Editing MPEP 1200

{{MPEP Chapter|1100|1300}}

'''<big>Chapter 1200 Appeal</big>'''

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==1201 Introduction==

The United States Patent and Trademark Office 
(Office) in administering the Patent Laws makes 
many decisions of a substantive nature which the 
applicant may feel deny him or her the patent protection 
to which he or she is entitled. The differences of 
opinion on such matters can be justly resolved only by 
prescribing and following judicial procedures. Where 
the differences of opinion concern the denial of patent 
claims because of prior art or other patentability 
issues, the questions thereby raised are said to relate 
to the merits, and appeal procedure within the Office 
and to the courts has long been provided by statute 
(35 U.S.C. 134).

The line of demarcation between appealable matters 
for the Board of Patent Appeals and Interferences 
(Board) and petitionable matters for the Director 
of the U.S. Patent and Trademark Office (Director)
should be carefully observed. The Board will not ordinarily 
hear a question that should be decided by 
the Director on petition, and the Director will 
not ordinarily entertain a petition where the question 
presented is a matter appealable to the Board. 
However, since 37 CFR 1.181(f) states that any petition 
not filed within 2 months from the action complained 
of may be dismissed as untimely and since 
37 
CFR 1.144 states that petitions from restriction 
requirements must be filed no later than appeal, petitionable 
matters will rarely be present in a case by the 
time it is before the Board for a decision. In re Watkinson, 
900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990).

This chapter is primarily directed to ex parteappeals. For appeals in inter partes reexamination 
proceedings, see 37 CFR 41.60 to 41.81 and MPEP 
§
 
2674 to § 2683.



1202 Composition of Board [R-3]

35 U.S.C. 6 provides for a Board of Patent Appeals 
and Interferences as follows:




 

35 U.S.C. 6. Board of Patent Appeals and Interferences.



(a)ESTABLISHMENT AND COMPOSITION.— There 
shall be in the United States Patent and Trademark Office a Board 
of Patent Appeals and Interferences. The Director, the Deputy 
Commissioner, the Commissioner for Patents, the Commissioner 
for Trademarks, and the administrative patent judges shall constitute 
the Board. The administrative patent judges shall be persons 
of competent legal knowledge and scientific ability who are 
appointed by the Director.

(b)DUTIES.— The Board of Patent Appeals and Interferences 
shall, on written appeal of an applicant, review adverse 
decisions of examiners upon applications for patents and shall 
determine priority and patentability of invention in interferences 
declared under section 135(a). Each appeal and interference shall 
be heard by at least three members of the Board, who shall be designated 
by the Director. Only the Board of Patent Appeals and 
Interferences may grant rehearings.

The Office interprets the amendment to 35 
U.S.C. 6(a) in Pub. L. 107-273, sec. 13203(a), “Deputy 
Commissioner” to refer to the Deputy Director. As 
provided by 37 CFR 41.2, “Board” means the Board 
of Patent Appeals and Interferences and includes: 

(A)For a final Board action: 

(1)In an appeal or contested case, a panel of 
the Board; 

(2)In a proceeding under 37 CFR 41.3, the 
Chief Administrative Patent Judge or another official 
acting under an express delegation from the Chief 
Administrative Patent Judge.

(B)For non-final actions, a Board member or 
employee acting with the authority of the Board. 

“Board member” means the Under Secretary of 
Commerce for Intellectual Property and Director of 
the U.S. Patent and Trademark Office, the Deputy 
Under Secretary of Commerce for Intellectual Property 
and Deputy Director of the U.S. Patent and 
Trademark Office, the Commissioner for Patents, the 
Commissioner for Trademarks, and the administrative 
patent judges.



1203 Administrative Handling [R-3]

Ex parte appeals to the Board, and  papers relating 
thereto filed prior to a docketing notice from the 
Board, are forwarded to the Technology Center (TC) 
for processing. Appeal papers, such as the notice 
of appeal, appeal brief, and request for extension of 
time to file the brief, are processed by the appropriate 
TC.



If the brief is not filed within the time designated by 
37 
CFR 41.37, the applicant will be notified that 
the appeal stands dismissed.

The Board’s docketing procedure is designed to 
provide notification to the appellant within one month 
of receipt of an appealed application at the Board that 
(A)
 
the appeal has been received at the Board and 
docketed, or (B) the appeal is being returned to the 
examiner for attention to unresolved matters. 

When an application appearing to include an appeal 
under 35 U.S.C. 134 for decision by the Board is 
received from the patent examining corps, it will be 
reviewed for: 

(A)gross formalities (including, but not limited 
to, matters such as the presence of (1) a notice of 
appeal, (2) appellant’s brief, (3) examiner’s answer, 
and (4) evidence of an appeal conference having been 
held);

(B)fine formalities (including, but not limited to, 
matters such as (1) unacknowledged Information Disclosure 
Statements or other papers, and (2) deficiencies 
in the brief or answer); and 

(C)status matters (including, but not limited to, 
matters such as the presence of communications from 
appellant beyond the brief, such as a reply brief or a 
request for oral hearing).

If the appeal is ready for docketing (that is, if no 
return of the case to the examiner is required per the 
review) three events will occur: 

(A)an appeal number will be assigned; 

(B)the Board will issue a docketing notice, identifying 
the relevant appeal contents (brief, reply brief 
if any, request for oral hearing if any, and the filing 
date of each such item); and

(C)the appeal will be assigned to a master docket 
for subsequent reassignment to the docket of an individual 
Administrative Patent Judge (APJ), or directly 
to the docket of an individual APJ.

If the appeal cannot be docketed due to matters 
requiring further attention in the patent examining 
corps, the appeal will be administratively returned to 
the patent examining corps with an order indicating 
why the appeal cannot be docketed and notification of 




 

that return, in the form of a copy of the order, will be 
mailed to the appellant. No appeal number will be 
assigned until the appeal is ready for docketing.

The docketing notice or order indicating why the 
appeal cannot be docketed will provide the appellant 
and the examiner with notification that the appeal is: 
(A) at the Board in condition for referral to a panel; or 
(B) that the appeal is being returned to the patent 
examining corps to resolve matters requiring attention 
prior to decision of the appeal. Thus, the appellant 
will know to which organization to look for the next 
communication in the appealed application.

 “SPECIAL CASE” 

Subject alone to diligent prosecution by the applicant, 
an application for patent that once has been 
made special and advanced out of turn by the United 
States Patent and Trademark Office (Office) for 
examination will continue to be special throughout its 
entire course of prosecution in the Office, including 
appeal, if any, to the Board. See MPEP § 708.02.

A petition to make an application special after the 
appeal has been forwarded to the Board may be 
addressed to the Board. However, no such petition 
will be granted unless the brief has been filed and 
applicant has made the same type of showing required 
by the Director under 37 CFR 1.102. Therefore, 
diligent prosecution is essential to a favorable decision 
on a petition to make special.



1204 Notice of Appeal [R-3]

35 U.S.C. 134. Appeal to the Board of Patent Appeals and 
Interferences.



(a)PATENT APPLICANT.— An applicant for a patent, any 
of whose claims has been twice rejected, may appeal from the 
decision of the primary examiner to the Board of Patent Appeals 
and Interferences, having once paid the fee for such appeal.

(b)PATENT OWNER.— A patent owner in any reexamination 
proceeding may appeal from the final rejection of any claim 
by the primary examiner to the Board of Patent Appeals and Interferences, 
having once paid the fee for such appeal.

(c)THIRD-PARTY.— A third-party requester in an inter 
partes proceeding may appeal to the Board of Patent Appeals and 
Interferences from the final decision of the primary examiner 
favorable to the patentability of any original or proposed amended 
or new claim of a patent, having once paid the fee for such 
appeal. 

35 U.S.C. 41. Patent fees; patent and trademark search 
systems

(a)GENERAL FEES. — The Director shall charge the 
following fees: 





(6)APPEAL FEES. —

(A)On filing an appeal from the examiner to the Board 
of Patent Appeals and Interferences, $500.

(B)In addition, on filing a brief in support of the 
appeal, $500, and on requesting an oral hearing in the appeal 
before the Board of Patent Appeals and Interferences, $1,000.





37 CFR 41.31. Appeal to Board.

(a)Who may appeal and how to file an appeal. (1) Every 
applicant, any of whose claims has been twice rejected, may 
appeal from the decision of the examiner to the Board by filing a 
notice of appeal accompanied by the fee set forth in § 41.20(b)(1) 
within the time period provided under § 1.134 of this title for 
reply.

(2)Every owner of a patent under ex parte reexamination 
filed under § 1.510 of this title before November 29, 1999, any of 
whose claims has been twice rejected, may appeal from the decision 
of the examiner to the Board by filing a notice of appeal 
accompanied by the fee set forth in § 41.20(b)(1) within the time 
period provided under § 1.134 of this title for reply.

(3)Every owner of a patent under ex parte reexamination 
filed under § 1.510 of this title on or after November 29, 1999, 
any of whose claims has been finally (§ 1.113 of this title) 
rejected, may appeal from the decision of the examiner to the 
Board by filing a notice of appeal accompanied by the fee set forth 
in § 41.20(b)(1) within the time period provided under § 1.134 of 
this title for reply.

(b)The signature requirement of § 1.33 of this title does not 
apply to a notice of appeal filed under this section.

(c)An appeal, when taken, must be taken from the rejection 
of all claims under rejection which the applicant or owner proposes 
to contest. Questions relating to matters not affecting the 
merits of the invention may be required to be settled before an 
appeal can be considered.

(d)The time periods set forth in paragraphs (a)(1) through 
(a)(3) of this section are extendable under the provisions of § 
1.136 of this title for patent applications and § 1.550(c) of this title 
for ex parte reexamination proceedings.



I. APPEAL BY PATENT APPLICANT

Under 37 CFR 41.31(a)(1), an applicant for a 
patent dissatisfied with the primary examiner’s decision 
in the second  rejection of his or her claims 
may appeal to the Board for review of the examiner’s 




 

rejection by filing a notice of appeal and the required 
fee set forth in 37 CFR 41.20(b)(1) within the 
time period provided under 37 CFR 1.134 and 1.136. 
A notice of appeal may be filed after any of the claims 
has been twice rejected, regardless of whether the 
claim(s) 
 
has/have been finally rejected. The limitation 
of “twice  rejected” does not have to be related 
to a particular application.See Ex Parte Lemoine, 46 
USPQ2d 1420, 1423 (Bd. Pat. App. & Inter. 1994) 
(“so long as the applicant has twice been denied a 
patent, an appeal may be filed”). For example, if 
any claim was rejected in a parent application, and the 
claim is again rejected in a continuing application, 
then applicant can choose to file an appeal in the 
continuing application, even if the claim was rejected 
only once in the continuing application. Applicant 
cannot file an appeal in a continuing application, or 
after filing a request for continued examination (RCE) 
under 37 CFR 1.114, until the application is under a 
rejection. Accordingly, applicant cannot file a notice 
of appeal with an RCE regardless of whether the 
application has been twice rejected prior to the filing 
of the RCE.

Although the rules do not require that the 
notice of appeal identify the rejected claim(s) 
appealed, or be signed, applicants may file 
notices of appeal which identify the appealed claims 
and are signed.  It should be noted that the elimination 
of the requirement to sign a notice of appeal does 
not affect the requirements for other papers (such as 
an amendment under 37 CFR 1.116) submitted with 
the notice, or for other actions contained within the 
notice, e.g., an authorization to charge fees to a 
deposit account or to a credit card, to be signed. 
See MPEP § 509. Thus, failure to sign the notice of 
appeal may have unintended adverse consequences; 
for example, if an unsigned notice of appeal contains 
an (unsigned) authorization to charge the notice of
appeal fee to a deposit account, the notice of appeal 
will be unacceptable because the notice of appeal 
fee is lacking.

The notice of appeal must be filed within the period 
for reply set in the last Office action, which is normally 
3 
months for applications. See MPEP § 714.13. 
For example, failure to remove all grounds of 
rejection and otherwise place an application in condition 
for allowance or to file an appeal after final rejection 
will result in the application becoming 
abandoned, even if one or more claims have been 
allowed, except where claims suggested for interference 
have been copied. The notice of appeal and 
appropriate fee may be filed up to 6 months from the 
date of the Office action (e.g., a final rejection) 
from which the appeal was taken, so long as an 
appropriate petition and fee for an extension of time 
under 37 CFR 1.136(a) is filed either prior to or 
with the notice of appeal.

The use of a separate letter containing the notice 
of appeal is strongly recommended. Form PTO/SB/31 
may be used for filing a notice of appeal. Appellant 
must file an appeal brief in compliance with 37 CFR 
41.37 accompanied by the fee set forth in 37 CFR 
41.20(b)(2) within two months from the date of filing 
the notice of appeal. See MPEP § 1205.



II. APPEAL BY PATENT OWNER

 37 CFR 41.31(a)(2) and (a)(3) provides for 
appeal to the Board by the patent owner from any 
decision in an ex parte reexamination proceeding 
adverse to patentability, in accordance with 35 U.S.C. 
306 and 35 U.S.C. 134. See also MPEP § 2273.

 In an ex parte reexamination  filed before 
November 29, 1999, the patent owner may appeal to 
the Board after the second rejection of the 
claims.

 In an ex parte reexamination  filed on or after 
November 29, 1999, the patent owner may appeal to 
the Board only after the final rejection of one or more 
claims in the particular reexamination proceeding for 
which appeal is sought. 

 The fee for filing the notice of appeal by a patent 
owner is set forth in 37 CFR 41.20(b)(1), and the 
time period to pay the fee is determined as provided in 
37 
CFR 1.134 and 37 CFR 1.550(c).

 Failure to file an appeal in an ex parte reexamination 
proceeding will result in issuance of the reexamination 
certificate under 37 CFR 1.570.

 Appeals to the Board of Patent Appeals and Interferences 
in inter partes reexamination proceedings 
filed under 35 U.S.C. 311 are governed by 37 CFR 
41.60 through 41.81. 37 CFR 41.30
through 41.54 are not applicable to appeals in 
inter partes reexamination proceedings. See MPEP 
§ 2674 to § 2683 for appeals in inter partes reexamination 
proceedings.




 

The use of a separate letter containing the notice of 
appeal is strongly recommended. Form PTO/SB/31 
may be used for filing a notice of appeal.




 



Form PTO/SB/31. Notice of Appeal from the Examiner to the Board of Patent Appeals and InterferencesForm PTO/SB/31. Notice of Appeal from the Examiner to the Board of Patent Appeals and Interferences





 

Privacy Act StatementPrivacy Act Statement







 



III.ACKNOWLEDGEMENT

The Office does not acknowledge receipt of a 
notice of appeal by separate letter. However, if a self-
addressed postcard is included with the notice of 
appeal, it will be date stamped and mailed.

Appellant may also check the status of the 
application and the receipt date of the notice of appeal 
on the Office’s Patent Application Information 
Retrieval (PAIR) system via the Internet.

IV.DEFECTIVE NOTICE OF APPEAL

If a notice of appeal is defective, the Office will 
notify the applicant of the non-compliance. A notice 
of appeal is not a proper reply to the last Office action 
if none of the claims in the application has been twice 
rejected. A notice of appeal is defective if it was not 
timely filed within the time period set forth in the last 
Office action, or the notice of appeal fee set forth in 
37 CFR 41.20(b)(1) was not timely filed. Form 
PTOL-461 (Rev. 9-04 or later), Communication Re: 
Appeal, should be used to indicate defects in a notice 
of appeal.

When appellant files an appeal brief without filing 
a notice of appeal first, the Office should treat the 
appeal brief as a notice of appeal and an appeal brief. 
For this situation, appellant must file the brief within 
the time period for reply set forth in the last Office 
action and the fees under 37 CFR 41.20(b)(1) and 
(b)(2) for filing a notice of appeal and an appeal brief 
in compliance with 37 CFR 41.31 and 41.37.




 



Communiction Re: Appeal







 



1204.01Reinstatement of Appeal [R-3]

If an appellant wishes to reinstate an appeal after 
prosecution is reopened, appellant must file a new 
notice of appeal in compliance with 37 CFR 41.31and a complete new appeal brief in compliance with 
37 CFR 41.37. Any previously paid appeal fees set 
forth in 37 CFR 41.20 for filing a notice of appeal, filing 
an appeal brief, and requesting an oral hearing (if 
applicable) will be applied to the new appeal on the 
same application as long as a final Board decision has 
not been made on the prior appeal. If, however, the 
appeal fees have increased since they were previously 
paid, then appellant must pay the difference between 
the current fee(s) and the amount previously paid. 
Appellant must file a complete new appeal brief in 
compliance with the format and content requirements 
of 37 CFR 41.37(c) within two months from the date 
of filing the new notice of appeal. See MPEP 
§
 
1205.



1205 Appeal Brief [R-3]



37 CFR 41.37. Appeal brief.

(a)(1)Appellant must file a brief under this section within 
two months from the date of filing the notice of appeal under § 
41.31.

(2)The brief must be accompanied by the fee set forth in 
§ 41.20(b)(2)

(b)On failure to file the brief, accompanied by the requisite 
fee, within the period specified in paragraph (a) of this section, the 
appeal will stand dismissed.

(c)(1)The brief shall contain the following items under 
appropriate headings and in the order indicated in paragraphs 
(c)(1)(i) through (c)(1)(x) of this section, except that a brief filed 
by an appellant who is not represented by a registered practitioner 
need only substantially comply with paragraphs (c)(1)(i) through 
(c)(1)(iv) and (c)(1)(vii) through (c)(1)(x) of this section:

(i)Real party in interest. A statement identifying by 
name the real party in interest.

(ii)Related appeals and interferences. 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)(x) 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) and an identification of those 
claims that are being appealed.

(iv)Status of amendments. A statement of the status of 
any amendment filed subsequent to final rejection.

(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 page and line number, and to the drawing, 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, sixth paragraph, 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)Grounds of rejection to be reviewed on appeal. A 
concise statement of each ground of rejection presented for 
review.

(vii) Argument. The contentions of appellant with respect 
to each ground of rejection 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 or a 
reply brief filed pursuant to § 41.41 will be refused consideration 
by the Board, unless good cause is shown. Each ground of rejection 
must be treated under a separate heading. For each ground of 
rejection applying 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 involved in the 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 § 41.33 for treatment of evidence sub





 

mitted after appeal. This appendix may also include copies of the 
evidence relied upon by the examiner as to grounds 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.


(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 § 41.33 for amendments, affidavits or other 
evidence filed after the date of filing the appeal.

(d)If a brief is filed which does not comply with all the 
requirements of paragraph (c) of this section, appellant will be 
notified of the reasons for non-compliance and given a 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, the appeal will stand dismissed.


(e)The time periods set forth in this section are extendable 
under the provisions of § 1.136 of this title for patent applications 
and § 1.550(c) of this title for ex parte reexamination proceedings.




1205.01Time for Filing Appeal Brief 
[R-3]

37 CFR 41.37(a) provides 2 months from the 
date of the notice of appeal for the appellant to file an 
appeal brief and the appeal brief fee set forth in 
37 
CFR 41.20(b)(2). In an ex parte reexamination 
proceeding, the time period can be extended only 
under the provisions of 37 CFR 1.550(c). See also 
MPEP §
 
2274.

The usual period of time in which appellant must 
file his or her brief is 2 months from the date of 
appeal. The Office date of receipt of the notice of 
appeal (and not the date indicated on any Certificate 
of Mailing under 37 CFR 1.8) is the date from which 
this 2-month time period is measured. See MPEP 
§
 
512. If the notice of appeal is filed in accordance 
with 37 CFR 1.10 using the “Express Mail Post 
Office to Addressee” service of the United States 
Postal Service (USPS), the date of deposit with the 
USPS is the date from which this 2-month time period 
is measured because the date of deposit shown by the 
“date in” on the “Express Mail” label or other official 
USPS notation is considered to be the date of receipt. 
See MPEP § 513.

37 CFR 41.37(a) does not permit the brief to be 
filed within the time allowed for reply to the action 
from which the appeal was taken even if such time is 
later. Once appellant timely files a notice of appeal in 
compliance with 37 CFR 41.31, the time period for 
reply set forth in the last Office action is tolled and is 
no longer relevant for the time period for filing an 
appeal brief. For example, if appellant filed a notice 
of appeal within one month from the mailing of a final 
Office action which sets forth a 3-month shortened 
statutory period for reply, and then the appellant filed 
an appeal brief after 2 months from the filing date of 
the notice of appeal but within 3 months from the 
mailing of the final action, a petition for an extension 
of time for one month would be required. Similarly, if 
the appellant files an amendment or a request for continued 
examination (RCE) under 37 CFR 1.114, 
instead of an appeal brief, after 2 months from the filing 
date of the notice of appeal but within 3 months 
from the mailing of the final action, the petition for an 
extension of time would be required.

This 2-month time period for a patent application 
may be extended under 37 CFR 1.136(a), and if 
37 
CFR 1.136(a) is not available, under 37 CFR 
1.136(b) for extraordinary circumstances.

In the event that the appellant finds that he or she is 
unable to file a brief within the time period allotted by 
the rule, he or she may file a petition, with fee, to 
the Technology Center (TC), requesting additional 
time under 37 CFR 1.136(a). Additional time in 
excess of 5 months will not be granted unless extraordinary 
circumstances are involved under 37 CFR 
1.136(b). The time extended is added to the 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.



When an application is revived after abandonment 
for failure on the part of the appellant to take appropriate 
action after final rejection, and the petition to 
revive was accompanied by a notice of appeal, appellant 
has 2 
months, from the mailing date of the 
Director’s affirmative decision on the petition, in 
which to file the appeal brief. The time period for filing 
the appeal brief may be extended under 37 CFR 
1.136.




 

FAILURE TO TIMELY FILE AN APPEAL 
BRIEF

With the exception of a declaration of an interference 
or suggestion of claims for an interference and 
timely copying of claims for an interference, the 
appeal ordinarily will be dismissed if the brief and 
the fee under 37 CFR 41.20(b)(2) are not filed 
within the period provided by 37 CFR 41.37(a) or 
within such additional time as may be properly 
extended.

A brief must be filed to preserve appellant’s right to 
the appealed claims, notwithstanding circumstances 
such as:

(A)the possibility or imminence of an interference 
involving the subject application, but not resulting 
in withdrawal of the final rejection prior to the 
brief’s due date;

(B)the filing of a petition to invoke the supervisory 
authority of the Director under 37 CFR 
1.181;

(C)the filing of an amendment, even if it is one 
which the examiner previously has indicated may 
place one or more claims in condition for allowance, 
unless the examiner, in acting on the amendment, disposes 
of all issues on appeal;

(D)the receipt of a letter from the examiner stating 
that prosecution is suspended, without the examiner 
withdrawing the final rejection from which 
appeal has been taken or suggesting claims for an 
interference, and without an administrative patent 
judge declaring an interference with the subject application.


Although failure to file the brief and the required 
appeal brief fee within the permissible time will 
result in dismissal of the appeal, if any claims stand 
allowed, the application does not become abandoned 
by the dismissal, but is returned to the examiner for 
action on the allowed claims. See MPEP § 1215.04. If 
there are no allowed claims, the application is abandoned 
as of the date the brief was due. Claims which 
have been objected to as dependent from a rejected 
claim do not stand allowed. In a reexamination proceeding 
failure to file the brief will result in the issuance 
of the certificate under 37 CFR 1.570 or 
1.997.

If the time for filing a brief has passed and the 
application has consequently become abandoned, the 
applicant may petition to revive the application 
under 37 CFR 1.137, as in other cases of abandonment 
. See MPEP § 711.03(c). If the appeal is 
dismissed, but the application is not abandoned
because there is at least one allowed claim, 
the applicant may file a petition to reinstate the 
claims and the appeal, but a showing equivalent to 
that in a petition to revive under 37 CFR 1.137 is 
required. See MPEP § 711.03(c). In addition to 
the petition and petition fee, appellant must file:

(A)A request for continued examination (RCE) 
under 37 CFR 1.114 accompanied by a submission 
(i.e., a reply under 37 CFR 1.111) and the fee as set 
forth in 37 CFR 1.17(e) if the application is a utility or 
plant application filed on or after June 8, 1995, or a 
continuing application under 37 CFR 1.53(b) (or a 
CPA under 37 CFR 1.53(d) if the application is a 
design application); or

(B)An appeal brief and the appeal brief fee to 
reinstate the appeal. A proper brief and the required 
fee must be filed before the petition will be considered 
on its merits. 

Where the dismissal of the appeal is believed to be 
in error, filing a petition, pointing out the error, may 
be sufficient.



1205.02Appeal Brief Content [R-3]

Only one copy of the appeal brief is required. Any 
brief filed on or after September 13, 2004 must comply 
with the requirements set forth in 37 CFR 41.37and accompanied by the fee under 37 CFR 
41.20(b)(2), unless the brief has a certificate of mailing 
date before September 13, 2004. Any brief filed 
(or that has a certificate of mailing date) before September 
13, 2004 must comply with either the former 
37 CFR 1.192 or 37 CFR 41.37. The brief, as well as 
every other paper relating to an appeal, should indicate 
the number of the Technology Center (TC) to 
which the application or patent under reexamination 
is assigned and the application or reexamination control 
number. 

An appellant’s brief must be responsive to every 
ground of rejection stated by the examiner that the 
appellant is presenting for review in the appeal. If a 
ground of rejection stated by the examiner is not 




 

addressed in the appellant’s brief, that ground of 
rejection will be summarily sustained by the Board.

Oral argument at a hearing will not remedy such 
deficiency of a brief. The fact that appellant may consider 
a ground to be clearly improper does not justify 
a failure to point out to the Board the reasons for that 
belief.

The mere filing of paper entitled as a brief will 
not 
necessarily be considered to be in compliance 
with 37 CFR 41.37(c). The rule requires that the 
brief must set forth the authorities and arguments 
relied upon. It is essential that the Board  be 
provided with a brief fully stating the position of the 
appellant with respect to each ground of rejection 
presented for review in the appeal so that no search 
of the record is required in order to determine that 
position. Thus, the brief should not incorporate or 
reference previous responses. 37 CFR 41.37(c)(1) 
requires that the brief contain specific items, as discussed 
below. The brief must have all of the required 
items under appropriate headings in the order indicated 
in 37 CFR 41.37(c)(1). The headings are 
required even when an item is not applicable (e.g., if 
there is no evidence being relied upon by appellant in 
the appeal, the brief is still required to have the heading 
“Evidence appendix.”). When there is no information 
related to the particular section heading of the 
brief, the word “none” should be used under the heading.


An exception to the requirement that all the items 
specified in 37 CFR 41.37(c)(1) be included in the 
brief is made if the application or reexamination proceeding 
is being prosecuted by the appellant pro se, 
i.e., there is no attorney or agent of record, and the 
brief was neither prepared nor signed by a registered 
attorney or agent. The brief of a pro se appellant 
which does not contain all of the items, (i) to (x), 
specified in 37 CFR 41.37(c)(1) will be accepted 
as long as it substantially complies with the requirements 
of items (i) through (iv) and (vii) through 
(x). 



If in his or her brief, appellant relies on some reference, 
he or she is expected to provide the Board with 
a copy of it in the evidence appendix of the brief.

