice of
requiring a separate paper for each motion. The numbered paragraphs
stating material facts in Sec. 41.121(c)(1)(ii) should be short,
ideally just a sentence or two, to permit the opposing party to admit
or deny each fact readily. Under Sec. 41.121(c)(1)(iii), sloppy motion
drafting is held against the moving party. Section 41.121(c)(2)
requires the movant to make showings ordinarily required for the
requested relief in other parts of the Office.
Section 41.121(d) allows the Board to raise questions of
patentability.
Section 41.122 codifies the present practice regarding new
arguments in replies.
Section 41.123(a) sets default times for filing motions. Section
41.123(b) provides requirements for miscellaneous motions.
A party may request an oral argument under Sec. 41.124(a), but
requests would not be automatically granted. Section 41.124(b),
requires the parties to file three working copies of the papers to be
considered for the panel if the hearing is set for a panel. Section
41.124(c) provides a default time of 20 minutes per party for oral
arguments at the Board because they are not evidentiary hearings.
Section 41.124(d) permits the use of demonstrative exhibits. Section
41.124(e) permits the transcription of the argument.
Section 41.125(a) maintains the discretion under current practice
to address issues in an order that is both fair and efficient. Section
41.125(b) clarifies the current practice that a decision short of
judgment is not final. Section 41.125(c) recodifies the time for
requesting rehearing from Rule 640(c) and the procedural requirements
of the last two sentences of Rule 655(a).
Section 41.126 recodifies the current arbitration practice.
Section 41.127(a)(1) recodifies the existing estoppel provision for
interferences. Section 41.127(a)(2) restates the final disposal
provision of Rule 663. Section 41.127(b) restates the conditions in
Rule 662 under which the Board infers a concession of the contest.
Section 41.127(c) restates the recommendation provision of Rule 659.
Section 41.127(d) provides a time for requesting a rehearing.
Section 41.128(a) restates Rule 616 on sanctions, but adds the
examples of misleading arguments and dilatory tactics to the list of
reasons for sanctions. Section 41.128(b) restates the list of sanctions
provided in Rule 616, but adds a terminal disclaimer requirement as a
sanction.
Section 41.150(a) restates the present policy of limited discovery,
consistent with the goal of providing contested proceedings that are
fast, inexpensive, and fair. Section 41.150(b) provides for automatic
discovery of materials cited in the specification of an involved or
benefit disclosure. Section 41.150(c) restates existing practice under
Rule 687 regarding additional testimony.
Section 41.151 continues the practice under Rule 671(i) of making
failure to comply with the rules a basis for challenging admissibility.
Section 41.152 continues the current practice of using the Federal
Rules of Evidence in contested cases. Section 41.152(d) permits
reliance on official notice and hearsay to determine the scope and
effect of foreign law.
Section 41.153 restates the practice under Rule 671(d) of admitting
Office records that are available to all parties without certification.
Under Sec. 41.154(a), each Office record cited as evidence would have
to be submitted as an exhibit.
Section 41.154(a) restates Rule 671(a), which sets the form of
evidence, and codifies the existing practice that all evidence must be
submitted as an exhibit. Section 41.154(b) restates Rule 647 regarding
translation of foreign language evidence. Section 41.154(c) sets forth
additional formal requirements for exhibits consistent with current
practice. An exhibit list is required under Sec. 41.154(d).
Section 41.155 sets forth rules for objecting to evidence and
responding to objections. Under Sec. 41.155(b)(1), the default time
for serving an objection to evidence other than testimony is five
business days. Section 41.155(b)(2) permits a party that submitted
evidence ten business days after service of the objection to cure any
defect in the evidence. (Standing Order Para. 14.2 provides two weeks.) The
Board would not ordinarily address an objection unless the objecting
party filed a motion to exclude under Sec. 41.155(c). Section
41.155(d) provides for a motion in limine for a ruling on
admissibility.
Section 41.156(a) requires a party seeking a subpoena to first
obtain authorization from the Board. Section 41.156(b) imposes
additional requirements on a party seeking testimony or production
outside the United States because the use of foreign testimony
generally increases the cost and complexity of the proceeding for both
the parties and the Board.
Section 41.157 restates existing practice regarding the taking of
testimony. The time period for cross-examination set in Sec.
41.157(c)(2) follows the current practice and sets a norm for the
conference held under Sec. 41.157(c)(1). Section 41.157(c)(3)
clarifies the practice of providing documents in advance by limiting
the practice to direct testimony. Since direct testimony is generally
in the form of a declaration, the circumstance in which Sec.
41.157(c)(3) would apply should rarely occur apart from compelled
testimony. Section 41.157(d) codifies the existing requirement for a
conference before a deposition with an interpreter.
Section 41.157(e) adopts "officer", the term used in 35 U.S.C.
23, to refer to the person qualified to administer testimony. The
certification of Sec. 41.157(e)(6)(vi) substantially adopts the
standard of Rule 674 for disqualifying an officer from administering a
deposition. Section 41.157(e)(7) requires the proponent of the
testimony to file the transcript of the testimony.
Section 41.157(f) codifies the existing practice of requiring the
proponent of testimony to pay the reasonable costs associated with
making the witness available for cross examination, including the costs
of the reporter and transcript.
Section 41.158 codifies the current practice regarding expert
testimony and scientific tests and data.
Subpart E provides rules specific to patent interferences. Section
41.200(a) would specifically identify patent interferences as contested
cases subject to the rules in subpart D.
Section 41.200(b) continues the practice under Rule 633(a) of
looking at the applicant's specification to determine the meaning of a
copied claim, not the specification from which the claim was copied.
Section 41.200(c) sets forth the policy now found in Rule 610(c)
setting two years as the maximum normal pendency for patent
interferences.
Section 41.201 sets forth definitions specific to patent
interferences. The phrase "accorded benefit" is defined as the
Board's designation of an application as providing a proper
constructive reduction to practice for a party.
A definition is set forth for the phrase "constructive reduction
to practice" because this phrase is used in the rules instead of
"earliest effective filing date" to explain more precisely how
benefit is accorded for the purpose of determining priority.
The term "count" is redefined to emphasize the relationship of
the count to admissible proofs of priority under Sec. 102(g).
The definition of "involved claim" is based on a similar
definition in Rule 601(f) and is consistent with the definition of
"involved" for contested cases in Sec. 41.100 because only claims
that correspond to the count are at risk in an interference, except to
the extent a question is raised as to whether a claim that does not
correspond should.
The definition of "senior party" would depart from the current
definition in Rule 601(m) by focusing on the earliest constructive
reduction to practice to determine which party, if any, is senior.
The phrase "threshold issue" is defined to include three specific
issues that directly affect whether a party may participate in an
interference. The first identified threshold issue is no interference-
in-fact. The other two specifically identified issues, the bar under 35
U.S.C. 135(b) and lack of written description under 35 U.S.C. 112(1),
are directed to the prevention of spuriously provoked interferences and
would consequently be limited to motions from a party with a patent or
published application against a party with an involved application.
Section 41.202(a) restates the requirements of Rules 604, 607, and
608 for applicants provoking an interference. Section 41.202(a)(5)
continues the practice under Rule 633(a) of looking at the applicant's
specification to determine the meaning of a copied claim, not the
specification from which the claim was copied.
