MPEP 1200

Question 1

37 CFR 41

Answer 1

Appeal Brief

Question 2

37 CFR 42

Question 3

Notice of Appeal

Answer 3

Based on substantive Issues (rejections)

can appeal only after claims have been twice rejected or after FOA

must be filed within 6 month statutory period

Question 4

Contents of an Appeal Brief

Answer 4

i. Real Party of Interest

ii. Related Appeals, Interferences, and Trials

iii. Summary of Claimed Subject Matter

iv. Argument directed to each and every rejection with separate headings for each

v. Claims Appendix containing copy of all claims involved in appeal

note: a brief shall not include any new or non-admitted amendment

Question 5

Notice of Appeal Requirements

Answer 5

i. Fee
ii. Filed within 6 month statutory period of response (no signature needed)

Question 6

Timing for Appeal Brief

Answer 6

2 months after date of receipt of Notice of Appeal

with a 5 month available extension starting from the date of receipt

must be paid with fee PRE AIA

Question 7

Notice of Non-Compliance

Answer 7

Appellant will be notified of the reason for non-compliance and given a time period to file an amended brief

Question 8

Rules for Extensions of time

Answer 8

37 CFR 1.136

1.136 (a) automatic extensions (up to 5-months )

1.136 (b) for extraordinary circumstrances

Question 9

Amendments After Filing Appeal Brief

Answer 9

37 CFR 41.33

amendments filed on or after the date of filing a brief may be admitted

(1) cancel claims that do not affect the scope of any other pending claim in proceeding

(2) rewrite dependent claims into independent format

Question 10

Amendments after Filing Notice of Appeal

Answer 10

(A) Cancel Claims

(B) Comply with any requirements set forth from previous action

(C) Present rejected claims in better form for consideration

(D) Amend Specs or Claims upon showing of good and sufficient reasons why amendment was necessary

Question 11

Affidavits or other Evidence

Answer 11

Can be submitted after Notice of Appeal and BEFORE Appeal Brief

Question 12

Examiners Answer Content

Answer 12

(1) Incorporates all grounds for rejection set forth in Office Action

(2) May include a new ground of rejection. Any rejection that relies upon any evidence NOT relied upon in the office action from which the appeal is taken is designated as NEW

Question 13

Appellant Response to Examiner Answer

Answer 13

must within 2 months from the date of Examiners Answer

(1) Request to Reopen Prosecution
with or without amendment or submission of new evidence (with fee). Will be treated as a response to withdraw from appeal

(2) Maintain Appeal. Filing a Reply Brief that addresses each new ground of rejection. No amendment or Rule 1.132 Affidavits or declarations

Extensions of Time under 1.136 (b)

Question 14

Oral Hearing

Answer 14

granted only when requested and fee is paid

must be filed within two months from date of examiner answer or on date of filing a reply brief

Extendable Time under 1.136 (b)

Question 15

Reply Brief Content

Answer 15

Filed as a matter of right

Must be filed within 2 months from the entry of the Examiners Answer

(1) Cannot include any new or non-admitted matter/evidence

(2) Any argument raised in the reply tried which was not raised in the appeal brief or not responsive to argument raised in examiners answer will NOT be considered unless good cause shown

Board takes jurisdiction :
i. Following the filing of Reply Brief; or
ii Upon Expiration of the period for filing such a submission

Extensions of Time Under 1.136 (b)

Question 16

Decisions By Board

Answer 16

(a) (1) Affirm or reverse the Examiner in whole or part or remand

(b) Issue a statement constituting a new ground of rejection

Question 17

Applicant Choices after New Ground of Rejection from Board

Answer 17

Within 2 MONTHS of decision

(1) Reopen Prosecution
- submit appropriate amendment of claims or new evidence and have the matter reconsidered by examiner

(2) Request for Rehearing/reconsideration

Extensions of time under 1.136 (b)

(3). Applicant may at any time file a continuation (RCE, 1.53(b) or 1.53(d)) during the appeal and expressly abandon the parent (RCE, 53(d)) or continue the appeal (53(b))

(4) Applicant may withdraw the appeal at any time
- note abandonment if there are no allowable claims

Question 18

If appeal at PTAB is lost

Answer 18

File in Eastern District of Virginia or Court of appeals (CAFC)

Eastern District of Virginia
- new evidence is allowed

CAFC
- remand back to examiner or agree on rejected claims
- no submission of new evidence

Question 19

Withdrawal of Appeal

Answer 19

before a decision from the board and after the period of reply to FOA

application is to be considered abandoned as the date the appeal was withdrawn UNLESS there are allowed claims