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2675    Appellant Brief [R-11.2013]

37 C.F.R. 41.66   Time for filing briefs.

  • (a) An appellant’s brief must be filed no later than two months from the latest filing date of the last-filed notice of appeal or cross appeal or, if any party to the proceeding is entitled to file an appeal or cross appeal but fails to timely do so, no later than two months from the expiration of the time for filing (by the last party entitled to do so) such notice of appeal or cross appeal. The time for filing an appellant’s brief or an amended appellant’s brief may not be extended.

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37 C.F.R. 41.67   Appellant’s brief.

  • (a)
    • (1) Appellant(s) may once, within time limits for filing set forth in § 41.66, file a brief and serve the brief on all other parties to the proceeding in accordance with § 1.903 of this title.
    • (2) The brief must be signed by the appellant, or the appellant’s duly authorized attorney or agent and must be accompanied by the requisite fee set forth in § 41.20(b)(2).
  • (b) An appellant’s appeal shall stand dismissed upon failure of that appellant to file an appellant’s brief, accompanied by the requisite fee, within the time allowed under § 41.66(a).
  • (c)
    • (1) The appellant’s brief shall contain the following items under appropriate headings and in the order indicated in paragraphs (c)(1)(i) through (c)(1)(xi) of this section.
      • (i) Real party in interest. A statement identifying by name the real party in interest.
      • (ii) Related appeals, interferences, and trials. A statement identifying by application, patent, appeal or interference number 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. Copies of any decisions rendered by a court or the Board in any proceeding identified under this paragraph must be included in an appendix as required by paragraph (c)(1)(xi) of this section.
      • (iii) Status of claims. A statement of the status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled). If the appellant is the owner, the appellant must also identify the rejected claims whose rejection is being appealed. If the appellant is a requester, the appellant must identify the claims that the examiner has made a determination favorable to patentability, which determination is being appealed.
      • (iv) Status of amendments. A statement of the status of any amendment filed subsequent to the close of prosecution.
      • (v) Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the independent claims involved in the appeal, which shall refer to the specification by column and line number, and to the drawing(s), 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(f), must be identified and the structure, material, or acts described in the specification as corresponding to each claimed function must be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters.
      • (vi) Issues to be reviewed on appeal. A concise statement of each issue presented for review. No new ground of rejection can be proposed by a third party requester appellant, unless such ground was withdrawn by the examiner during the prosecution of the proceeding, and the third party requester has not yet had an opportunity to propose it as a third party requester proposed ground of rejection.
      • (vii) Argument. The contentions of appellant with respect to each issue presented for review in paragraph (c)(1)(vi) of this section, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on. Any arguments or authorities not included in the brief permitted under this section or §§ 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown. Each issue must be treated under a separate heading. If the appellant is the patent owner, for each ground of rejection in the Right of Appeal Notice which appellant contests and which applies to two or more claims, the claims may be argued separately or as a group. When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. Any claim argued separately should be placed under a subheading identifying the claim by number. Claims argued as a group should be placed under a subheading identifying the claims by number. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.
      • (viii) Claims appendix. An appendix containing a copy of the claims to be reviewed on appeal.
      • (ix) Evidence appendix. An appendix containing copies of any evidence submitted pursuant to §§ 1.130, 1.131, or 1.132 of this title or of any other evidence entered by the examiner and relied upon by appellant in the appeal, along with a statement setting forth where in the record that evidence was entered in the record by the examiner. Reference to unentered evidence is not permitted in the brief. See § 41.63 for treatment of evidence submitted after appeal. This appendix may also include copies of the evidence relied upon by the examiner in any ground of rejection to be reviewed on appeal.
      • (x) Related proceedings appendix. An 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.
      • (xi) Certificate of service. A certification that a copy of the brief has been served in its entirety on all other parties to the reexamination proceeding. The names and addresses of the parties served must be indicated.
    • (2) A brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence after the date of filing the appeal.
  • (d) If a brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (c) of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If appellant does not file an amended brief within the set time period, or files an amended brief which does not overcome all the reasons for non-compliance stated in the notification, that appellant’s appeal will stand dismissed.

In order to file an appellant brief, it is necessary to have first filed a timely and proper notice of appeal or notice of cross appeal; see MPEP §§  2674 and 2674.01. Each party that filed a timely and proper notice of appeal or notice of cross appeal must then file its appellant brief with fee (set forth in 37 CFR 41.20(b)(2)) by the later of the following periods:

  • (A) no later than two months from the date of the last-filed notice of appeal or cross appeal; or
  • (B) if a patent owner or third party requester is entitled to file an appeal or cross appeal but fails to timely do so, no later than two months from the expiration of the time for filing (by the last party entitled to do so) such notice of appeal or cross appeal.