Section 41.202(c) restates the practice under Rule 605 of requiring
an applicant to add a claim to provoke an interference, but adds
requirements for applicants copying claims from patents.
Section 41.202(d) sets forth the basis for a summary proceeding
when an applicant does not appear to be able to show it would prevail
on priority. Section 41.202(d)(1) restates Rule 608, but eliminates the
distinction between Rule 608(a) and Rule 608(b). Section 41.202(d)(2)
restates Rule 617 by providing a basis for a summary proceeding on
priority when the applicant fails to make a sufficient showing of
priority. Under Sec. 41.202(e), the showing must by itself, if
unrebutted, warrant a determination of priority favorable to the
applicant.
Section 41.203(a) states the standard for declaring a patent
interference. The Director uses a two-way unpatentability test to
determine whether claimed inventions interfere. Under Sec. 41.203(b)
an administrative patent judge declares the interference. Section
41.203(c) authorizes an administrative patent judge to redeclare the
interference sua sponte or in response to a decision on motions.
Section 41.203(d) permits a party to suggest that an administrative
patent judge exercise discretion to declare a new interference or to
redeclare the existing interference to accommodate such files.
Section 41.204 would define notices of requested relief in
interferences. Section 41.204(a) simplifies the formal requirements for
the principal notice on priority, the preliminary statement (which is
renamed a "priority statement"). Section 41.204(b) codifies the
existing practice of requiring a list of motions, but under the rule a
party would ordinarily be limited to filing substantive motions
consistent with its notice of requested relief. No default times is set
for statements in Sec. 41.204(c).
Section 41.205 restates practice under Rule 666 regarding the
filing of settlement agreements and would implement the requirements of
35 U.S.C. 135(c). Section 205(a) incorporates Rule 661. In addition,
Sec. 41.205(a) provides that after a final decision is entered by the
Board, an interference is considered terminated when no appeal (35
U.S.C. 141) or other review (35 U.S.C. 146) has been or can be taken or
had. If an appeal to the U.S. Court of Appeals for the Federal Circuit
(under 35 U.S.C. 141) or a civil action (under 35 U.S.C. 146) has been
filed the interference is considered terminated when the appeal or
civil action is terminated. A civil action is terminated when the time
to appeal the judgment expires. An appeal to the U.S. Court of Appeals
for the Federal Circuit, whether from a decision of the Board or a
judgment in a civil action, is terminated when the mandate is issued by
the Court. Rule 41(d)(2), Fed. R. App. Procedure, controls when the
mandate of the Court of Appeals will issue in the event that a party
filed a petition for writ of certiorari to the United States Supreme
Court. Unless a party petitioning for a writ of certiorari seeks and
obtains a stay of the appellate court's mandate, proceedings will be
considered terminated with the issuance of the mandate, as noted in
Sec. 41.205(a).
Section 41.206 revises practice regarding commonly owned patents
and applications in an interference to address cases involving a real
party-in-interest with the ability to control the conduct of more than
one party.
Section 41.207(a)(1) recodifies the presumption regarding order of
invention from Rule 657(a). Section 41.207(a)(2) recodifies the
evidentiary standards for proving priority stated in Rule 657(b) and
(c), but restates the standard of Rule 657(c) in terms of the date of
the earliest constructive reduction to practice.
Section 41.207(b) clarifies claim correspondence practice and
explicitly states the effect of claim correspondence. Section
41.207(b)(1) reflects current practice under which patentability must
be determined for claims, not counts. Under Sec. 41.207(b)(2), a claim
would correspond to the count if the subject matter of the claim would
have been anticipated by or obvious (alone or in combination with prior
art) in view of the subject matter of the count.
The presumption in Sec. 41.207(c) restates the presumption in Rule
637(a) that prior art cited against an opponent is presumed to apply
against the movant's claims.
Section 41.208(a) focuses substantive motions on the core questions
of priority.
Section 41.208(b) places the burden of proof on the movant and
provides guidance on how to satisfy the burden of going forward.
Section 41.208(c)(1) requires a movant seeking to add or amend a
claim to show that the added or amended claim is patentable. Section
41.208(c)(2) similarly requires a movant seeking to add or amend a
count to show that the count does not include unpatentable subject
matter.
Discussion of Comments
Generally
Unless otherwise indicated, rule references are to rules within
chapter I of title 37, Code of Federal Regulations. Comments directed
to formal errors in the proposed rule making have been gratefully
considered, but will not be separately discussed.
Comment 1: One comment suggests that the Board rules are confusing
because some of them apply to activities that take place before an
examiner rather than during the Board proceeding itself. The comment
suggests that such rules be restored to Part 1 rather than moved to
Part 41 as proposed.
Answer: The problem identified is common to any set of rules
covering transitions or interfaces between separate processes. For
instance, the Federal Rules of Appellate Procedure (FRAP) provide
directions to the clerk of the district court on what to do (FRAP 3)
before the appeal is docketed (FRAP 12(a)). A choice must be made
between keeping such rules with the patent prosecution rules, moving
them to the Board rules, or even creating an additional part.
The best choice is to keep such rules with the Board rules. At
least one such rule is triggered in relation to every Board proceeding.
For instance, Sec. 41.37 (appeal briefs) will be implicated in the
majority of ex parte appeals to the Board. By contrast, a Board
proceeding occurs in only about 1% of all applications. Consequently,
the connection of the rules in question to Board practice is much stronger
than the connection to prosecution. As a convenience to applicants and
other users of the rules, Sec. 1.191 and Sec. 1.959 direct attention to
appropriate subparts of Part 41.
Comment 2: One comment notes that Sec. 1.1(a)(1)(iii), which
provides an address for patent interference correspondence was removed
but was not replicated in Part 41.
Answer: The interference address was located in proposed Sec.
41.106(d). In view of the confusion that the proposed approach caused
for the person making the comment, both Sec. 1.1(a)(1)(ii) and Sec.
1.1(a)(1)(iii) (and the address portion of Sec. 41.106(d)) have been
moved to a new Sec. 41.10. Section 1.1(a)(1)(ii) has been rewritten to
direct readers to Sec. 41.10.
Comment 3: One comment notes that Sec. 1.6(d)(9) and Sec.
1.8(a)(2)(i)(B), which ban facsimiles and certificates of mailing in
interferences, are removed. The comment suggests that the removal means
these practices are now permitted.
Answer: Section 41.106 provides directions on filing papers with
the Board in contested cases, including interferences. Sections
1.6(d)(9) and 1.8(a)(2)(i)(B) have been revised to direct readers to
Sec. 41.106.
Comment 4: One comment opposes moving Sec. 1.14(e) to Sec. 41.6
because the comment urges that this important function should remain
under the control of the Director.
Answer: Several observations are in order. First, the rule is
limited to Board actions, not all patent related matters. Second, the
rule simply implements access that is already available under a variety
of statutes. Third, the Board's administration of this provision occurs
under a delegation from the Director and remains subject to the
Director's ultimate supervision. Indeed, Sec. 41.6(a)(2) expressly
reserves to the Director the determination of whether special
circumstances justify releasing information about an application
otherwise entitled to confidentiality under 35 U.S.C. 122(a). With the
advent of pre-grant publication under 35 U.S.C. 122(b), the vast
majority of final Board decisions are soon expected to be routinely
available at the time they are issued or shortly afterward. It is
impracticable for the Director to administer disclosure of all of these
decisions personally. The Board is the logical delegate to administer
disclosure of Board actions.
