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2682    Action Following Decision [R-11.2013]

37 C.F.R. 41.79   Rehearing.

  • (a) Parties to the appeal may file a request for rehearing of the decision within one month of the date of:
    • (1) The original decision of the Board under § 41.77(a),
    • (2) The original § 41.77(b) decision under the provisions of § 41.77(b)(2),
    • (3) The expiration of the time for the owner to take action under § 41.77(b)(2), or
    • (4) The new decision of the Board under § 41.77(f).
  • (b)
    • (1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision. 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.
    • (2) 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.
    • (3) New arguments responding to a new ground of rejection made pursuant to § 41.77(b) are permitted.
  • (c) Within one month of the date of service of any request for rehearing under paragraph (a) of this section, or any further request for rehearing under paragraph (d) of this section, the owner and all requesters may once file comments in opposition to the request for rehearing or the further request for rehearing. The comments in opposition must be limited to the issues raised in the request for rehearing or the further request for rehearing.
  • (d) If a party to an appeal files a request for rehearing under paragraph (a) of this section, or a further request for rehearing under this section, 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is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing. If the Board opinion reflecting its decision on rehearing becomes, in effect, a new decision, and the Board so indicates, then any party to the appeal may, within one month of the new decision, file a further request for rehearing of the new decision under this subsection. Such further request for rehearing must comply with paragraph (b) of this section.
  • (e) The times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended.

37 C.F.R. 41.81   Action following decision.

The parties to an appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under § 1.983 of this title until all parties’ rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.

37 C.F.R. 1.981   Reopening after a final decision of the Board of Patent Appeals and Interferences.

When a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review, prosecution of the inter partes reexamination proceeding will not be reopened or reconsidered by the primary examiner except under the provisions of § 41.77 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.

The provisions of 37 CFR 41.77 through 41.79 and 37 CFR 1.979 through 1.983 deal with action by the parties and the examiner following a decision by the Board of Patent Appeals and Interferences (Board) in an inter partes reexamination proceeding.

After an appeal to the Board has been decided, a copy of the decision is mailed to all parties to the reexamination proceeding, and the original of the decision is placed in the file. The clerk of the Board notes the decision in the file history of the reexamination proceeding and in the record of appeals. The clerk then forwards the file to the Central Reexamination Unit (CRU), immediately, if the examiner is reversed, and after about 6 weeks if the examiner is affirmed or after a decision on a request for rehearing is rendered. The decision is processed by the CRU support staff, and the file is then forwarded to the examiner through the office of the CRU Director.

The Board, in its decision, may affirm or reverse the decision of the examiner, in whole or in part, on the grounds of rejection specified by the examiner and/or on the proposed grounds presented by a third party requester but not adopted by the examiner. A rejection of claims by the examiner may also be affirmed on the basis of the argument presented by the third party requester, and a finding of patentability may also be affirmed on the basis of the arguments presented by the patent owner. Further handling of the reexamination proceeding will depend upon the nature of the Board’s decision.

I.   THE BOARD AFFIRMS, REVERSES A REJECTION, OR AFFIRMS-IN-PART (AND REVERSES ONLY AS TO REJECTION(S))

Where the Board decision (A) affirms the examiner in whole, (B) reverses the examiner in whole where only rejections were appealed, or (C) affirms in part and reverses in part, where the only examiner decision overturned is that of rejecting claims, in these situations, the case is forwarded to the CRU which processes the decision and then stores the case file. The CRU will retain the case file until the expiration of both the period for requesting rehearing of the decision by the Board (in accordance with 37 CFR 41.79), and the period for the patent owner seeking court review of the decision of the Board (in accordance with 37 CFR 1.983) - with no further action having been taken by any party to the appeal. The time period for seeking review of a decision of the Board by the Court of Appeals for the Federal Circuit is two months from the date of the decision of the Board plus any extension obtained under 37 CFR 1.304. The two-month time period set forth in 37 CFR 1.304 for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit starts on: (1) the mailing date of the Board decision if the decision is mailed to the appellant, or (2) the notification date of the Board decision if electronic mail notification is sent to the appellant under the e-Office Action program, as indicated on form PTOL-90 accompanying the Board decision. The time period for requesting rehearing under 37 CFR 41.79 is one month and the one month period may not be extended. 37 CFR 41.79(e).

A.   No Action Taken by Parties to the Appeal

At least two weeks after the time for action by any party (to the appeal) has expired, the CRU support staff will forward the case (via the CRU Director) to the examiner. The delay is to permit any information as to requesting rehearing, or the filing of an appeal, to reach the CRU. Upon receipt of the reexamination, the examiner will take up the reexamination proceeding for action so that a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) can be issued in accordance with MPEP § 2687, to terminate the prosecution of the reexamination proceeding.