The time for filing an appellant brief may not be extended. 37 CFR 41.66(a).

Pursuant to 37 CFR 41.67(d), if a brief is filed which does not comply with all the requirements of 37 CFR 41.67(a) and (c), appellant will be notified and given a nonextendable period of one month within which to file an amended brief to correct the defect(s). Failure to timely file the appellant brief and fee within the time allowed will result in dismissal of the appeal of the party that failed to take the timely action. Note that if an appellant brief is late, or if an amended appellant brief is not submitted after a requirement to correct the defect(s), the respondent brief will be placed in the file; however, it will be marked as “not entered” since it is not formally received into the record, and it will not be considered. The same is true for an amended appellant brief which is late.

Where all parties who filed an appeal or cross appeal fail to timely file an appellant brief and fee within the time allowed, the prosecution of the reexamination proceeding is terminated by a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC), and a certificate is issued indicating the status of the claims at the time of appeal.

The appellant brief, as well as every other paper relating to an appeal, should indicate the number of the Central Reexamination Unit (CRU) Art Unit to which the reexamination is assigned and the reexamination control number. When an appellant brief is received, it is scanned and then entered into the file by the CRU support staff and then forwarded to the examiner.

A fee as set forth in 37 CFR 41.20(b)(2) is required when the appellant brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a). 37 CFR 41.67(c)(1) requires that the appellant shall provide, in the appellant brief, the authorities and arguments on which the appellant will rely to maintain the appeal, a concise explanation of subject matter defined in each of the independent claims involved in the appeal which explanation must refer to the specification by column and line number (and to the drawing, if any, by reference characters), an evidence appendix, a related proceedings appendix, and a copy of the claims involved. The copy of the claims (involved in the appeal) required in the claim appendix by 37 CFR 41.67(c)(1)(viii) should be a clean copy. The clean copy must include all brackets and underlining as required by 37 CFR 1.530(d)et seq.; thus, the copy of the claims on appeal must include all underlining and bracketing necessary 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 must be completely underlined. For the sake of convenience, the copy of the claims involved should start on a new page, and it should be double spaced.

The provisions of 37 CFR 41.67(c) should be carefully reviewed to ensure that a complete appellant brief is provided. Patent owners are reminded that their briefs in appeal cases must be responsive to every ground of rejection stated by the examiner which the patent owner-appellant contests. Third party requesters are reminded that their briefs in appeal cases must be responsive to each examiner determination of patentability (determination of inapplicability of a proposed rejection) which the third party requester-appellant contests. Oral argument at the hearing will not remedy such a deficiency in the appellant brief.

Where the appellant brief is not complete as to the provisions of 37 CFR 41.67(a) and (c), appellant will be notified (in accordance with 37 CFR 41.67(d) by the examiner that he/she is given one (1) month to correct the defect(s) by filing a supplemental appellant brief. Where this procedure has not been followed, the Board should remand the reexamination file to the examiner for appropriate action.

When the record clearly indicates an intentional failure to respond by appellant brief to any ground of rejection or determination of patentability, the examiner should so inform the Board in his/her answer and specify the claim(s) affected. Where the failure to respond by appellant brief appears to be intentional, the Board may dismiss the appeal (of the appropriate party) as to the claims involved. Oral argument at a hearing will not remedy such a deficiency in a brief.

It is essential that the Board 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 or determination to be clearly improper does not justify a failure on the part of the appellant to point out to the Board the argument, i.e., reasons, for that view. A distinction must be made between the lack of any argument and the presentation of arguments which carry no conviction. In the former case, dismissal is in order, while in the latter case a decision on the merits is made, although it may well be merely an affirmance based on the grounds or determination relied upon by the examiner.

Ignoring or acquiescing in any rejection or determination, even one based upon formal matters which could be corrected by subsequent amendments, will invite a dismissal of the appeal as to the appropriate party. The prosecution of the reexamination proceedings will be considered terminated as of the date of the dismissal of the appeal of all parties who filed an appeal or cross appeal.

  AMENDMENTS, AFFIDAVITS, DECLARATIONS, OR EXHIBITS

Pursuant to 37 CFR 41.67(c)(2), the brief is not to include any (A) new or non-admitted (non-entered) amendment, or (B) new or non-admitted (non-entered) affidavit or other evidence.

Pursuant to 37 CFR 41.63:

  • (A) Amendments filed after the date of filing an appeal (under 37 CFR 41.61) canceling claims may be admitted, where such cancellation does not affect the scope of any other pending claim in the proceeding;
  • (B) All other amendments filed after the date of filing an appeal will not be admitted, except as permitted where the patent owner takes action for reopening prosecution under 37 CFR 41.77(b)(1);
  • (C) Affidavits or other evidence filed after the date of filing an appeal will not be admitted, except as permitted where the patent owner takes action for reopening prosecution under 37 CFR 41.77(b)(1).