The specific items required by 37 CFR 
41.37(c)(1) are:

(i) Real party in interest. A statement identifying 
by name the real party in interest even if 
the party named in the caption of the brief is  the real 
party in interest. If appellant does not name the
real party in interestunder this heading, the Office 
will notify appellant of the defect in the brief and give 
appellant a time period within which to file an 
amended brief. See 37 CFR 41.37(d). If the appellant 
fails to correct the defect in the real party in interest 
section of the brief within the time period set forth in 
the notice, the appeal will stand dismissed.

The identification of the real party in interest 
allows members of the Board to comply with 
ethics regulations associated with working in matters 
in which the member has a financial interest to avoid 
any potential conflict of interest. When an application 
is assigned to a subsidiary corporation, the real 
party in interest is both the assignee and either the 
parent corporation or corporations, in the case of joint 
ventures. One example of a statement identifying the 
real party in interest is: The real party in interest is 
XXXX corporation, the assignee of record, which is a 
subsidiary of a joint venture between YYYY corporation 
and ZZZZ corporation.

(ii) Related appeals and interferences. A statement 
identifying all prior and pending appeals, 
judicial proceedings or interferences known to the 
appellant 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. Appellant 
includes the appellant, the appellant’s legal representative 
and the assignee. Such related proceedings must 
be identified by application number, patent number, 
appeal number (if available) or interference number 
(if available). The statement is not limited to 
copending applications. The requirement to identify 
related proceedings requires appellant to identify 
every related proceeding (e.g., commonly owned 
applications having common subject matter, claim to 
a common priority application) 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 
37 CFR 41.37(c)(1)(x). If appellant does not identify 
any other items under this section, it will be presumed 
that there are none.




 

(iii) Status of Claims. A statement of the status 
of all the claims in the application, or patent under 
reexamination, i.e., for each claim in the case, appellant 
must state whether it is cancelled, allowed or 
confirmed, rejected, withdrawn, objected to, etc. 
Each claim on appeal must be identified.

(iv) Status of Amendments. A statement of the 
status of any amendment filed subsequent to final 
rejection, i.e., whether or not the amendment has been 
acted upon by the examiner, and if so, whether it was 
entered, or denied entry. This statement should 
be of the status of the amendment as understood by 
the appellant. Appellants are encouraged to check 
the Office’s Patent Application Information Retrieval 
(PAIR) system for the status of any amendment or 
affidavit or other evidence filed after a final rejection 
or the filing of a notice of appeal.

Items (iii) and (iv) are included in 37 CFR 
41.37(c)(1) to avoid confusion as to which claims 
are on appeal, and the precise wording of those 
claims, particularly where the appellant has sought to 
amend claims after 
final rejection. The inclusion of 
items (iii) and (iv) in the brief will advise the 
examiner of what the 
appellant considers the status of 
the claims and post-final rejection amendments to be, 
allowing any disagreement on these questions to be 
resolved before the appeal is taken up for decision by 
the Board.

(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 must refer to the specification by page and line 
number, and to the drawing, if any, by reference characters. 
While reference to page and line number of 
the specification requires somewhat more detail 
than simply summarizing the invention, it is considered 
important to enable the Board to more quickly 
determine where the claimed subject matter is 
described in the application. For each independent 
claim involved in the appeal and for each dependent 
claim argued separately under the provisions of 
37 
CFR 41.37(c)(1)(vii), every means plus function 
and step plus function as permitted by 35 
U.S.C.
 
112, 
sixth paragraph, 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. 
If appellant does not provide a summary of the 
claimed subject matter as required by 37 CFR 
41.37(c)(1)(v), the Office will notify appellant of the 
defect in the brief and give appellant a time period 
within which to file an amended brief. See 37 CFR 
41.37(d).

(vi) Grounds of rejection to be reviewed on 
appeal. A concise statement of each ground of rejection 
presented for review. For example, the statement 
 “Whether claims 1 and 2 are unpatentable” 
would not comply with the rule, while the statements 
“Whether claims 1 and 2 are unpatentable 
under 35 U.S.C. 103 over Smith in view of Jones,” 
and “Whether claims 1 and 2 are unpatentable 
under 35 U.S.C. 112, first paragraph, as being based 
on a nonenabling disclosure” would comply with 
the rule. The statement cannot include any argument 
concerning the merits of the ground of rejection presented 
for review. Arguments should be included in 
the “Argument” section of the brief.

(vii) Argument. The appellant’s contentions 
with respect to each ground of rejection presented 
 and the basis for those contentions, including 
citations of authorities, statutes, and parts of the 
record relied on, should be presented in this section. 
A statement which merely points out what a claim 
recites will not be considered an argument for patentability 
of the claim.

37 CFR 41.37(c)(1)(vii) contains the following 
sentence: 

Any arguments or authorities not included in the brief or 
reply brief filed pursuant to § 41.41 will be refused consideration 
by the Board , unless good cause is shown.

This sentence emphasizes that all arguments and 
authorities which an appellant wishes the Board to 
consider should be included in the brief or reply 
brief. It should be noted that arguments not presented 
in the brief or reply brief and made for the 
first time at the oral hearing are not normally entitled 
to consideration. In re Chiddix, 209 USPQ 78 
(Comm’r Pat. 1980); Rosenblum v. Hiroshima, 220 
USPQ 383 (Comm’r Pat. 1983).

This sentence is not intended to preclude the 
filing of a supplemental paper if new authority should 
become available or relevant after the brief or reply 
brief was filed. An example of such circumstances 
would be where a pertinent decision of a court or 




 

other tribunal was not published until after the brief 
or reply brief was filed.

Each ground of rejection must be treated under a 
separate heading. For each ground of rejection applying 
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. The failure of appellant to 
separately argue claims which appellant has grouped 
together constitutes a waiver of any argument that the 
Board must consider the patentability of any grouped 
claim separately. See In re McDaniel, 293 F.3d 1379, 
1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002). 
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.

For example, if Claims 1 to 5 stand rejected under 
35 
U.S.C. 102(b) as being anticipated by U.S. Patent 
No. Y and appellant is only going to argue the limitations 
of independent claim 1, and thereby group 
dependent claims 2 to 5 to stand or fall with independent 
claim 1, then one possible heading as required by 
this subsection could be “Rejection under 
35 
U.S.C.
 
102(b) over U.S. Patent No. Y” and the 
optional subheading would be “Claims 1 to 5.” 
Another example is where claims 1 to 3 stand rejected 
under 35 
U.S.C. 102(b) as being anticipated by U.S. 
Patent No. Z and appellant wishes to argue separately 
the patentability of each claim, a possible heading as 
required by this subsection could be “Rejection under 
35 
U.S.C.
 
102 (b) over U.S. Patent No. Z,” and the 
optional subheadings would be “Claim 1,” “Claim 2”
and “Claim 3.” Under each subheading the appellant 
would present the argument for patentability of that 
claim. The best practice is to use a subheading for 
each claim for which separate consideration by the 
Board is desired.

(viii) Claims appendix. An appendix containing 
a copy of the claims involved in the appeal.

The copy of the claims  should be a clean copy 
and should not include any markings such as brackets 
or underlining except for claims in a reissue application. 
See MPEP § 1454 for the presentation of the 
copy of the claims in a reissue application.

The copy of the claims should be double-spaced 
and the appendix should start on a new page.

(ix) Evidence appendix. An appendix containing 
copies of any evidence submitted pursuant to 37 
CFR 1.130, 1.131, or 1.132 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 37 CFR 41.33for treatment of evidence submitted after appeal. This 
appendix may also include copies of the evidence 
relied upon by the examiner as to grounds of rejection 
to be reviewed on appeal. The appendix should start 
on a new page. If there is no evidence being relied 
upon by appellant in the appeal, then an evidence 
appendix should be included with the indication 
“none.”

(x) Related proceedings appendix. An appendix 
containing copies of decisions rendered by a court or 
the Board in any proceeding identified pursuant to 
37 
CFR 41.37(c)(1)(ii). The appendix should start on 
a new page. If there are no such copies of decisions 
being submitted in the appeal, then a related proceedings 
appendix should be included with the indication 
“none.”

 37 CFR 41.37(c)(1) merely specifies the minimum 
requirements for a brief, and does not prohibit 
the inclusion of any other material which an appellant 
may consider necessary or desirable, for example, a 
list of references, table of contents, table of cases, etc. 
A brief is in compliance with 37 
CFR 41.37(c)(1)
as long as it includes items (i) to (x) in the order 
set forth. 

37 CFR 41.37(c)(2) prohibits the inclusion in a 
brief of any new or non-admitted amendment, affidavit 
or other evidence. 

An example of a format and content for an appeal 
brief for a patent application is a brief containing the 
following items, with each item starting on a separate 
page:

(A)Identification page setting forth the applicant’s 
name(s), the application number, the filing date 
of the application, the title of the invention, the name 
of the examiner, the art unit of the examiner and the 
title of the paper (i.e., Appeal Brief);




 

(B)Table of Contents page(s);

(C)Real party in interest page(s);

(D)Related appeals and interferences page(s);

(E)Status of claims page(s);

(F)Status of amendments page(s);

(G)Summary of claimed subject matter page(s);

(H)Grounds of rejection to be reviewed on appeal 
page(s);

(I)Argument page(s);

(J)Claims appendix page(s);

(K)Evidence appendix page(s);

(L)Related proceedings appendix page(s).

In accordance with the above, the brief must be 
directed to the claims and to the record of the case as 
they appeared at the time of the appeal, but it may, of 
course, withdraw from consideration on appeal any 
claims or issues as desired by appellant. Even if the 
appeal brief withdraws from consideration any claims 
or issues (i.e., appellant acquiesces to any rejection), 
the examiner must continue to make the rejection in 
the examiner’s answer, unless an amendment obviating 
the rejection has been entered. 

A timely filed brief will be referred to the examiner 
for consideration of its propriety as to the appeal 
issues and for preparation of an examiner’s answer if 
the brief is proper and the application is not allowable. 
The examiner’s answer may withdraw the rejection of 
claims, if appropriate. The examiner may also determine 
that it is necessary to reopen prosecution to enter 
a new ground of rejection. See MPEP § 1207.04.



1205.03Non-Compliant Appeal Brief 
and Amended Brief [R-3]

The question of whether a brief complies with the 
rule is a matter within the jurisdiction of the examiner 
and the Board. The examiner will review the brief 
to ensure that the required items of the brief are 
present. Both the Board and the examiner will review 
the brief for compliance with the content requirements 
of the brief (37 CFR 41.37(c)). 37 CFR 41.37(d)
provides that if a brief is filed which does not comply 
with all the requirements of paragraph (c), the appellant 
will be notified of the reasons for noncompliance. 
Appellant will be given  1 month or 30 days from 
the mailing of the notification of non-compliance, 
whichever is longer to file an amended brief.
Extensions of time may be granted under 37 CFR 
1.136(a) or 1.136(b). The Office may use the form 
paragraphs set forth below or form PTOL-462, “Notification 
of Non-Compliant Appeal Brief (37 CFR 
41.37)” to notify appellant that the appeal brief is 
defective. The appeal will be dismissed if the appellant 
does not timely file an amended brief, or files an 
amended brief which does not overcome all the reasons 
for noncompliance of which the appellant was 
notified.

Under 37 CFR 41.37(d), the appellant may file 
an amended brief to correct the deficiencies in the 
original brief. Moreover, if appellant disagrees with 
the  holding of noncompliance, a petition under 
37 
CFR 1.181 or 41.3 may be filed. Filing a petition 
will not toll the time period. Appellant must 
timely reply to the notice or the Office communication 
that requires an amended brief.

In response to the Notice of Non-Compliant Appeal 
Brief (37 CFR 41.37) or the Office communication 
that requires an amended brief, appellant is required 
to file an amended brief that is either a complete new 
brief with the required corrections or a replacement 
section(s) as noted below:

(A)When the Office holds the brief to be defective 
solely due to appellant’s failure to name the real 
party in interest as required by 37 CFR 41.37(c)(1)(i), 
an entire new brief need not, and should not, be filed. 
Rather, a paper identifying by name the real party in 
interest will suffice. Failure to timely respond to the 
Office’s requirement will result in dismissal of the 
appeal. See MPEP § 1215.04 and § 711.02(b).

(B)When the Office holds the brief to be defective 
solely due to appellant’s failure to provide a summary 
of the claimed subject matter as required by 
37 
CFR 41.37(c)(1)(v), an entire new brief need not, 
and should not, be filed. Rather, a paper providing a 
summary of the claimed subject matter as required by 
37 CFR 41.37(c)(1)(v) will suffice. Failure to timely 
respond to the Office’s requirement will result in dismissal 
of the appeal. See MPEP § 1215.04 and 
§
 
711.02(b).

The examiner should not require a corrected brief 
for minor non-compliance in an appeal brief (e.g., the 
brief has a minor error in the title of a section heading). 
The following are a few other examples where 




 

the examiner may accept a brief that has minor non-
compliance:

(A)If the evidence appendix and related proceedings 
appendix are missing, but the record is clear that 
there is no evidence submitted and no related proceedings 
listed in the related appeals and interferences 
section, the examiner may accept the brief and state in 
the examiner’s answer that it is assumed that the 
appellant meant to include both appendixes with a 
statement of “NONE.” 

(B)If appellant only presents arguments for a 
dependent claim but not for the independent claim in 
a group of claims that are subject to the same ground 
of rejection, the examiner may accept the brief and 
fully explain how the limitations of the independent 
claim are rejected and address the appellant’s arguments 
regarding the dependent claim in the examiner’s 
answer. 

(C)If appellant fails to include a copy of the 
claims involved in the appeal in the claims appendix 
section of the brief, the examiner may either: (1) provide 
a copy of the claims in the examiner’s answer, or 
(2) object to the appeal brief and require an amended 
brief.

Once the brief has been filed, a petition to suspend 
proceedings may be considered on its merits, but will 
be granted only in exceptional cases, such as where 
the writing of the examiner’s answer would be fruitless 
or the proceedings would work an unusual hardship 
on the appellant.

For a reply brief, see MPEP § 1208.

The following forms: Form PTOL-461, “Communication 
Re: Appeal” (Rev. 9-04 or later) – reproduced 
in MPEP § 1204.01, Form PTOL-462, 
“Notification of Non-Compliant Appeal Brief (37 
CFR 41.37)” (Rev. 9-04 or later), or Form PTOL-
462R, “Notification of Non-Compliant Appeal Brief 
(37 CFR 41.37) in Ex Parte Reexamination” (Rev. 9-
04 or later) or the form paragraphs below may be used 
concerning defects in the appeal brief.




 



Notification of Non-Compliant Appeal Brief (37 CFR 41.37)Notification of Non-Compliant Appeal Brief (37 CFR 41.37)
Application No. Applicant(s) 
Notification of Non-Compliant Appeal Brief(37 CFR 41.37) Examiner Art Unit 
--The MAILING DATE of this communication appears on the cover sheet with the correspondence address-- 
The Appeal Brief filed on is defective for failure to comply with one or more provisions of 37 CFR 41.37. 
To avoid dismissal of the appeal, applicant must file an amended brief or other appropriate correction (see MPEP 
1205.03) within ONE MONTH or THIRTY DAYS from the mailing date of this Notification, whichever is longer. 
EXTENSIONS OF THIS TIME PERIODMAY BE GRANTED UNDER 37 CFR 1.136.1. The brief does not contain the items required under 37 CFR 41.37(c), or the items are not under the proper 
heading or in the proper order. 
2. The brief does not contain a statement of the status of all claims, (e.g., rejected, allowed, withdrawn, objected to, 
canceled), or does not identify the appealed claims (37 CFR 41.37(c)(1)(iii)). 
3. At least one amendment has been filed subsequent to the final rejection, and the brief does not contain a 
statement of the status of each such amendment (37 CFR 41.37(c)(1)(iv)). 
4. (a) The brief does not contain a concise explanation of the subject matter defined in each of the independent 
claims involved in the appeal, referring to the specification by page and line number and to the drawings, if any, 
by reference characters; and/or (b) the brief fails to: (1) identify, for each independent claim involved in the 
appeal and for each dependent claim argued separately, every means plus function and step plus function under 
35 U.S.C. 112, sixth paragraph, and/or (2) set forth the structure, material, or acts described in the specification 
as corresponding to each claimed function with reference to the specification by page and line number, and to 
the drawings, if any, by reference characters (37 CFR 41.37(c)(1)(v)). 
5. The brief does not contain a concise statement of each ground of rejection presented for review (37 CFR 
41.37(c)(1)(vi)) 
6. The brief does not present an argument under a separate heading for each ground of rejection on appeal (37 CFR 
41.37(c)(1)(vii)). 
7. The brief does not contain a correct copy of the appealed claims as an appendix thereto (37 CFR 
41.37(c)(1)(viii)). 
8. The brief does not contain copies of the evidence submitted under 37 CFR 1.130, 1.131, or 1.132 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 by the examiner, as an appendix 
thereto (37 CFR 41.37(c)(1)(ix)). 
9. The brief does not contain copies of the decisions rendered by a court or the Board in the proceeding 
identified in the Related Appeals and Interferences section of the brief as an appendix thereto (37 CFR 
41.37(c)(1)(x)). 
10. Other (including any explanation in support of the above items): 
.
U.S. Patent and Trademark OfficePTOL-462 (Rev. 7-05) Notification of Non-Compliant Appeal Brief (37 CFR 41.37) Part of Paper No. 





 

Notification of Non-Compliant Appeal Brief (37 CFR 41.37)in Ex Parte ReexaminationNotification of Non-Compliant Appeal Brief (37 CFR 41.37)in Ex Parte Reexamination
Control No. Patent Under Reexamination 
Notification of Non-Compliant Appeal 
Brief (37 CFR 41.37) in 
Ex Parte Reexamination Examiner 
Art Unit 
--The MAILING DATE of this communication appears on the cover sheet with the correspondence address--
The Appeal Brief filed on is defective for failure to comply with one or more provisions of 37 CFR 
41.37(c). 
Patent owner is given a TIME PERIOD of ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of 
this Notification for filing an amended brief or other appropriate correction of the Appeal brief (see MPEP 1205.03). If an 
amended brief or other appropriate correction (see MPEP 1205.03) is not timely submitted, the appeal will be dismissed 
as of the expiration of the period for reply to this Notification. Extensions of this time period may be obtained only under 
37 CFR 1.550(c). 
1. The brief does not contain the items required under 37 CFR 41.37(c), or the items are not under the proper 
heading or in the proper order. 
2. The brief does not contain a statement of the status of all claims (e.g., rejected, allowed or confirmed, withdrawn, 
objected to, canceled), or does not identify the appealed claims (37 CFR 41.37(c)(1)(iii)). 
3. At least one amendment has been filed subsequent to the final rejection, and the brief does not contain a 
statement of the status of each such amendment (37 CFR 41.37(c)(1)(iv)). 
4. The brief does not comply with 37 CFR 41.37(c)(1)(v) it that it fails to (1) contain a concise explanation of the 
subject matter defined in each of the independent claims involved in the appeal, referring to the specification by 
page and line number and to the drawings, if any, by reference characters; (2) identify, for each independent 
claim involved in the appeal and for each dependent claim argued separately, every means plus function and 
step plus function under 35 U.S.C. 112, sixth paragraph, and/or (3) set forth the structure, material, or acts 
described in the specification as corresponding to each claimed function with reference to the specification by 
page and line number, and to the drawings, if any, by reference characters. 
5. The brief does not contain a concise statement of each ground of rejection presented for review (37 CFR 
41.37(c)(1)(vi)). 
6. The brief does not present an argument under a separate heading for each ground of rejection on appeal (37 CFR 
41.37(c)(1)(vii)). 
7. The brief does not contain a correct copy of the appealed claims as an appendix thereto (37 CFR 
41.37(c)(1)(viii)). 
8. The brief does not contain, as an appendix thereto (37 CFR 41.37(c)(1)(ix)), copies of the evidence 
submitted under 37 CFR 1.130, 131, or 1.132 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 by the examiner. 
9. The brief does not contain, as an appendix thereto (37 CFR 41.37(c)(1)(x)), copies of the decisions rendered by 
a court or the Board in the proceeding identified in the Related Appeals and Interferences section of the brief. 
10. Other (including any explanation in support of the above items): 
.
 If this is a merged proceeding, one copy must be added for each reexamination in addition to the first reexamination.
cc: Requester (if third party requester) 
U.S. Patent and Trademark OfficePTOL-462R (Rev. 07-05) Notification of Non-Compliant Appeal Brief (37 CFR 41.37) in Ex Parte Reexamination Part of Paper No. 







 



¶ 12.109.01 Appeal Dismissed - Allowed Claims, Formal 
Matters Remaining

 In view of applicant‘s failure to file a brief within the time prescribed 
by 37 CFR 41.37(a)(1), the appeal stands dismissed and 
the proceedings as to the rejected claims are considered terminated. 
See 37 CFR 1.197(b).

This application will be passed to issue on allowed claim [1]
provided the following formal matters are corrected. Prosecution 
is otherwise closed.

[2]

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

Examiner Note:

1.This form paragraph should only be used if the formal matters 
cannot be handled by examiner’s amendment. See MPEP § 
1215.04.

2.In bracket 2, insert a description of the formal matters to be 
corrected.

3.Claims which have been indicated as containing allowable 
subject matter but are objected to as being dependent upon a 
rejected claim are to be considered as if they were rejected. See 
MPEP § 1215.04.

¶ 12.110 Extension To File Brief - Granted

The request for an extension of time under 37 CFR 1.136(b) for 
filing the appeal brief under 37 CFR 41.37 filed on [1] has been 
approved for [2].

Examiner Note:

1.In bracket 2, insert the amount of time the extension of time 
has been approved for.

2.This form paragraph should only be used when 37 CFR 
1.136(a) is not available or has been exhausted, such as in litigation 
reissues or when appellant requests to reopen prosecution or 
file a reply brief as set forth in 37 CFR 41.39(b) and 41.50(a)(2).

¶ 12.111 Extension To File Brief - Denied

The request for an extension of time under 37 CFR 1.136(b) for 
filing the appeal brief under 37 CFR 41.37 filed on [1] has been 
disapproved because no sufficient cause for the extension has 
been shown.

Examiner Note:

This form paragraph should only be used when 37 CFR 
1.136(a) is not available or has been exhausted, such as in litigation 
reissues or when appellant requests to reopen prosecution or 
file a reply brief as set forth in 37 CFR 41.39(b) and 41.50(a)(2). 

¶ 12.112 Brief Defective - Unsigned

The appeal brief filed on [1] is defective because it is unsigned. 
37 CFR 1.33. A ratification properly signed is required.

To avoid dismissal of the appeal, appellant must ratify the 
appeal brief within ONE MONTH or THIRTY DAYS from the 
mailing of this communication, whichever is longer. Extensions of 
time may be granted under 37 CFR 1.136.

¶ 12.116 Brief Unacceptable - Fee Unpaid

The appeal brief filed on [1] is unacceptable because the fee 
required under 37 CFR 41.20(b)(2) was not timely filed within 
two months from the date of filing the notice of appeal as set forth 
in 37 CFR 41.37(a)(1).

The appeal will be dismissed unless appellant obtains an extension 
of time under 37 CFR 1.136(a) and files the required appeal 
brief fee. The date on which the brief, the fee for filing the brief, 
the petition under 37 CFR 1.136(a), and the extension fee under 
37 CFR 1.17(a) are filed will be the date of the reply and also the 
date for determining the period of extension and the corresponding 
amount of the fee. In no case may an appellant obtain an 
extension for more than FIVE MONTHS under 37 CFR 1.136(a)
beyond the TWO MONTH period for filing the appeal brief. 

¶ 12.117 Brief Unacceptable - Not Timely Filed

The appeal brief filed on [1] is unacceptable because it was not 
timely filed within two months from the date of filing the notice of 
appeal as set forth in 37 CFR 41.37(a)(1).

The appeal will be dismissed unless appellant obtains an extension 
of time under 37 CFR 1.136(a). The date on which the appeal 
brief, the fee for filing the brief, the petition under 37 CFR 
1.136(a), and the extension fee under 37 CFR 1.17(a) are filed 
will be the date of the reply and also the date for determining the 
period of extension and the corresponding amount of the fee. In 
no case may an appellant obtain an extension for more than FIVE 
MONTHS under 37 CFR 1.136(a) beyond the TWO MONTH 
period for filing the appeal brief.

Examiner Note:

Use the 37 CFR 1.8 or 1.10 date, if applicable, instead of the 37 
CFR 1.6 date of receipt to determine the date the appeal brief was 
filed with the Office.



Form paragraph 12.169, followed by one or 
more of form paragraphs 12.170-12.178
may be used for noting noncompliance with 37 CFR 
41.37(c).



¶ 12.169 Heading for Notice Under 37 CFR 41.37(c)

NOTIFICATION OF NON-COMPLIANCE WITH THE 
REQUIREMENTS OF 37 CFR 41.37(c)

Examiner Note:

Use form PTOL-90 and follow with one or more of form paragraphs 
12.170 to 12.177 and conclude with form paragraph 
12.178.

¶ 12.170 Missing Section Headings

The brief does not contain the items of the brief required by 37 
CFR 41.37(c)(1) under the appropriate headings and/or in the 
order indicated. [1]




 

Examiner Note:

In bracket 1, insert an indication of the missing headings or 
errors in the order of items.

¶ 12.170.01 Defect in Statement of Real Party in Interest

The brief does not contain a statement under an appropriate 
heading identifying by name the real party in interest as required 
by 37 CFR 41.37(c)(1)(i).

Examiner Note:

A statement identifying by name the real party in interest is 
required, even if the party named in the caption of the brief is the 
real party in interest.

¶ 12.170.02 Defect in Statement of Related Appeals and 
Interferences

The brief does not contain a section under an appropriate heading 
identifying the related appeals, interferences, and judicial proceedings 
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 as required by 37 CFR 41.37 (c)(1)(ii).

¶ 12.171 Defect in Statement of Status of Claims

The brief does not contain a statement of the status of all the 
claims, e.g., rejected, allowed or confirmed, withdrawn, objected 
to, or canceled, and identification of the claims being appealed as 
required by 37 CFR 41.37(c)(1)(iii). [1]

Examiner Note:

In bracket 1, insert an indication of the missing claim status 
information.

¶ 12.172 Defect in Statement of Status of Amendment Filed 
After Final Rejection

The brief does not contain a statement of the status of an 
amendment filed subsequent to the final rejection as required by 
37 CFR 41.37(c)(1)(iv). [1]

Examiner Note:

In bracket 1, insert an identification of the amendment for 
which the status is missing.

¶ 12.173 Defect in Summary of Claimed Subject Matter

The brief does not contain a concise explanation of the subject 
matter defined in each of the independent claims involved in the 
appeal, referring to the specification by page and line number, and 
to the drawing, if any, by reference characters; and/or does not 
identify the structure, material, or acts described in the specification 
as corresponding to each claimed function for every means 
plus function and step plus function for each independent claim 
involved in the appeal and for each dependent claim argued separately 
by reference to the specification by page and line number, 
and to the drawing, if any, by reference characters, as required by 
37 CFR 41.37(c)(1)(v).[1]

Examiner Note:

1. In bracket 1, insert an indication of the missing explanation.

2. An appellant who is not represented by a registered practitioner 
is not required to provide a concise explanation of the subject 
matter under 37 CFR 41.37(c)(1)(v). See the introductory paragraph 
of 37 CFR 41.37(c)(1).

