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1214    Procedure Following Decision by Board [R-11.2013]

37 C.F.R. 41.54   Action following decision.

After decision by the Board, jurisdiction over an application or patent under ex parte reexamination proceeding passes to the examiner, subject to appellant's right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the application or patent under ex parte reexamination proceeding may require, to carry into effect the decision.

After an appeal to the Board has been decided, a copy of the decision is provided to appellant and placed in IFW. The 63-day time period for filing an appeal or commencing a civil action under 37 CFR 90.3, or the two month period for filing a request for rehearing under 37 CFR 41.52, begins to run from the “MAIL DATE” if the decision is provided by paper delivery, or the “NOTIFICATION DATE” if the decision is provided by electronic delivery, as shown on the FORM PTOL-90A attached to the decision. The application is returned to the Technology Center electronically via a change in the PALM status code reflecting the decision of the Board. If the Board decision affirms or affirms in part the decision of the examiner, the examiner must await the expiration of this two month period before taking any further action.

1214.01   Procedure Following New Ground of Rejection by Board [R-11.2013]

When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant, as to each claim so rejected, has the option of:

  • (A) reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1)); or
  • (B) requesting rehearing before the Board (37 CFR 41.50(b)(2)).

This procedure only applies where the Board designates a rejection as a new ground of rejection under 37 CFR 41.50(b). If an appellant believes that a Board decision that appears to be an affirmance is actually a new ground of rejection, review of any undesignated new ground of rejection is by way of 37 CFR 41.50(c) and 37 CFR 41.52 and not through the procedure described here.

Where a decision designates a new ground of rejection under 37 CFR 41.50(b), the Board retains jurisdiction over the appeal until:

  • (a) the time for response expires and the Board enters an order of dismissal (37 CFR 41.35(b)(5)), or
  • (b) appellant reopens prosecution in response to the new grounds of rejection (37 CFR 41.35(b)(6)).

The amendment and/or new evidence under 37 CFR 41.50(b)(1), or the request for rehearing under 37 CFR 41.50(b)(2), must be filed within 2 months from the date of the Board’s decision. In accordance with 37 CFR 41.50(f), this 2-month time period may not be extended by the filing of a petition and fee under 37 CFR 1.136(a), but only under the provisions of 37 CFR 1.136(b), or under 37 CFR 1.550(c) if the appeal involves an ex parte reexamination proceeding.

If an appellant files an appropriate amendment or new evidence (see paragraph I below) as to less than all of the claims rejected by the Board under 37 CFR 41.50(b), and a request for rehearing (see paragraph II below) as to the remainder of the claims so rejected, the examiner will not consider the claims for which rehearing was requested. The request for rehearing will be considered by the Board after prosecution before the examiner with respect to the first group of claims is terminated. Argument as to any of the claims rejected by the Board which is not accompanied by an appropriate amendment or new evidence as to those claims will be treated as a request for rehearing as to those claims.

I.   SUBMISSION OF AMENDMENT OR NEW EVIDENCE

37 CFR 41.50(b)(1) provides that the application will be remanded to the examiner for reconsideration if the appellant submits “an appropriate amendment” of the claims rejected by the Board, “or new evidence relating to the claims so rejected, or both.” An amendment is “appropriate” under the rule if it amends one or more of the claims rejected, or substitutes new claims to avoid the art or reasons adduced by the Board. Ex parte Burrowes, 110 O.G. 599, 1904 C.D. 155 (Comm’r Pat. 1904). Such amended or new claims must be directed to the same subject matter as the appealed claims. Ex parte Comstock, 317 O.G. 4,1923 C.D. 82 (Comm’r Pat. 1923). An amendment which adds new claims without either amending the rejected claims, or substituting new claims for the rejected claims, is not appropriate. The new claims will not be entered, and the examiner should consult a supervisor to have the entry in the file changed to a request for rehearing under 37 CFR 41.50(b)(2), if it contains any argument concerning the Board’s rejection. The “new evidence” under the rule may be a showing under 37 CFR 1.130, 1.131 or 1.132, as may be appropriate.