If the examiner wishes to have the patent owner provide an amendment (other than cancellation of claims as discussed above) or evidence during the appeal stage, the examiner must (A) reopen prosecution, (B) accept the amendment or evidence for entry, (C) permit timely comment on the new amendment or evidence by the third party requester, and (D) then issue a new Action Closing Prosecution (ACP). See MPEP § 2673.01.

2675.01   Respondent Brief [R-11.2013]

37 C.F.R. 41.66   Time for filing briefs.

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  • (b) Once an appellant’s brief has been properly filed, any brief must be filed by respondent within one month from the date of service of the appellant’s brief. The time for filing a respondent’s brief or an amended respondent’s brief may not be extended.

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37 C.F.R. 41.68   Respondent’s brief.

  • (a)
    • (1) Respondent(s) in an appeal may once, within the time limit for filing set forth in § 41.66, file a respondent brief and serve the brief on all parties in accordance with § 1.903 of this title.
    • (2) The brief must be signed by the party, or the party’s duly authorized attorney or agent, and must be accompanied by the requisite fee set forth in § 41.20(b)(2).
    • (3) The respondent brief shall be limited to issues raised in the appellant brief to which the respondent brief is directed.
    • (4) A requester’s respondent brief may not address any brief of any other requester.
  • (b)
    • (1) The respondent brief shall contain the following items under appropriate headings and in the order here indicated, and may include an appendix containing only those portions of the record on which reliance has been made.
      • (i) Real Party in Interest. A statement identifying by name the real party in interest.
      • (ii) Related Appeals, Interferences, and trials. A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences or judicial proceedings known to respondent, the respondent’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. Copies of any decisions rendered by a court or the Board in any proceeding identified under this paragraph must be included in an appendix as required by paragraph (b)(1)(ix) of this section.
      • (iii) Status of claims. A statement accepting or disputing appellant’s statement of the status of claims. If appellant’s statement of the status of claims is disputed, the errors in appellant’s statement must be specified with particularity.
      • (iv) Status of amendments. A statement accepting or disputing appellant’s statement of the status of amendments. If appellant’s statement of the status of amendments is disputed, the errors in appellant’s statement must be specified with particularity.
      • (v) Summary of claimed subject matter. A statement accepting or disputing appellant’s summary of the subject matter defined in each of the independent claims involved in the appeal. If appellant’s summary of the subject matter is disputed, the errors in appellant’s summary must be specified.
      • (vi) Issues to be reviewed on appeal. A statement accepting or disputing appellant’s statement of the issues presented for review. If appellant’s statement of the issues presented for review is disputed, the errors in appellant’s statement must be specified. A counter statement of the issues for review may be made. No new ground of rejection can be proposed by a requester respondent.
      • (vii) Argument. A statement accepting or disputing the contentions of appellant with each of the issues presented by the appellant for review. If a contention of the appellant is disputed, the errors in appellant’s argument must be specified, stating the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on. Each issue must be treated under a separate heading. An argument may be made with each of the issues stated in the counter statement of the issues, with each counter-stated issue being treated under a separate heading.
      • (viii) Evidence appendix. An appendix containing copies of any evidence submitted pursuant to §§ 1.130, 1.131, or 1.132 of this title or of any other evidence entered by the examiner and relied upon by respondent in the appeal, along with a statement setting forth where in the record that evidence was entered in the record by the examiner. Reference to unentered evidence is not permitted in the respondent’s brief. See § 41.63 for treatment of evidence submitted after appeal.
      • (ix) Related proceedings appendix. An appendix containing copies of decisions rendered by a court or the Board in any proceeding identified pursuant to paragraph (b)(1)(ii) of this section.
      • (x) Certificate of service. A certification that a copy of the respondent brief has been served in its entirety on all other parties to the reexamination proceeding. The names and addresses of the parties served must be indicated.
    • (2) A respondent brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.63 for amendments, affidavits or other evidence filed after the date of filing the appeal.
  • (c) If a respondent brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (b) of this section, respondent will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If respondent does not file an amended respondent brief within the set time period, or files an amended respondent brief which does not overcome all the reasons for non-compliance stated in the notification, the respondent brief and any amended respondent brief by that respondent will not be considered.

After an appellant brief has been properly filed, a party opposing the appellant may file a respondent brief in support of the claim determination(s) made in the Right of Appeal Notice (RAN) which are in favor of the opposing party. The respondent brief must, however, be limited to issues raised in the appellant brief to which the respondent brief is directed. 37 CFR 41.68(a)(3).