The following form paragraph should be used where the NIRC is issued:

¶ 26.67.01    Periods for Seeking Court Review or Rehearing Have Lapsed

The periods for seeking court review of, or a rehearing of, the decision of the Board of Patent Appeals and Interferences rendered [1] have expired and no further action has been taken by any party to the appeal. Accordingly, the appeal in this reexamination proceeding is considered terminated; see 37 CFR 1.979(b). The present Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is issued in accordance with MPEP § 2687 in order to terminate the present reexamination prosecution.

Examiner Note:

In bracket 1, enter the date of the Board decision.

The NIRC will indicate the status of all the claims in the case as a result of the Board decision. A statement will be included in the NIRC that “Claims ____ have been canceled as a result of the decision of the Board dated _______.”

Claims indicated as patentable prior to appeal except for their dependency from rejected claims not in the original patent will be treated as if they were rejected. See MPEP § 1214.06. The following two examples should be noted:

- Claim 10 has been added to the patent during the reexamination, or claim 10 is a patent claim that was amended during the reexamination. Claim 11 depends on claim 10. If the Board affirms a rejection of claim 10 and claim 11 was objected to prior to appeal as being patentable except for its dependency from claim 10, the examiner should cancel both claims 10 and 11 by formal examiner’s amendment attached as part of the NIRC.

- On the other hand, if both claims 10 and 11 were rejected prior to the appeal, then the patent owner was never put on notice that claim 11 could be made allowable by placing it in independent form. Thus, where the Board affirms a rejection against claim 10 but reverses the rejections against dependent claim 11, the examiner should convert dependent claim 11 into independent form by formal examiner’s amendment and cancel claim 10 (for which the rejection was affirmed) in the NIRC. In this instance, the examiner could also set a time period of one month or 30 days (whichever is longer) in which the patent owner may rewrite dependent claim 11 in independent form. Extensions of time under 37 CFR 1.956 will be permitted. If no timely response is received, the examiner will cancel both claims 10 and 11 in the NIRC.

See MPEP § 2687 for further guidance in issuing the NIRC and terminating the prosecution of the reexamination proceeding.

B.   A Request for Rehearing of the Decision

Any party to the appeal not satisfied with the Board decision may file a single request for rehearing of the decision. The request must be filed within one month from the date of the original decision under 37 CFR 41.77(a) or a new decision under 37 CFR 41.77(f). The one month period may not be extended. 37 CFR 41.79(e). The provisions of 37 CFR 41.79(b) require that any request must specifically state the points believed to have been misapprehended or overlooked in the Board’s decision, as well as all other grounds which rehearing is sought.

If a party does file a request for rehearing of the decision, any opposing party appellant or opposing party respondent may, within one month from the date of service of the request for rehearing, file responsive comments on the request for rehearing. 37 CFR 41.79(c). This one month period may not be extended. 37 CFR 41.79(e).

Where at least one request for rehearing of the decision is granted, the Board’s 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 the decision is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing. If the Board opinion reflecting its decision on rehearing indicates that the decision is a new decision, then any party to the appeal may, within one month of the new decision, file a further request for rehearing of the new decision. Such further request for rehearing must comply with 37 CFR 41.79(b). If the Board’s final decision on the request for rehearing is not timely appealed to the Court, the case is returned to the CRU for processing and subsequent forwarding to the examiner. When the examiner receives the reexamination from the CRU, the examiner will proceed to issue a NIRC and terminate the prosecution of the reexamination proceeding. 37 CFR 1.979(b).

II.   NEW GROUND OF REJECTION BY BOARD

Pursuant to 37 CFR 41.77(b), the Board may, in its decision on appeal, make a new rejection of one or more appealed claims on grounds not raised in the appeal, in which case the patent owner has the option of:

  • (A) requesting rehearing under 37 CFR 41.79(a); or
  • (B) submitting an appropriate amendment of the rejected claims, and/or new evidence (e.g., a showing of facts) relating to the claim.

The parties do not have the option of an immediate appeal to the U.S. Court of Appeals for the Federal Circuit because the decision under 37 CFR 41.77(b) is not a final decision.

A.   A Request for Rehearing of the Decision Which Includes a New Ground of Rejection

A patent owner’s request for rehearing by the Board must be filed within a nonextendable one month period set by 37 CFR 41.79(a). By proceeding in this manner, the patent owner waives his or her right to further prosecution before the examiner. In re Greenfield, 40 F.2d 775, 5 USPQ 474 (CCPA 1930). If the patent owner does file a request for rehearing of the decision, any third party requester that is a party to the appeal may, within a non-extendable one month period from the date of service of the request for rehearing, file responsive comments on the request. 37 CFR 41.79(c).