¶ 12.174 Defect in Statement of the Grounds of Rejection 
to be Reviewed on Appeal

The brief does not contain a concise statement of each ground 
of rejection presented for review as required by 37 CFR 
41.37(c)(1)(vi). [1]

Examiner Note:

1. In bracket 1, insert an indication of the missing concise 
statement of the issues presented for review.

2. An appellant who is not represented by a registered practitioner 
is not required to provide a concise statement of each ground 
of rejection presented for review under 37 CFR 41.37(c)(1)(vi). 
See the introductory paragraph of 37 CFR 41.37(c)(1).

¶ 12.176 Defect in the Arguments of the Appellant

The brief does not contain arguments of the appellant with 
respect to each ground of rejection presented for review, and the 
basis therefor, with citations of the statutes, regulations, authorities, 
and parts of the record relied on as required by 37 CFR 
41.37(c)(1)(vii).

Examiner Note:

This form paragraph may be followed by form paragraph 
12.176.01.

¶ 12.176.01 Separate Heading for Each Ground of 
Rejection

Each ground of rejection must be treated under a separate 
heading. For each ground of rejection applying to two or more 
claims, the claims may be argued separately or as a group. Any 
claim argued separately should be placed under a subheading 
identifying the claim by number. A statement which merely points 
out what a claim recites will not be considered an argument for 
separate patentability of the claim. See 37 CFR 41.37(c)(1)(vii).

¶ 12.177 No Copy of Appealed Claims in Appendix

The brief does not contain a copy of the claims involved in the 
appeal in an appendix.

¶ 12.178 Period For Reply Under 37 CFR 41.37(d)

Appellant is required to comply with provisions of 37 CFR 
41.37(c). To avoid dismissal of the appeal, Appellant must comply 
with the provisions of 37 CFR 41.37(c) within ONE MONTH or 
THIRTY DAYS, whichever is longer, from the mailing of this 
communication. Extensions of time may be granted under 37 CFR 
1.136.

Examiner Note:

1.This form paragraph should not be used in an ex parte reexamination 
proceeding. Use form PTOL-462R instead.

2.This form paragraph should appear at the end of a Notification 
of Non-Compliance with 37 CFR 41.37(c) drafted using form 
paragraphs 12.169-12.177.




 

3.The brief can no longer be filed within the time period for 
reply to the action from which the appeal was taken.





1206Amendments and Affidavits or 
Other Evidence Filed With or 
After Appeal [R-3]



37 CFR 41.33. Amendments and affidavits or other 
evidence after appeal.

(a)Amendments filed after the date of filing an appeal pursuant 
to § 41.31(a)(1) through (a)(3) and prior to the date a brief is 
filed pursuant to § 41.37 may be admitted as provided in § 1.116of this title.

(b)Amendments filed on or after the date of filing a brief 
pursuant to § 41.37 may be admitted:

(1)To cancel claims, where such cancellation does not 
affect the scope of any other pending claim in the proceeding, or

(2)To rewrite dependent claims into independent form.

(c)All other amendments filed after the date of filing an 
appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted 
except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), 
41.50(b)(1) and 41.50(c).

(d)(1) An affidavit or other evidence filed after the date of 
filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior 
to the date of filing a brief pursuant to § 41.37 may be admitted if 
the examiner determines that the affidavit or other evidence overcomes 
all rejections under appeal and that a showing of good and 
sufficient reasons why the affidavit or other evidence is necessary 
and was not earlier presented has been made.

(2)All other affidavits or other evidence filed after the 
date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) 
will not be admitted except as permitted by §§ 41.39(b)(1), 
41.50(a)(2)(i) and 41.50(b)(1).

I.AMENDMENTS

A new amendment must be submitted in a separate 
paper. Entry of a new amendment in an application on 
appeal is not a matter of right. The entry of an amendment 
(which may not include a new affidavit, declaration, 
exhibit or other evidence) submitted in an 
application on appeal is governed by 37 CFR 41.33, 
not 37 CFR 1.116.

Amendments filed after the filing of a notice of 
appeal, but prior to the date of filing a brief, may be 
admitted only to:

(A)cancel claims;

(B)comply with any requirement of form 
expressly set forth in a previous action;

(C)present rejected claims in better form for consideration 
on appeal; or

(D)amend the specification or claims upon a 
showing of good and sufficient reasons why the 
amendment is necessary and was not earlier presented. 
See 37 CFR 41.33(a).

If the examiner denies the entry of such an amendment, 
the examiner should use form PTOL-303, 
“Advisory Action Before the Filing of an Appeal 
Brief,” to notify the applicant of the non-entry and the 
reason for non-entry. 

Amendments filed on or after the date of filing a 
brief pursuant to 37 CFR 41.37 may be admitted only 
to:

(A)cancel claims, where such cancellation does 
not affect the scope of any other pending claim in the 
proceeding; or 

(B)rewrite dependent claims into independent 
form. 

Rewriting dependent claims into independent form 
as permitted under 37 CFR 41.33(a)(2) includes the 
following situations: 

(A)rewriting a dependent claim in independent 
form by adding thereto the limitations of the parent 
claim(s); and 

(B)rewriting an independent claim to incorporate 
therein all the subject matter of a dependent claim, 
canceling the dependent claim and in conjunction 
therewith changing the dependency of claims which 
had depended from the dependent claim being canceled 
to the amended independent claim that incorporates 
therein all the subject matter of the now canceled 
dependent claim.

If the examiner denies entry of an amendment filed 
on or after the date of filing a brief, the examiner 
should use form PTOL-304, “Advisory Action After 
the Filing of an Appeal Brief,” to notify the applicant 
of the non-entry and the reason for non-entry. 

Examiners must respond to all amendments filed 
after appeal has been taken and prior to termination of 
the appeal. If the examiner indicates (in the advisory 
action) that an amendment would be entered, it is 
imperative for the examiner to also state (in the same 
advisory action) how the individual rejection(s) set 
forth in the final Office action will be impacted by the 
entry of the amendment except where an amendment 




 

merely cancels claims. If the examiner determines 
that an amendment clearly places the application in 
condition for allowance, the examiner may enter the 
amendment and allow the application. Except for 
amendments that meet the conditions set forth above, 
all other amendments submitted after the date of filing 
a notice of appeal will not be entered except as permitted 
by 37 CFR 
41.39(b)(1), 41.50(a)(2)(i), 
41.50(b)(1) and 41.50(c).

See MPEP 714.02, 714.12 and 714.13 for the treatment 
of amendments, affidavits and other evidence 
submitted after the mailing of a final rejection or a 
non-final rejection, but prior to the filing of a notice of 
appeal under 37 CFR 
41.31(a)(1)-(a)(3). Any amendment, 
affidavit or other evidence filed after the mailing 
of a final Office action and on the same date as the 
notice of appeal will be treated by the Office as being 
filed prior to the notice of appeal and treated under 37 
CFR 1.116. Any amendment, affidavit or other evidence 
filed after the mailing of a non-final Office 
action and on the same date as the notice of appeal 
will be treated by the Office as being filed prior to the 
notice of appeal and treated under 37 CFR 1.111.

II.AFFIDAVITS OR OTHER EVIDENCE

Affidavits or other evidence (e.g., declarations or 
exhibits) submitted after the date of filing a notice of 
appeal, but prior to the date of filing a brief pursuant 
to 37 CFR 41.37, may be admitted if the examiner 
determines that:

(A)the affidavits or other evidence overcomes all 
rejections under appeal; and 

(B)a showing of good and sufficient reasons why 
the affidavit or other evidence is necessary and was 
not earlier presented has been made. 

If the examiner denies the entry of such an affidavit 
or other evidence, the examiner should use form 
PTOL-303, “Advisory Action Before the Filing of an 
Appeal Brief,” to notify the applicant of the non-entry 
and the reason for non-entry.

If the examiner determines that an affidavit or other 
evidence clearly places the application in condition 
for allowance, the examiner may enter the affidavit or 
other evidence and allow the application. Except as 
noted above, all other affidavits or other evidence 
filed after the date of filing a notice of appeal pursuant 
to 37 CFR 41.31(a)(1)-(a)(3) will not be admitted 
except as permitted by 37 CFR 
41.39(b)(1), 
41.50(a)(2)(i) and 41.50(b)(1).

An amendment, affidavit or other evidence
received after jurisdiction has passed to the Board 
should not be considered by the examiner unless 
remanded or returned by the Board for such purpose. 
See MPEP §
 
1210 and § 1211.02.

Note that 37 CFR 41.37(c)(1)(iv) requires a 
statement as to the status of any amendment filed subsequent 
to the final rejection. See also MPEP 
§
 
1205.




 



Advisory Action Before the Filing of an Appeal BriefAdvisory Action Before the Filing of an Appeal Brief
Application No. Applicant(s) 
Advisory Action 
Before the Filing of an Appeal Brief Examiner Art Unit 
--The MAILING DATE of this communication appears on the cover sheet with the correspondence address -- 
THE REPLY FILED FAILS TO PLACE THIS APPLICATION IN CONDITION FOR ALLOWANCE. 
1. The reply was filed after a final rejection, but prior to or on the same day as filing a Notice of Appeal. To avoid abandonment ofthis application, applicant must timely file one of the following replies: (1) an amendment, affidavit, or other evidence, whichplaces the application in condition for allowance; (2) a Notice of Appeal (with appeal fee) in compliance with 37 CFR 41.31; or (3) 
a Request for Continued Examination (RCE) in compliance with 37 CFR 1.114. The reply must be filed within one of the following 
time periods: 
a) Theperiod for reply expires months from the mailing date of the final rejection. 
b) The period for reply expires on: (1) the mailing date of this Advisory Action, or (2) the date set forth in the final rejection, whichever is later. In 
no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection. 
Examiner Note: If box 1 is checked, check either box (a) or (b). ONLY CHECK BOX (b) WHEN THE FIRST REPLY WAS FILED WITHIN 
TWO MONTHS OF THE FINAL REJECTION. See MPEP 706.07(f). 
Extensions of time may be obtained under 37 CFR 1.136(a). The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee 
have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The appropriate extension fee 
under 37 CFR 1.17(a) is calculated from: (1) the expiration date of the shortened statutory period for reply originally set in the final Office action; or (2) as 
set forth in (b) above, if checked. Any reply received by the Office later than three months after the mailing date of the final rejection, even if timely filed, 
may reduce any earned patent term adjustment. See 37 CFR 1.704(b). 
NOTICE OF APPEAL2. The Notice of Appeal was filed on . A brief in compliance with 37 CFR 41.37 must be filed within two months of the date of 
filing the Notice of Appeal (37 CFR 41.37(a)), or any extension thereof (37 CFR 41.37(e)), to avoid dismissal of the appeal. Sincea Notice of Appeal has been filed, any reply must be filed within the time period set forth in 37 CFR 41.37(a). 
AMENDMENTS3.The proposed amendment(s) filed after a final rejection, but prior to the date of filing a brief, will not be entered because(a)They raise new issues that would require further consideration and/or search (see NOTE below); 
(b)They raise the issue of new matter (see NOTE below); 
(c) They are not deemed to place the application in better form for appeal by materially reducing or simplifying the issues for 
appeal; and/or 
(d)They present additional claims without canceling a corresponding number of finally rejected claims. 
NOTE: . (See 37 CFR 1.116 and 41.33(a)). 
4.The amendments are not in compliance with 37 CFR 1.121. See attached Notice of Non-Compliant Amendment (PTOL-324). 
5. Applicant’s reply has overcome the following rejection(s): .6. Newly proposed or amended claim(s) would be allowable if submitted in a separate, timely filed amendment canceling the 
non-allowable claim(s). 
7.For purposes of appeal, the proposed amendment(s): a) will not be entered, or b) will be entered and an explanation of 
how the new or amended claims would be rejected is provided below or appended. 
The status of the claim(s) is (or will be) as follows: 
Claim(s) allowed: .
Claim(s) objected to: .
Claim(s) rejected: .
Claim(s) withdrawn from consideration: .
AFFIDAVIT OR OTHER EVIDENCE8. The affidavit or other evidence filed after a final action, but before or on the date of filing a Notice of Appeal will not be entered 
because applicant failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary andwas not earlier presented. See 37 CFR 1.116(e). 
9. The affidavit or other evidence filed after the date of filing a Notice of Appeal, but prior to the date of filing a brief, willnot be 
entered because the affidavit or other evidence failed to overcome all rejections under appeal and/or appellant fails to provide a 
showing a good and sufficient reasons why it is necessary and was not earlier presented. See 37 CFR 41.33(d)(1). 
10. The affidavit or other evidence is entered. An explanation of the status of the claims after entry is below or attached. 
REQUEST FOR RECONSIDERATION/OTHER11. The request for reconsideration has been considered but does NOT place the application in condition for allowance because: 
.12. Note the attached Information Disclosure Statement(s). (PTO/SB/08 or PTO-1449) Paper No(s). 
13. Other: . 
U.S. Patent and Trademark Office 
PTOL-303 (Rev. 7-05) Advisory Action Before the Filing of an Appeal BriefPart of Paper No. 





 

Advisory Action After the Filing of an Appeal BriefAdvisory Action After the Filing of an Appeal Brief
Application No. 
Applicant(s) 
Advisory Action 
After the Filing of an Appeal BriefExaminer 
Art Unit 
--The MAILING DATE of this communication appears on the cover sheet with the correspondence address -- 
The reply filed is acknowledged. 
1. The reply filed on or after the date of filing of an appeal brief, but prior to a final decision by the Board of Patent 
Appeals and Interferences, will not be entered because: 
a. The amendment is not limited to canceling claims (where the cancellation does not affect the scope of 
any other pending claims) or rewriting dependent claims into independent form (no limitation of a 
dependent claim can be excluded in rewriting that claim). See 37 CFR 41.33(b) and (c). 
b. The affidavit or other evidence is not timely filed before the filing of an appeal brief. 
See 37 CFR 41.33(d)(2). 
2. The reply is not entered because it was not filed within the two month time period set forth in 37 CFR 41.39(b), 
41.50(a)(2), or 41.50(b) (whichever is appropriate). Extensions of time under 37 CFR 1.136(a) are not available. 
Note: This paragraph is for a reply filed in response to one of the following: (a) an examiner’s answer that 
includes a new ground of rejection (37 CFR 41.39(a)(2)); (b) a supplemental examiner’s answer written in 
response to a remand by the Board of Patent Appeals and Interferences for further consideration of a rejection 
(37 CFR 41.50(a)(2)); or (c) a Board of Patent Appeals and Interferences decision that includes a new ground of 
rejection (37 CFR 41.50(b)). 
3. The reply is entered. An explanation of the status of the claims after entry is below or attached. 
4. Other: 
U.S. Patent and Trademark Office Part of Paper No.
PTOL-304 (7-05) Advisory Action







 



1207 Examiner’s Answer [R-3]



37 CFR 41.39. Examiner’s answer.

(a)(1)The primary examiner may, within such time as may be 
directed by the Director, furnish a written answer to the appeal 
brief including such explanation of the invention claimed and of 
the references relied upon and grounds of rejection as may be necessary, 
supplying a copy to appellant. If the primary examiner 
determines that the appeal does not comply with the provisions of 
§§ 41.31 and 41.37 or does not relate to an appealable action, the 
primary examiner shall make such determination of record.

(2)An examiner’s answer may include a new ground of 
rejection.

(b)If an examiner’s answer contains a rejection designated 
as a new ground of rejection, appellant must within two months 
from the date of the examiner’s answer exercise one of the following 
two options to avoid sua sponte dismissal of the appeal as to 
the claims subject to the new ground of rejection:

(1)Reopen prosecution. Request that prosecution be 
reopened before the primary examiner by filing a reply under § 
1.111 of this title with or without amendment or submission of 
affidavits (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. 
Any amendment or submission of affidavits or other evidence 
must be relevant to the new ground of rejection. A request that 
complies with this paragraph will be entered and the application 
or the patent under ex parte reexamination will be reconsidered by 
the examiner under the provisions of § 1.112 of this title. Any 
request that prosecution be reopened under this paragraph will be 
treated as a request to withdraw the appeal.

(2)Maintain appeal. Request that the appeal be maintained 
by filing a reply brief as set forth in § 41.41. Such a reply 
brief must address each new ground of rejection as set forth in § 
41.37(c)(1)(vii) and should follow the other requirements of a 
brief as set forth in § 41.37(c). A reply brief may not be accompanied 
by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this 
title) or other evidence. If a reply brief filed pursuant to this section 
is accompanied by any amendment, affidavit or other evidence, 
it shall be treated as a request that prosecution be reopened 
before the primary examiner under paragraph (b)(1) of this section.


(c)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.

After an appeal brief under 37 CFR 41.37 has 
been filed and the examiner has considered the issues 
on appeal, the examiner may:

(A)reopen prosecution to enter a new ground of 
rejection with approval from the supervisory patent 
examiner (see MPEP § 1207.04);

(B)withdraw the final rejection and allow the 
application if the examiner determines that the rejections 
have been overcome and no new ground of 
rejection is appropriate; or

(C)maintain the appeal by conducting an appeal 
conference (MPEP § 1207.01) and draft an examiner’s 
answer (MPEP § 1207.02). Any examiner’s 
answer mailed on or after September 13, 2004 may 
include a new ground of rejection (MPEP 
§
 
1207.03).



1207.01Appeal Conference [R-3]

An appeal conference is mandatory in all cases in 
which an acceptable brief (MPEP § 1205) has 
been filed. However, if the examiner charged with the 
responsibility of preparing the examiner’s answer 
reaches a conclusion that the appeal should not go forward 
and the supervisory patent examiner (SPE) 
approves, then no appeal conference is necessary. In 
this case, the examiner may reopen prosecution and 
issue another Office action. See MPEP § 1207.04. 

The participants of the appeal conference should 
include (1) the examiner charged with preparation of 
the examiner’s answer, (2) a supervisory patent examiner 
(SPE), and (3) another examiner, known as a conferee, 
having sufficient experience to be of assistance 
in the consideration of the merits of the issues on 
appeal. During the appeal conference, consideration 
should be given to the possibility of dropping cumulative 
art rejections and eliminating technical rejections 
of doubtful value.

 The examiner responsible for preparing the examiner’s 
answer should weigh the arguments of the other 
examiners presented during the appeal conference. If 
it is determined that the rejection(s) should be maintained, 
the examiner responsible for preparing the 
examiner’s answer will prepare the examiner’s 
answer.

 On the examiner’s answer, below the primary 
examiner’s signature, the word “Conferees:” should 
be included, followed by the typed or printed names 
of the other two appeal conference participants. These 
two appeal conference participants must place their 
initials next to their name. This will make the record 
clear that an appeal conference has been held. If the 
examiner’s answer contains a new ground of rejection, 
it must give appellant a two-month time period 




 

to reply to the new ground of rejection. The answer 
must also include the signature of a Technology Center 
(TC) Director or designee to indicate that he or she 
approves the new ground of rejection. See MPEP 
§
 
1207.03 and form paragraph 12.179.01.

 Upon receipt of the appeal case by the Board of 
Patent Appeals and Interferences (Board), the Board 
should review the application prior to assigning an 
appeal number to determine whether an appeal conference 
has been held. If the examiner’s answer does 
not contain the appropriate indication that an appeal 
conference has been held (i.e., including the names of 
the conferees and identifying themselves as the conferees 
along with their initials), the Board should 
return the application directly to the appropriate 
TC Director for corrective action. This return 
procedure by the Board should not be considered as a 
remand of the application. This procedure applies to 
all examiner’s answers received by the Board on or 
after November 1, 2000.

Before preparing the answer, the examiner should 
make certain that all amendments approved for entry 
have in fact been  entered in the file. The 
Board will return to the TC any application in which 
approved amendments have not been entered.



1207.02Contents of Examiner’s Answer 
[R-3]

The examiner should furnish the appellant with a 
written statement in answer to the appellant’s brief 
within 2 months after the receipt of the brief by the 
examiner.

The answer should contain a response to the allegations 
or arguments in the brief and should call attention 
to any errors in appellant’s copy of the claims. If 
any rejection is withdrawn, the withdrawal should be 
clearly stated in the examiner’s answer under subheading 
“Grounds of Rejection Withdrawn” in the 
section “Grounds of Rejection to be Reviewed on 
Appeal.” Grounds of rejection not specifically 
withdrawn by the examiner and not set forth in the 
examiner’s answer are usually treated by the Board
as having been dropped, but may be considered by the 
Board if it desires to do so. The examiner should treat 
affidavits, declarations, or exhibits filed with  the 
notice of appeal in accordance with 37 CFR 
1.116. If an affidavit, declaration, or exhibit was 
refused entry under 37 CFR 1.116 or prohibited by 
37 CFR 41.33, the examiner should not comment on 
it in the examiner’s answer. Likewise, it would be 
improper for appellant to rely on an affidavit, declaration, 
or exhibit, which was not entered, in an 
appeal brief. If appellant has grounds for challenging 
the non-entry of an affidavit, declaration, or exhibit, 
he or she should file a timely petition seeking supervisory 
review of the non-entry. Any affidavits or declarations 
in the file swearing behind a reference
should be clearly identified by the examiner as being 
considered under  37 CFR 1.131 . 

If a document being relied upon by the examiner 
in support of a rejection is in a language other 
than English, a translation must be obtained so that 
the record is clear as to the precise facts the examiner 
is relying upon in support of the rejection. The translation 
should be obtained prior to the appeal conference 
so that the participants of the appeal conference 
can consider the translation. The examiner should reference 
the pertinent portions of the translation at least 
in the grounds of rejection section of the answer. See 
MPEP § 706.02 for reliance upon abstracts and foreign 
language documents in support of a rejection.

If the brief in compliance with 37 CFR 41.37 fails 
to address all grounds of rejection advanced by the 
examiner, the examiner should identify each ground 
of rejection not addressed by the brief in the examiner’s 
answer under a subheading “Grounds of Rejection 
Not on Review” in the section “Grounds of 
Rejection to be Reviewed on Appeal.”

Because of the practice of the  Office in entering 
amendments after final action under justifiable circumstances 
for purposes of appeal, many cases coming 
before the Board for consideration contain claims 
which are not the claims treated in the examiner’s 
final rejection. They are either entirely new claims or 
amended versions of the finally rejected claims or 
both. Where an amendment under 37 CFR 1.116 or 
41.33 would be entered for appeal purposes, the 
examiner must identify (in an advisory action) how 
one or more individual rejections set forth in 
the final 
rejection would be used to reject the added 
or 
amended claim(s).  

If there is a complete and thorough development of 
the issues at the time of final rejection, it is possible to 
save time in preparing the examiner’s answer required 
by 37 
CFR 41.39 by copying a rejection from a 




 

prior Office action and then pasting the copied rejection 
into the answer. An examiner’s answer should not 
refer, either directly or indirectly, to any prior Office 
action without fully restating the point relied on in the 
answer. Of course, if the examiner feels that some further 
explanation of the rejection is necessary, he or 
she should include it in the ground of rejection set 
forth in the answer. For example, if a rejected claim 
were amended after the final rejection by adding limitations, 
the examiner should address the added limitations 
in the ground of rejection set forth in the answer. 
The statement of the rejection in the answer must 
account for the claim as amended and the answer 
must also include any necessary rebuttal of arguments 
presented in the appellant’s brief. 



The examiner should reevaluate his or her position 
in the light of the arguments presented in the brief, 
and should expressly withdraw any rejections not 
adhered toin the “Grounds of Rejection Withdrawn” 
subsection of the examiner’s answer. This 
should be done even though any rejection not 
repeated and discussed in the answer may be taken by 
the Board as having been withdrawn. Ex parte Emm,
118 USPQ 180 (Bd. App. 1957).

A new ground of rejection is  permitted in an 
examiner’s answer. See MPEP §
 
1207.03. If 
reopening of prosecution is necessary, the examiner 
must obtain approval from the supervisory patent 
examiner prior to reopening prosecution after an 
appeal. See MPEP § 1002.02(d) and § 1207.04.

All correspondence with the Board, whether by the 
examiner or the appellant, must be on the record. No 
unpublished decisions which are unavailable to the 
general public by reason of 35 U.S.C. 122(a) can be 
cited by the examiner or the appellant except that 
either the examiner or the appellant has the right to 
cite an unpublished decision in an application having 
common ownership with the application on appeal.



If an examiner’s answer is believed to contain a 
new interpretation or application of the existing patent 
law, the examiner’s answer, application file, and an 
explanatory memorandum should be forwarded to the 
TC Director for consideration. See MPEP § 1003. If 
approved by the TC Director, the examiner’s answer 
should be forwarded to the Office of the Deputy Commissioner 
for Patent Examination Policy for final 
approval.

Briefs must comply with 37 CFR 41.37, and all 
examiner’s answers filed in response to such briefs 
must comply with the guidelines set forth below.

(A)CONTENT REQUIREMENTS FOR 
EXAMINER’S ANSWER. The examiner’s answer is 
required to include, under appropriate headings, in the 
order indicated, the following items:

(1)Real Party in Interest. A statement 
acknowledging that the brief has identified by 
name the real party in  interest .

(2)Related Appeals and Interferences. A statement 
identifying by application, patent, appeal or 
interference number all other prior and pending 
appeals, interferences or judicial proceedings known 
to the examiner 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 should be 
included in the Related proceedings appendix section.


(3)Status of Claims. A statement of whether 
the examiner agrees or disagrees with the statement of 
the status of claims contained in the brief . If the 
examiner disagrees with the statement of the status of 
the claims contained in the brief, the examiner must 
set forth a correct statement of the status of all the 
claims in the proceeding.

(4)Status of Amendments After Final. A 
statement of whether the examiner agrees or disagrees 
with the statement of the status of amendments 
contained in the brief and an explanation of any disagreement.


(5)Summary of Claimed Subject Matter. A 
statement of whether the examiner agrees or disagrees 
with the summary of claimed subject matter contained 
in the brief and an explanation of any disagreement.

(6)Grounds of Rejection to be Reviewed 
on Appeal. A statement of whether the examiner 
agrees or disagrees with the statement of the grounds 
of rejection to be reviewed set forth in the brief and an 
explanation of any disagreement. Form paragraphs 
12.154 and 12.154.01 or 12.154.02 may be used. In 
addition, the examiner must include the following 
subheadings (if appropriate): 




 

(a)“Grounds of Rejection Withdrawn” - a 
listing of grounds of rejection under appeal that the 
examiner has withdrawn (form paragraph 12.154.05 
may be used);

(b)“Grounds of Rejection Not On Review” 
- a listing of all grounds of rejection that have not 
been withdrawn and have not been presented by the 
appellant for review in the brief (form paragraph 
12.154.011 may be used); 

(c)“Non-Appealable Issues” - a listing of 
any non-appealable issues in the brief (form paragraph 
12.154.03 may be used); and

(d)“New Grounds of Rejection” - a listing 
of any new grounds of rejection (prominently identified, 
e.g., a separate heading with all capitalized letters) 
that has been approved by the TC Director, or a 
designee. Form paragraph 12.154.04 may be used.