The respondent brief must be accompanied by the requisite fee set forth in 37 CFR 41.20(b)(2), and it must be filed within one month from the date of service of the appellant brief on the opposing party.

Pursuant to 37 CFR 41.66(b), the time for filing a respondent brief may not be extended. If a respondent brief is filed which does not comply with all the requirements of 37 CFR 41.68(a) and (b), respondent will be notified and given a nonextendable period of one month within which to file an amended brief to correct the defect(s). See 37 CFR 41.68(c). Failure to timely file a respondent brief and fee (or failure to timely complete the respondent brief, where it is noted by the examiner as being incomplete under 37 CFR 41.68(c)) will result in the respondent brief not being considered. Note that if the respondent brief is late, or if an amended respondent brief is not submitted after a requirement to correct the defect(s) (following a timely respondent brief), the respondent brief will be placed in the file; however, it will be marked as “not entered” since it is not formally received into the record, and it will not be considered. The same is true for an amended respondent brief which is late.

It should be noted that where a party fails to file a timely notice of appeal or notice of cross appeal, that party may no longer file an appellant brief to appeal a claim determination adverse to that party; however, that party is permitted to file a respondent brief in accordance with 37 CFR 41.66(b).

A fee as set forth in 37 CFR 41.20(b)(2) is required when the respondent brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a). The respondent brief should indicate the number of the Central Reexamination Unit (CRU) Art Unit to which the reexamination is assigned and the reexamination control number. A statement of what in the appellant brief is accepted and what is disputed must be provided in the respondent brief. Respondent must set forth the authorities and arguments upon which he/she will rely to dispute the contentions of the appellant with respect to the issues.

The provisions of 37 CFR 41.68(a) and (b) should be carefully reviewed to ensure that a complete respondent brief is provided. Where the respondent brief is not complete as to the provisions of 37 CFR 41.68(a) and (b), respondent will be notified (in accordance with 37 CFR 41.68(c)) by the examiner that respondent is given a non-extendable period of one month to correct the defect(s) by filing an amended respondent brief. Where this procedure has not been followed, the Board should remand the reexamination file to the examiner for appropriate action.

2675.02   Informalities in One or More of the Briefs [R-11.2013]

37 C.F.R. 41.67   Appellant’s brief.

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  • (d) If a brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (c) of this section, appellant will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If appellant does not file an amended brief within the set time period, or files an amended brief which does not overcome all the reasons for non-compliance stated in the notification, that appellant’s appeal will stand dismissed.

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37 C.F.R. 41.68   Respondent’s brief.

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  • (c) If a respondent brief is filed which does not comply with all the requirements of paragraph (a) and paragraph (b) of this section, respondent will be notified of the reasons for non-compliance and given a non-extendable time period within which to file an amended brief. If respondent does not file an amended respondent brief within the set time period, or files an amended respondent brief which does not overcome all the reasons for non-compliance stated in the notification, the respondent brief and any amended respondent brief by that respondent will not be considered.

Where an appellant or respondent brief does not comply with all the requirements of 37 CFR 41.67(a) and (c) or 37 CFR 41.68(a) and (b), respectively, such as missing fee or missing portion of the fee, a missing signature, inappropriate signature, less than three copies of the brief, no proof of service on a party; the appropriate party should be notified by the Board of the reasons for non-compliance and provided with a nonextendable period of one month within which to file an amended brief. A separate notification will be sent to each party, where the brief(s) of more than one party are non-compliant and/or defective. Where the same party’s appellant and respondent briefs are both informal, the Board may combine the notifications for both into one notification paper.

If an appellant does not file an amended appellant brief during the one-month period, or files an amended brief which does not overcome all the reasons for non-compliance or does not correct all defects stated in the notification, the appeal will stand dismissed as to that party.

If a respondent does not file an amended respondent brief during the one-month period, or files an amended brief which does not overcome all the reasons for non-compliance or does not correct all defects stated in the notification, the respondent brief will not be formally received into the record and will not be considered (though it will be placed in the file ).

Where a party does timely file an amended brief and overcomes all the reasons for non-compliance and corrects all defects stated in the notification, the amended brief will be entered and will be considered along with the original appellant or respondent brief, when the case is taken up by the examiner. After a party has filed an amended appellant brief correcting the defect(s), the other party is not permitted to file a responsive amended respondent brief, if the amended appellant brief correcting the defect(s) is directed to form and does not go to the merits of the case. This would be the case, for example, where the failure to provide a signature or a certificate of service is corrected.

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Last Modified: 03/27/2014 10:10:35