2274 Appeal Brief [R-5]
Where the appeal brief is not filed, but within the period allowed for filing the brief an amendment is presented which places the claims of the patent under reexamination in a patentable condition, the amendment may be entered. Amendments should not be included in the appeal brief.
As to separate amendments, i.e., amendments not included with the appeal brief, filed with or after the appeal, see MPEP § 1207.
II. TIME FOR FILING APPEAL BRIEF
The time for filing the appeal brief is 2 months from the date of the appeal.
III. EXTENSION OF TIME FOR FILING APPEAL BRIEF
In the event that the patent owner finds that he or she is unable to file a brief within the time allowed by the rules, he or she may file a petition with the appropriate extension of time fee, to the > Central Reexamination Unit (CRU) or < Technology Center (TC), requesting additional time (usually 1 month), and give reasons for the request. The petition should contain the address to which the response is to be sent. If sufficient cause is shown and the petition is filed prior to the expiration of the period sought to be extended (37 CFR 1.550(c)), the > CRU or < TC Director is authorized to grant the extension for up to 1 month. Requests for extensions of time for more than 1 month will also be decided by the > CRU or < TC Director, but will not be granted unless extraordinary circumstances are involved; e.g., death or incapacitation of the patent owner. The time extended is added to the last calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or Federal holiday.
IV. FAILURE TO TIMELY FILE APPEAL BRIEF
Failure to file the brief and/or the appeal brief fee within the permissible time will result in dismissal of the appeal. Form PTOL-468 is used to notify the patent owner that the appeal is dismissed. The reexamination prosecution is then terminated, and a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) (see MPEP § 2287) will subsequently be issued indicating the status of the claims at the time of appeal.
V. REQUIREMENTS FOR THE APPEAL BRIEF
A fee as set forth in 37 CFR 41.20(b)(2) is required when the appeal brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a). 37 CFR 41.37 provides that the appellant shall file a brief of the authorities and arguments on which he or she will rely to maintain his or her appeal, including a summary of claimed subject matter which must refer to the specification by page and line number, and to the drawing, if any, by reference characters, and a copy of the claims involved. Only one copy of the appeal brief is required. Where the request for reexamination was filed by a third party requester, a copy of the brief must be served on that third party requester.
In the case of a merged proceeding (see MPEP § 2283 and § 2285), one original copy of the brief should be provided for each reexamination proceeding and reissue application in the merged proceeding. In addition, a copy of the brief must be served on any third party requesters who are part of the merged proceeding.
For the sake of convenience, the copy of the claims involved should be double spaced and should start on a new page. Note that > the copy of the < claims on appeal in reexamination proceedings * > must < include all underlining and bracketing * > , as required by 37 CFR 1.530(f), < to reflect the changes made to the original patent claims throughout the prosecution of the reexamination. In addition, any new claims added in the reexamination should be completely underlined. This represents a departure from the procedure set forth in MPEP § 1205.02 for applications.
The brief, as well as every other paper relating to an appeal, should indicate the number of the * > art unit < to which the reexamination is assigned and the reexamination control number. When the brief is received, it is forwarded to the * > CRU or TC (depending which is examining the proceeding) < where it is entered in the file and referred to the examiner.
Patent owners are reminded that their briefs in appeal cases must be responsive to every ground of rejection stated by the examiner. A reply brief, if filed, shall be entered, except that amendments or affidavits or other evidence are subject to 37 CFR 1.116 and 41.33. See 37 CFR 41.41(a)(2).
It is essential that the Board of Patent Appeals and Interferences should be provided with a brief fully stating the position of the appellant with respect to each issue involved in the appeal so that no search of the record is required in order to determine that position. The fact that appellant may consider a ground to be clearly improper does not justify a failure on the part of the appellant to point out to the Board the reasons for that view in the brief.
See MPEP § 1205.02 for further discussion of the requirements for an appeal brief.
VI. DEFECTIVE APPEAL BRIEF
Where an appeal brief is defective, the examiner will notify the patent owner that the brief is defective, using PTOL-462R. A 1-month period is provided for the patent owner to cure the defect(s). Where items 1-9 in the form do not provide the defect which has been found in the brief, or where more explanation is needed as to one of items 1-9, box 10 should be checked and the nature of the defect(s) explained by the examiner in an attachment to form PTOL-462R. An example of this is where an appellant patent owner inadvertently fails to respond by way of brief to any ground of rejection under a separate heading, and it is clear from the record which ground has not been responded to. In such a case, appellant should be notified by the examiner that he or she is given 1 month to correct the defect by filing a supplemental brief.
It is important for the examiner to identify any defects in the brief and give the patent owner 1 month in which to cure the defects. Where this procedure has not been followed, the Board of Patent Appeals and Interferences (Board) may return the reexamination file to the examiner for compliance (i.e., for corrective action).
When the record clearly indicates intentional failure to respond by brief, to any ground of rejection, for example, the examiner should inform the Board of this fact in his or her answer and merely specify the claim(s) affected. Where the failure to respond by brief appears to be intentional, the Board may summarily sustain the rejection. Oral argument at the hearing will not remedy such deficiency of a brief.
The mere filing of any paper whatsoever entitled as a brief cannot necessarily be considered as compliance with 37 CFR 41.37. The rule requires that the brief must set forth the authorities and arguments relied on, and to the extent that it fails to do so with respect to any ground of rejection, that ground may be summarily sustained. A distinction must be made between the lack of any argument and the presentation of arguments that carry no conviction. In the former case summarily sustaining the rejection is in order, while in the latter case a decision on the merits is made, although it may well be merely an affirmance based on the grounds relied on by the examiner.
Appellant must traverse every ground of rejection set forth in the final rejection that appellant is presenting for review in the appeal. Oral argument at the hearing will not remedy a deficiency of failure to traverse a ground of rejection in the brief. Ignoring or acquiescing in any rejection, even one based upon formal matters which could be cured by subsequent amendment, will invite summarily affirmance of the rejection.
The reexamination prosecution is considered terminated as of the date of the dismissal of the appeal. After the appeal is dismissed, the examiner will proceed to issue a Notice of Intent to Issue Ex Parte Reexamination Certificate for the proceeding; see MPEP § 2287.