Section 1.11(e) has been amended to simplify the language of the
rule and to provide a cross reference to Sec. 41.6.
Comment 5: One comment opposes the additional discretion in Sec.
1.14(e)(2) to publish petition decisions.
Answer: The only changes to Sec. 1.14 intended in this rule making
were ministerial deletions of references to decisions of the Board.
Another rule making, 68 FR 38624, has changed Sec. 1.14 in a way that
appears to address the concerns of the comment.
Comment 6: One comment suggests that extension of time practice in
the proposed rules is confusing because it is not always clear whether
Sec. 1.136 or Sec. 41.4 would apply.
Answer: As proposed, Sec. 41.4(c) explained that Sec. 41.4
applied to Board proceedings, but not during prosecution or during the
time for judicial review. The rule has been amended to clarify that
Sec. 41.4 applies when a matter is actually pending before the Board.
For instance, an extension of time to file an appeal brief, which is
due before jurisdiction transfers to the Board, would be subject to
Sec. 1.136, while a request for additional time to file a request for
reconsideration of a Board decision would be subject to Sec. 41.4.
Comment 7: Two comments suggest that Sec. 1.292(a) be modified to
permit delegation of the conduct of public use proceedings to the Board
of Patent Appeals and Interferences.
Answer: This suggestion falls outside the scope of the present rule
making, in which Sec. 1.292(a) was included simply to change a cross
reference. The comments have been forwarded to the Deputy Commissioner
for Patent Examination Policy for further consideration. Note, however,
that Sec. 1.292(a) would permit such a delegation without amendment.
Comment 8: One comment suggests additional modifications to Sec.
1.292(a) as well as to subpart D of part 41 to authorize action by a
single Board member and to provide relief in proceedings under 42
U.S.C. 2182(4) and 2457(d).
Answer: Subpart D provides sufficient flexibility to permit such
actions without amendment.
Comment 9: Three comments suggest that the cross-reference to Sec.
41.121(a)(2) in Secs. 1.322-1.324 is too narrow because it would
only permit corrections in a responsive motion. The suggested cure is
to generalize the reference to Sec. 41.121(a) because the need to
correct can arise at various times and may not be in response to
anything filed in a contested case.
Answer: The comments' reasoning is consistent with the filing of a
miscellaneous motion (Sec. 41.121(a)(3)), but not with the filing of a
substantive motion (Sec. 41.121(a)(1)). Consequently, Rules 322 to 324
have been revised to refer to Sec. 41.121(a)(2) and (3).
Comment 10: One comment suggests that Sec. 1.565(e) be amended to
reflect the balance between the need for special dispatch in
reexaminations and the need for the Office to ensure orderly
proceedings, citing Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152
(Fed. Cir. 1988).
Answer: The proposed revision of Sec. 1.565(e) only changed the
cross-reference. The comment suggests a change that is outside the
scope of this rule making. Nevertheless, the Office is keenly aware of
the need for balance on this point.
Part 41, Subpart A - General Provisions
Comment 11: One comment suggests that the lack of paragraph
designations in Sec. 41.2 for each definition is confusing,
particularly since subparagraphs are numbered.
Answer: The rule conforms to the guidance the Office of the Federal
Register provides for drafting definitions. Federal Register Document
Drafting Handbook section 8.15. Given that the defined terms are listed
alphabetically and italicized, in practice the format should not be
confusing.
Comment 12: One comment suggests that the definition of "Board of
Patent Appeals and Interferences" in Sec. 41.2, which includes both
Board members and Board employees for non-final actions, is
inconsistent with an Office rule making published 4 December 2003 at 68
FR 67818. The comment prefers the approach taken in this final rule.
The comment is more relevant to the other rule making and has been
forwarded to the Deputy Commissioner for Patent Examination Policy.
Note that Board employees other than Board members are only defined as
the Board for the purposes of non-final actions.
Comment 13: Two comments urge that Sec. 41.3 creates confusion for
petitions relating to rules in part 41 but arising while the Board does
not have jurisdiction, for example, supervisory review of an examiner's
answer for failure to comply with a rule.
Answer: Section 41.3 is amended to include a scope provision that
limits its scope to actions by the Board or to proceedings pending
before the Board.
Comment 14: One comment suggests that Sec. 41.3(a) be amended to
bar the Chief Administrative Patent Judge from delegating authority to
enter a decision on a petition to a person who
participated in the matter being petitioned.
Answer: The suggestion involves matters of Board management, which
are better treated in management documents like standard operating
procedures.
Comment 15: One comment notes that proposed Sec. 41.4(a) sets a
"good cause" standard for obtaining an extension of time, whereas
Sec. 1.136(b), relating to non-fee extensions of time, sets a
"sufficient cause" standard. The comment suggests either the
commentary describe the differences, if any, between these two
standards or adopt the "sufficient cause" standard in proposed Sec.
41.4(a).
Answer: The "good cause" standard for obtaining an extension of
time under Sec. 41.4(a) will be maintained to distinguish it from the
"sufficient cause" standard of Sec. 1.136(b). An extension of time
under Sec. 41.4(a) for "good cause" is decided by the Board while an
extension of time under Sec. 1.136(b) for "sufficient cause" is
decided outside of the Board. The "good cause" standard for obtaining
an extension of time has previously been used by the Board in former
Sec. 1.645 (2003) and will be maintained even though there is little,
if any, difference between the standards.
To establish good cause for a filing delay, a party must show that
the delay was excusable under the circumstances and that the appellant
exercised due diligence in attempting to meet the filing deadline. The
factors bearing on whether there is good cause for an untimely filing
include the length of the delay, knowledge of the time limit,
circumstances beyond the party's control that affected its ability to
comply with the deadline, the party's negligence, if any, and any
unavoidable harm that might have prevented timely filing. Zamot v.
MSPB, 332 F.3d 1374, 1377 (Fed. Cir. 2003).
Comment 16: One comment notes that extensions of time for certain
deadlines in interferences can generally be obtained by stipulation
according to the current Standing Order. The comment suggests changing
proposed Sec. 41.4(a) by adding at the end "or Order of the Board".
Answer: The practice of permitting stipulated changes is unaffected
by this provision (which existed under Sec. 1.645(a) (2003)). An
authorized, stipulated change in a deadline is not an extension of the
deadline. The suggested addition could create the misapprehension that
the standard itself can be changed by order. The suggestion will not be
adopted.
Comment 17: One comment states that proposed Sec. 41.4(b) is
particularly confusing in that it indicates that late filings "will
not be considered absent a showing of excusable neglect or a Board
determination that consideration on the merits would be in the interest
of justice." Under current practice, when a notice of appeal or appeal
brief is filed late, an applicant has the option of petitioning to
revive that application under Sec. 1.137 by showing that the delay in
filing an appropriate paper or fee was unavoidable or unintentional.
The comment states that it is not clear from the proposed Sec. 41.4(b)
whether the provisions of Sec. 1.137 will be available for late
filings of papers and fees after a notice of appeal is filed, or in
what circumstances they will be available.