(7) Claims Appendix. A statement of 
whether the copy of the appealed claims contained in 
the appendix to the brief is correct and, if not, a correct 
copy of any incorrect claim.



(8)Evidence Relied Upon. A listing of the 
evidence relied on (e.g., patents, publications, 
admitted prior art), and, in the case of nonpatent references, 
the relevant page or pages.



(9) Grounds of Rejection. For each ground of 
rejection maintained by the examiner and each 
new ground of rejection (if any), an explanation of the 
ground of rejection.

(a)For each rejection under 35 U.S.C. 112, 
first paragraph, the examiner’s answer, must
explain how the first paragraph of 35 U.S.C. 112 is 
not complied with, including, as appropriate, how the 
specification and drawings, if any, 

(i)do not describe the subject matter 
defined by each of the rejected claims, 

(ii)would not enable any person skilled 
in the art to make and use the subject matter defined 
by each of the rejected claims without undue experimentation 
including a consideration of the undue 
experimentation factors set forth in MPEP 
§
 
2164.01(a), and 

(iii) do not set forth the best mode contemplated 
by the appellant of carrying out his or her 
invention.

(b)For each rejection under 35 U.S.C. 112, 
second paragraph, the examiner’s answer must
explain how the claims do not particularly point out 
and distinctly claim the subject matter which applicant 
regards as the invention.

(c)For each rejection under 35 U.S.C. 102, 
the examiner’s answer must explain why the 
rejected claims are anticipated or not patentable under 
35 U.S.C. 102, pointing out where all of the specific 
limitations recited in the rejected claims are found in 
the prior art relied upon in the rejection.

(d)For each rejection under 35 U.S.C. 103, 
the examiner’s answer must:

(i)state the ground of rejection and point 
out where each of the specific limitations recited in 
the rejected claims is found in the prior art relied on in 
the rejection, 

(ii)identify the differences between 
the rejected claims and the prior art relied on (i.e., 
the primary reference), and

(iii)explain why it would have been 
obvious at the time the invention was made to a person 
of ordinary skill in the art to have modified the 
primary reference to arrive at the claimed subject matter.


(e)For each rejection under 35 U.S.C. 102or 103 where there are questions as to how limitations 
in the claims correspond to features in the prior art 
even after the examiner complies with the requirements 
of paragraphs (c) and (d) of this section, the 
examiner must compare at least one of the 
rejected claims feature by feature with the prior art 
relied on in the rejection. The comparison must
align the language of the claim side-by-side with a 
reference to the specific page, line number, drawing 
reference number, and quotation from the prior art, as 
appropriate.

(f)For each rejection, other than those 
referred to in paragraphs (a) to (e) of this section, the 
examiner’s answer must specifically explain the 
basis for the particular rejection.




 



(g)The examiner must prominently identify 
(e.g., a separate heading with all capitalized letters) 
any new ground of rejection that has been approved 
by the TC Director or designee. 



(10) Response to Argument. A statement of 
whether the examiner disagrees with each of the contentions 
of appellant in the brief with respect to the 
issues presented and an explanation of the reasons for 
disagreement with any such contention. The 
examiner must use headings and subheadings paralleling 
the headings and subheadings utilized in the 
appellant’s brief.

(11) Related Proceedings Appendix. Copies of 
any decisions rendered by a court or the Board in any 
proceeding identified by the examiner in the “Related 
Appeals and Interferences” section of the answer.

(B)FORM PARAGRAPHS. A form suitable for 
the examiner’s answer is as follows:



¶ 12.149 Examiner’s Answer Cover Sheet

BEFORE THE BOARD OF PATENT APPEALS 

AND INTERFERENCES

Application Number: [1]

Filing Date: [2]

Appellant(s): [3] 

__________________

[4]

For Appellant

EXAMINER’S ANSWER

This is in response to the appeal brief filed [5] appealing from 
the Office action mailed [6].

Examiner Note:

1.This form paragraph is printed with the USPTO letterhead.

2.In bracket 1, insert the application number of the appealed 
application.

3.In bracket 2, insert the filing date of the appealed application.

4.In bracket 3, insert the name(s) of the appellant.

5.In bracket 4, insert the name of the registered representative 
of the appellant.

6.In bracket 5, indicate the date on which the brief was filed, 
and also indicate if any supplemental appeal brief was filed, as 
well as the date on which the supplemental appeal brief was filed. 

7.In bracket 6, indicate the date on which the Office action 
being appealed was mailed.

8.Form paragraphs 12.149 to 12.179.01, as appropriate, should 
be used if the appeal brief was filed on or after September 13, 
2004.

¶ 12.150.01 Real Party in Interest

(1) Real Party in Interest

A statement identifying by name the real party in interest is 
contained in the brief.

Examiner Note:

A statement identifying by name the real party in interest is 
required even if the party named in the caption of the brief is the 
real party in interest. See 37 CFR 41.37(c)(1)(i). Form PTOL-462, 
PTOL-462R, or form paragraphs 12.169-12.178 may be used, as 
applicable, to require a corrected appeal brief if the appeal brief is 
not in compliance with 37 CFR 41.37. 

¶ 12.150.04 Related Appeals and Interferences

(2) Related Appeals and Interferences

Examiner Note:

Follow this form paragraph with form paragraph 12.150.05 or 
12.150.06.

¶ 12.150.05 Identification of the Related Appeals and 
Interferences

The following are the related appeals, interferences, and judicial 
proceedings known to the examiner 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:

Examiner Note:

1.Follow this form paragraph with an identification by application, 
patent, appeal or interference number of all other prior and 
pending appeals, interferences or judicial proceedings known to 
the examiner 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.

2.Include a copy of all court and Board decisions identified in 
this section in a related proceeding(s) appendix using form paragraphs 
12.162 and 12.162.02.

¶ 12.150.06 No Related Appeals and Interferences 
Identified

The examiner is not aware of any related appeals, interferences, 
or judicial proceedings which will directly affect or be 
directly affected by or have a bearing on the Board’s decision in 
the pending appeal.

¶ 12.151 Status of Claims

(3) Status of Claims

Examiner Note:

Follow this form paragraph with one or more of form paragraphs 
12.151.01 to 12.151.10.

¶ 12.151.01 Agreement With Statement of Status of Claims

The statement of the status of claims contained in the brief is 
correct.




 

¶ 12.151.02 Disagreement With Statement of Status of 
Claims

The statement of the status of claims contained in the brief is 
incorrect. A correct statement of the status of the claims is as follows:.


Examiner Note:

1.Indicate the area of disagreement and the reasons for the disagreement.


2.One or more of form paragraphs 12.151.03 to 12.151.10must follow this paragraph.

¶ 12.151.03 Claims on Appeal

This appeal involves claim [1].

Examiner Note:

1.In bracket 1, all the claims still on appeal should be specified. 
Do not list claims which are no longer rejected.

2.Also use form paragraphs 12.151.04 to 12.151.10 when 
appropriate to clarify the status of the claims on appeal that were 
incorrectly listed in the brief.

¶ 12.151.04 Status of Claims on Appeal - Substituted

Claim[1] been substituted for the finally rejected claims.

Examiner Note:

 All substituted claims on appeal must be identified if the brief 
incorrectly lists any substituted claims. In bracket 1, insert the 
claim number(s) corresponding to the substitute claims, followed 
by --has-- or --have--, as appropriate.

¶ 12.151.05 Status of Claims on Appeal - Amended

Claim[1] been amended subsequent to the final rejection.

Examiner Note:

All claims amended after final rejection must be identified if 
the brief incorrectly lists any claims amended after final rejection. 
In bracket 1, identify the claim number(s) corresponding to the 
claim(s) which have been amended, followed by --has-- or --have-
-, as appropriate.

¶ 12.151.07 Claims Allowed

Claim[1] allowed.

Examiner Note:

All allowed claims must be identified if the brief incorrectly 
lists any allowed claims.

¶ 12.151.08 Claims Objected To

Claim[1] objected to as being dependent upon a rejected base 
claim, but would be allowable if rewritten in independent form 
including all of the limitations of the base claim and any intervening 
claims.

Examiner Note:

All objected to claims must be identified if the brief incorrectly 
lists any claims objected to.

¶ 12.151.09 Claims Withdrawn From Consideration

Claim[1] withdrawn from consideration as not directed to the 
elected [2].

Examiner Note:

All withdrawn claims must be identified if the brief incorrectly 
lists any withdrawn claims.

¶ 12.151.10 Claims Canceled

Claim[1] been canceled.

Examiner Note:

All canceled claims must be identified if the brief incorrectly 
lists any canceled claims.

¶ 12.152 Status of Amendments After Final

(4) Status of Amendments After Final

Examiner Note:

Identify status of all amendments submitted after final rejection. 
Use one or more of form paragraphs 12.152.01 to 12.152.05, 
if appropriate.

¶ 12.152.01 Agreement With Appellant’s Statement of the 
Status of Amendments After Final

The appellant’s statement of the status of amendments after 
final rejection contained in the brief is correct.

¶ 12.152.02 Disagreement With Appellant’s Statement of 
the Status of Amendments After Final

The appellant’s statement of the status of amendments after 
final rejection contained in the brief is incorrect.

Examiner Note:

One or more of form paragraphs 12.152.03 to 12.152.05 must 
follow this form paragraph to explain the reasons for disagreeing 
with appellant’s statement of the status of the amendments.

¶ 12.152.03 Amendment After Final Entered

The amendment after final rejection filed on [1] has been 
entered.

Examiner Note:

1. In bracket 1, insert the filing date of any entered after final 
amendment.

2. Use this form paragraph for each after final amendment 
which has been entered.

¶ 12.152.04 Amendment After Final Not Entered

The amendment after final rejection filed on [1] has not been 
entered.

Examiner Note:

1. In bracket 1, insert the date of any after final amendment 
denied entry.

2. Use this form paragraph for each after final amendment 
which has been denied entry. 

¶ 12.152.05 No Amendments After Final

No amendment after final has been filed.




 

¶ 12.153 Summary of Claimed Subject Matter

(5) Summary of Claimed Subject Matter

Examiner Note:

Follow this form paragraph with either of form paragraphs 
12.153.01 or 12.153.02.

¶ 12.153.01 Agreement With the Summary of Claimed 
Subject Matter

The summary of claimed subject matter contained in the brief 
is correct.

¶ 12.153.02 Disagreement With the Summary of Claimed 
Subject Matter

The summary of claimed subject matter contained in the brief 
is deficient. 37 CFR 41.37(c)(1)(v) requires the summary of 
claimed subject matter to include: (1) a concise explanation of the 
subject matter defined in each of the independent claims involved 
in the appeal, referring to the specification by page and line number, 
and to the drawing, if any, by reference characters and (2) for 
each independent claim involved in the appeal and for each 
dependent claim argued separately, every means plus function and 
step plus function as permitted by 35 U.S.C. 112, sixth paragraph, 
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. The 
brief is deficient because [1].

Examiner Note:

1. In bracket 1, explain the deficiency of the appellant’s summary 
of the claimed subject matter. Include a correction if necessary 
for a clear understanding of the claimed invention.

2. Form PTOL-462, PTOL-462R, or form paragraphs 12.169-
12.178 may be used, as applicable, to require a corrected appeal 
brief if the appeal brief is not in compliance with 37 CFR 41.37. 
Note that an appellant who is not represented by a registered practitioner 
is not required to provide a concise explanation of the subject 
matter under 37 CFR 41.37(c)(1)(v). See the introductory 
paragraph of 37 CFR 41.37(c)(1).

¶ 12.154 Grounds of Rejection to be Reviewed on Appeal

(6) Grounds of Rejection to be Reviewed on Appeal

Examiner Note:

1.This form paragraph may be followed with one or more of 
form paragraphs 12.154.01 to 12.154.05.

2.Use form paragraph 12.154.04 to introduce any new grounds 
of rejection.

3.Form PTOL-462, PTOL-462R, or form paragraphs 12.169-
12.178 may be used, as applicable, to require a corrected appeal 
brief if the appeal brief is not in compliance with 37 CFR 41.37. 
Note that an appellant who is not represented by a registered practitioner 
is not required to provide a concise explanation of the 
grounds of rejection to be reviewed on appeal under 37 CFR 
41.37(c)(1)(vi). See the introductory paragraph of 37 CFR 
41.37(c)(1).

¶ 12.154.01 Agreement With Appellant’s Statement of the 
Grounds of Rejection

The appellant’s statement of the grounds of rejection to be 
reviewed on appeal is correct.

Examiner Note:

Follow this form paragraph with form paragraph 12.154.011 if 
there are grounds of rejection that have not been withdrawn and 
that have not been presented for review in appellant’s brief.

¶ 12.154.02 Disagreement With Appellant’s Statement of 
the Grounds of Rejection

The appellant’s statement of the grounds of rejection to be 
reviewed on appeal is substantially correct. The changes are as 
follows: [1]

Examiner Note:

In bracket 1, explain the changes with respect to the appellant’s 
statement of the grounds of rejection in the brief including:

(i) an identification of any grounds of rejection that were stated 
incorrectly (e.g., using form paragraph 12.154.05);

(ii) an identification of any grounds of rejection which the 
examiner is withdrawing because they are no longer applicable 
(e.g., using form paragraph 12.154.05); and

(iii) any new grounds of rejection (e.g., using form paragraph 
12.154.04).

¶ 12.154.03 Non-Appealable Issue in Brief

 Appellant’s brief presents arguments relating to [1]. This issue 
relates to petitionable subject matter under 37 CFR 1.181 and not 
to appealable subject matter. See MPEP § 1002 and § 1201.

¶ 12.154.04 New Grounds of Rejection - Heading

NEW GROUNDS OF REJECTION

[1]

Examiner Note:

1. Any new ground(s) of rejection in the examiner’s answer 
must be prominently identified (e.g., using this form paragraph) in 
the following sections of the answer:

(6) Grounds of Rejection to be Reviewed on Appeal (form paragraph 
12.154) – use this form paragraph in section (6) of the 
answer to provide a concise statement of each new ground of 
rejection presented for review in bracket 1; and

(9) Grounds of Rejection (form paragraph 12.159) – use this 
form paragraph in section (9) of the answer to set forth the new 
grounds of rejection.

2. Conclude an examiner’s answer raising new grounds of 
rejection with form paragraph 12.179.01: (1) to notify applicant of 
the response period and options following the new grounds of 
rejection; and (2) to include the required approval of the TC 
Director or his/her designee.

¶ 12.154.05 Withdrawn Rejections

WITHDRAWN REJECTIONS




 

The following grounds of rejection are not presented for 
review on appeal because they have been withdrawn by the examiner. 
[1].

Examiner Note:

In bracket 1, insert the grounds of rejection that have been 
withdrawn.

¶ 12.154.011 Grounds of Rejection Not on Review

GROUNDS OF REJECTION NOT ON REVIEW

The following grounds of rejection have not been withdrawn 
by the examiner, but they are not under review on appeal because 
they have not been presented for review in the appellant’s brief. 
[1].

Examiner Note:

In bracket 1, insert the grounds of rejection that have not been 
withdrawn by the examiner but were not presented for review in 
appellant’s brief.

¶ 12.156 Claims Appendix

(7) Claims Appendix

Examiner Note:

Follow this form paragraph with form paragraph 12.156.01, 
12.156.02 or 12.156.03.

¶ 12.156.01 Copy of the Appealed Claims in Appendix Is 
Correct

The copy of the appealed claims contained in the Appendix to 
the brief is correct.

¶ 12.156.02 Copy of the Appealed Claims in Appendix Is 
Substantially Correct

A substantially correct copy of appealed claim [1] appears on 
page [2] of the Appendix to the appellant’s brief. The minor errors 
are as follows: [3]

Examiner Note:

1. In bracket 1, indicate the claim or claims with small errors.

2. In bracket 3, indicate the nature of the errors.

¶ 12.156.03 Copy of the Appealed Claims in Appendix 
Contain Substantial Errors

Claim [1] contain(s) substantial errors as presented in the 
Appendix to the brief. Accordingly, claim [2] correctly written in 
the Appendix to the Examiner’s Answer.

Examiner Note:

1. Appellant should include a correct copy of all appealed 
claims in the Appendix to the brief. See 37 CFR 41.37(c)(1)(viii).

2. Attach a correct copy of any incorrect claims as an Appendix 
to the Examiner’s Answer and if the application is still a paper 
file, draw a diagonal line in pencil through the incorrect claim in 
the Appendix of the appellant’s appeal brief.

3. Rather than using this form paragraph, if the errors in the 
claim(s) are significant, appellant should be required to submit a 
corrected brief using form PTOL-462, PTOL-462R, or form paragraphs 
12.169-12.178, as applicable. Where the brief includes 
arguments directed toward the errors, a corrected brief should 
always be required.

¶ 12.157 Evidence Relied Upon

(8) Evidence Relied Upon

Examiner Note:

Follow this form paragraph with either form paragraph 
12.157.01 or 12.157.02.

¶ 12.157.01 No Evidence Relied Upon

No evidence is relied upon by the examiner in the rejection of 
the claims under appeal.

¶ 12.157.02 Listing of Evidence Relied Upon

The following is a listing of the evidence (e.g., patents, publications, 
Official Notice, and admitted prior art) relied upon in the 
rejection of claims under appeal.

Examiner Note:

1. Use the following format for providing information on each 
reference cited:

Number Name Date

2. The following are example formats for listing reference citations:


 2,717,847 VERAIN 9-1955

 1,345,890 MUTHER (Fed. Rep. of Germany) 7-1963

 (Figure 2 labeled as Prior Art in this document)

3. See MPEP § 707.05(e) for additional examples.

¶ 12.159 Grounds of Rejection

(9) Grounds of Rejection

The following ground(s) of rejection are applicable to the 
appealed claims:

Examiner Note:

1. Explain each ground of rejection maintained by the examiner 
as provided below:

(i) For each rejection under 35 U.S.C. 112, first paragraph, the 
Examiner’s Answer shall explain how the first paragraph of 35 
U.S.C. 112 is not complied with, including, as appropriate, how 
the specification and drawings, if any, (a) do not describe the subject 
matter defined by each of the rejected claims, (b) would not 
enable any person skilled in the art to make and use the subject 
matter defined by each of the rejected claims, and (c) do not set 
forth the best mode contemplated by the appellant of carrying out 
his/her invention.

(ii) For each rejection under 35 U.S.C. 112, second paragraph, 
the Examiner’s Answer shall explain how the claims do not particularly 
point out and distinctly claim the subject matter which 
appellant regards as the invention.

(iii) For each rejection under 35 U.S.C. 102, the Examiner’s 
Answer shall explain why the rejected claims are anticipated or 
not patentable under 35 U.S.C. 102, pointing out where all of the 
specific limitations recited in the rejected claims are found in the 
prior art relied upon in the rejection.

(iv) For each rejection under 35 U.S.C. 103, the Examiner’s 
Answer shall state the ground of rejection and point out where 
each of the specific limitations recited in the rejected claims is 




 

found in the prior art relied upon in the rejection, shall identify the 
differences between the rejected claims and the prior art relied on 
(i.e., the primary reference) and shall explain why it would have 
been obvious at the time the invention was made to a person of 
ordinary skill in the art to have modified the primary reference to 
arrive at the claimed subject matter

(v) For each rejection under 35 U.S.C. 102 or 103 where there 
may be questions as to how limitations in the claims correspond to 
features in the prior art, the examiner, in addition to the requirements 
of (ii), (iii) and (iv) above, should compare at least one of 
the rejected claims feature by feature with the prior art relied on in 
the rejection. The comparison shall align the language of the 
claim side by side with a reference to the specific page, line number, 
drawing reference number and quotation from the prior art, as 
appropriate.

(vi) For each rejection, other than those referred to in paragraphs 
(i) to (v) for this section, the Examiner’s Answer shall specifically 
explain the basis for the particular rejection.

2. If there are any new grounds of rejection, use form paragraph 
12.154.04 to provide a prominent heading and use form 
paragraph 12.179.01 instead of form paragraph 12.179 to conclude 
the examiner’s answer.

¶ 12.161 Response to Argument

(10) Response to Argument

Examiner Note:

1. If an issue raised by appellant was fully responded to under 
the “Grounds of Rejection to be Reviewed on Appeal” portion, no 
additional response is required here.

2. If an issue has been raised by appellant that was not fully 
responded to under “Grounds of Rejection to be Reviewed on 
Appeal,” a full response must be provided after this form paragraph.


¶ 12.162 Related Proceeding(s) Appendix

(11) Related Proceeding(s) Appendix

Examiner Note:

Follow this form paragraph with either form paragraph 
12.162.01 or 12.162.02.

¶ 12.162.01 No Related Proceeding Identified

No decision rendered by a court or the Board is identified by 
the examiner in the Related Appeals and Interferences section of 
this examiner’s answer.

¶ 12.162.02 Copies Related to Proceeding

Copies of the court or Board decision(s) identified in the 
Related Appeals and Interferences section of this examiner’s 
answer are provided herein.

¶ 12.179 Conclusion to Examiner’s Answer, No New 
Grounds of Rejection

For the above reasons, it is believed that the rejections should 
be sustained.

Respectfully submitted,

[1]

Conferees:

[2]

[3]

Examiner Note:

1. In bracket 1, insert initials of the examiner and the date.

2. In bracket 2, insert names of the conferees. The conferees 
must also place their initials next to their names.

3. In bracket 3, insert correspondence address of record.

4. If the examiner’s answer includes a new ground of rejection, 
use form paragraph 12.179.01 instead of this form paragraph.

¶ 12.179.01 Conclusion to Examiner’s Answer Raising 
New Grounds of Rejection

For the above reasons, it is believed that the rejections should 
be sustained.

This examiner’s answer contains a new ground of rejection set 
forth in section (9) above. Accordingly, appellant must within 
TWO MONTHS from the date of this answer exercise one of the 
following two options to avoid sua sponte dismissal of the appeal 
as to the claims subject to the new ground of rejection:

(1) Reopen prosecution. Request that prosecution be reopened 
before the primary examiner by filing a reply under 37 CFR 1.111with or without amendment, affidavit or other evidence. Any 
amendment, affidavit or other evidence must be relevant to the 
new grounds of rejection. A request that complies with 37 CFR 
41.39(b)(1) will be entered and considered. Any request that prosecution 
be reopened will be treated as a request to withdraw the 
appeal.

(2) Maintain appeal. Request that the appeal be maintained by 
filing a reply brief as set forth in 37 CFR 41.41. Such a reply brief 
must address each new ground of rejection as set forth in 37 CFR 
41.37(c)(1)(vii) and should be in compliance with the other 
requirements of 37 CFR 41.37(c). If a reply brief filed pursuant to 
37 CFR 41.39(b)(2) is accompanied by any amendment, affidavit 
or other evidence, it shall be treated as a request that prosecution 
be reopened before the primary examiner under 37 CFR 
41.39(b)(1). 

Extensions of time under 37 CFR 1.136(a) are not applicable to 
the TWO MONTH time period set forth above. See 37 CFR 
1.136(b) for extensions of time to reply for patent applications and 
37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination 
proceedings.

Respectfully submitted,

[1]

A Technology Center Director or designee must personally 
approve the new ground(s) of rejection set forth in section (9) 
above by signing below: 

[2]

Conferees:

[3]

[4]

Examiner Note:

1. In bracket 1, insert initials of the examiner and the date.

2. In bracket 2, insert TC Director’s or designee’s signature. 
All new grounds of rejection must be approved by a TC Director 
or designee. 




 

3. In bracket 3, insert names of the conferees. The conferees 
must also place their initials next to their names.

4. In bracket 4, insert correspondence address of record.





1207.03 New Ground of Rejection in 
Examiner’s Answer [R-3]

37 CFR 41.39(a)(2) permits the entry of a new 
ground of rejection in an examiner’s answer mailed 
on or after September 13, 2004. New grounds of 
rejection in an examiner’s answer are envisioned to be 
rare, rather than a routine occurrence. For example, 
where appellant made a new argument for the first 
time in the appeal brief, the examiner may include a 
new ground of rejection in an examiner’s answer to 
address the newly presented argument by adding a 
secondary reference from the prior art on the record. 
New grounds of rejection are not limited to only a 
rejection made in response to an argument presented 
for the first time in an appeal brief. At the time of 
preparing the answer to an appeal brief,  the examiner 
may decide that he or she should apply a new 
ground of rejection against some or all of the appealed 
claims. In such an instance where a new ground of 
rejection is necessary, the examiner should either 
reopen prosecution or set forth the new ground of 
rejection in the answer. The examiner must obtain 
supervisory approval in order to reopen prosecution 
after an appeal. See MPEP § 1002.02(d) and 
§
 
1207.04. A supplemental examiner’s answer cannot 
include a new ground of rejection, except when a supplemental 
answer is written in response to a remand 
by the Board for further consideration of a rejection 
under 37 CFR 41.50(a). See MPEP § 1207.05.

I.REQUIREMENTS FOR A NEW GROUND 
OF REJECTION

Any new ground of rejection made by an examiner 
in an answer must be:

(A)approved by a Technology Center (TC) 
Director or designee; and

(B)prominently identified in the “Grounds of 
Rejection to be Reviewed on Appeal” section and the 
“Grounds of Rejection” section of the answer (see 
MPEP § 1207.02). The examiner may use form paragraph 
12.154.04. 

The examiner’s answer must provide appellant a 
two-month time period for reply. The examiner may 
use form paragraph 12.179.01 to notify appellant of 
the period for reply and to include the approval of the 
TC Director or designee. In response to an examiner’s 
answer that contains a new ground of rejection, appellant 
must either file: 

(A)a reply in compliance with 37 CFR 1.111 to 
request that prosecution be reopened; or 

(B)a reply brief that addresses each new ground 
of rejection in compliance with 37 CFR 
41.37(c)(1)(vii) to maintain the appeal.

Appellant must file the reply or reply brief within 
two months from the date of the examiner’s answer to 
avoid sua sponte dismissal of the appeal as to the 
claims subject to the new ground of rejection. See 
37 
CFR 41.39(b) and subsection “V. APPELLANT’S 
REPLY TO NEW GROUNDS OF REJECTION” 
below. 

II.SITUATIONS WHERE NEW GROUNDS 
OF REJECTION ARE NOT PERMISSIBLE


A new ground of rejection would not be permitted 
to reject a previously allowed or objected to claim 
even if the new ground of rejection would rely upon 
evidence already of record. In this instance, rather 
than making a new ground of rejection in an examiner’s 
answer, if the basis for the new ground of rejection 
was approved by a supervisory patent examiner 
as currently set forth in MPEP § 1207.04, the examiner 
would reopen prosecution. In addition, if an 
appellant has clearly set forth an argument in a previous 
reply during prosecution of the application and 
the examiner has failed to address that argument, the 
examiner would not be permitted to add a new ground 
of rejection in the examiner’s answer to respond to 
that argument but would be permitted to reopen prosecution, 
if appropriate. New grounds of rejection cannot 
be made in a supplemental examiner’s answer 
unless it is written in response to a remand by the 
Board for further consideration of a rejection under 
37 
CFR 41.50(a).