If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing under 37 CFR 41.50(b)(2).

The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection under 37 CFR 41.50(b) was made includes an affirmance of the examiner’s rejection, the basis of the affirmed rejection is not open to further prosecution. If the appellant elects to proceed before the examiner with regard to the new rejection, the Board’s affirmance of the examiner’s rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time. Prosecution before the examiner of the 37 CFR 41.50(b) rejection can incidentally result in overcoming the affirmed rejection even though the affirmed rejection is not open to further prosecution. Therefore, it is possible for the application to be allowed as a result of the limited prosecution before the examiner of the 37 CFR 41.50(b) rejection. If the application becomes allowed, the application should not be returned to the Board. Likewise, if the application is abandoned for any reason, the application should not be returned to the Board. If the rejection under 37 CFR 41.50(b) is not overcome, the applicant can file a second appeal (as discussed below). Such appeal must be limited to the 37 CFR 41.50(b) rejection and may not include the affirmed rejection. If the application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR 41.50(b) is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered.

The time for filing a request for rehearing on the affirmance or seeking court review runs from the date of the decision by the Board making the original affirmance final. See MPEP §§ 1214.03 and 1216. The date of the decision is the "mailing date" or "notification date" indicated on form PTOL-90 accompanying the Board decision. See In re McNeil-PPC, 574 F.3d 1393, 91 USPQ2d 1576 (Fed. Cir. 2009).

If the examiner does not consider that the amendment and/or new evidence overcomes the rejection, he or she will again reject the claims. If appropriate, the rejection will be made final.

An applicant in whose application such a final rejection has been made by the examiner may mistakenly believe that he or she is entitled to review by the Board of the rejection by virtue of the previous appeal, but under the provisions of 37 CFR 41.50(b)(1), after such a final rejection, an applicant who desires further review of the matter must file a new appeal to the Board. Such an appeal from the subsequent rejection by the examiner will be an entirely new appeal involving a different ground and will require a new notice of appeal, appeal brief, and the payment of the appropriate fees.

II.   REQUEST FOR REHEARING

Instead of filing an amendment and/or new evidence under 37 CFR 41.50(b)(1), an appellant may elect to proceed under 37 CFR 41.50(b)(2) and file a request for rehearing of the Board’s new rejection. The rule requires that the request for rehearing “must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in rendering the decision and also state all other grounds upon which rehearing is sought.” By proceeding in this manner, the appellant waives his or her right to further prosecution before the examiner. In re Greenfield, 40 F.2d 775, 5 USPQ 474 (CCPA 1930). A request for rehearing accompanied by an appropriate amendment of the claims rejected by the Board, and/or by new evidence, does not constitute a proper request for rehearing under 37 CFR 41.50(b)(2), and will be treated as a submission under 37 CFR 41.50(b)(1).

If the Board’s decision also includes an affirmance of the examiner’s rejection, a request for rehearing of the affirmance (see MPEP §§ 1214.03 and  1214.06, subsection IV.) should be filed in a separate paper to facilitate consideration.

1214.02   [Reserved] [R-]

1214.03   Rehearing [R-11.2013]

37 C.F.R. 41.52   Rehearing.

  • (a)
    • (1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section. When a request for rehearing is made, the Board shall render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing, and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing.
    • (2) Appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.
    • (3) New arguments responding to a new ground of rejection designated pursuant to § 41.50(b) are permitted.
    • (4) New arguments that the Board's decision contains an undesignated new ground of rejection are permitted.
  • (b) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.

The term “rehearing” is used in 37 CFR 41.52 for consistency with the language of 35 U.S.C. 6(b). It should not be interpreted as meaning that an appellant is entitled to an oral hearing on the request for rehearing, but only to a rehearing on the written record. It is not the normal practice of the Board to grant rehearings in the sense of another oral hearing. Ex parte Argoudelis, 157 USPQ 437, 441 (Bd. App. 1967), rev’d. on other grounds, 434 F.2d 1390, 168 USPQ 99 (CCPA 1970).