Answer: Section 41.4(b) has been revised to reflect that a late
filing that results in either an application becoming abandoned or a
reexamination proceeding becoming terminated under Secs. 1.550(d)
or 1.957(b) or (c) will be excused if the application or reexamination
proceeding is revived as set forth in Sec. 1.137. A late filing that
does not result in either an application becoming abandoned or a
reexamination proceeding becoming terminated under Secs. 1.550(d)
or 1.957(b) or (c) will be excused upon a showing of excusable neglect
or a Board determination that consideration on the merits would be in
the interest of justice.
Comment 18: One comment objects to the provision in Sec. 41.5(b)
of a disqualification proceeding before the Board as ill-defined and
beyond the Board's competence.
Answer: The disqualification proceeding already exists in contested
cases (see now-removed Sec. 1.613 (2003)) where it appears to have
worked well. The objection may be based on a misapprehension that this
provision governs suspension or exclusion from practice before the
Office generally rather than the special case of a suspension or
exclusion from a specific case before the Board. Disqualifications at
the Board typically arise out of conflicts of interest and,
consequently, are more of a feature of contested cases.
The advent of appeals in inter partes reexaminations makes this
provision relevant to appeals, too. Moreover, a disqualification might
be appropriate in an ex parte appeal, for instance, when a former
Office employee appears as counsel in a case in which he or she acted
while at the Office. Note that disqualification could be in addition to
other appropriate sanctions under 37 CFR part 10.
Although the comment suggests unease with the level of due process
the disqualification proceeding would provide, at least two checks
exist. A disqualification would not become final until the Chief
Administrative Patent Judge certified the result. Counsel could seek to
moot any disqualification by requesting to withdraw before the result
is certified. If the Chief Administrative Patent Judge certifies the
disqualification, the case becomes ripe for judicial review under 35
U.S.C. 32.
Comment 19: One comment opposes the requirement in Sec. 41.5(c)
that requires Board approval to withdraw as counsel in a Board
proceeding.
Answer: The rule should not create any practical difference for
counsel since approval is required for any withdrawal. The approval
should come from the part of the agency with jurisdiction over the
application or patent at the time of the withdrawal.
Comment 20: Two comments oppose Sec. 41.7(a), which permits the
Board to expunge unauthorized papers, because of the scope of the rule.
Answer: The rule has been clarified to state that it only applies
to papers filed as part of a proceeding before the Board (Sec.
41.1(a)) or while the Board has jurisdiction over the file and will not
be used to prune applications arbitrarily.
Comment 21: One comment suggests that expungement of papers under
Sec. 41.7(a) be limited to exceptional circumstances.
Answer: Violation of a rule or Board order, the triggers for
expungement, should be an exceptional circumstance in patent practice.
Comment 22: One comment expresses concern that Sec. 41.7(a) would
prevent the entry of evidence and would result in an incomplete record.
This, the comment suggests, would result in more judicial review being
sought in district court rather than through direct appeal to the
United States Court of Appeals for the Federal Circuit (Federal
Circuit). The comment suggests that such filings are useful as a way to
place papers in the record, knowing that they will not be considered by
the Office, simply to get them in front of a court.
Answer: Such filings are not proper. Two remedies exist for
expungement of a paper. In some cases, it may be appropriate to seek
entry of new evidence in a district court under 35 U.S.C. 145 or 146.
In most cases, however, the remedy would be to challenge the
expungement directly by petition showing either that the paper was
properly filed or that it should be retained in the interest of
justice.
Comment 23: One comment recommends that a definition of "Board
proceeding" be included in proposed Sec. 41.2, to avoid possible
inconsistencies
between the requirements of proposed Sec. 41.7(b) and those of
proposed Sec. 41.37(c)(1)(ix).
Answer: Section 41.7(b) has been changed to read "A party may not
file a paper previously filed in the same Board proceeding, not even as
an exhibit or appendix, without Board authorization or as provided by
rule" so as to avoid an inconsistency with the requirement of Sec.
41.37(c)(1)(ix) to provide an appendix containing copies of evidence
previously submitted and entered by the examiner.
Comment 24: One comment suggests that Sec. 41.7(b) creates a
burden by requiring a party to request entry of a duplicate paper that
the Board may wish to have.
Answer: Parties should assume that the Board does not want the
duplicate paper in the absence of a specific request or as provided by
rule as discussed above.
Comment 25: Two comments suggest that Sec. 41.8, which requires
prompt reporting of changes in real party-in-interest or in related
cases, is onerous as applied to appellants. In particular, they oppose
the requirement to advise the Board of any change in the real party-in-
interest or in related cases within 20 days of the change.
Answer: Section 41.8 has been reformatted so that the last clause
referring to judicial review is now its own subsection. Proposed
Secs. 41.8(a) and (b) are now Secs. 41.8(a)(1) and (a)(2),
respectively.
The Federal Circuit requires any change in the real party-in-
interest to be reported within seven days. Federal Circuit Rule (Fed.
Cir. R.) 47.4(c). Section 41.8(a)(1) provides nearly triple the time
the court provides in recognition of the greater number of appeals to
the Board than to the court, but the Board needs to know such
information just as much as the court does.
The burden to report changes in related cases is not onerous since
most such changes are entirely under the control of the affected party.
Such changes would include the filing of a continuation application
claiming benefit of an application on appeal or the filing of a reissue
application for a patent that is before the Board in a reexamination
appeal. The amount of due diligence involved should be small for any
party with an effective docketing system.
The last clause of Sec. 41.8(a)(2) is now Sec. 41.8(b) to raise
its profile, but has been limited to contested cases because it is in
that context, particularly in the case of judicial review under 35
U.S.C. 146, where the problems arise. Lack of adequate notice of
judicial review in contested cases can result in applications that
should be suspended pending the outcome of the judicial review being
held abandoned or being allowed and other administrative complications.
Comment 26: One comment requests clarification of what constitutes
a related case under Sec. 41.8.
Answer: The requirement is substantially the same in scope as the
requirement in Fed. Cir. R. 47.5. Now-removed Sec. 1.656(b)(2) (2003)
also imposed a similar requirement. The Board needs to know of related
cases for several reasons. First, awareness of related cases
facilitates scheduling and panel assignment, which can increase
efficiencies for both the Board and the party. Second, a decision in a
related judicial or administrative case may affect the outcome in the
case before the Board.
For instance, a definition of a claim term in a related case may
limit or expand the scope for the same term in a case before the Board.
See Ballard Med. Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352,
1362, 60 USPQ2d 1482, 1501 (Fed. Cir. 2001) (claim limitations need not
be the same); Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d
1291, 1300, 50 USPQ2d 1900, 1907 (Fed. Cir. 2000) (holding that the
prosecution history of a parent application may limit the scope of a
later application using the same term); Elkay Mfg. Co. v. Ebco Mfg.
Co., 192 F.3d 973, 980, 52 USPQ2d 1007, 1107, 1114 (Fed. Cir. 1999)
(prosecution history can apply to claim in different subsequent
patent). Claims in the related case might be estopped by an adverse
judgment in the interference (Sec. 41.127(a)(1)). A party that is
aware of a related case, but nevertheless fails to disclose the case
may fall short of its duty of candor to the Office. If the facts of the
other case are materially different, then the related case might have
no material effect on the case before the Board. Georgia-Pacific Corp.
v. United States Gypsum Co., 195 F.3d 1322, 1333, 52 USPQ2d 1590, 1599
(Fed. Cir. 1999) (inconsistent positions did not affect outcome).