 

III.SITUATIONS THAT ARE NOT CONSIDERED 
AS NEW GROUNDS OF REJECTION


There is no new ground of rejection when the basic 
thrust of the rejection remains the same such that an 
appellant has been given a fair opportunity to react to 
the rejection. See In re Kronig, 539 F.2d 1300, 1302-
03, 190 USPQ 425, 426-27 (CCPA 1976). Where the 
statutory basis for the rejection remains the same, and 
the evidence relied upon in support of the rejection 
remains the same, a change in the discussion of, or 
rationale in support of, the rejection does not necessarily 
constitute a new ground of rejection. Id. at 
1303, 190 USPQ at 427 (reliance upon fewer references 
in affirming a rejection under 35 U.S.C. 103does not constitute a new ground of rejection). 

In addition, former 37 CFR 1.193(a)(2) also 
provided that if: 

(A)an amendment under 37 CFR 1.116 [or 
41.33] proposes to add or amend one or more 
claims; 

(B)appellant was advised (through an advisory 
action) that the amendment would be entered for purposes 
of appeal; and 

(C)the advisory action indicates which individual 
rejection(s) set forth in the action from which appeal 
has been taken would be used to reject the added or 
amended claims, then

(1)the appeal brief must address the rejection(
s) of the added or amended claim(s) and 

(2)the examiner’s answer may include the 
rejection(s) of the added or amended claims. Such 
rejection(s) made in the examiner’s answer would not 
be considered as a new ground of rejection. 

The filing of such an amendment represents appellant’s 
consent to proceed with the appeal process. For 
example, when an amendment under 37 CFR 1.116or 41.33 cancels a claim (the “canceled claim”) and 
incorporates its limitations into the claim upon which 
it depends or rewrites the claim as a new independent 
claim (the “appealed claim”), the appealed claim contains 
the limitations of the canceled claim (i.e., the 
only difference between the appealed claim and the 
canceled claim is the claim number). In such situations, 
the appellant has been given a fair opportunity 
to react to the ground of rejection (albeit to a claim 
having a different claim number). Thus, such a rejection 
does not constitute a “new ground of rejection” 
within the meaning of 37 CFR 41.39.

 The phrase “individual rejections”  addresses 
situations such as the following: the action contains a 
rejection of claim 1 under 35 
U.S.C. 102 on the basis 
of Reference A, a rejection of claim 2 (which depends 
upon claim 1) under 35 
U.S.C. 103 on the basis of 
Reference A in view of Reference B and a rejection of 
claim 3 (which depends upon claim 1) under 
35 
U.S.C. 103 on the basis of Reference A in view of 
Reference C. In this situation, the action contains the 
following “individual rejections”: (1) 35 U.S.C. 102on the basis of Reference A; (2) 35 U.S.C. 103 on the 
basis of Reference A in view of Reference B; and (3) 
35 U.S.C. 103 on the basis of Reference A in view of 
Reference C. The action, however, does not contain 
any rejection on the basis of A in view of B and C. If 
an amendment under 37 CFR 1.116 or 41.33 proposes 
to combine the limitations of claims 1 and 2 
together into amended claim 1 and cancels claim 
2, a rejection of  amended claim 1 under 
35 
U.S.C. 103 on the basis of Reference A in view of 
Reference B would be appropriate and would not be 
considered a new ground of rejection within the 
meaning of 37 CFR 41.39, provided the applicant 
was advised that this rejection would be applied to 
amended claim 1 in an advisory action. Furthermore, 
since claim 3 (which depends upon claim 1) 
would include the limitations of the original claims 1, 
2, and 3, a rejection of amended claim 3 (amended by 
the amendment to original claim 1) under 35 U.S.C. 
103 on the basis of Reference A in view of Reference 
B and Reference C may be appropriate and would not 
be considered a new ground of rejection within the 
meaning of 37 
CFR 41.39, provided applicant was 
advised that this rejection would be applied to 
amended claim 3 in the advisory action. Of course, as 
amended claim 3 includes the limitations of the original 
claims 1, 2, and 3, amended claim 3 is a newly 
proposed claim in the application raising a new issue 
(i.e., a new ground of rejection), and such an amendment 
under 37 CFR 1.116 or 41.33 may properly be 
refused entry as raising a new issue.

It must be emphasized that  37 CFR 
41.39(a)(2) does not change the existing practice 
with respect to amendment after final rejection practice 
(37 
CFR 1.116). The fact that 37 CFR 
41.39(a)(2) would authorize the rejection in an 




 

examiner’s answer of a claim sought to be added or 
amended in an amendment under 37 CFR 1.116 or 
41.33 has no effect on whether the amendment under 
37 CFR 1.116 or 41.33 is entitled to entry. The provisions 
of 37 CFR 1.116 or 41.33 control whether 
an amendment under 37 CFR 1.116 or 41.33 is 
entitled to entry; the provisions of 37 CFR 
41.39(a)(2) permits a new ground of rejection to 
be included in an answer against a claim added or 
amended in an amendment under 37 CFR 1.116 or 
41.33. 

A new prior art reference applied or cited for the 
first time in an examiner’s answer generally will constitute 
a new ground of rejection. If the citation of a 
new prior art reference is necessary to support a rejection, 
it must be included in the statement of rejection, 
which would be considered to introduce a new ground 
of rejection. Even if the prior art reference is cited to 
support the rejection in a minor capacity, it should be 
positively included in the statement of rejection. In re 
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 
407 
n. 3 (CCPA 1970). Where a newly cited reference 
is added merely as evidence of the prior 
statement made by the examiner as to what is “well-
known” in the art which was challenged for the first 
time in the appeal brief, the citation of the reference 
in the examiner’s answer would not ordinarily constitute 
a new ground of rejection within the meaning 
of 37 CFR 41.39(a)(2). See also MPEP § 2144.03.



IV.REQUEST FOR DESIGNATION AS NEW 
GROUND OF REJECTION

Appellant cannot request to reopen prosecution 
pursuant to 37 CFR 41.39(b) if the examiner’s answer 
does not have a new ground of rejection under 
37 
CFR 41.39. If appellant believes that an examiner’s 
answer contains a new ground of rejection not 
identified as such, appellant may file a petition under 
37 
CFR 1.181(a) within two months from the mailing 
of the examiner’s answer requesting that a ground of 
rejection set forth in the answer be designated as a 
new ground of rejection. Any such petition must set 
forth a detailed explanation as to why the ground of 
rejection set forth in the answer constitutes a new 
ground of rejection. Any allegation that an examiner’s 
answer contains a new ground of rejection not identified 
as such is waived if not timely raised (i.e., by filing 
the petition within two months of the answer) by 
way of a petition under 37 CFR 1.181(a). The filing of 
a petition under 37 CFR 1.181 does not toll any time 
period running. If appellant wishes to present arguments 
to address the rejection in the examiner’s 
answer, appellant must file a reply brief to the examiner’s 
answer within two months from the mailing 
date of the examiner’s answer. If the TC Director or 
designee decides that the rejection is considered a 
new ground of rejection and approves the new ground 
of rejection, the examiner would be required to send a 
corrected examiner’s answer that identifies the rejection 
as a new ground of rejection and includes the 
approval of the TC Director or designee. The appellant 
may then file either a request that prosecution be 
reopened by filing a reply under 37 CFR 1.111, or a 
request that the appeal be maintained by filing a reply 
brief or resubmitting the previously-filed reply brief, 
within two months from the mailing of the corrected 
answer. If the TC Director or designee agrees with the 
examiner that the rejection is not a new ground of 
rejection, the examiner would not be required to send 
a corrected examiner’s answer.

V.APPELLANT’S REPLY TO NEW 
GROUNDS OF REJECTION

37 CFR 41.39(b) provides that:

if an examiner’s answer contains a new ground of rejection, 
appellant must within two months from the date of the 
examiner’s answer exercise one of the following two 
options to avoid sua sponte dismissal of the appeal as to the 
claims subject to the new ground of rejection:

(1) Reopen prosecution. Request that prosecution 
be reopened before the primary examiner by filing a 
reply under § 1.111 of this title with or without 
amendment or submission of affidavits (§§ 1.130, 
1.131 or 1.132 of this title) or other evidence. Any 
amendment or submission of affidavits or other evidence 
must be relevant to the new ground of rejection. 
A request that complies with this paragraph will be 
entered and the application or the patent under ex 
parte reexamination will be reconsidered by the 
examiner under the provisions of § 1.112 of this title. 
Any request that prosecution be reopened under this 
paragraph will be treated as a request to withdraw the 
appeal.

 (2) Maintain appeal. Request that the appeal be 
maintained by filing a reply brief as set forth in 




 

§
 
41.41. Such a reply brief must address each new 
ground of rejection as set forth in § 41.37(c)(1)(vii) 
and should follow the other requirements of a brief as 
set forth in § 41.37(c). A reply brief may not be 
accompanied by any amendment, affidavit (§§ 1.130, 
1.131 or 1.132 of this title) or other evidence. If a 
reply brief filed pursuant to this section is accompanied 
by any amendment, affidavit or other evidence, it 
shall be treated as a request that prosecution be 
reopened before the primary examiner under paragraph 
(b)(1) of this section.

The two month time period for reply is not extendable 
under 37 CFR 1.136(a), but is extendable under 
37 CFR 1.136(b) for patent applications and 37 CFR 
1.550(c) for ex parte reexamination proceedings. See 
37 CFR 41.39(c). 

A.Request That Prosecution Be Reopened by 
Filing a Reply

If appellant requests that prosecution be reopened, 
the appellant must file a reply that addresses each new 
ground of rejection set forth in the examiner’s answer 
in compliance with 37 CFR 1.111 within two months 
from the mailing of the examiner’s answer. The reply 
may also include amendments, evidence, and/or arguments 
directed to claims not subject to the new 
ground of rejection or other rejections. If there is an 
after-final amendment (or affidavit or other evidence) 
that was not entered, appellant may include such 
amendment in the reply to the examiner’s answer.

If the reply is not fully responsive to the new 
ground of rejection, but the reply is bona fide, the 
examiner should provide a 30-day or 1 month time 
period, whichever is longer, for appellant to complete 
the reply pursuant to 37 CFR 1.135(c). See MPEP 
§
 
714.03. If the reply is not bona fide (e.g., does not 
address the new ground of rejection) and the two-
month time period has expired, examiner must sua 
sponte dismiss the appeal as to the claims subject to 
the new ground of rejection. See subsection “C. Failure 
to Reply to a New Ground of Rejection” below. 

Once appellant files a reply in compliance with 
37 
CFR 1.111 in response to an examiner’s answer 
that contains a new ground of rejection, the examiner 
must reopen prosecution by entering and considering 
the reply. The examiner may make the next Office 
action final unless the examiner introduces a new 
ground of rejection that is neither necessitated by the 
applicant’s amendment of the claims nor based on 
information submitted in an information disclosure 
statement filed during the period set forth in 37 CFR 
1.97(c) with the fee set forth in 37 CFR 1.17(p). See 
MPEP § 706.07(a).

B.Request That the Appeal Be Maintained by 
Filing a Reply Brief

If appellant requests that the appeal be maintained, 
the appellant must file a reply brief that addresses 
each new ground of rejection set forth in the answer in 
compliance with 37 CFR 41.37(c)(1)(vii) within two 
months from the mailing of the answer. The reply 
brief should include the following items, with each 
item starting on a separate page, so as to follow the 
other requirements of a brief as set forth in 37 CFR 
41.37(c): 

(1)Identification page setting forth the appellant’s 
name(s), the application number, the filing date 
of the application, the title of the invention, the name 
of the examiner, the art unit of the examiner and the 
title of the paper (i.e., Reply Brief);

(2)Status of claims page(s);

(3)Grounds of rejection to be reviewed on appeal 
page(s); and

(4)Argument page(s).

The reply brief can also be a substitute brief replacing 
the original brief by responding to both the new 
ground of rejection and all other grounds of rejection 
covered in the original brief. In such an instance, the 
reply brief must meet all the requirements of a brief as 
set forth in 37 CFR 41.37(c).

The reply brief must also be in compliance with 
requirements set forth in 37 CFR 41.41, e.g., it cannot 
include any new amendment or affidavit. If the reply 
brief is accompanied by any amendment or evidence, 
it would be treated as a request that prosecution be 
reopened under 37 CFR 41.39(b)(1).

The examiner may provide a supplemental examiner’s 
answer (with TC Director or designee approval) 
to respond to any new issue raised in the reply brief. 
The supplemental examiner’s answer responding to a 
reply brief cannot include any new grounds of rejection. 
See MPEP § 1207.05. In response to the supplemental 
examiner’s answer, the appellant may file 
another reply brief under 37 CFR 41.41 within 2 
months from the mailing of the supplemental exam





 

iner’s answer. The two month time period for reply is 
not extendable under 37 CFR 1.136(a), but is extendable 
under 37 CFR 1.136(b) for patent applications 
and 37 CFR 1.550(c) for ex parte reexamination proceedings. 
Appellant cannot request that prosecution 
be reopened pursuant to 37 CFR 41.39(b) at that time. 

C.Failure To Reply to a New Ground of 
Rejection

If appellant fails to timely file a reply under 37 CFR 
1.111 or a reply brief in response to an examiner’s 
answer that contains a new ground of rejection, the 
appeal will be sua sponte dismissed as to the claims 
subject to the new ground of rejection. If all of the 
claims under appeal are subject to the new ground of 
rejection, the entire appeal will be dismissed. The 
examiner should follow the procedure set forth in 
MPEP § 1215 to dismiss the appeal. For example, if 
there is no allowed claim in the application, the application 
would be abandoned when the two-month time 
expired. 

If only some of the claims under appeal are subject 
to the new ground of rejection, the dismissal of the 
appeal as to those claims operates as an authorization 
to cancel those claims and the appeal continues as to 
the remaining claims. The examiner must: 

(1)Cancel the claims subject to the new ground 
of rejection; and

(2)Notify the appellant that the appeal as to the 
claims subject to the new ground of rejection is dismissed 
and those claims are canceled.

Examiner may use form paragraph 12.179.02 to 
dismiss the claims subject to the new ground of rejection.


¶ 12.179.02 Dismissal Following New Ground(s) of 
Rejection in Examiner’s Answer

Appellant failed to timely respond to the examiner’s answer 
mailed on [1] that included a new ground of rejection mailed on 
[1]. Under 37 CFR 41.39(b), if an examiner’s answer contains a 
rejection designated as a new ground of rejection, appellant must, 
within two months from the date of the examiner’s answer, file 
either: (1) a request that prosecution be reopened by filing a reply 
under 37 CFR 1.111; or (2) a request that the appeal be maintained 
by filing a reply brief under 37 CFR 41.41, addressing each new 
ground of rejection, to avoid sua sponte dismissal of the appeal as 
to the claims subject to the new ground of rejection. In view of 
appellant’s failure to file a reply under 37 CFR 1.111 or a reply 
brief within the time period required by 37 CFR 41.39, the appeal 
as to claims [2] is dismissed, and these claims are canceled.

Only claims [3] remain in the application. The appeal continues 
as to these remaining claims. The application will be forwarded 
to the Board after mailing of this communication.

Examiner Note:

1. In bracket 1, insert the mailing date of the examiner’s 
answer.

2. In bracket 2, insert the claim numbers of the claims subject 
to the new ground of rejection.

3. In bracket 3, insert the claim numbers of the claims that are 
not subject to the new ground of rejection.





1207.04 Reopening of Prosecution 
After Appeal [R-3]

The examiner may, with approval from the supervisory 
patent examiner, reopen prosecution to enter a 
new ground of rejection after appellant’s brief or reply 
brief has been filed. The Office action containing a 
new ground of rejection may be made final if the new 
ground of rejection was (A) necessitated by amendment, 
or (B) based on information presented in an 
information disclosure statement under 37 CFR 
1.97(c) where no statement under 37 CFR 1.97(e) was 
filed. See MPEP § 706.07(a). Any after final 
amendment or affidavit or other evidence that was not 
entered before must be entered and considered on the 
merits.

Form paragraph 12.187 may be used when 
reopening prosecution:



¶ 12.187 Reopening of Prosecution After Appeal Brief or 
Reply Brief

In view of the [1] filed on [2], PROSECUTION IS HEREBY 
REOPENED. [3] set forth below.

To avoid abandonment of the application, appellant must exercise 
one of the following two options:

(1) file a reply under 37 CFR 1.111 (if this Office action is non-
final) or a reply under 37 CFR 1.113 (if this Office action is final); 
or,

(2) initiate a new appeal by filing a notice of appeal under 37 
CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The 
previously paid notice of appeal fee and appeal brief fee can be 
applied to the new appeal. If, however, the appeal fees set forth in 
37 CFR 41.20 have been increased since they were previously 
paid, then appellant must pay the difference between the increased 
fees and the amount previously paid.

A Supervisory Patent Examiner (SPE) has approved of reopening 
prosecution by signing below:




 

[4]

Examiner Note:

1.In bracket 1, insert --appeal brief--, --supplemental appeal 
brief--, --reply brief-- or --supplemental reply brief--.

2.In bracket 2, insert the date on which the brief was filed.

3.In bracket 3, insert --A new ground of rejection is-- or --New 
grounds of rejection are--.

4.In bracket 4, insert the SPE’s signature. Approval of the SPE 
is required to reopen prosecution after an appeal. See MPEP §§ 
1002.02(d) and 1208.02.

5.Use this form paragraph to reopen prosecution in order to 
make a new ground of rejection of claims. The Office action following 
a reopening of prosecution may be made final if all new 
grounds of rejection were either (A) necessitated by amendment 
or (B) based on information presented in an information disclosure 
statement under 37 CFR 1.97(c) where no statement under 37 
CFR 1.97(e) was filed. See MPEP § 706.07(a).



After reopening of prosecution, appellant must 
exercise one of the following options to avoid abandonment 
of the application: 

(A)file a reply under 37 CFR 1.111, if the Office 
action is non-final; 

(B)file a reply under 37 CFR 1.113, if the Office 
action is final; or 

(C)initiate a new appeal by filing a new 
notice of appeal under 37 CFR 41.31. 

If appellant elects to continue prosecution 
and prosecution was reopened prior to a decision 
on the merits by the Board of Patent Appeals and 
Interferences, the fee paid for the notice of appeal, 
appeal brief, and request for oral hearing (if applicable) 
will be applied to a later appeal on the same 
application. If, however, the appeal fees set forth in 
37 CFR 41.20 have increased since they were previously 
paid, applicant must pay the difference between 
the increased fees and the amount previously paid. If 
appellant elects to initiate a new appeal by filing a 
notice of appeal, appellant must file a complete new 
brief in compliance with the 37 CFR 41.37 within two 
months from the filing of the new notice of appeal. 
See MPEP § 1204.01 for more information on reinstatement 
of an appeal.



1207.05Supplemental Examiner’s Answer 
[R-3]

37 CFR 41.43. Examiner’s response to reply brief.

(a)(1)After receipt of a reply brief in compliance with § 
41.41, the primary examiner must acknowledge receipt and entry 
of the reply brief. In addition, the primary examiner may withdraw 
the final rejection and reopen prosecution or may furnish a 
supplemental examiner’s answer responding to any new issue 
raised in the reply brief.

(2)A supplemental examiner’s answer responding to a 
reply brief may not include a new ground of rejection.

(b)If a supplemental examiner’s answer is furnished by the 
examiner, appellant may file another reply brief under § 41.41 to 
any supplemental examiner’s answer within two months from the 
date of the supplemental examiner’s answer.



37 CFR 41.50. Decisions and other actions by the Board.

(a)(1)The Board, in its decision, may affirm or reverse the 
decision of the examiner in whole or in part on the grounds and on 
the claims specified by the examiner. The affirmance of the rejection 
of a claim on any of the grounds specified constitutes a general 
affirmance of the decision of the examiner on that claim, 
except as to any ground specifically reversed. The Board may also 
remand an application to the examiner.

(2)If a supplemental examiner’s answer is written in 
response to a remand by the Board for further consideration of a 
rejection pursuant to paragraph (a)(1) of this section, the appellant 
must within two months from the date of the supplemental examiner’s 
answer exercise one of the following two options to avoid 
sua sponte dismissal of the appeal as to the claims subject to the 
rejection for which the Board has remanded the proceeding:

(i)Reopen prosecution. Request that prosecution be 
reopened before the examiner by filing a reply under § 1.111 of 
this title with or without amendment or submission of affidavits 
(§§ 1.130, 1.131 or 1.132 of this title) or other evidence. Any 
amendment or submission of affidavits or other evidence must be 
relevant to the issues set forth in the remand or raised in the supplemental 
examiner’s answer. A request that complies with this 
paragraph will be entered and the application or the patent under 
ex parte reexamination will be reconsidered by the examiner 
under the provisions of § 1.112 of this title. Any request that prosecution 
be reopened under this paragraph will be treated as a 
request to withdraw the appeal.

(ii)Maintain appeal. Request that the appeal be maintained 
by filing a reply brief as provided in § 41.41. If such a reply 
brief is accompanied by any amendment, affidavit or other evidence, 
it shall be treated as a request that prosecution be reopened 
before the examiner under paragraph (a)(2)(i) of this section.



Every supplemental examiner’s answer must be 
approved by a Technology Center (TC) Director or 




 

designee. The examiner may furnish a supplemental 
examiner’s answer in response to any one of the following:


(A)A reply brief that raises new issues. The 
examiner may NOT include a new ground of rejection 
in the supplemental examiner’s answer responding to 
a reply brief. See 37 CFR 41.43(a)(2). Appellant may 
file another reply brief in response to the supplemental 
examiner’s answer within two months from the 
mailing of the supplemental answer. See MPEP 
§
 
1208.

(B)A remand by the Board for further consideration 
of a rejection under 37 CFR 41.50(a). See 
MPEP § 1211.01. In response to a supplemental 
examiner’s answer that is written in response to a 
remand by the Board for further consideration of a 
rejection, appellant must either file: (1) a reply under 
37 CFR 1.111 to request that prosecution be reopened; 
or (2) a reply brief to request that the appeal be maintained, 
within two months from the mailing of the 
supplemental examiner’s answer, to avoid sua sponte 
dismissal of the appeal as to the claims subject to the 
rejection for which the Board has remanded the proceeding. 
Examiner may include a new ground of 
rejection in the supplemental examiner’s answer 
responding to a remand by the Board for further consideration 
of a rejection. See MPEP § 1207.03. 

(C)A remand by the Board for other purposes 
that are not for further consideration of a rejection 
under 37 CFR 41.50(a). The examiner may NOT 
include a new ground of rejection in the supplemental 
examiner’s answer responding to a remand by the 
Board, unless the remand is for further consideration 
of a rejection under 37 CFR 41.50(a) (see item B 
above). Appellant may file a reply brief with two 
months from the mailing of the supplemental answer. 

I.SUPPLEMENTAL EXAMINER’S AN-
SWER RESPONDING TO A REPLY 
BRIEF

In response to a reply brief filed in compliance with 
37 CFR 41.41, the primary examiner may: (A) withdraw 
the final rejection and reopen prosecution (see 
MPEP § 1207.04); or (B) provide a supplemental 
examiner’s answer responding to any new issue raised 
in the reply brief. The examiner cannot issue a supplemental 
examiner’s answer if the reply brief raised no 
new issue. See MPEP § 1208 for more information on 
reply brief and examiner’s response to reply brief. If 
the reply brief does raise new issues, providing a supplemental 
examiner’s answer will avoid the need for 
the Board to remand the application or proceeding to 
the examiner to treat the new issues. Appellant does 
not have the option to request that prosecution be 
reopened in response to a supplemental examiner’s 
answer responding to a reply brief unless appellant 
files a request for continued examination under 
37 
CFR 1.114 or a continuing application. The following 
are examples of new issues raised in a reply 
brief that would give the examiner the discretion to 
provide a supplemental examiner’s answer:

Example 1: The rejection is under 35 U.S.C. 103over A in view of B. The brief argues that element 4 
of reference B cannot be combined with reference A 
as it would destroy the function performed by reference 
A. The reply brief argues that B is nonanalogous 
art and therefore the two references cannot be combined.


Example 2: Same rejection as in example 1. The 
brief argues only that the pump means of claim 1 is 
not taught in the applied prior art. The reply brief 
argues that the particular retaining means of claim 1 is 
not taught in the applied prior art.

37 CFR 41.43(a)(2) prohibits a supplemental examiner’s 
answer responding to a reply brief from including 
a new ground of rejection. After the filing of a 
reply brief, any new ground of rejection responding to 
a reply brief must be by way of reopening of prosecution. 
See MPEP § 1207.04. The examiner’s decision 
to withdraw the final rejection and reopen prosecution 
to enter a new ground of rejection requires approval 
from the supervisory patent examiner, which approval 
must be indicated in the Office action setting forth the 
new ground of rejection. See MPEP § 1207.04.

It should also be noted that an indication that certain 
rejections have been withdrawn as a result of the 
reply brief is not, by itself, a supplemental examiner’s 
answer and is of course permitted. Such an indication 
of a change in status of claims would not give appellant 
the right to file another reply brief. The examiner 
may make the indication on form PTOL-90. An appellant 
who disagrees with an examiner’s decision that a 
supplemental examiner’s answer is permitted may 
petition for review of the decision under 37 CFR 
1.181 within two months from the mailing of the supplemental 
examiner’s answer. 




 

The examiner may use form paragraph 12.184 in 
the supplemental examiner’s answer to respond to a 
new issue raised in a reply brief.

¶ 12.184 Supplemental Examiner’s Answer -No option to 
Reopen Prosecution

Responsive to [1] on [2], a supplemental Examiner’s Answer is 
set forth below: [3].

Appellant may file another reply brief in compliance with 37 
CFR 41.41 within two months of the date of mailing of this supplemental 
examiner’s answer. Extensions of time under 37 CFR 
1.136(a) are not applicable to this two month time period. See 37 
CFR 41.43(b)-(c).

A Technology Center Director or designee has approved 
this supplemental examiner’s answer by signing below: 

[4]

Examiner Note:

1. In bracket 1, insert the reason the supplemental examiner’s 
answer is being prepared, e.g.,“ the remand under 37 CFR 
41.50(a)(1) for reasons other than for further consideration of a 
rejection”, or “the reply brief under 37 CFR 41.41 filed”.

2. In bracket 2, insert the date of remand or the date the reply 
brief was filed.

3. In bracket 3, provide the supplemental examiner’s answer 
(e.g., pursuant to 37 CFR 41.43(a), without raising any new 
grounds of rejection.

4. In bracket 4, insert the TC Director’s or designee’s signature. 
A TC Director or designee must approve every supplemental 
examiner’ s answer.