37 CFR 41.52 provides that any request for rehearing must specifically state the points believed to have been misapprehended or overlooked in the Board’s decision. Experience has shown that many requests for rehearing are nothing more than reargument of appellant’s position on appeal. In response, the rule was revised to limit requests to the points of law or fact which appellant feels were overlooked or misapprehended by the Board. 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 appellant may present (A) new argument(s) based upon a recent relevant decision of either the Board or a Federal Court, (B) new argument(s) responding to a new ground of rejection made pursuant to 37 CFR 41.50(b), and (C) new argument(s) that the Board’s decision contains an undesignated new ground of rejection. If appellant relies upon a recent relevant decision of either the Board or a Federal Court, a remand by the Board to the examiner to respond to that new argument may be appropriate.

The 2-month period provided by 37 CFR 41.52(a) for filing a request for rehearing can only be extended under the provisions of 37 CFR 1.136(b) or under 37 CFR 1.550(c) if the appeal involves an ex parte reexamination proceeding.

For extension of time to appeal to the Court of Appeals for the Federal Circuit or commence a civil action under 37 CFR 90.3(c), see MPEP § 1216 and § 1002.02(o).

For requests for reconsideration by the examiner, see MPEP § 1214.04.

Should an Administrative Patent Judge (APJ) retire or otherwise become unavailable to reconsider a decision, normally another APJ will be designated as a substitute for the unavailable APJ.

1214.04   Examiner Reversed [R-11.2013]

A complete reversal of the examiner’s rejection brings the case up for immediate action by the examiner. If the reversal does not place an application in condition for immediate allowance (e.g., the Board has entered a new ground of rejection under 37 CFR 41.50(b)), the examiner should refer to the situations outlined in MPEP § 1214.06 for appropriate guidance.

The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references. This is particularly so where the application or ex parte reexamination proceeding has meanwhile been transferred or assigned to an examiner other than the one who rejected the claims leading to the appeal. The second examiner should give full faith and credit to the prior examiner’s search.

If the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims as to which the examiner was reversed, he or she should submit the matter to the Technology Center (TC) Director for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection. See MPEP § 1002.02(c) and MPEP § 1214.07. The TC Director’s approval is placed on the action reopening prosecution.

The examiner may request rehearing of the Board decision. Such a request should normally be made within 2 months of the return of the application to the TC.

All requests by the examiner to the Board for rehearing of a decision must be approved by the TC Director and must also be forwarded to the Office of the Deputy Commissioner for Patent Examination Policy for approval before mailing.

The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the answers before the Board and evidence not previously relied upon in the answers are not permitted in the request for rehearing except that the examiner may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.

The request should set a period of 2 months for the appellant to file a reply.

If the request for rehearing is approved by the Office of the Deputy Commissioner for Patent Examination Policy, the TC will enter the the request for rehearing in the electronic file and a copy will be mailed or given to the appellant.

1214.05   Cancellation of Claims Not Appealed [R-11.2013]

Pursuant to 37 CFR 41.31(c), an appeal is presumed to be taken from the rejection of all claims. Where, in an appeal brief filed before January 23, 2012, an appellant withdraws some of the appealed claims (i.e., claims subject to a ground of rejection that the appellant did not present for review in the brief), and the Board reverses the examiner on the remaining appealed claims, the withdrawal is treated as an authorization to cancel the withdrawn claims. It is necessary for the examiner to notify the appellant of the cancellation of the withdrawn claims. See MPEP § 1205.02.

1214.06   Examiner Sustained in Whole or in Part [R-11.2013]

37 C.F.R. 41.35  Jurisdiction over appeal.

*****

  • (b) End of jurisdiction. The jurisdiction of the Board ends when:

*****

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

*****

37 C.F.R. 1.197   Termination of proceedings.

  • (a) [Reserved]
  • (b) Termination of proceedings.
    • (1) Proceedings on an application are considered terminated by the dismissal of an appeal or the failure to timely file an appeal to the court or a civil action (§ 1.304) except:
      • (i) Where claims stand allowed in an application; or
      • (ii) Where the nature of the decision requires further action by the examiner.
    • (2) The date of termination of proceedings on an application is the date on which the appeal is dismissed or the date on which the time for appeal to the U.S. Court of Appeals for the Federal Circuit or review by civil action (§ 1.304) expires in the absence of further appeal or review. If an appeal to the U.S. Court of Appeals for the Federal Circuit or a civil action has been filed, proceedings on an application are 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.