Comment 27: Five comments oppose Sec. 41.11 (which was proposed as
Sec. 41.105), the bar on ex parte communications, as too restrictive.
Answer: Proposed Sec. 41.105 has been moved to Sec. 41.11 in
subpart A and has been revised to refer to inter partes reexaminations
under subpart C and contested cases under subpart D because the concern
about ex parte communications in adversarial cases is common to both
types of proceedings.
The bar on ex parte communications in Sec. 41.11 is stricter than
the bar on ex parte interviews in Sec. 1.955. Section 1.955 allows ex
parte communications with an official acting on the merits as long as
the merits are not discussed during the ex parte communication. Section
41.11 bars all ex parte communications with all administrative patent
judges and with any Board employee acting on the merits. Non-merits ex
parte communications may take place with other Board employees who are
not acting on the merits of the case.
Section 41.11 is intended to be restrictive because experience has
shown that ex parte communications are easily abused and easily shift
from permissible topics to impermissible topics. The rule prohibits any
ex parte contact about a pending case with an administrative patent
judge because the administrative patent judge might be assigned to a
panel in the proceeding.
Comment 28: Three comments urge that ex parte communications with
Board staff can be helpful to practitioners without being injurious to
the integrity of the proceeding. One comment recommends the
establishment of a help desk. One of the comments suggested that the
phrase "Board employee conducting the proceeding" be clarified.
Answer: The prohibition regarding other Board employees in Sec.
41.11 has been clarified to say "assigned to the proceeding" to give
parties a measure of confidence in contacting Board officials, other
than administrative patent judges, that have not been expressly
assigned to the case. As a general rule, support staff are not assigned
to a proceeding. Other Board employees, like administrators, might be
assigned an interlocutory role in a proceeding, but the party would
have notice of the assignment. The Office agrees that informal contacts
with support staff can be of great benefit to the parties. The rule is
not intended to prohibit, and does not prohibit, such contacts.
Comment 29: Three comments note that the supplementary information
in the notice of proposed rule making provides examples that appear to
be more liberal than the rule. One of the comments recommended moving
the examples from the supplementary information into the rule.
Answer: The examples are not exceptions to the rule. For example,
when a party declines to participate in a hearing or conference, there
is not an exception to the rule. Instead, it is a waiver by the non-
participating party of the protections of the rule. A party cannot be
permitted a heckler's veto on
the opposing party's ability to communicate with the Board. Even so,
the Board will treat such one-sided communications with caution. For
instance, a transcript of the communication may be required.
In another example, informing the Board in one proceeding of a
related proceeding is not an ex parte communication about the contested
case as long as the information does not extend beyond identifying
information about the other proceeding. Such information is required
under Sec. 41.8.
Finally, citing a pending case in support of a more general
proposition, again is not an ex parte communication about the contested
case as long as the focus is on the general proposition and not on the
merits of the cited case. For instance, citing a published opinion from
a pending case has never been considered an ex parte communication.
Similarly, a complaint to the Chief Administrative Patent Judge about
delays in interferences generally, with a list of examples, is
appropriate provided the complaint stays focused on the general problem
of delays rather than issues in a particular cited proceeding. Any
discussion of a particular aspect of a particular pending case must be
treated formally in accordance with Sec. 41.11.
Comment 30: One comment suggests that the rules were inconsistent
in requiring parallel citation to the West Reporter System (West) and
to the United States Patents Quarterly (USPQ) in contested cases, Sec.
41.106(b)(4)(ii)(B), but not in appeals.
Answer: Proposed Sec. 41.106(b)(4) has been relocated to new Sec.
41.12 in subpart A to eliminate the inconsistency.
Comment 31: Three comments note that the Federal Circuit has
changed its rules to eliminate the requirement for parallel citations
to a West reporter and the USPQ. Two of the comments object that
parallel citation imposes additional costs on parties. Two of the
comments express a preference for not using the USPQ. One of the
comments notes that Westlaw, the on-line West service provides much
more complete coverage of current Board decisions than does the USPQ.
The comments do not address the use of any other reporter or database
service.
Answer: None of the comments explain why the court made this change
or explain how it is applicable to Board practice. Of the printed
reporters, USPQ provides much better coverage of patent decisions
relevant to Board practice than West does. The Board cites to the West
system as a courtesy to its reviewing courts, but principally uses the
USPQ because of its greater relevance to Board practice.
If the Board were to eliminate the requirement for parallel
citation, it would make more sense to eliminate the requirement to cite
to the West system reporters. If citation to the USPQ were eliminated,
the alternative would not be citation to West's printed reporters but
to one of the on-line services, which would also raise issues of access
and expense.
No reporter system is authoritative. Hallco Mfg. Co. v. Foster, 256
F.3d 1290, 1297 n.4, 59 USPQ2d 1346, 1350 n.4 (Fed. Cir. 2001)
(relating an instance where the West reporter misprinted a paragraph,
while the USPQ printed the decision correctly, and noting that only the
court's print of the opinion is authoritative). Parallel citation thus
also serves as a useful check on privately compiled reporters.
Comment 32: One comment notes that USPQ no longer provides very
good coverage of Office decisions while many Board decisions are
available through on-line services.
Answer: Most of the large volume of Board decisions that are
available on-line are not properly citable as precedent. Consequently,
the practical differences in coverage between Westlaw and the USPQ are
less than the comment purports.
There is no ideal solution for which reporter system or systems
should be required. This is a problem that confronts many adjudicative
bodies. The Board has imposed a requirement on itself to cite both West
reporters and the USPQ: the former to be responsive to the courts, the
latter to address its own needs. The citation format used by parties
before the Board must be consistent with Board practice.
Comment 33: One comment interprets proposed Sec. 41.106(b)(4)(ii),
now Sec. 41.12(b), to bar citation to the Manual of Patent Examining
Procedure (MPEP). The comment suggests that instead great weight should
be given to the MPEP.
Answer: The rule does not bar citation to the MPEP. Rather the rule
discourages the citation of authority that is not binding. Primary
authority should be cited for legal issues in papers directed to the
Board. Unless primary authority is unavailable, primary authority is
always preferable to, and more persuasive than, any secondary
authority.
Comment 34: One comment requested that the fee information in Sec.
41.20 be restored to Sec. 1.17, particularly since some of the Sec.
41.20 fees must be paid before jurisdiction passes to the Board.
Answer: The fees were moved to part 41 to locate them with the
rules that require the fees. Note that trademark-specific fees are
located with the trademark rules in part 2. Cross-references to Sec.
41.20 in the Board rules that require the fees should prevent confusion
about where the fees are located. A cross-reference has been added at
Sec. 1.17(b) to offer further guidance.
Part 41, Subpart B - Ex Parte Appeals
Comment 35: One comment suggests that since appeals are a fairly
common procedure, a notice of the changes to the appeal procedures
should be mailed to each practitioner warning him or her of these
changes.
Answer: The comment will not be adopted. A mailing of a notice of
the changes to the appeal procedures to each practitioner is not
required since it is each practitioner's responsibility under 37 CFR
Part 10 to stay up-to-date on patent procedures. Nevertheless, the
Board will attempt to mail a notice of the final rule making to every
appellant with the docketing notice (see the Notice of revised appeal
docketing procedures published in the July 2, 2002 OG) for several
months.