II.SUPPLEMENTAL EXAMINER’S AN-
SWER RESPONDING TO A REMAND 
FOR FURTHER CONSIDERATION OF 
REJECTION

The examiner may provide a supplemental examiner’s 
answer in response to a remand by the Board 
for further consideration of a rejection under 37 CFR 
41.50(a). Appellant must respond to such supplemental 
examiner’s answer and has the option to request 
that prosecution be reopened. A supplemental examiner’s 
answer written in response to a remand by the 
Board for further consideration of a rejection pursuant 
to 37 CFR 41.50(a)(1) may set forth a new ground of 
rejection. Any new ground of rejection made in such a 
supplemental examiner’s answer must comply with 
the requirements set forth in MPEP §
 
1207.03. The 
examiner may use form paragraph 12.185 in preparing 
the supplemental examiner’s answer responding a 
remand by the Board for further consideration of a 
rejection.

¶ 12.185 Supplemental Examiner’s Answer - On Remand 
FOR FURTHER CONSIDERATION OF A REJECTION

Pursuant to the remand under 37 CFR 41.50(a)(1) by the Board 
of Patent Appeals and Interferences on [1] for further consideration 
of a rejection, a supplemental Examiner’s Answer under 37 
CFR 41.50(a)(2) is set forth below: [2].

The appellant must within TWO MONTHS from the date of 
the supplemental examiner’s answer exercise one of the following 
two options to avoid sua sponte dismissal of the appeal as to the 
claims subject to the rejection for which the Board has remanded 
the proceeding:

(1) Reopen prosecution. Request that prosecution be reopened 
before the examiner by filing a reply under 37 CFR 1.111 with or 
without amendment, affidavit, or other evidence. Any amendment, 
affidavit, or other evidence must be relevant to the issues set 
forth in the remand or raised in the supplemental examiner’s 
answer. Any request that prosecution be reopened will be treated 
as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i).

(2) Maintain appeal. Request that the appeal be maintained by 
filing a reply brief as set forth in 37 CFR 41.41. If such a reply 
brief is accompanied by any amendment, affidavit or other evidence, 
it shall be treated as a request that prosecution be reopened 
under 37 CFR 41.50(a)(2)(i). See 37 CFR 41.50(a)(2)(ii).

Extensions of time under 37 CFR 1.136(a) are not applicable to 
the TWO MONTH time period set forth above. See 37 CFR 
1.136(b) for extensions of time to reply for patent applications and 
37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination 
proceedings.

A Technology Center Director or designee has approved 
this supplemental examiner’s answer by signing below: 

[3]

Examiner Note:

1. In bracket 1, insert the date of the remand.

2. In bracket 2, provide reasons supporting the rejections set 
forth in the supplemental Examiner’s Answer.

3. In bracket 3, insert the TC Director’s or designee’s signature. 
A TC Director or designee must approve every supplemental 
examiner’s answer.

A.Appellant’s Reply

If a supplemental examiner’s answer is written in 
response to a remand by the Board for further consideration 
of a rejection pursuant to 37 CFR 41.50(a)(1), 
the appellant must exercise one of the following two 
options to avoid sua sponte dismissal of the appeal as 
to the claims subject to the rejection for which the 
Board has remanded the proceeding:

(i)Reopen prosecution. Request that prosecution 
be reopened before the examiner by filing a reply 
under 37 CFR 1.111 with or without amendment or 
submission of affidavits (37 CFR 1.130, 1.131 or 
1.132) or other evidence. Any amendment or submission 
of affidavits or other evidence must be relevant to 




 

the issues set forth in the remand or raised in the supplemental 
examiner’s answer. A request that complies 
with 37 CFR 41.50(a)(2)(i) will be entered and the 
application or the patent under ex parte reexamination 
will be reconsidered by the examiner under the provisions 
of 37 CFR 1.112. Any request that prosecution 
be reopened under 37 CFR 41.50(a)(2)(i) will be 
treated as a request to withdraw the appeal.

(ii)Maintain appeal. Request that the appeal be 
maintained by filing a reply brief as provided in 
37 
CFR 41.41. If such a reply brief is accompanied by 
any amendment, affidavit or other evidence, it shall be 
treated as a request that prosecution be reopened 
before the examiner under 37 CFR 41.50(a)(2)(i).

The two month time period for reply is not extendable 
under 37 CFR 1.136(a), but is extendable under 
37 CFR 1.136(b) for patent applications and 37 CFR 
1.550(c) for ex parte reexamination proceedings.

1.Request That Prosecution Be Reopened by 
Filing a Reply

If appellant requests that prosecution be reopened, 
the appellant must file a reply that addresses each 
ground of rejection set forth in the supplemental 
examiner’s answer in compliance with 37 CFR 1.111within two months from the mailing of the supplemental 
examiner’s answer. The reply may also 
include amendments, evidence, and/or arguments 
directed to claims not subject to the ground of rejection 
set forth in the supplemental answer or other 
rejections. If there is after-final amendment (or affidavit 
or other evidence) that was not entered, appellant 
may include such amendment in the reply to the supplemental 
examiner’s answer.

If the reply is not fully responsive to the ground of 
rejection set forth in the supplemental examiner’s 
answer, but the reply is bona fide, the examiner 
should provide a 30-day or 1 month time period, 
whichever is longer, for appellant to complete the 
reply pursuant to 37 CFR 1.135(c). If the reply is not 
bona fide (e.g., does not address the ground of rejection) 
and the two-month time period has expired, the 
examiner must sua sponte dismiss the appeal as to the 
claims subject to the rejection for which the Board has 
remanded the case.

Once appellant files a reply in compliance with 
37 
CFR 1.111 in response to a supplemental examiner’s 
answer responding to a remand by the Board for 
further consideration of a rejection under 37 CFR 
41.50(a), the examiner must reopen prosecution by 
entering and considering the reply. Examiner may 
make the next Office action final unless the examiner 
introduces a new ground of rejection that is neither 
necessitated by the applicant’s amendment of the 
claims nor based on information submitted in an 
information disclosure statement filed during the 
period set forth in 37 CFR 1.97(c) with the fee set 
forth in 37 CFR 1.17(p). See MPEP § 706.07(a).

2.Request That the Appeal Be Maintained by 
Filing a Reply Brief

If appellant requests that the appeal be maintained, 
the appellant must file a reply brief to address each 
grounds of rejection set forth in the supplemental 
examiner’s answer in compliance with 37 CFR 
41.37(c)(1)(vii) within two months from the mailing 
of the supplemental answer. The reply brief must also 
be in compliance with requirements set forth in 
37 
CFR 41.41 (e.g., it cannot include any new amendment 
or affidavit). If the reply brief is accompanied by 
an amendment, affidavit or other evidence, it will be 
treated as a request that prosecution be reopened 
before the examiner. 

The examiner may provide another supplemental 
examiner’s answer (with TC Director or designee 
approval) to respond to any new issue raised in the 
reply brief. The supplemental examiner’s answer 
responding to a reply brief cannot include any new 
grounds of rejection. See MPEP § 1207.05. In 
response to the supplemental examiner’s answer, the 
appellant may file another reply brief under 37 CFR 
41.41 within 2 months from the mailing of the supplemental 
examiner’s answer. The two month time 
period for reply is not extendable under 37 CFR 
1.136(a), but is extendable under 37 CFR 1.136(b) for 
patent applications and 37 CFR 1.550(c) for ex partereexamination proceedings. Appellant cannot request 
that prosecution be reopened pursuant to 37 CFR 
41.50(a) at that time. 

B.Failure To Reply to a Supplemental 
Examiner’s Answer Under 37 CFR 41.50(a)

If appellant fails to timely file a reply under 37 CFR 
1.111 or a reply brief in response to a supplemental 
examiner’s answer that was written in response to a 
remand by the Board for further consideration of a 




 

rejection under 37 CFR 41.50(a), the appeal will be 
sua sponte dismissed as to the claims subject to the 
rejection for which the Board has remanded the proceeding. 
If all of the claims under appeal are subject 
to the rejection, the entire appeal will be dismissed. 
The examiner should follow the procedure set forth in 
MPEP § 1215 to dismiss the appeal. For example, if 
there is no allowed claim in the application, the application 
would be abandoned when the two-month time 
period has expired.

If only some of the claims under appeal are subject 
to the rejection, the dismissal of the appeal as to those 
claims operates as an authorization to cancel those 
claims and the appeal continues as to the remaining 
claims. The examiner must:

(1)cancel the claims subject to the rejection; and 

(2)notify the appellant that the appeal as to the 
claims subject to the rejection is dismissed and those 
claims are canceled.

Examiner may use form paragraph 12.186 to dismiss 
the appeal as to the claims subject to the rejection 
and cancel the claims. 

¶ 12.186 Dismissal Following A Supplemental Examiner's 
Answer Written in Response to a Remand for Further 
Consideration of a Rejection

Appellant failed to timely respond to the supplemental examiner’s 
answer mailed on [1] that was written in response to a 
remand by the Board for further consideration of a rejection 
mailed on [1]. Under 37 CFR 41.50(a)(2), appellant must, within 
two months from the date of the supplemental examiner’s answer, 
file either: (1) a request that prosecution be reopened by filing a 
reply under 37 CFR 1.111; or (2) a request that the appeal be 
maintained by filing a reply brief under 37 CFR 41.41, to avoid 
sua sponte dismissal of the appeal as to the claims subject to the 
rejection for which the Board has remanded the proceeding. In 
view of appellant’s failure to file a reply under 37 CFR 1.111 or a 
reply brief within the time period required by 37 CFR 41.50(a)(2), 
the appeal as to claims [2] is dismissed, and these claims are 
canceled.

Only claims [3] remain in the application. The appeal continues 
as to these remaining claims. The application will be forwarded 
to the Board after mailing of this communication.

Examiner Note:

1. In bracket 1, insert the mailing date of the supplemental 
examiner’s answer.

2. In bracket 2, insert the claim numbers of the claims subject 
to the rejection for which the Board has remanded the proceeding.

3. In bracket 3, insert the claim numbers of the claims that are 
not subject to the rejection.

III.SUPPLEMENTAL EXAMINER’S AN-
SWER RESPONDING TO A REMAND 
FOR OTHER PURPOSES THAT ARE NOT 
FOR FURTHER CONSIDERATION OF 
REJECTION

The Board may remand an application to the examiner 
for a reason that is not for further consideration of 
a rejection, such as to consider an information disclosure 
statement, a reply brief that raised new issues that 
were not considered by the examiner, an amendment, 
or an affidavit. See MPEP § 1211. The examiner may 
provide a supplemental examiner’s answer in 
response to the remand by the Board. Appellant may 
respond by filing a reply brief within two months 
from the mailing of the supplemental answer. Appellant 
does not have the option to request that prosecution 
be reopened pursuant to 37 CFR 41.50(a) unless 
the remand by the Board is for further consideration 
of a rejection under 37 CFR 41.50(a).



1208Reply Briefs and Examiner’s 
Responses to Reply Brief [R-3]



37 CFR 41.41. Reply brief.

(a)(1)Appellant may file a reply brief to an examiner’s 
answer within two months from the date of the examiner’s answer.

(2)A reply 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 § 41.33 for amendments, affidavits or other 
evidence filed after the date of filing the appeal.

(b)A reply brief that is not in compliance with paragraph (a) 
of this section will not be considered. Appellant will be notified if 
a reply brief is not in compliance with paragraph (a) of this section.


(c)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.

37 CFR 41.43. Examiner’s response to reply brief.

(a)(1)After receipt of a reply brief in compliance with § 
41.41, the primary examiner must acknowledge receipt and entry 
of the reply brief. In addition, the primary examiner may withdraw 
the final rejection and reopen prosecution or may furnish a 
supplemental examiner’s answer responding to any new issue 
raised in the reply brief.




 

(2)A supplemental examiner’s answer responding to a 
reply brief may not include a new ground of rejection.

(b)If a supplemental examiner’s answer is furnished by the 
examiner, appellant may file another reply brief under § 41.41 to 
any supplemental examiner’s answer within two months from the 
date of the supplemental examiner’s answer.

(c)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.

I.REPLY BRIEF

Under 37 CFR 41.41(a)(1) and 41.43(b), appellant 
may file a reply brief as a matter of right within 2 
months from the mailing date of the examiner’s 
answer or supplemental examiner’s answer. Extensions 
of time to file the reply brief may be granted 
pursuant to 37 CFR 1.136(b) (for patent applications) 
or 1.550(c) (for ex parte reexamination proceedings). 
Extensions of time under 37 CFR 1.136(a) are not 
permitted. The examiner may provide a supplemental 
examiner’s answer to respond to any reply brief that 
raises new issues. See MPEP § 1207.05. Normally, 
appellant is not required to file a reply brief to 
respond to an examiner’s answer or a supplemental 
examiner’s answer, and if appellant does not file a 
reply brief within the two month period of time, the 
application will be forwarded to the Board for decision 
on the appeal. In response to the following, however, 
appellant is required to file either a reply brief to 
maintain the appeal or a reply under 37 CFR 1.111 to 
reopen prosecution: 

(A)An examiner’s answer that contains a new 
ground of rejection pursuant to 37 CFR 41.39 (see 
MPEP § 1207.03); or

(B)A supplemental examiner’s answer responding 
to a remand by the Board for further consideration 
of a rejection pursuant to 37 CFR 41.50(a) (see MPEP 
§ 1207.05). Such a supplemental examiner’s answer 
may contain a new ground of rejection (also see 
MPEP § 1207.03). 

If appellant requests that the appeal be maintained 
in response to a new ground of rejection made in an 
examiner’s answer or a supplemental examiner’s 
answer, the appellant must file a reply brief to address 
each new grounds of rejection set forth in the answer 
in compliance with 37 CFR 41.37(c)(1)(vii) within 
two months from the mailing of the answer. The reply 
brief should include the following items, with each 
item starting on a separate page, so as to follow the 
other requirements of a brief as set forth in 37 CFR 
41.37(c): 

(A)Identification page setting forth the appellant’s 
name(s), the application number, the filing date 
of the application, the title of the invention, the name 
of the examiner, the art unit of the examiner and the 
title of the paper (i.e., Reply Brief);

(B)Status of claims page(s);

(C)Grounds of rejection to be reviewed on appeal 
page(s); and

(D)Argument page(s).

The reply brief can also be a substitute brief replacing 
the original brief by responding to both the new 
ground of rejection and all other grounds of rejection 
covered in the original brief. In such an instance, the 
reply brief must meet all the requirements of a brief as 
set forth in 37 CFR 41.37(c). 

Any reply brief must also be in compliance with 
requirements set forth in 37 CFR 41.41. New or non-
admitted affidavits, and/or other evidence are not permitted 
in a reply brief. Any new amendment must be 
submitted in papers separate from the reply brief, and 
the entry of such papers is subject to the provisions of 
37 CFR 41.33. A paper that contains an amendment is 
not a reply brief within the meaning of 37 CFR 41.41. 
Such a paper will not be entitled to entry simply 
because it is characterized as a reply brief. 

If a reply brief is filed in response to a supplemental 
examiner’s answer under 37 CFR 41.50(a) that was 
written in response to a remand by the Board for further 
consideration of a rejection, any reply brief 
accompanied by an amendment, affidavit or other evidence 
will be treated as a request that prosecution be 
reopened before the examiner. If appellant fails to file 
a reply brief or a reply under 37 CFR 1.111 within two 
months from the mailing of the examiner’s answer 
that contains a new ground of rejection, or a supplemental 
examiner’s answer under 37 CFR 41.50(a), the 
examiner will dismiss the appeal as to the claims subject 
to the new ground of rejection or the rejection for 
which the Board has remanded the proceeding. See 
MPEP § 1207.03 and § 1207.05.




 

II.EXAMINER’S RESPONSE TO A REPLY 
BRIEF

If a reply brief is not in compliance with 37 CFR 
41.41, the examiner must notify appellant that the 
reply brief has not been considered and the reason for 
non-compliance. The examiner may use form paragraph 
12.182 on Form PTOL-90 to notify the appellant.


¶ 12.182 Reply Brief Not Considered

The reply brief filed on [1] has not been considered because it 
is not in compliance with 37 CFR 41.41(a). The reply brief [2].

Examiner Note:

1. In bracket 1, insert the date on which the reply brief was 
filed.

2. In bracket 2, insert the reasoning. For example, insert “was 
not filed within the non-extendable time period set in 37 CFR 
41.41(a)(1)” or insert “included a new or non-admitted amendment 
or new or non-admitted affidavit or other evidence”.

3. Use this form paragraph to notify the appellant under 37 
CFR 41.41(b) that a reply brief is not being considered because it 
is not in compliance with 37 CFR 41.41(a).

If a reply brief is filed in compliance with 37 CFR 
41.41, the primary examiner must acknowledge 
receipt and entry of the 
reply brief. The examiner may 
use form paragraph 12.181 on Form 
PTOL-90 to provide 
the acknowledgment. 

¶ 12.181 Acknowledgment of Reply Brief

The reply brief filed [1] has been entered and considered. The 
application has been forwarded to the Board of Patent Appeals 
and Interferences for decision on the appeal.

Examiner Note:

1. In bracket 1, insert the date on which the reply brief was 
filed.

2. Use this form paragraph to notify the appellant under 37 
CFR 41.43(a)(1) that a reply brief has been received and entered.

3. This form paragraph is to be printed on a blank page for 
attachment to a PTOL-90 or PTO-90C.

4. Include form paragraph 12.184 after this paragraph to 
include a supplemental examiner’s answer under 37 CFR 
41.43(a)(1) responding to any new issue raised in the reply brief.

In addition, the examiner may:

(A)Withdraw the final rejection and reopen prosecution 
to respond to the reply brief (see MPEP 
§
 
1207.04); or 

(B)Furnish a supplemental examiner’s answer 
responding to any new issue raised in the reply brief 
(see MPEP § 1207.05). 

Any supplemental examiner’s answer responding 
to a new issue raised in a reply brief must be approved 
by the Technology Center (TC) Director or designee. 
37 CFR 41.43(a)(2) prohibits a supplemental examiner’s 
answer responding to a reply brief from including 
a new ground of rejection. After the filing of a 
reply brief, any new ground of rejection responding to 
a reply brief must be by way of reopening of prosecution. 
See MPEP § 1207.04. The examiner’s decision 
to withdraw the final rejection and reopen prosecution 
to enter a new ground of rejection requires approval 
from the supervisory patent examiner, which approval 
must be indicated in the Office action setting forth the 
new ground of rejection. See MPEP § 1207.04.

In response to the supplemental examiner’s answer, 
the appellant may file another reply brief under 37 
CFR 41.41 within 2 months from the mailing of the 
supplemental examiner’s answer. The two month time 
period for reply is not extendable under 37 CFR 
1.136(a), but is extendable under 37 CFR 1.136(b) for 
patent applications and 37 CFR 1.550(c) for ex partereexamination proceedings. Appellant cannot request 
that prosecution be reopened pursuant to 37 CFR 
41.39(b) or 41.50(a) at that time.

The acknowledgment of receipt and entry of a reply 
brief under 37 CFR 41.41 is an indication by the 
examiner that no further response by the examiner is 
deemed necessary. It should also be noted that an indication 
that certain rejections have been withdrawn as 
a result of the reply brief is not, by itself, a supplemental 
examiner’s answer and is permitted. Such an 
indication of a change in status of claims would not 
give appellant the right to file another reply brief. The 
examiner may make the indication on form PTOL-
90.

1209Oral Hearing [R-3]



37 CFR 41.47. Oral hearing.

(a)An oral hearing should be requested only in those circumstances 
in which appellant considers such a hearing necessary 
or desirable for a proper presentation of the appeal. An appeal 
decided on the briefs without an oral hearing will receive the same 
consideration by the Board as appeals decided after an oral hearing.


(b)If appellant desires an oral hearing, appellant must file, 
as a separate paper captioned “REQUEST FOR ORAL HEARING,” 
a written request for such hearing accompanied by the fee 




 

set forth in § 41.20(b)(3) within two months from the date of the 
examiner’s answer or supplemental examiner’s answer.

(c)If no request and fee for oral hearing have been timely 
filed by appellant as required by paragraph (b) of this section, the 
appeal will be assigned for consideration and decision on the 
briefs without an oral hearing.

(d)If appellant has complied with all the requirements of 
paragraph (b) of this section, a date for the oral hearing will be set, 
and due notice thereof given to appellant. If an oral hearing is 
held, an oral argument may be presented by, or on behalf of, the 
primary examiner if considered desirable by either the primary 
examiner or the Board. A hearing will be held as stated in the 
notice, and oral argument will ordinarily be limited to twenty minutes 
for appellant and fifteen minutes for the primary examiner 
unless otherwise ordered.

(e)(1)Appellant will argue first and may reserve time for 
rebuttal. At the oral hearing, appellant may only rely on evidence 
that has been previously entered and considered by the primary 
examiner and present argument that has been relied upon in the 
brief or reply brief except as permitted by paragraph (e)(2) of this 
section. The primary examiner may only rely on argument and 
evidence relied upon in an answer or a supplemental answer 
except as permitted by paragraph (e)(2) of this section.

(2)Upon a showing of good cause, appellant and/or the 
primary examiner may rely on a new argument based upon a 
recent relevant decision of either the Board or a Federal Court.

(f)Notwithstanding the submission of a request for oral 
hearing complying with this rule, if the Board decides that a hearing 
is not necessary, the Board will so notify appellant.

(g)Extensions of time under § 1.136(a) of this title for patent 
applications are not applicable to the time periods 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.

37 CFR 41.47(b) provides that an appellant 
who desires an oral hearing before the Board must 
request the hearing by filing, in a separate paper captioned 
“REQUEST FOR ORAL HEARING,” a written 
request therefor, accompanied by the appropriate 
fee set forth in 37 CFR 41.20(b)(3), within 2 
months after the date of the examiner’s answer or 
supplemental examiner’s answer. Form PTO/SB/32 
may be used to request an oral hearing. This time 
period may only be extended by filing a request under 
either 37 
CFR 1.136(b) or, if the appeal involves an ex 
parte reexamination proceeding, under 37 CFR 
1.550(c).

If the written request for an oral hearing is not 
filed in a separate paper captioned “REQUEST FOR 
ORAL HEARING,” the request is improper and the 
appeal will be assigned for consideration and decision 
on the briefs without an oral hearing. Likewise, if the 
request is not timely filed or accompanied by the 
appropriate fee, the request is improper and the appeal 
will be assigned for consideration and decision on the 
briefs without an oral hearing.

A notice of hearing, stating the date, the time, and 
the docket, is forwarded to the appellant in due 
course. If appellant fails to confirm the hearing
within the time required in the notice of hearing or 
the appellant waives the hearing, the appeal will be 
removed from the hearing docket and assigned on 
brief in due course. No refund of the fee for requesting 
an oral hearing will be made. Similarly, after confirmation, 
if no appearance is made at the scheduled 
hearing, the appeal will be decided on brief. Since 
failure to notify the Board of waiver of hearing in 
advance of the assigned date results in a waste of the 
Board’s resources, appellant should inform the Board 
of a change in plans at the earliest possible opportunity. 
If the Board determines that a hearing is not necessary 
(e.g., a remand to the examiner is necessary or 
it is clear that the rejection(s) cannot be sustained), 
appellant will be notified.

If appellant has any special request, such as for a 
particular date or day of the week, this will be taken 
into consideration in setting the hearing, if made 
known to the Board in advance, as long as such 
request does not unduly delay a decision in the case 
and does not place an undue administrative burden on 
the Board.

The appellant may also file a request, in a paper 
addressed to the Chief Clerk of the Board, to present 
his/her arguments via telephone. The appellant making 
the request will be required to bear the cost of the 
telephone call. 

If the time set in the notice of hearing conflicts with 
prior commitments or if subsequent events make 
appearance impossible, the hearing may be rescheduled 
on written request, in a paper addressed to the 
Chief Clerk of the Board. However, in view of the 
administrative burden involved in rescheduling hearings 
and the potential delay which may result in the 
issuance of any patent based on the application on 
appeal, postponements are discouraged and will not 
be granted in the absence of convincing reasons in 
support of the requested change.

Normally, 20 minutes are allowed for appellant to 
explain his or her position. If appellant believes that 
additional time will be necessary, a request for such 
time should be made well in advance and will be 




 

taken into consideration in assigning the hearing date. 
The final decision on whether additional time is to be 
granted rests within the discretion of the senior member 
of the panel hearing the case.

At the oral hearing, appellant may only rely on 
evidence that has been previously entered and considered 
by the primary examiner and present arguments 
that have been relied upon in the brief or reply brief. 
Upon a showing of good cause, appellant and/or the 
primary examiner may rely on a new argument based 
upon a recent relevant decision of either the Board or 
a Federal Court.

Where the appeal involves reexamination proceedings, 
subject to the admittance procedures established 
by the Board, oral hearings are open to the public as 
observers unless the appellant (A) requests that the 
hearing not be open to the public, and (B) presents 
valid reasons for such a request. The Board’s current 
public admittance procedure is to permit a third party 
observer to watch an oral hearing involving a reexamination 
proceeding provided the hearing has not been 
closed per the appellant’s request and the third party 
observer has obtained prior written permission from 
the Board to observe the hearing.

37 CFR 41.47(f) provides that notwithstanding the 
submission of a request for oral hearing, if the Board 
decides that a hearing is not necessary, the Board will 
so notify appellant. Examples as to when it would be 
appropriate for the Board to decide that an oral hearing 
is not necessary include those where the Board 
has become convinced, prior to hearing, that an application 
must be remanded for further consideration 
prior to evaluating the merits of the appeal or that the 
examiner’s position cannot be sustained.

PARTICIPATION BY EXAMINER

If the appellant has requested an oral hearing and 
the primary examiner wishes to appear and present an 
oral argument before the Board, a request to present 
oral argument must be set forth in a separate letter 
on a form PTOL-90 using form paragraph 12.163. 



¶ 12.163 Request to Present Oral Arguments

The examiner requests the opportunity to present arguments at 
the oral hearing.

Examiner Note:

1. Use this form paragraph only if an oral hearing has been 
requested by appellant and the primary examiner intends to 
present an oral argument.

2. This form paragraph must be included as a separate letter on 
a form PTOL-90.



In those appeals in which an oral hearing has been 
confirmed and either the primary examiner or the 
Board has indicated a desire for the examiner to participate 
in the oral argument, oral argument may be 
presented by the examiner whether or not appellant 
appears. 

After the oral hearing has been confirmed and the 
date set as provided in 37 CFR 41.47(d), the 
examiner and the examiner’s supervisor should be 
notified via e-mail of the date and time of the hearing. 
In those cases where the Board requests the presentation 
of an oral argument by or on behalf of the 
primary examiner, the Board’s request may, where 
appropriate, indicate specific points or questions to 
which the argument should be particularly directed. 


At the hearing, after the appellant has made his or 
her presentation, the examiner will be allowed 15 
minutes to reply as well as to present a statement 
which clearly sets forth his or her position with 
respect to the issues and rejections of record. The 
primary examiner may only rely on argument and evidence 
relied upon in the examiner’s answer or the 
supplemental examiner’s answer. Appellant may utilize 
any allotted time not used in the initial presentation 
for rebuttal. 



1210Actions Subsequent to Examiner’s 
Answer but Before Board’s Decision 
[R-3]



I. JURISDICTION OF BOARD



37 CFR 41.35. Jurisdiction over appeal.

(a)Jurisdiction over the proceeding passes to the Board 
upon transmittal of the file, including all briefs and examiner’s 
answers, to the Board.