The practice under the situations identified in subsections I-III below is similar to the practice after a decision of the court outlined in MPEP § 1216.01. Examiners must be very careful that applications and ex parte reexamination proceedings that leave the jurisdiction of the Board are not overlooked because every case is up for action by the examiner in the event no court review has been sought. See MPEP §§ 1216.01 and 1216.02 for procedure where court review is sought.

As provided by 37 CFR 90.3, the time for seeking review of a decision of the Board by the Court of Appeals for the Federal Circuit or the U.S. District Court for the Eastern District of Virginia is the same for both tribunals, that is, 63 days plus any additional time requested and granted under 37 CFR 90.3(c). In the event a request for rehearing is timely filed before the Board, or as extended by the Director. See MPEP § 1216. When the time for seeking court review has passed without such review being sought, the examiner must take up the application or ex parte reexamination for consideration. The situations which can arise will involve one or more of the following circumstances:

I.   NO CLAIMS STAND ALLOWED

The proceedings in an application or ex parte reexamination proceeding are terminated as of the date of the expiration of the time for filing court action. The application is no longer considered as pending. In an application, a Notice of Abandoment should be prepared and mailed. In an ex parte reexamination proceeding, a reexamination certificate should be issued under 37 CFR 1.570.

Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected. The following examples illustrate the appropriate approach to be taken by the examiner in various situations:

  • (A) If claims 1-2 are pending, and the Board affirms a rejection of claim 1 and claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1, the examiner should hold the application abandoned.
  • (B) If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, after expiration of the period for further appeal, the examiner should proceed in one of two ways:
    • (1) Convert the dependent claim into independent form by examiner’s amendment, cancel all claims in which the rejection was affirmed, and issue the application; or
    • (2) Set a 1-month time limit in which appellant may rewrite the dependent claim(s) in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. If no timely reply is received, the application is abandoned since no claims stand allowed.

The following form paragraph may be used where appropriate:

¶ 12.291    Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (No Allowed Claim)

The Patent Trial Appeal Board affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. There are no allowed claims in the application. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06. Applicant is given a ONE MONTH TIME PERIOD from the mailing date of this letter in which to present the dependent claim(s) in independent form to avoid ABANDONMENT of the application. NO EXTENSIONS OF TIME UNDER 37 CFR 1.136(a) WILL BE GRANTED. Prosecution is otherwise closed.

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).
  • 3. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).

II.   CLAIMS STAND ALLOWED

The appellant is not required to file a reply. The examiner issues the application or ex parte reexamination certificate on the claims which stand allowed. It is not necessary for the applicant or patent owner to cancel the rejected claims, since they may be canceled by the examiner in an examiner’s amendment.

If the Board affirms a rejection of claim 1, claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1 and independent claim 3 is allowed, the examiner should cancel claims 1 and 2 and issue the application or ex parte reexamination certificate with claim 3 only.

If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, the examiner should either:

  • (A) Convert dependent claim 2 into independent form by examiner’s amendment, cancel claim 1 in which the rejection was affirmed, and issue the application or ex parte reexamination certificate with claims 2 and 3; or
  • (B) Set a time limit in which appellant may rewrite dependent claim 2 in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. If no timely reply is received, the examiner will cancel claims 1 and 2 and issue the application with allowed claim 3 only.

    The following form paragraphs may be used where appropriate:

¶ 12.292    Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (At Least One Allowed Claim)

The Patent Trial and Appeal Board affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06. Applicant is given a ONE MONTH TIME PERIOD from the mailing date of this letter in which to present the dependent claim(s) in independent form. NO EXTENSIONS OF TIME UNDER 37 CFR 1.136 WILL BE GRANTED. Failure to comply will result in cancellation of the dependent claims and the application will be allowed with claim(s) [3]. Prosecution is otherwise closed.