Comment 36: One comment suggests that Secs. 41.31(a)(1),
(a)(2) and (a)(3) be amended to provide for appeal at any time after
being twice or finally rejected, as appropriate, during pendency of the
proceeding where no time period under Sec. 1.134 is running. The
comment states that the suggested change would ensure that Sec. 41.31
would not be interpreted more restrictively than 35 U.S.C. 134, which
sets forth no condition regarding when an appeal can be filed, apart
from the requirements for claims being twice rejected (as in 35 U.S.C.
134(a)) or finally rejected (as in 35 U.S.C.134(b) and (c)). The
comment also states that this amendment would prevent any potential
inconsistency of the rules with the Board's precedential opinion, Ex
parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994).
Answer: The suggestion will not be adopted. Sections 41.31(a)(1),
(a)(2) and (a)(3) were proposed to generally incorporate the
requirements of former Sec. 1.191(a) (2003) and to subdivide Sec.
1.191(a) into three parts to improve readability. Both former Sec.
1.191(a) (2003) and Secs. 41.31(a)(1), (a)(2) and (a)(3) are more
restrictive than 35 U.S.C. 134 in that an appeal must be filed within
the time period provided under Sec. 1.134 for response to either a
final rejection or a non-final rejection which rejects the claims for a
second time, as appropriate. For example, an applicant for a patent
whose claims have been twice rejected but not finally rejected, may
appeal from the decision of the examiner to the Board by filing a notice
of appeal accompanied by the fee set forth in Sec. 41.20(b)(1) within the
time period provided under Sec. 1.134. However, if such an applicant files
an amendment within the time period provided under Sec. 1.134, the applicant
may not file an appeal outside the time period provided under Sec. 1.134.
In such a situation, the applicant must wait for a new rejection by the
examiner before an appeal can be filed.
Comment 37: One comment suggests that paragraphs (a)(1) and (a)(2)
of Sec. 41.31 be amended to remove the alternative clause (i.e., "or
finally") since this would make it clear that once the examiner
rejects a claim for the second time (in the same application or in a
continuing application), the decision as to whether to appeal the
rejection or continue proceedings before the examiner will rest with
the applicant. The comment notes that since a final rejection will
never be made in a first rejection of a claim, the alternative language
is not necessary and that the change is being suggested to reduce the
periodic disputes between examiners and applicants as to whether an
application under a non-final rejection was ripe for appeal.
Answer: The suggestion has been adopted. The Board's precedential
opinion in Ex parte Lemoine, 46 USPQ2d at 1423, interpreted the
language of 35 U.S.C. 134 that gives applicants the statutory right to
an administrative appeal to mean that "so long as the applicant has
twice been denied a patent, an appeal may be filed." Thus, the
alternative language of the proposed rule (i.e., "or finally (Sec.
1.113 of this title)" is not necessary.
Comment 38: One comment suggests that Sec. 41.31(a)(3) be deleted.
The comment states that this would eliminate the requirement that the
patent owner wait until an examiner makes a second or subsequent
rejection final, before being permitted to file an appeal in a
reexamination proceeding filed on or after November 29, 1999 and thus
would restore to patentee the decision as to when to file an appeal in
a reexamination proceeding that is subject to repeated rejections. The
comment also notes that the deletion of Sec. 41.31(a)(3) would
simplify the regulations as there would no longer be a need to
determine filing dates of reexamination proceedings under this section.
Answer: The suggestion will not be adopted. 35 U.S.C. 134(b)
provides that "[a] patent owner in any reexamination proceeding may
appeal from the final rejection of any claim by the primary examiner to
the Board of Patent Appeals and Interferences, having once paid the fee
for such appeal." According to the effective date provisions of Public
Law 106-113, the provisions of 35 U.S.C. 134(b) apply to any
reexamination proceeding filed on or after November 29, 1999.
Accordingly, by law, the patent owner must wait until an examiner makes
a second or subsequent rejection final, before being permitted to file
an appeal in a reexamination proceeding and therefore both Secs.
41.31(a)(2) and (a)(3) are necessary to inform a patent owner when an
appeal in a reexamination proceeding may be taken.
Comment 39: One comment suggests that proposed Sec. 41.33 be
amended to refer to the "date of filing an Appeal" as opposed to
referring to "after the date the proceeding has been appealed." This
change would ensure consistency with Office language used in other
regulations relative to "filing dates." The original language is
confusing as it is not clear whether the date the "proceeding has been
appealed" is the date typed by the Applicant on the Notice of Appeal,
the date of the Certificate of Mailing affixed on a Notice of Appeal,
or the date of filing accorded by the Office to the Notice of Appeal.
Similarly, it is not clear what the date is that an amendment was
"submitted." Do certificates of mailing or certificates of facsimile
transmission, impact on the date of "submission" or the date that
"the proceeding has been appealed"? A well accepted term like "date
of filing" used consistently throughout the paragraph would avoid any
possible confusion.
Answer: The suggestions have been adopted in Sec. 41.33 and Sec.
41.63.
Comment 40: One comment suggests that the word "may" be replaced
with the word "will" in Sec. 41.33. The comment states that this
suggestion is made to avoid any possible confusion or abuse of the
regulations by examiners and that there should be no flexibility given
to examiners in entering minor cosmetic amendments as envisioned in
this portion of the paragraph.
Answer: The suggestion will not be adopted. The use of the word
"may" in Sec. 41.33 rather then the word "will" is appropriate
since it (1) is consistent with the current use of the word "may" in
Sec. 1.116; and (2) connotes that entry of amendments and evidence
filed after appeal is not a matter of right but that such amendments
and evidence filed after appeal may be admitted under certain
circumstances set forth in the rule.
Comment 41: One comment notes that Sec. 41.33(b) should also
include a reference to Sec. 41.50(c) as to permitted amendments.
Answer: The suggestion has been adopted.
Comment 42: One comment suggests incorporating Sec. 41.33(c) into
Sec. 41.33(b), and having Sec. 41.33(b) refer both to "amendments"
and "affidavits or other evidence" submitted after filing an appeal.
The comment states that this change would avoid separate discussion of
amendments, affidavits and other evidence.
Answer: The suggestion will not be adopted since the prohibition
against these filings is no longer the same. See Comment 41.
Comment 43: Five comments assert that proposed Sec. 41.33 would
unduly restrict the types of amendments and evidence that can be made
after a Notice of Appeal is filed. One suggested solution was to remove
paragraphs (b) and (c) of Sec. 41.33 and instead rely upon (or
substitute) the provisions of Sec. 1.116. A second suggested solution
was to amend paragraphs (b) and (c) of Sec. 41.33 to take effect once
the appeal brief is filed. A third suggested solution was that
amendments making claim(s) allowable be permitted thus resolving issues
that would otherwise be appealed.
Answer: The comments have been adopted to the following extent.
Amendments submitted on or after the date the proceeding has been
appealed may be admitted as provided in Sec. 1.116. Thus, amendments
after final but prior to appeal and amendments filed after appeal but
prior to the date the brief is filed will be treated under the same
standard (i.e, Sec. 1.116). Amendments filed on or after the date of
filing a brief may be admitted only to cancel claims, where such
cancellation does not affect the scope of any other pending claim in
the proceeding, or to rewrite dependent claims into independent form.