B.   Submission of Amendment or Showing of Facts After Decision Which Includes a New Ground of Rejection

If the patent owner elects to proceed before the examiner, the patent owner must take action within the one month period for response which will be set in the Board’s decision. Extensions of time under 37 CFR 1.956 are available to extend the period. 37 CFR 41.77(g). The extension(s) may not, however exceed six months from the Board’s decision.

When the patent owner submits a response pursuant to 37 CFR 41.77(b)(1), prosecution and examination will then be carried out under 37 CFR 41.77(c) through 37 CFR 41.77(f). Under 37 CFR 41.77(b)(1), the patent owner may amend the claims involved, or substitute new claims to avoid the art or reasons stated 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). The patent owner may also submit evidence or a showing of facts under 37 CFR 1.131(a) or 1.132, as may be appropriate. Argument without either amendment (of the claims so rejected) or the submission of evidence or a showing of facts (as to the claims so rejected) can result only in the examiner’s determination to maintain the Board’s rejection of the claims, since the examiner is without authority to find the claims patentable unless the claims are amended or unless the rejection is overcome by a showing of facts not before the Board. The new ground of rejection raised by the Board does not “reopen the prosecution” (under 37 CFR 41.77(b)(1) and 37 CFR 41.77(c) through 37 CFR 41.77(f)except as to that subject matter to which the new rejection was applied. Accordingly, any amendment or showing of facts not directed to that subject matter to which the new rejection was applied will be refused entry and will not be considered.

III.   BOARD DECISION REVERSES EXAMINER’S DETERMINATION NOT TO MAKE PROPOSED REJECTION

Where the Board decision reverses the examiner in whole (or affirms in part and reverses in part, with at least one examiner decision overturned as to the proposed rejections the examiner refused to adopt) as to the proposed rejections the examiner refused to adopt, pursuant to 37 CFR 41.77(a), the Board’s reversal of the examiner’s determination not to adopt a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims (which are subject to that proposed rejection). Accordingly, such reversal will be set forth in the Board’s decision as a new ground of rejection under 37 CFR 41.77(b). See subsection II. above for the action taken after a new ground of rejection.

IV.   REMAND BY BOARD

In accordance with 37 CFR 41.77(a), the Board, in its decision, may remand the reexamination proceeding to the examiner for further consideration. A Board decision which includes a remand in accordance with 37 CFR 41.77(a) will not be considered a “final decision” in the case.

The Board may remand the case to an examiner where appropriate procedure has not been followed, where further information is needed, or where the examiner is to consider something which the examiner did not yet consider (or it is not clear that the examiner had considered it).

After the examiner has addressed the remand, the examiner will either return the case to the Board (via the CRU) or reopen prosecution as appropriate. The Board, following conclusion of the proceedings before the examiner, will either adopt its earlier decision as final (if the remand decision lends itself to same) or will render a new decision based on all appealed claims, as it considers appropriate. In either case, final action by the Board will give rise to the alternatives available following a decision by the Board.

A.   Reopening Prosecution of Case

Reopening prosecution of a case after decision by the Board should be a rare occurrence. Cases which have been decided by the Board will not be reopened or reconsidered by the primary examiner, unless the provisions of 37 CFR 41.77 apply, or the written consent of the Director of the USPTO is obtained for the consideration of matters not already adjudicated, where sufficient cause has been shown. See 37 CFR 1.981.

A rejection under 37 CFR 41.77(b)(1) in effect nullifies the ACP and RAN and automatically reopens the prosecution of the subject matter of the claims so rejected by the Board. Accordingly, the written consent of the CRU Director is not required on the next Office action.

The written consent of the CRU Director is, however, required for an action reopening prosecution where the reexamination proceeding has been remanded to the examiner for a failure to follow appropriate procedure, to provide more information, or to consider something not yet considered, and the examiner then concludes after consideration of all the evidence and argument that a decision as to patentability made in the RAN should be changed. If so, the prosecution would be reopened with the written consent of the CRU Director and an ACP issued, so that any party adversely affected by the change in the examiner’s position will have an opportunity to consider it and subsequently appeal the examiner’s new decision.

The CRU Director will decide any petition to reopen prosecution of an inter partes reexamination proceeding after decision by the Board, where no court action has been filed. MPEP § 1002.02(c), item 1. In addition, the Director of the USPTO entertains petitions to reopen certain cases in which an appellant has sought review by the court. 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. See MPEP § 1214.07.

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