Examiner Note:

  • 1 For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).
  • 3. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).
  • 4. In bracket 3, enter the claim number(s) of the allowed claims.

If uncorrected matters of form which cannot be handled without written correspondence remain in the application, the examiner should take appropriate action but prosecution is otherwise closed. A letter such as that set forth in form paragraph 12.297 is suggested:

¶ 12.297    Period For Seeking Court Review Has Lapsed

The period under 37 CFR 90.3 for seeking court review of the decision by the Patent Trial and Appeal Board rendered [1] has expired and no further action has been taken by appellant. The proceedings as to the rejected claims are considered terminated; see 37 CFR 1.197(b).

The application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed.

Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136.

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, enter the mailing date of the decision (or notification date of the decision if electronic mail notification was sent to the appellant under the e-Office Action program).
  • 3. In bracket 2, identify the allowed claims.
  • 4. In bracket 3, identify the formal matters that need correction.

III.   CLAIMS REQUIRE ACTION

If the decision of the Board is an affirmance in part and includes a reversal of a rejection that brings certain claims up for action on the merits, such as a decision reversing the rejection of generic claims in an application or ex parte reexamination proceeding containing claims to nonelected species not previously acted upon, the examiner will take up the application or reexamination proceeding for appropriate action on the matters thus brought up. However, the application or reexamination proceeding is not considered open to further prosecution except as to such matters.

IV.   37 CFR 41.50(b) REJECTION

Where the Board makes a new rejection under 37 CFR 41.50(b) and no action is taken with reference thereto by appellant within 2 months, the examiner should proceed in the manner indicated in paragraphs I-III of this section as appropriate. See MPEP § 1214.01.

If the Board affirms the examiner’s rejection, but also enters a new ground of rejection under 37 CFR 41.50(b), the subsequent procedure depends upon the action taken by the appellant with respect to the 37 CFR 41.50(b) rejection.

  • (A) If the appellant elects to proceed before the examiner with regard to the new rejection (see MPEP § 1214.01, subsection I., the Board’s affirmance will be treated as nonfinal, and no request for rehearing of the affirmance need be filed at that time. In order to proceed before the examiner, applicant must amend the newly rejected claims or submit new Evidence, or both. If applicant presents arguments against the new grounds of rejection without amendment or Evidence, jurisdiction over the appeal should remain with the Board. The Board, having made the new ground of rejection and thus having the most complete understanding of the logic and analysis that led to the new ground, is in the best position to evaluate appellant’s rebuttal arguments in a request for rehearing. It is only in the instance where appellant chooses to amend the claims or submit new evidence that prosecution must be reopened and the case returned to the examiner to consider the amendment and/or new evidence in the first instance. Should an examiner discover that a reply containing only arguments against a new ground of rejection has been returned to the examining corps, the appeal should be returned to the Board for appropriate handling.

    Prosecution before the examiner of the 37 CFR 41.50(b) rejection can incidentally result in overcoming the affirmed rejection even though the affirmed rejection is not open to further prosecution. Therefore, it is possible for the application to be allowed as a result of the limited prosecution before the examiner of the 37 CFR 41.50(b) rejection. If an application becomes allowed, it should not be returned to the Board. Likewise, if an application is abandoned for any reason, it should not be returned to the Board. If the rejection under 37 CFR 41.50(b) is not overcome, the applicant (or patent owner in an ex parte reexamination proceeding) can file a second appeal (as discussed below). Such appeal must be limited to the 37 CFR 41.50(b) rejection and may not include the affirmed rejection. If an application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR 41.50(b) is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered. Similarly, the file of any ex parte reexamination proceeding including rejections affirmed by the Board but made nonfinal for purposes of judicial review must be returned to the Board so that the affirmance can be made final by the Board. The time for filing a request for rehearing on the affirmance or seeking court review runs from the date of the decision by the Board making the original affirmance final. See MPEP §§ 1214.03 and 1216.