All other amendments submitted after the date the proceeding has been
appealed will not be admitted except as permitted by Secs.
41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1) and 41.50(c). Affidavits or
other evidence submitted after the date the proceeding has been
appealed and prior to the date a brief is filed overcoming all
rejections under appeal may be admitted if the examiner determines that
the affidavits or other evidence overcomes all rejections under appeal
and a showing of good and sufficient reasons why the affidavit or other
evidence is necessary and was not earlier presented. All other
affidavits or other evidence submitted on or after the date the
proceeding has been appealed will not be admitted except as permitted
by Secs. 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).
Comment 44: Two comments state that the proposed rules are unclear
as to subsequent appeal procedures after prosecution is reopened
subsequent to the filing of a first Notice of Appeal and Appeal Brief.
Specifically, the comments question if prosecution is reopened under
either Sec. 41.39(b)(1), Sec. 41.50(a)(2)(i) or Sec. 41.50(b)(1),
and a subsequent appeal is taken, would applicant be required to again
pay the Notice of Appeal and Appeal Brief fees. The comments believe
that this extra cost is unfair and burdensome to applicants because the
reopening of prosecution would be the result of action by the examiner
or the Board, not action by applicants. Accordingly, the comments
suggest that provision should be made in the proposed rules that
applicants need not twice pay the Notice of Appeal and Appeal Brief
Fees in an application where those fees have already been paid but
prosecution was then reopened.
Answer: The comment will not be adopted. The rule making did not
propose to change the current procedures in this area. Currently, once
a Notice of Appeal and Appeal Brief fee has been paid in a proceeding,
a second Notice of Appeal and Appeal Brief fee will not be required
except if a final Board decision has been made on the first appeal. For
example, in an application for patent, a Notice of Appeal and Appeal
Brief fees have been paid and the examiner reopens prosecution in a new
Office action, new fees are not required for an applicant to appeal
from that new Office action. Another example is in an application for
patent, a Notice of Appeal and Appeal Brief fees have been paid and the
Board in its decision makes a new ground of rejection and the applicant
elects to reopen prosecution before the examiner, then new fees are
required for an applicant to appeal from any new Office action by the
examiner. The same procedures apply under the rules as implemented in
this rule making.
Comment 45: One comment suggests that it ought to be made clear
that the words of Sec. 41.33, "rewrite dependent claims into
independent form," includes both of the following two situations: (1)
In conjunction with the rewriting of a dependent claim in independent
form, amendment(s) would be allowed changing the dependency of claims
which had depended from the independent claim being canceled, and (2)
rather than rewriting a dependent claim in independent form, an
independent claim can be amended to incorporate therein the subject
matter of a dependent claim that has been identified by the examiner as
being allowable.
Answer: The suggestion is adopted to the extent that the Manual of
Patent Examining Procedure will provide that rewriting dependent claims
into independent form as permitted under Sec. 41.33 includes the
following situations: (1) Rewriting a dependent claim in independent
form by adding thereto the limitations of the parent claim(s); and (2)
rewriting an independent claim to incorporate therein all the subject
matter of a dependent claim, canceling the dependent claim and in
conjunction therewith changing the dependency of claims which had
depended from the dependent claim being canceled to the amended
independent claim that incorporate therein all the subject matter of
the now canceled dependent claim.
Comment 46: One comment suggests that Sec. 41.37(a)(1) be amended,
as suggested for Sec. 41.33, to reference the "date of filing the
notice of appeal," rather than the uncertainty that might be
introduced by the phrase "the date of the notice of appeal."
Answer: The suggestion has been adopted.
Comment 47: One comment inquires if the "date of the notice of
appeal" referred to in Sec. 41.37(a) is the date the notice of appeal
is signed, is filed, or is received by the Office.
Answer: As under current practice, the date of filing the notice of
appeal is either (1) the date of deposit with the United States Postal
Service if the provisions of 37 CFR Sec. 1.10 are followed; or (2) the
date of receipt by the Office.
Comment 48: One comment suggests that the clause "or within the
time allowed for reply to the action from which the appeal was taken,
if such time is later" be added at the end of paragraph 41.37(a)(1).
The comment notes that this language currently appears in former Sec.
1.192(a) (2003), and this additional time is a valuable option to
applicants who file a notice of appeal with no intention of filing an
appeal brief, but are filing the appeal simply to buy some additional
time to permit the examiner to rule on an amendment filed under Sec.
1.116. The comment states that any docketing benefits gained by the
proposed change in this paragraph, as discussed by the proposed rule
drafters, is far outweighed by the disadvantage to both applicants and
the Office in having applicants file a brief simply as a strategy to
maintain pendency, while the examiner renders a decision on an
amendment filed under Sec. 1.116.
Answer: The suggestion will not be adopted. The suggestion is based
on the belief that the two-month period for filing an appeal brief that
runs from the date of filing of the notice of appeal would expire
before applicants have received a decision from the examiner on an
amendment filed under Sec. 1.116 (i.e., an amendment filed after a
final rejection but before or with the filing of a notice of appeal).
It is expected that such a situation would be rare. In that rare
situation, applicants can obtain an extension of time as provided in
Sec. 41.37(e). In addition, applicants can delay filing the notice of
appeal until they have received a decision from the examiner on the
amendment filed under Sec. 1.116 especially if the amendment filed
under Sec. 1.116 is filed within two months from the date of mailing
of any final rejection setting a three-month shortened statutory period
for reply since it is Office policy (see MPEP 714.13) that if the
advisory action is not mailed until after the end of the three-month
shortened statutory period, the period for reply to the final rejection
for purposes of determining the amount of any extension fee will be the
date on which the Office mails the advisory action advising applicant
of the status of the application, but in no event can the period for
reply to the final rejection extend beyond six months from the date of
the final rejection.
Comment 49: One comment inquires how the real party in interest
should be identified in the appeal brief when the application involved
in the appeal is assigned to a subsidiary corporation which corporation
is owned by either a parent corporation or a joint venture between
corporations.
Answer: When an application is assigned to a subsidiary
corporation, the real party in interest is both the assignee and either
the parent corporation or corporations, in the case of joint ventures.
One example of a statement identifying the real party in interest is:
The real party in interest is XXXX corporation, the assignee of record,
which is a subsidiary of a joint venture between YYYY corporation and
ZZZZ corporation.
Comment 50: One comment suggests that a requirement to identify the
real party in interest should be made in contested cases, perhaps as
part of a re-named Sec. 41.108.
Answer: Section 41.8 entitled "Mandatory notices" already
requires that at the initiation of a contested case (Sec. 41.101), and
within 20 days of any change during the proceeding, a party must
identify its real party-in-interest.
Comment 51: One comment suggests that the requirement in Sec.
to identify related proceedings is ambiguous with respect to its scope.
The comment believes that read broadly, it would require an appellant
to identify every precedential decision that might bear on the issues
on appeal and could expose an appellant to unreasonable allegations of
inequitable conduct.
Answer: The requirement in Sec. 41.37(c)(1)(ii) to identify
related proceedings does not require an appellant to identify prior
proceedings involving unrelated parties including precedential
decisions that might bear on the issues on appeal. The requirement in
Sec. 41.37(c)(1)(ii) to identify related proceedings does require an
appellant to identify every related proceeding (e.g., commonly owned
applications having common subject matter, claim to a common priority
application).