(b)If, after receipt and review of the proceeding, the Board 
determines that the file is not complete or is not in compliance 




 

with the requirements of this subpart, the Board may relinquish 
jurisdiction to the examiner or take other appropriate action to 
permit completion of the file.

(c)Prior to the entry of a decision on the appeal by the 
Board, the Director may sua sponte order the proceeding 
remanded to the examiner.

The application file and jurisdiction of the application 
are normally transferred from the Technology 
Centers to the Board at one of the following times:

(A)After 2 months from the examiner’s answer 
or supplemental examiner’s answer, plus mail 
room time, if no reply brief has been timely filed.

(B)After  the examiner has notified the appellant 
by written communication that the reply brief has 
been entered and considered and that the application 
will be forwarded to the Board (for example, by mailing 
a PTOL-90 with form paragraph 12.181, as 
described in MPEP § 1208).

Any amendment  or other paper relating to the 
appeal filed thereafter but prior to the decision of the 
Board, may be considered by the examiner only in the 
event the case is remanded by the Board for that purpose.




II. DIVIDED JURISDICTION

Where appeal is taken from the second or final 
rejection only of one or more claims presented for the 
purpose of provoking an interference, jurisdiction of 
the rest of the case remains with the examiner, and 
prosecution of the remaining claims may proceed as 
though the entire case was under his or her jurisdiction. 
Also, where the examiner certifies in writing that 
there is no conflict of subject matter and the administrative 
patent judge in charge of the interference 
approves, an appeal to the Board may proceed concurrently 
with an interference. See MPEP Chapter 
2300.



III. ABANDONMENT OF APPEAL: APPLI-
CATION REFILED OR ABANDONED

To avoid the rendering of decisions by the Board in 
applications which appellants have decided to 
abandon or to refile as continuations, appellants 
should promptly inform the Chief Clerk of the 
Board in writing as soon as they have positively 
decided to refile or to abandon an application containing 
an appeal awaiting a decision. Failure to exercise 
appropriate diligence in this matter may result in the 
Board’s refusing an otherwise proper request to vacate 
its decision.

See MPEP § 1215.01 - § 1215.03 concerning the 
withdrawal of appeals.



1211Remand by Board [R-3]

The Board has authority to remand a case to the 
examiner when it deems it necessary. For example, 
the Board may remand a case for further consideration 
of a rejection pursuant to 37 CFR 41.50(a)(1) 
such as where the pertinence of the references is not 
clear, the Board may call upon the examiner for a further 
explanation. See MPEP § 1211.01. In the case 
of multiple rejections of a cumulative nature, the 
Board may also remand for selection of the preferred 
or best ground. The Board may also remand a case to 
the examiner for further search where it feels that the 
most pertinent art has not been cited, or to consider an 
amendment. See MPEP  § 1211.02,  §
 
1211.03and § 1211.04. Furthermore, the Board may 
remand an application to the examiner to prepare a 
supplemental examiner’s answer in response to a 
reply brief which the examiner only acknowledged 
receipt and entry thereof (e.g., by using form 
paragraph 12.181 on form PTOL-90). See MPEP 
§
 
1207.05 for more information on supplemental 
examiner’s answer. 



1211.01Remand by Board for Further 
Consideration of Rejection [R-3]

A supplemental examiner’s answer written in 
response to a remand by the Board for further consideration 
of a rejection pursuant to 37 CFR 41.50(a)(1) 
may set forth a new ground of rejection. See MPEP § 
1207.03.

If a supplemental examiner’s answer is written in 
response to a remand by the Board for further consideration 
of a rejection pursuant to 37 CFR 41.50(a)(1) 
(even when there is no new ground of rejection made 
in the supplemental examiner’s answer), the appellant 
must exercise one of the following two options to 
avoid sua sponte dismissal of the appeal as to the 
claims subject to the rejection for which the Board has 
remanded the proceeding:




 

(A)Reopen prosecution. Request that prosecution 
be reopened before the examiner by filing a reply 
under 37 CFR 1.111 with or without amendment or 
submission of affidavits (37 CFR 1.130, 1.131 or 
1.132) or other evidence. Any amendment or submission 
of affidavits or other evidence must be relevant to 
the issues set forth in the remand or raised in the supplemental 
examiner’s answer. A request that complies 
with 37 CFR 41.50(a)(2)(i) will be entered and the 
application or the patent under ex parte reexamination 
will be reconsidered by the examiner under the provisions 
of 37 CFR 1.112. Any request that prosecution 
be reopened under 37 CFR 41.50(a)(2)(i)will be 
treated as a request to withdraw the appeal.

(B)Maintain appeal. Request that the appeal be 
maintained by filing a reply brief as provided in 37 
CFR 41.41. If such a reply brief is accompanied by 
any amendment, affidavit or other evidence, it shall be 
treated as a request that prosecution be reopened 
before the examiner under 37 CFR 41.50(a)(2)(i).

See MPEP § 1207.03 for information on new 
ground of rejection.

See MPEP § 1207.05 for information on supplemental 
examiner’s answer and appellant’s response to 
a supplemental examiner’s answer. 

See MPEP § 1208 on reply briefs and examiner’s 
responses to reply briefs.

The following are two examples of situations where 
there may be a remand by the Board for examiner 
action that is not for further consideration of a rejection:


(A)A remand to consider an Information Disclosure 
Statement; and

(B)A remand for the examiner to consider a reply 
brief.

37 CFR 41.50(a)(2) does not apply when the 
remand by the Board is not for further consideration 
of a rejection. The Board will normally indicate in the 
remand whether 37 CFR 41.50(a)(2)(i) applies. 
Appellant cannot request that prosecution be reopened 
under 37 CFR 41.50(a)(2)(i) and is not required to 
reply to a supplemental examiner’s answer that is 
written in response to a remand that is not for further 
consideration of a rejection. 

The following form paragraphs may be used in preparing 
the supplemental examiner’s answer after a 
remand from the Board:

¶ 12.184 Supplemental Examiner’s Answer -No option to 
Reopen Prosecution

Responsive to [1] on [2], a supplemental Examiner’s Answer is 
set forth below: [3].

Appellant may file another reply brief in compliance with 37 
CFR 41.41 within two months of the date of mailing of this supplemental 
examiner’s answer. Extensions of time under 37 CFR 
1.136(a) are not applicable to this two month time period. See 37 
CFR 41.43(b)-(c).

A Technology Center Director or designee has approved 
this supplemental examiner’s answer by signing below: 

[4]

Examiner Note:

1. In bracket 1, insert the reason the supplemental examiner’s 
answer is being prepared, e.g.,“ the remand under 37 CFR 
41.50(a)(1) for reasons other than for further consideration of a 
rejection”, or “the reply brief under 37 CFR 41.41 filed”.

2. In bracket 2, insert the date of remand or the date the reply 
brief was filed.

3. In bracket 3, provide the supplemental examiner’s answer 
(e.g., pursuant to 37 CFR 41.43(a), without raising any new 
grounds of rejection.

4. In bracket 4, insert the TC Director’s or designee’s signature. 
A TC Director or designee must approve every supplemental 
examiner’ s answer.

¶ 12.185 Supplemental Examiner’s Answer - On Remand 
FOR FURTHER CONSIDERATION OF A REJECTION

Pursuant to the remand under 37 CFR 41.50(a)(1) by the Board 
of Patent Appeals and Interferences on [1] for further consideration 
of a rejection, a supplemental Examiner’s Answer under 37 
CFR 41.50(a)(2) is set forth below: [2].

The appellant must within TWO MONTHS from the date of 
the supplemental examiner’s answer exercise one of the following 
two options to avoid sua sponte dismissal of the appeal as to the 
claims subject to the rejection for which the Board has remanded 
the proceeding:

(1) Reopen prosecution. Request that prosecution be reopened 
before the examiner by filing a reply under 37 CFR 1.111 with or 
without amendment, affidavit, or other evidence. Any amendment, 
affidavit, or other evidence must be relevant to the issues set 
forth in the remand or raised in the supplemental examiner’s 
answer. Any request that prosecution be reopened will be treated 
as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i).

(2) Maintain appeal. Request that the appeal be maintained by 
filing a reply brief as set forth in 37 CFR 41.41. If such a reply 
brief is accompanied by any amendment, affidavit or other evidence, 
it shall be treated as a request that prosecution be reopened 
under 37 CFR 41.50(a)(2)(i). See 37 CFR 41.50(a)(2)(ii).

Extensions of time under 37 CFR 1.136(a) are not applicable to 
the TWO MONTH time period set forth above. See 37 CFR 
1.136(b) for extensions of time to reply for patent applications and 




 

37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination 
proceedings.

A Technology Center Director or designee has approved 
this supplemental examiner’s answer by signing below: 

[3]

Examiner Note:

1. In bracket 1, insert the date of the remand.

2. In bracket 2, provide reasons supporting the rejections set 
forth in the supplemental Examiner’s Answer.

3. In bracket 3, insert the TC Director’s or designee’s signature. 
A TC Director or designee must approve every supplemental 
examiner’s answer.

The supervisory patent examiner must approve any 
action in which a remanded application is withdrawn 
from appeal. See MPEP § 706.07(e) and 
§
 
1002.02(d). If the examiner decides to withdraw the 
final rejection and reopen prosecution to enter a new 
ground of rejection, approval from the supervisory 
patent examiner is required. See MPEP § 1207.04.



1211.02 Remand by Board To ConsiderAmendment [R-3]

There is no obligation resting on the Board 
to 
consider new or amended claims submitted while it 
has jurisdiction of the appeal. In re Sweet, 136 F.2d 
722, 58 
USPQ 327 (CCPA 1943). However, a proposed 
amendment filed after the date of filing of a 
brief to either cancel claims, where such cancellation 
does not affect the scope of any other pending claim 
in the proceeding, or to rewrite dependent claims into 
independent form may be remanded for  consideration 
by the examiner. See MPEP § 1206.

If the proposed amendment is in effect an abandonment 
of the appeal, e.g., by canceling the appealed 
claims, the amendment must be entered and the 
Chief Clerk of the Board notified in order that the 
case may be removed from the Board’s docket.



1211.03 Remand by Board To ConsiderAffidavits or Declarations [R-3]



Affidavits or declarations filed with  the filing of 
a notice of appeal but before jurisdiction passes to the 
Board (see MPEP § 1206) will be considered for 
entry only if the appellant makes the necessary showing 
under 37 CFR 1.116(e) as to why they are 
necessary and were not earlier presented. Authority 
from the Board is not necessary to consider such affidavits 
or declarations. Affidavits or declarations filed 
after a final rejection and prior to a notice of appeal 
are 
handled as provided in MPEP § 715.09, § 716, 
and §
 
716.01. If such evidence has not been treated 
by the examiner, the Board may remand the proceeding 
to permit the examiner to consider such evidence.


In the case of affidavits or declarations filed after 
the filing of a notice of appeal, but before a decision 
thereon by the Board, the examiner is without 
authority to consider the same unless the examiner 
determines that the affidavit or other evidence 
overcomes all rejections under appeal and that a 
showing of good and sufficient reasons why the affidavit 
or other evidence is necessary and was not earlier 
presented have been made. See MPEP § 1206.

It is not the custom of the Board to remand affidavits 
or declarations offered in connection with a 
request for rehearing of its decision where no rejection 
has been made under 37 CFR 41.50(b). Affidavits 
or declarations submitted for this purpose, not 
remanded to the examiner, are considered only as 
arguments. In re Martin, 154 F.2d 126, 69 
USPQ 75 
(CCPA 1946).

For remand to the examiner to consider appellant’s 
response relating to a 37 CFR 41.50(b) rejection, 
see MPEP § 1214.01.



1211.04  Remand by Board for Further 
Search [R-3]

It should be extremely rare for the Board to 
remand a case to the examiner for further search. A 
remand to the examiner extends the total pendency of 
an application and may necessitate an extension of the 
patent term under 35 U.S.C. 154(b). See MPEP § 
2710. When such a remand is necessary, the Board 
should conduct a search (on-line or otherwise) of at 
least one subclass and cite art from that subclass to 
demonstrate the basis on which it concludes that a 
search of this area would be material.The art cited 
need not be art upon which a rejection can be made.




 

1212Board Requires Appellant to 
Address Matter [R-3]



37 CFR 41.50. Decisions and other actions by the Board.



(d)The Board may order appellant to additionally brief any 
matter that the Board considers to be of assistance in reaching a 
reasoned decision on the pending appeal. Appellant will be given 
a non-extendable time period within which to respond to such an 
order. Failure to timely comply with the order may result in the 
sua sponte dismissal of the appeal.



37 CFR 41.50(d) authorizes the Board to 
additionally brief any matter deemed appropriate 
for a reasoned decision on the appeal. This may 
include, for example: (A) the applicability of particular 
case law that has not been previously identified as 
relevant to an issue in the appeal; or (B) the applicability 
of prior art that has not been made of record.

The rule further provides that the appellant will be 
given a non-extendable time period within which to 
respond to the requirement. Failure to respond within 
the time period set by the Board may result in dismissal 
of the appeal.

The making of a requirement under 37 CFR 
41.50(d) is discretionary with the Board. The 
authority granted in 37 CFR 41.50(d) does not 
affect the Board’s authority to remand a case to the 
examiner in a situation where the Board considers 
action by the examiner in the first instance to be necessary 
or desirable. See MPEP § 1211. Also, after an 
appellant has replied to a requirement under 37 CFR 
41.50(d), a remand by the Board to the examiner 
may be  appropriate to permit the examiner to 
respond to the appellant’s response to the Board’s 
order.

1213Decision by Board [R-3]



37 CFR 41.50. Decisions and other actions by the Board.

(a)(1) The Board, in its decision, may affirm or reverse the 
decision of the examiner in whole or in part on the grounds and on 
the claims specified by the examiner. The affirmance of the rejection 
of a claim on any of the grounds specified constitutes a general 
affirmance of the decision of the examiner on that claim, 
except as to any ground specifically reversed. The Board may also 
remand an application to the examiner.

(2)If a supplemental examiner’s answer is written in 
response to a remand by the Board for further consideration of a 
rejection pursuant to paragraph (a)(1) of this section, the appellant 
must within two months from the date of the supplemental examiner’s 
answer exercise one of the following two options to avoid 
sua sponte dismissal of the appeal as to the claims subject to the 
rejection for which the Board has remanded the proceeding:

(i)Reopen prosecution. Request that prosecution be 
reopened before the examiner by filing a reply under § 1.111 of 
this title with or without amendment or submission of affidavits 
(§§ 1.130, 1.131 or 1.132 of this title) or other evidence. Any 
amendment or submission of affidavits or other evidence must be 
relevant to the issues set forth in the remand or raised in the supplemental 
examiner’s answer. A request that complies with this 
paragraph will be entered and the application or the patent under 
ex parte reexamination will be reconsidered by the examiner 
under the provisions of § 1.112 of this title. Any request that prosecution 
be reopened under this paragraph will be treated as a 
request to withdraw the appeal.

(ii)Maintain appeal. Request that the appeal be maintained 
by filing a reply brief as provided in § 41.41. If such a reply 
brief is accompanied by any amendment, affidavit or other evidence, 
it shall be treated as a request that prosecution be reopened 
before the examiner under paragraph (a)(2)(i) of this section.

(b)Should the Board have knowledge of any grounds not 
involved in the appeal for rejecting any pending claim, it may 
include in its opinion a statement to that effect with its reasons for 
so holding, which statement constitutes a new ground of rejection 
of the claim. A new ground of rejection pursuant to this paragraph 
shall not be considered final for judicial review. When the Board 
makes a new ground of rejection, the appellant, within two 
months from the date of the decision, must exercise one of the following 
two options with respect to the new ground of rejection to 
avoid termination of the appeal as to the rejected claims:

(1)Reopen prosecution. Submit an appropriate amendment 
of the claims so rejected or new evidence relating to the 
claims so rejected, or both, and have the matter reconsidered by 
the examiner, in which event the proceeding will be remanded to 
the examiner. The new ground of rejection is binding upon the 
examiner unless an amendment or new evidence not previously of 
record is made which, in the opinion of the examiner, overcomes 
the new ground of rejection stated in the decision. Should the 
examiner reject the claims, appellant may again appeal to the 
Board pursuant to this subpart.

(2)Request rehearing. Request that the proceeding be 
reheard under § 41.52 by the Board upon the same record. 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 entering the new ground of rejection 
and also state all other grounds upon which rehearing is 
sought.

(c)The opinion of the Board may include an explicit statement 
of how a claim on appeal may be amended to overcome a 
specific rejection. When the opinion of the Board includes such a 
statement, appellant has the right to amend in conformity therewith. 
An amendment in conformity with such statement will overcome 
the specific rejection. An examiner may reject a claim so-




 

amended, provided that the rejection constitutes a new ground of 
rejection.

(d)The Board may order appellant to additionally brief any 
matter that the Board considers to be of assistance in reaching a 
reasoned decision on the pending appeal. Appellant will be given 
a non-extendable time period within which to respond to such an 
order. Failure to timely comply with the order may result in the 
sua sponte dismissal of the appeal.

(e)Whenever a decision of the Board includes a remand, 
that decision shall not be considered final for judicial review. 
When appropriate, upon conclusion of proceedings on remand 
before the examiner, the Board may enter an order otherwise making 
its decision final for judicial review.

(f)Extensions of time under § 1.136(a) of this title for patent 
applications are not applicable to the time periods 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.

After consideration of the record including appellant’s 
briefs and the examiner’s answers, the 
Board writes its decision, affirming the examiner in 
whole or in part, or reversing the examiner’s decision, 
sometimes also setting forth a new ground of rejection.


37 CFR 41.50(e) provides that a decision of the 
Board which includes a remand will not be considered 
final for judicial review. The Board, following 
conclusion of the proceedings before the examiner, 
will either adopt its earlier decision as final for judicial 
review 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 to an appellant following a 
decision by the Board.

On occasion, the Board has refused to consider an 
appeal until after the conclusion of a pending civil 
action or appeal to the Court of Appeals for the Federal 
Circuit involving issues identical with and/or 
similar to those presented in the later appeal. Such 
suspension of action, postponing consideration of the 
appeal until the Board has the benefit of a court decision 
which may be determinative of the issues 
involved, has been recognized as sound practice. An 
appellant is not entitled, after obtaining a final decision 
by the U.S. Patent and Trademark Office on an 
issue in a case, to utilize the prolonged pendency of a 
court proceeding as a means for avoiding res judicatawhile relitigating the same or substantially the same 
issue in another application.

An applicant may petition that the decision be 
withheld to permit the refiling of the application at 
any time prior to the mailing of the decision. Up to 30 
days may be granted, although the time is usually limited 
as much as possible. The Board will be more 
prone to entertain the applicant’s petition where 
the petition is filed early, obviating the necessity 
for an oral hearing or even for the setting of the oral 
hearing date. If the case has already been set for oral 
hearing, the petition should include a request to vacate 
the hearing date, not to postpone it.

In a situation where a withdrawal of the appeal is 
filed on the same day that the decision is mailed, a 
petition to vacate the decision will be denied.

See MPEP § 1214.01 concerning the procedure following 
a new ground of rejection by the Board under 
37 CFR 41.50(b). 

1213.01Statement by Board of How 
an Appealed Claim May Be 
Amended To Overcome a Specific 
Rejection [R-3]



37 CFR 41.50. Decisions and other actions by the Board.



(c)The opinion of the Board may include an explicit statement 
of how a claim on appeal may be amended to overcome a 
specific rejection. When the opinion of the Board includes such a 
statement, appellant has the right to amend in conformity therewith. 
An amendment in conformity with such statement will overcome 
the specific rejection. An examiner may reject a claim so-
amended, provided that the rejection constitutes a new ground of 
rejection.



If the Board’s decision includes an explicit statement 
how a claim on appeal may be amended to 
overcome a specific rejection, appellant may amend 
the claim in conformity with the statement . The 
examiner should make certain that the amendment 
does in fact conform to the statement in the Board’s 
decision.

The making of a statement under 37 CFR 
41.50(c) is discretionary with the Board. In the 
absence of an 
express statement, a remark by the 
Board that a certain feature does not appear in a claim 
is not to be taken as a statement that the claim may be 
allowed if the feature is supplied by amendment. Ex 
parte Norlund, 1913 C.D. 161, 192 O.G. 989 




 

(Comm’r Pat. 1913). A remark by the Board shall 
not be construed by appellant to give appellant 
authority to amend the claim.

Appellant’s right to amend in conformity with the 
statement under 37 CFR 41.50(c) may only be 
exercised within the period allowed for seeking court 
review under 37 CFR 1.304. See MPEP § 1216.

An explicit statement by the Board on how a 
claim on appeal may be amended to overcome a specific 
rejection is not a statement that a claim so-
amended is allowable. The examiner may reject a 
claim so-amended, provided that the rejection constitutes 
a new ground of rejection. Any new ground of 
rejection made by an examiner following the Board’s 
decision must be approved by a Technology Center 
Director and must be prominently identified as such 
in the action setting forth the new ground of rejection.


1213.02New Grounds of Rejection by 
Board [R-3]



37 CFR 41.50. Decisions and other actions by the Board.



(b)Should the Board have knowledge of any grounds not 
involved in the appeal for rejecting any pending claim, it may 
include in its opinion a statement to that effect with its reasons for 
so holding, which statement constitutes a new ground of rejection 
of the claim. A new ground of rejection pursuant to this paragraph 
shall not be considered final for judicial review. When the Board 
makes a new ground of rejection, the appellant, within two 
months from the date of the decision, must exercise one of the following 
two options with respect to the new ground of rejection to 
avoid termination of the appeal as to the rejected claims:

(1)Reopen prosecution. Submit an appropriate amendment 
of the claims so rejected or new evidence relating to the 
claims so rejected, or both, and have the matter reconsidered by 
the examiner, in which event the proceeding will be remanded to 
the examiner. The new ground of rejection is binding upon the 
examiner unless an amendment or new evidence not previously of 
record is made which, in the opinion of the examiner, overcomes 
the new ground of rejection stated in the decision. Should the 
examiner reject the claims, appellant may again appeal to the 
Board pursuant to this subpart.

(2)Request rehearing. Request that the proceeding be 
reheard under § 41.52 by the Board upon the same record. 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 entering the new ground of rejection 
and also state all other grounds upon which rehearing is 
sought.





(f)Extensions of time under § 1.136(a) of this title for patent 
applications are not applicable to the time periods 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.

Under 37 CFR 41.50(b), the Board may, in its 
decision, make a new rejection of one or more of any 
of the claims pending in the case, including claims 
which have been allowed by the examiner.

While  the Board is authorized to reject 
allowed claims, this authorization is not intended as 
an instruction to the Board to examine every allowed 
claim in every appealed application. It is, rather, 
intended to give the Board express authority to act 
when it becomes apparent, during the consideration of 
rejected claims, that one or more allowed claims may 
be subject to rejection on either the same or on different 
grounds from those applied against the rejected 
claims. Since the exercise of authority under 37 CFR 
41.50(b) is discretionary, no inference should be 
drawn from a failure to exercise that discretion.

See MPEP § 1214.01 for the procedure following a 
new ground of rejection under 37 CFR 41.50(b).

1213.03Publication of and Public 
Access to Board Decision [R-3]



37 CFR 41.6. Public availability of Board records.

(a)Publication. (1) Generally. Any Board action is available 
for public inspection without a party’s permission if rendered in a 
file open to the public pursuant to § 1.11 of this title or in an application 
that has been published in accordance with §§ 1.211 to1.221 of this title. The Office may independently publish any 
Board action that is available for public inspection.

(2)Determination of special circumstances. Any Board 
action not publishable under paragraph (a)(1) of this section may 
be published or made available for public inspection if the Director 
believes that special circumstances warrant publication and a 
party does not, within two months after being notified of the 
intention to make the action public, object in writing on the 
ground that the action discloses the objecting party’s trade secret 
or other confidential information and states with specificity that 
such information is not otherwise publicly available. If the action 
discloses such information, the party shall identify the deletions in 
the text of the action considered necessary to protect the information. 
If the affected party considers that the entire action must be 
withheld from the public to protect such information, the party 
must explain why. The party will be given time, not less than 
twenty days, to request reconsideration and seek court review 




 

before any contested portion of the action is made public over its 
objection.

(b)Record of proceeding. (1) The record of a Board proceeding 
is available to the public unless a patent application not 
otherwise available to the public is involved.

(2)Notwithstanding paragraph (b)(1) of this section, after 
a final Board action in or judgment in a Board proceeding, the 
record of the Board proceeding will be made available to the public 
if any involved file is or becomes open to the public under § 
1.11 of this title or an involved application is or becomes published 
under §§ 1.211 to 1.221 of this title.

Any Board decision is available for public 
inspection without a party’s permission if rendered in 
a file open to the public pursuant to 37 CFR 1.11 or in 
an application that has been published in accordance 
with 37 CFR 1.211 through 1.221. The Office may 
independently publish any Board action that is available 
for public inspection.

Decisions of the Board which are open to the public 
are available in electronic form on the USPTO website 
(http://www.uspto.gov).

Any Board decision rendered in a file not open to 
the public pursuant to 37 CFR 1.11 or in an application 
that has not been published in accordance with 37 
CFR 1.211 through 1.221 may be published or made 
available for public inspection under 37 CFR 
41.6(a)(2) if the Director believes that special circumstances 
warrant publication.

1214Procedure Following Decision by 
Board [R-3]



37 CFR 41.54. Action following decision.

 After decision by the Board, the proceeding will be returned 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 proceeding may require, to carry into effect 
the decision.

After an appeal to the Board has been decided, a 
copy of the decision is mailed to the appellant and the 
original placed in the file. The  Board notes the 
decision in the file  and in the record of appeals, 
and then forwards the file to the examiner through the 
office of the Technology Center Director immediately 
if all rejections are reversed, and after about 10 weeks 
if any rejection is affirmed or after a decision on a 
request for rehearing is rendered.

1214.01Procedure Following New 
Ground of Rejection by Board[R-3]

When the Board makes a new 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)). 

 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 1.196(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 return the application file to the Board for consideration 
of the amendment as 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.

 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 the 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 MPEP 
§
 
1214.06, paragraph IV) should be filed in a separate 
paper to facilitate consideration.

1214.03Rehearing [R-3]



37 CFR 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 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 as 
permitted by paragraphs (a)(2) and (a)(3) 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)Upon a showing of good cause, 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 
made pursuant to § 41.50(b) 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 
(A) upon a showing of good cause, appellant may 
present a new argument based upon a recent relevant 
decision of either the Board or a Federal Court, and 
(B) new arguments responding to a new ground of 
rejection made pursuant to 37 CFR 41.50(b). If appellant 
establishes good cause for a new argument based 
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 1.304(a), 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. 

1214.04Examiner Reversed [R-3]

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 exam





 

iner 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 receipt of the Board decision 
in the TC. The TC Director’s secretary should therefore 
date stamp all Board decisions upon receipt in 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 upon a 
showing of good cause, 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 mail a copy of the 
request for rehearing to the appellant. After the period 
set for appellant to file a reply (plus mailing time) has 
expired, the application file will be forwarded to the 
Board. 

1214.05Cancellation of Withdrawn 
Claims [R-3]

Where 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 § 1215.03.