  • (B) If the appellant elects to request rehearing of the new rejection (see MPEP § 1214.01, paragraph II), the request for rehearing of the new rejection and of the affirmance must be filed within 2 months from the date of the Board’s decision.

1214.07   Reopening of Prosecution [R-11.2013]

37 C.F.R. 1.198   Reopening after a final decision of the Patent Trial and Appeal Board.

When a decision by the Patent Trial and Appeal Board on appeal has become final for judicial review, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner except under the provisions of § 1.114 or § 41.50 of this title without the written authority of the Director,and then only for the consideration of matters not already adjudicated, sufficient cause being shown.

Sometimes an amendment is filed after the Board’s decision which presents a new or amended claim or claims. In view of the fact that prosecution is closed, the appellant is not entitled to have such amendment entered as a matter of right. However, if the amendment is submitted with a request for continued examination (RCE) under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e), prosecution of the application will be reopened and the amendment will be entered. See MPEP § 706.07(h), subsection XI. Note that the RCE practice under 37 CFR 1.114 does not apply to utility or plant patent applications filed before June 8, 1995 or to design applications. See 37 CFR 1.114(d) and MPEP § 706.07(h), subsection I. If the amendment obviously places an application in condition for allowance, regardless of whether the amendment is filed with an RCE, the primary examiner should recommend that the amendment be entered, and with the concurrence of the supervisory patent examiner, the amendment will be entered. Note MPEP § 1002.02(d).

Where the amendment cannot be entered, the examiner should write to the appellant indicating that the amendment cannot be entered and stating the reason why. The refusal may not be arbitrary or capricious.

Form paragraph 12.298 should be used:

¶ 12.298    Amendment After Board Decision, Entry Refused

The amendment filed [1] after a decision by the Patent Trial and Appeal Board is not entered because prosecution is closed. As provided in 37 CFR 1.198, prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner after a final decision of the Board except under the provisions of 37 CFR 1.114 (request for continued examination) or 37 CFR 41.50 without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the date the amendment was filed.
  • 3. This form paragraph is not to be used where a 37 CFR 41.50(b) rejection has been made by the Board.

In the event that claims stand allowed in the application under the conditions set forth in MPEP § 1214.06, paragraph II, the application should be passed to issue.

Petitions under 37 CFR 1.198 to reopen or reconsider prosecution of a case after decision by the Board, where no court action has been filed, are decided by the Technology Center Director, MPEP § 1002.02(c).

The Director of the USPTO also entertains petitions under 37 CFR 1.198 to reopen certain cases in which an appellant has sought review under 35 U.S.C. 141 or 145. This procedure is restricted to cases which have been decided by the Board and which are amenable to settlement without the need for going forward with the court proceeding. Such petitions will ordinarily be granted only in the following categories of cases:

  • (A) When the decision of the Board asserts that the rejection of the claims is proper because the claims do not include a disclosed limitation or because they suffer from some other curable defect, and the decision reasonably is suggestive that claims including the limitation or devoid of the defect will be allowable;
  • (B) When the decision of the Board asserts that the rejection of the claims is proper because the record does not include evidence of a specified character, and is reasonably suggestive that if such evidence were presented, the appealed claims would be allowable, and it is demonstrated that such evidence presently exists and can be offered; or
  • (C) When the decision of the Board is based on a practice, rule, law, or judicial precedent which, since the Board’s decision, has been rescinded, repealed, or overruled.

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

In the case of an appeal under 35 U.S.C. 141, if the petition is granted, steps will be taken to request the court to remand the case to the U. S. Patent and Trademark Office. If so remanded, the proposed amendments, evidence, and arguments will be entered of record in the application file for consideration, and further action will be taken by the Board in the first instance or by the examiner as may be appropriate. In the case of civil action under 35 U.S.C. 145, steps will be taken for obtaining dismissal of the action without prejudice to consideration of the proposals.

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