Comment 52: One comment suggests that Sec. 41.37(c)(1)(iii) be
deleted in its entirety, as it introduces an unnecessary additional
burden on appellants with no discernible benefit to the Office. The
comment states that since only rejected claims are subject to an
appeal, there seems to be no benefit in identifying the status of
claims that are not subject to appeal and that asking appellants to
make this type of listing for claims that are not rejected and thus are
not subject to appeal, would introduce a risk of inadvertent error by
appellants and in any event, would likely be ignored by the examiner
and the Board.
Answer: The suggestion will not be adopted. Section
41.37(c)(1)(iii) generally incorporates only the requirements of former
Sec. 1.192(c)(3) (2003) that a statement of the status of all the
claims be presented and an identification of those claims that are
being appealed. As such it does not introduce an unnecessary additional
burden on appellants. Moreover, the benefit to the Office of this
requirement is that the Board is directly informed as to the status of
all the claims in the proceeding (e.g., rejected, allowed or confirmed,
withdrawn, objected to, canceled) and which of those claims that are
being appealed. For example, should the Board have knowledge of any
grounds not involved in the appeal for rejecting any pending claim, the
Board under the authority of Sec. 41.50(b) may make a new ground of
rejection.
Comment 53: One comment expresses concern in regard to the
requirement of proposed Sec. 41.37(c)(1)(v) that a concise explanation
of the subject matter defined in each of the independent claims
involved in the appeal be provided. Specifically the comment asks what
is a concise statement, what is required, does the explanation have to
show how each claim is different, does the requirement apply to all
drawings and embodiments, or only a representative drawing? The comment
states that the Office deleted a similar requirement in 1992 relating
to documents submitted in an IDS because "concise explanation"
descriptions rarely communicated any useful information, improved the
quality of patent examination but provided an opportunity to attack the
patent on the grounds of inequitable conduct. The comment suggests that
the requirement be clarified or dropped.
Answer: A patentability determination must be performed on a claim-
by-claim basis. The first step in a patentability determination is to
construe a given claim and determine its metes and bounds. "Analysis
begins with a key legal question - what is the invention claimed?"
since "[c]laim interpretation * * * will normally control the
remainder of the decisional process." Panduit Corp. v. Dennison
Manufacturing Co., 810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed.
Cir.), cert. denied, 481 U.S. 1052 (1987). The existing provisions of
37 CFR Sec. 1.192(c)(5) (2003) are directed to providing a summary of
the "invention," not the claims. See In re Hiniker Co., 47 USPQ2d
1523 (Fed. Cir. 1998): "The invention disclosed in Hiniker's written
description may be outstanding in its field, but the name of the game
is the claim. See Giles Sutherland Rich, Extent of Protection and
Interpretation of Claims - American Perspectives, 21 Int'l Rev. Indus.
Prop." By statute, the Board reviews "adverse decisions of examiners
upon applications for patents." 35 U.S.C. 6(b). For the Board to reach
an informed decision on the merits of a rejection presented for review,
the record should reflect the respective positions of the examiner and
appellant as to the scope of the claims. It is the experience of the
Board that the prosecution and examination in a significant number of
appeals forwarded for decision on appeal has taken place in the context
of "applicant's invention," not on a claim-by-claim basis. Thus, the
Board is oftentimes confronted with a record in which no significant
claim construction has occurred. Those records are not susceptible to
meaningful review and result in an inordinate number of remands.
The determination of how "concise" the explanation must be will
need to be determined on a case-by-case basis. If the prosecution and
examination has been based upon a discussion of the patentability of
individual claims instead of the "invention," it is expected the
explanation will be more "concise" than if the prosecution and
examination has been conducted on the basis of the "invention." As to
what is required, the proposed rule states that reference to the
specification by page and line number, and to the drawing, if any, by
reference characters is required. Appellant may include any other
information of record which will aid the Board in considering the
subject matter of each independent claim. The explanation does not have
to show how each claim is different. The purpose of the requirement is
to aid the Board in considering the subject matter of the independent
claims so that an informed review of the examiner's adverse
determination of patentability can be made. Whether the explanation is
limited to a single drawing or embodiment or is extended to all
drawings and embodiments is a decision appellant will need to make.
The proposed concise explanation of the subject matter defined in
each independent claim is different from a concise explanation of a
reference. It is the applicant who is responsible for drafting claims
and choosing the language and terms used to define the claimed
invention. 35 U.S.C. 112(2) ("The specification shall conclude with
one or more claims particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his invention.") As
the originator of the claim language, applicant should know what is
intended by the various words and phrases used to define the claimed
subject matter and thus, providing a concise explanation of the subject
matter of each independent claim as proposed should not be an undue
burden. This is in contrast to explaining the possible relevance of a
document that may not have originated from applicant. Another
difference is that the number of independent claims presented for
review in an appeal is a matter directly within appellant's control,
while appellant does not have control over the number of documents that
should be cited to the Office.
The subject matter of each independent claim needs to be concisely
explained for a number of reasons. For example, if the Board decides
that a rejection is to be reversed for a given independent claim, the
remaining independent claims must be reviewed to determine if the
reasons for reversing the rejection of the first independent claim
apply to the remaining independent claims. Furthermore, if appellant
chooses to argue a group of claims which includes more than one
independent claim, the Board will need to review, at the least, each
independent claim to determine which claim will be selected as
representative of the group. Apart from reviewing the examiner's adverse
decision on patentability, the Board may also make new grounds of
rejection pursuant to former Sec. 1.196(b) (2003) or make an explicit
statement that a claim would be allowable if amended under former
Sec. 1.196(c) (2003). The concise explanation of the subject matter of
each independent claim will aid the Board in making these determinations.
Comment 54: Several comments address the provision of proposed
Sec. 41.37(c)(1)(v) that every means plus function and step plus
function as permitted by 35 U.S.C. 112(6) used in the claims be
identified and the structure, material, or acts described in the
specification as corresponding to each claimed function be set forth
with reference to the specification by page and line number, and to the
drawing, if any, by reference characters. A number of comments express
concern that this requirement may result in a limiting claim
construction or create prosecution history estoppel. The comments also
take the position that the requirement would be unduly burdensome in
that appellant would need to provide this analysis whether a claim
limitation was in "issue" in the appeal. Another comment indicates
that the proposed rule is not clear as to whether it applies to "all
drawings and embodiments, or only a representative drawing." Another
comment expresses concern that the proposed rule may be subject to
abuse, as where an examiner takes the position that claims that are not
couched in means-plus-function terminology of 35 U.S.C. 112(6) are
nevertheless subject to the provisions of that section and this
proposed rule. Suggested changes include using the rule as a procedural
tool rather than a substantive requirement or to require only the
identification of one or more examples of the support for each
independent or separately argued claim, rather than all examples of
support for every claim. Another suggested change is that any issues in
regard to the Board's need for such an identification in order to reach
a reasoned decision be addressed by way of an order under the existing
provisions of Sec. 1.196(d) (2003).
Answer: The suggestion is adopted to the extent that every means
plus function and step plus function as permitted by 35 U.S.C. 112(6)
must be identified and the structure, material, or acts described in
the specification as corresponding to each claimed func