1214.06Examiner Sustained in Whole orin Part [R-3]



37 CFR 1.197. Return of jurisdiction from the Board of 
Patent Appeals and Interferences; termination of 
proceedings.

(a)Return of jurisdiction from the Board of Patent Appeals 
and Interferences. Jurisdiction over an application or patent under 
ex parte reexamination proceeding passes to the examiner after a 
decision by the Board of Patent Appeals and Interferences upon 
transmittal of the file 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 of the Board of Patent Appeals and Interferences.


(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 
paragraphs 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 case files that 
come back from the Board are not overlooked 
because every case, except applications in which all 
claims stand rejected after the Board’s decision, 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.




 

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 District of Columbia 
is the same for both tribunals, that is, 2 months, or 2 
months with the extension provided by 37 CFR 1.304in 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 (plus 2 weeks to allow for information as to 
the filing of an appeal or civil action, if any, to reach 
the examiner) has passed without such review being 
sought, the examiner must take up the application 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. It is to 
be stamped abandoned and sent to abandoned files. 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 
examiner will cancel all rejected and objected to 
claims and issue the application with the allowed 
claims only.

The following form paragraph may be used 
where appropriate:



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

The Board of Patent Appeals and Interferences 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.In bracket 1, enter the independent claim number(s) for 
which the Board affirmed the rejection(s).

2.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. 
For paper files, a red-ink line should be drawn 
through the refused claims and the notion “Board 
Decision” written in the margin in red ink.

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 
with claims 2 and 3; or

(B)Set a 1-month 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 paragraph may be used where 
appropriate:



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

The Board of Patent Appeals and Interferences 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(a) 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.In bracket 1, enter the independent claim number(s) for 
which the Board affirmed the rejection(s).

2.In bracket 2, enter the dependent claim number(s) for which 
the Board reversed the rejection(s).

3.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 
12.120 is suggested:



¶ 12.120 Period For Seeking Court Review Has Lapsed

The period under 37 CFR 1.304 for seeking court review of the 
decision by the Board of Patent Appeals and Interferences 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. Extensions 
of time may be granted under 37 
CFR 1.136. 

Examiner Note:

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

2.In bracket 2, identify the allowed claims.

3.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, paragraph I) the Board’s affirmance will be 
treated as nonfinal, and no request for rehearing 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 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.



1214.07Reopening of Prosecution [R-3]



37 CFR 1.198. 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 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 does not carry into effect any recommendation 
made by the Board and 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), paragraph 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), paragraph 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 12.119 should be used: 



¶ 12.119 Amendment After Board Decision, Entry Refused

The amendment filed [1] after a decision by the Board of 
Patent Appeals and Interferences is not entered because prosecution 
is closed and the proposed amendment was not suggested in 
an explicit statement by the Board under 37 CFR 41.50(c). 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.In bracket 1, insert the date the amendment was filed.

2.This form paragraph is not to be used where a 37 CFR 
41.50(b) rejection has been made by the Board of Patent Appeals 
and Interferences.



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.

1215Withdrawal or Dismissal of Appeal

1215.01Withdrawal of Appeal [R-3]

Except in those instances where a withdrawal of an 
appeal would result in abandonment of an application, 
an attorney not of record in an application or reexamination 
proceeding may file a paper under 37 CFR 
1.34 withdrawing an appeal. In instances where 
no 
allowable claims appear in an application, the 
withdrawal of an appeal is in fact an express abandonment 
that does not comply with 37 CFR 1.138 except 
where a continuing application is being filed on the 
same date.

Where, after an appeal has been filed and before 
decision by the Board, an applicant withdraws the 
appeal after the period for reply to the final rejection 
has expired, the application is to be considered abandoned 
as of the date on which the appeal was withdrawn 
unless there are allowed claims in the case.

Where a letter abandoning the application is filed in 
accordance with 37 CFR 1.138, the effective date of 
abandonment is the date of recognition of the letter by 
an appropriate official of the Office or a different date, 
if so specified in the letter itself. See MPEP § 711.01.

If a brief has been filed within the time permitted 
by 37 
CFR 41.37 (or any extension thereof) and 
an answer mailed and appellant withdraws the appeal, 
the application is returned to the examiner.

 Prior to a decision by the Board, if an applicant 
wishes to withdraw an application from appeal and to 
reopen  prosecution of the application, applicant can 
file a request for continued examination (RCE) under 
37 CFR 1.114, accompanied by a submission (i.e., a 
reply responsive within the meaning of 37 CFR 1.111to the last outstanding Office action) and the RCE fee 
set forth under 37 CFR 1.17(e). Note that the RCE 
practice under 37 CFR 1.114 does not apply to utility 
or plant patent applications filed before June 8, 1995, 
design applications, or reexamination proceedings. 
See 37 CFR 1.114(d) and MPEP §
 
706.07(h), paragraph 
X, for more details. An appeal brief or reply 
brief (or related papers) is not a submission under 37 
CFR 1.114, unless the transmittal letter of the RCE 
contains a statement that incorporates by reference the 
arguments in a previously filed appeal brief or reply 
brief. See MPEP §
 
706.07(h), paragraph II. The filing 
of an RCE will be treated as a withdrawal of the 
appeal by the applicant, regardless of whether the 
RCE includes the appropriate fee or a submission. 
Therefore, when an RCE is filed without the appropriate 
fee or a submission in an application that has no 
allowed claims, the application will be considered 
abandoned. To avoid abandonment, the RCE should 
be filed in compliance with 37 
CFR 1.114. See MPEP 
§
 
706.07(h), paragraphs I-II.




 

Once appellant has filed a notice of appeal, appellant 
also may request that prosecution be reopened for 
the following situations:

(A)In response to a new ground of rejection 
made in an examiner’s answer, appellant may file a 
reply in compliance with 37 CFR 1.111 that addresses 
the new ground of rejection within two months from 
the mailing of the examiner’s answer (see MPEP § 
1207.03).

(B)In response to a supplemental examiner’s 
answer that is written in response to a remand by the 
Board for further consideration of a rejection under 37 
CFR 41.50(a), appellant may file a reply in compliance 
with 37 CFR 1.111 that addresses the rejection in 
the supplemental answer within two months from the 
mailing of the supplemental answer (see MPEP § 
1207.05).

To avoid the rendering of decisions by the Board in 
applications which have already been refiled as continuations, 
applicants should promptly inform the 
Chief Clerk of the Board in writing as soon as 
they have positively decided to refile or to abandon an 
application containing an appeal awaiting a decision. 
Applicants also should advise the Board when an 
RCE is filed in an application containing an appeal 
awaiting decision. Failure to exercise appropriate diligence 
in this matter may result in the Board refusing 
an otherwise proper request to vacate its decision. 

Upon the withdrawal of an appeal, an application 
having no allowed claims will be abandoned. 
Claims which are allowable 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)Claim 1 is allowed; claims 2 and 3 are 
rejected. The examiner should cancel claims 2 and 3 
and issue the application with claim 1 only.

(B)Claims 1 - 3 are rejected. The examiner 
should hold the application abandoned.

(C)Claim 1 is rejected and claim 2 is objected to 
as being allowable except for its dependency from 
claim 1. The examiner should hold the application 
abandoned.

(D)Claim 1 is rejected and claim 2 is objected to 
as being allowable except for its dependency from 
claim 1; independent claim 3 is allowed. The examiner 
should cancel claims 1 and 2 and issue the application 
with claim 3 
only.

In an ex parte reexamination proceeding, an ex 
parte reexamination certificate should be issued under 
37 CFR 1.570.

1215.02Claims Standing Allowed 

If an application contains allowed claims, as well as 
claims on appeal, the withdrawal of the appeal does 
not operate as an abandonment of the application, but 
is considered a withdrawal of the appeal as to those 
claims and authority to the examiner to cancel the 
same. An amendment canceling the appealed claims 
is equivalent to a withdrawal of the appeal.

1215.03Partial Withdrawal [R-3]

A withdrawal of the appeal as to some of the claims 
on appeal operates as an authorization to cancel those 
claims from the application or reexamination proceeding 
and the appeal continues as to the remaining 
claims. The withdrawn claims will be canceled from 
an application by direction of the examiner at the 
time of the withdrawal of the appeal as to those 
claims. Examiner may use the following form paragraph 
to cancel the claims that are withdrawn from 
appeal at the time of the withdrawal: 

¶ 12.121 Withdrawal of Appeal as to Some of the Claims 
on Appeal

The withdrawal of the appeal as to claims [1] operates as an 
authorization to cancel these claims from the application or reexamination 
proceeding. See MPEP § 1215.03. Accordingly, these 
claims are canceled.

Examiner Note:

1.In bracket 1, insert the claim numbers of the claims that were 
withdrawn from appeal.

If appellant fails to respond to a new ground of 
rejection made in an examiner’s answer by either filing 
a reply brief or a reply under 37 CFR 1.111 within 
2 months from the mailing of the examiner’s answer, 
the appeal is sua sponte dismissed as to the claims 
subject to the new ground of rejection. See MPEP § 
1207.03. The examiner should use form paragraph 
12.179.02 to notify the appellant of the dismissal and 
cancel those claims. 




 

¶ 12.179.02 Dismissal Following New Ground(s) of 
Rejection in Examiner’s Answer

Appellant failed to timely respond to the examiner’s answer 
mailed on [1] that included a new ground of rejection mailed on 
[1]. Under 37 CFR 41.39(b), if an examiner’s answer contains a 
rejection designated as a new ground of rejection, appellant must, 
within two months from the date of the examiner’s answer, file 
either: (1) a request that prosecution be reopened by filing a reply 
under 37 CFR 1.111; or (2) a request that the appeal be maintained 
by filing a reply brief under 37 CFR 41.41, addressing each new 
ground of rejection, to avoid sua sponte dismissal of the appeal as 
to the claims subject to the new ground of rejection. In view of 
appellant’s failure to file a reply under 37 CFR 1.111 or a reply 
brief within the time period required by 37 CFR 41.39, the appeal 
as to claims [2] is dismissed, and these claims are canceled.

Only claims [3] remain in the application. The appeal continues 
as to these remaining claims. The application will be forwarded 
to the Board after mailing of this communication.

Examiner Note:

1. In bracket 1, insert the mailing date of the examiner’s 
answer.

2. In bracket 2, insert the claim numbers of the claims subject 
to the new ground of rejection.

3. In bracket 3, insert the claim numbers of the claims that are 
not subject to the new ground of rejection.

Similarly, if appellant fails to respond to a supplemental 
examiner’s answer that is written in response 
to a remand by the Board for further consideration of 
a rejection under 37 CFR 41.50(a) by either filing a 
reply brief or a reply under 37 CFR 1.111 within 2 
months from the mailing of the supplemental answer, 
the appeal is sua sponte dismissed as to the claims 
subject to the rejection for which the Board has 
remanded the proceeding. See MPEP § 1207.05. Such 
supplemental examiner’s answer may also include a 
new ground of rejection. The examiner should use 
form paragraph 12.186 to notify the appellant of the 
dismissal and cancel those claims.

¶ 12.186 Dismissal Following A Supplemental Examiner's 
Answer Written in Response to a Remand for Further 
Consideration of a Rejection

Appellant failed to timely respond to the supplemental examiner’s 
answer mailed on [1] that was written in response to a 
remand by the Board for further consideration of a rejection 
mailed on [1]. Under 37 CFR 41.50(a)(2), appellant must, within 
two months from the date of the supplemental examiner’s answer, 
file either: (1) a request that prosecution be reopened by filing a 
reply under 37 CFR 1.111; or (2) a request that the appeal be 
maintained by filing a reply brief under 37 CFR 41.41, to avoid 
sua sponte dismissal of the appeal as to the claims subject to the 
rejection for which the Board has remanded the proceeding. In 
view of appellant’s failure to file a reply under 37 CFR 1.111 or a 
reply brief within the time period required by 37 CFR 41.50(a)(2), 
the appeal as to claims [2] is dismissed, and these claims are 
canceled.

Only claims [3] remain in the application. The appeal continues 
as to these remaining claims. The application will be forwarded 
to the Board after mailing of this communication.

Examiner Note:

1. In bracket 1, insert the mailing date of the supplemental 
examiner’s answer.

2. In bracket 2, insert the claim numbers of the claims subject 
to the rejection for which the Board has remanded the proceeding.

3. In bracket 3, insert the claim numbers of the claims that are 
not subject to the rejection.



1215.04Dismissal of Appeal [R-3]

If no brief is filed within the time prescribed by 
37 
CFR 41.37, the appeal stands dismissed by 
operation of the rule. Form PTOL-461  or form 
paragraph 12.117 notifying the appellant that the 
appeal stands dismissed is not an action in the case 
and does not start any period for reply. If no claims 
stand allowed, an application is considered as abandoned 
on the date the brief was due. If claims stand 
allowed in an application, the failure to file a brief and 
consequent dismissal of the appeal is to be treated as a 
withdrawal of the appeal and of any claim not standing 
allowed. The application should be passed to issue 
forthwith. Unless appellant specifically withdraws the 
appeal as to rejected claims, the appeal should not be 
dismissed until the extended period (5 months of 
extension are available under 37 CFR 1.136(a)) to 
file the brief has expired.

Applications having no allowed claims will be 
abandoned. Claims which are allowable 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)Claim 1 is allowed; claims 2 and 3 are 
rejected. The examiner should cancel claims 2 and 3 
and issue the application with claim 1 only.

(B)Claims 1 - 3 are rejected. The examiner 
should hold the application abandoned.

(C)Claim 1 is rejected and claim 2 is objected to 
as being allowable except for its dependency from 
claim 1. The examiner should hold the application 
abandoned.




 

(D)Claim 1 is rejected and claim 2 is objected to 
as being allowable except for its dependency from 
claim 1; independent claim 3 is allowed. The examiner 
should cancel claims 1 and 2 and issue the application 
with claim 3 only.

However, if formal matters remain to be attended 
to, the examiner should take appropriate action on 
such matters, setting a shortened period for reply, but 
the application or reexamination proceeding is to be 
considered closed to further prosecution except as to 
such matters. Form paragraph 12.109.01 may be 
used for this purpose. 

An appeal will also be dismissed if an applicant 
fails to 
timely and fully reply to a notice of noncompliance 
with 37 CFR 41.37(d). See MPEP § 
1205.03 and 
37 CFR 41.37(d). As in examples 
(B)-(C) above, if no allowed claims remain in an 
application, the application is abandoned as of the 
date the reply to the notice was due. The applicant 
may petition to revive the application as in other cases 
of abandonment, and to reinstate the appeal. If the 
appeal is dismissed, but allowed claims remain in the 
application, as in examples (A) and (D) above, the 
application is not abandoned; to reinstate the claims 
cancelled by the examiner because of the dismissal, 
the applicant must petition to reinstate the claims and 
the appeal, but a 
showing equivalent to a petition to 
revive under 37 
CFR 1.137 is required. In either 
event, a proper reply to the notice of noncompliance 
must be filed before the petition will be considered on 
its merits.

1216Judicial Review [R-3]

35 U.S.C. 141. Appeal to the Court of Appeals for the 
Federal Circuit.

An applicant dissatisfied with the decision in an appeal to 
the Board of Patent Appeals and Interferences under section 134of this title may appeal the decision to the United States Court of 
Appeals for the Federal Circuit. By filing such an appeal the 
applicant waives his or her right to proceed under section 145 of 
this title. A patent owner, or a third-party requester in an inter 
partes reexamination proceeding, who is in any reexamination 
proceeding dissatisfied with the final decision in an appeal to the 
Board of Patent Appeals and Interferences under section 134 may 
appeal the decision only to the United States Court of Appeals for 
the Federal Circuit. A party to an interference dissatisfied with the 
decision of the Board of Patent Appeals and Interferences on the 
interference may appeal the decision to the United States Court of 
Appeals for the Federal Circuit, but such appeal shall be dismissed 
if any adverse party to such interference, within twenty 
days after the appellant has filed notice of appeal in accordance 
with section 142 of this title, files notice with the Director that the 
party elects to have all further proceedings conducted as provided 
in section 146 of this title. If the appellant does not, within thirty 
days after filing of such notice by the adverse party, file a civil 
action under section 146, the decision appealed from shall govern 
the further proceedings in the case.

35 U.S.C. 145. Civil action to obtain patent.

An applicant dissatisfied with the decision of the Board of 
Patent Appeals and Interferences in an appeal under section 
134(a) of this title may, unless appeal has been taken to the United 
States Court of Appeals for the Federal Circuit, have remedy by 
civil action against the Director in the United States District Court 
for the District of Columbia if commenced within such time after 
such decision, not less than sixty days, as the Director appoints. 
The court may adjudge that such applicant is entitled to receive a 
patent for his invention, as specified in any of his claims involved 
in the decision of the Board of Patent Appeals and Interferences, 
as the facts in the case may appear, and such adjudication shall 
authorize the Director to issue such patent on compliance with the 
requirements of law. All the expenses of the proceedings shall be 
paid by the applicant.



35 U.S.C. 306. Appeal.

The patent owner involved in a reexamination proceeding 
under this chapter may appeal under the provisions of section 134of this title, and may seek court review under the provisions of 
sections 141 to 145 of this title, with respect to any decision 
adverse to the patentability of any original or proposed amended 
or new claim of the patent.



37 CFR 1.301. Appeal to U.S. Court of Appeals for the 
Federal Circuit.

 Any applicant, or any owner of a patent involved in any ex 
parte reexamination proceeding filed under § 1.510, dissatisfied 
with the decision of the Board of Patent Appeals and Interferences, 
and any party to an interference dissatisfied with the decision 
of the Board of Patent Appeals and Interferences, may appeal 
to the U.S. Court of Appeals for the Federal Circuit. The appellant 
must take the following steps in such an appeal: In the U. S. Patent 
and Trademark Office, file a written notice of appeal directed to 
the Director (§§ 1.302 and 1.304); and in the Court, file a copy of 
the notice of appeal and pay the fee for appeal as provided by the 
rules of the Court. For appeals by patent owners and third party 
requesters in inter partes reexamination proceedings filed under § 
1.913, § 1.983 is controlling.

37 CFR 1.303. Civil action under 35 U.S.C. 145, 146, 306.



(a)Any applicant, or any owner of a patent involved in an ex 
parte reexamination proceeding filed before November 29, 1999, 
dissatisfied with the decision of the Board of Patent Appeals and 
Interferences, and any party to an interference dissatisfied with the 
decision of the Board of Patent Appeals and Interferences may, 




 

instead of appealing to the U.S. Court of Appeals for the Federal 
Circuit (§ 1.301), have remedy by civil action under 35 U.S.C. 
145 or 146, as appropriate. Such civil action must be commenced 
within the time specified in § 1.304.

(b)If an applicant in an ex parte case, or an owner of a 
patent involved in an ex parte reexamination proceeding filed 
before November 29, 1999, has taken an appeal to the U.S. Court 
of Appeals for the Federal Circuit, he or she thereby waives his or 
her right to proceed under 35 U.S.C. 145.

(c)A notice of election under 35 U.S.C. 141 to have all 
further proceedings on review conducted as provided in 35 U.S.C. 
146 must be filed with the Office of the Solicitor and served as 
provided in § 41.106(e) of this title.

(d)For an ex parte reexamination proceeding filed on or 
after November 29, 1999, and for any inter partes reexamination 
proceeding, no remedy by civil action under 35 U.S.C. 145 is 
available.

37 CFR 1.304. Time for appeal or civil action.



(a)(1)The time for filing the notice of appeal to the U.S. 
Court of Appeals for the Federal Circuit (§ 1.302) or for commencing 
a civil action (§ 1.303) is two months from the date of 
the decision of the Board of Patent Appeals and Interferences. If a 
request for rehearing or reconsideration of the decision is filed 
within the time period provided under § 41.52(a), §
 
41.79(a), or § 
41.127(d) of this title, the time for filing an appeal or commencing 
a civil action shall expire two months after action on the request. 
In contested cases before the Board of Patent Appeals and Interferences, 
the time for filing a cross-appeal or cross-action expires:

(i)Fourteen days after service of the notice of 
appeal or the summons and complaint; or

(ii)Two months after the date of decision of the 
Board of Patent Appeals and Interferences, whichever is later.

(2)The time periods set forth in this section are not subject 
to the provisions of § 1.136, § 1.550(c), or § 1.956, or of § 
41.4 of this title.

(3)The Director may extend the time for filing an 
appeal or commencing a civil action:

(i)For good cause shown if requested in writing 
before the expiration of the period for filing an appeal or commencing 
a civil action, or

(ii)Upon written request after the expiration of the 
period for filing an appeal or commencing a civil action upon a 
showing that the failure to act was the result of excusable neglect.

(b)The times specified in this section in days are calendar 
days. The time specified herein in months are calendar months 
except that one day shall be added to any two-month period which 
includes February 28. If the last day of the time specified for 
appeal or commencing a civil action falls on a Saturday, Sunday 
or Federal holiday in the District of Columbia, the time is 
extended to the next day which is neither a Saturday, Sunday nor a 
Federal holiday.

(c)If a defeated party to an interference has taken an appeal 
to the U.S. Court of Appeals for the Federal Circuit and an 
adverse party has filed notice under 35 U.S.C. 141 electing to 
have all further proceedings conducted under 35 U.S.C. 146(§
 
1.303(c)), the time for filing a civil action thereafter is specified 
in 35 U.S.C. 141. The time for filing a cross-action expires 14 
days after service of the summons and complaint.



I. JUDICIAL REVIEW OF PATENT APPLICATIONS


An applicant for a patent who is dissatisfied with a 
decision of the Board may seek judicial review either 
by an appeal to the U.S. Court of Appeals for the Federal 
Circuit (35 U.S.C. 141 and 37 CFR 1.301) or by a 
civil action in the U.S. District Court for the District 
of Columbia (35 U.S.C. 145 and 37 CFR 1.303(a)). 
By filing an appeal to the Federal Circuit, the applicant 
waives the right to seek judicial review by a civil 
action under 35 U.S.C. 145. See 35 U.S.C. 141 and 
37 CFR 1.303(b).



II. JUDICIAL REVIEW OF EX PARTEREEXAMINATION PROCEEDINGS

 A patent owner involved in an ex parte reexamination 
proceeding filed under 35 U.S.C. 302 for a patent 
that issued from an original application filed in the 
United States before November 29, 1999 (or from an 
international application designating the United States 
filed before November 29, 1999) who is dissatisfied 
with a decision of the Board may seek judicial review 
either by an appeal to the U.S. Court of Appeals for 
the Federal Circuit or by a civil action in the U.S. District 
Court for the District of Columbia. 

 Public Law 106-113, enacted on November 29, 
1999, amended 35 U.S.C. 141 and 35 U.S.C. 145 to 
read as they have been reproduced above. However, 
former versions of 35 U.S.C. 141 and 145 remain 
applicable in the case of an ex parte reexamination 
proceeding for a patent that issued from an original 
application filed before November 29, 1999. The 
former statutes provided for appeal to the Court of 
Appeals for the Federal Circuit (35 U.S.C. 141), or 
alternatively, for a civil action against the Director
in the United States District Court for the District of 
Columbia (35 U.S.C. 145). Former 35 U.S.C. 141 further 
provided that by filing an appeal to the Court of 
Appeals for the Federal Circuit under 35 
U.S.C. 141, 
a patent owner waived his or her right to proceed to 




 

file a civil action under 35 U.S.C. 145. See 37 CFR 
1.303(a)-(b).

 The amended versions of 35 U.S.C. 141 and 145that went into effect on November 29, 1999 provide 
that a patent owner may appeal only to the United 
States Court of Appeals for the Federal Circuit. 
Accordingly, a patent owner involved in the ex partereexamination of a patent that issued from an original 
application filed in the United States on or after 
November 29, 1999 (or from an international application 
designating the United States filed on or after 
November 29, 1999) may seek judicial review only in 
the United States Court of Appeals for the Federal 
Circuit. See 37 CFR 1.303(d). 

 For judicial review of an inter partes reexamination 
proceeding, see 35 U.S.C. 315. Because inter 
partes reexamination procedures are found in Chapter 
31 (and not in Chapter 30) of Title 35 of the United 
States Code, 35 U.S.C. 306 does not apply to an inter 
partes reexamination proceeding. 



III. TIME FOR FILING NOTICE OF APPEAL 
OR COMMENCING CIVIL ACTION 


The time for filing a notice of a 35 U.S.C. 141appeal to the Federal Circuit or for commencing a 
civil action under 35 U.S.C. 145  is within 
2 
months of the Board’s decision. 37 CFR 1.304(a). 
However, if a request for rehearing or reconsideration 
of the Board’s decision is filed within the time provided 
under 37 CFR 41.52 (ex parte appeals) or 
37 
CFR 41.79 (inter partes appeals), the time for 
filing a notice of appeal to the Federal Circuit or for 
commencing a civil action expires 2 months after a 
decision on a request for rehearing or reconsideration 
(37 
CFR 1.304(a)).

These 2-month periods meet the 60-day requirement 
of 35 U.S.C. 142 and 145  except for time 
periods which include February 28. In order to comply 
with the 60-day requirement, 37 CFR 1.304(b)
provides that an additional day shall be added to any 
2-month period for initiating review which includes 
February 28. Appeals will always be timely if the 
judicial review is initiated within 2 months of the final 
decision.

The times specified in 37 CFR 1.304 are calendar 
days. If the last day of the time specified for appeal or 
commencing a civil action falls on a Saturday, Sunday, 
or a Federal holiday in the District of Columbia, 
the time is extended to the next day which is neither a 
Saturday, Sunday, nor a Federal holiday (37 CFR 
1.304(b)).



IV. TIME FOR FILING CROSS-APPEAL 
OR CROSS-ACTION 

37 CFR 1.304(a) specifies that the time for filing a 
cross-appeal or a cross-action expires (A) 14 days 
after service of the notice of appeal or the summons 
and complaint or (B) 2 
months after the decision to be 
reviewed, whichever is later.

37 CFR 1.304(a) provides that the time for filing 
a 
cross-action expires 14 days after service of the 
summons and complaint. The district court will determine 
whether any cross-action was timely filed since 
neither the complaint nor cross-action is filed in the 
U.S. Patent and Trademark Office.



V. EXTENSION OF TIME TO SEEK 
JUDICIAL REVIEW

In 37 CFR 1.304(a), the Office has adopted a standard 
which is similar to the standard used in the Federal 
courts for granting extensions. Under the rule, the 
Director may extend the time (A) for good cause 
if requested before the expiration of the time provided 
for initiating judicial review or (B) upon a showing of 
excusable neglect in failing to initiate judicial review 
if requested after the expiration of the time period. 
This standard is applicable once the “last” decision 
has been entered, i.e., either the decision (in circumstances 
where no timely rehearing or reconsideration 
is sought), the decision on rehearing of the Board in 
an ex parte appeal, or the decision on reconsideration 
of the Board in an interference. Extensions of time 
under 37 CFR 1.136(b) and 1.550(c) and fee extensions 
under 37 CFR 1.136(a) are not available to 
extend the time for the purpose of judicial review 
once a decision or a decision on rehearing or reconsideration 
has been entered. 37 
CFR 1.304(a)(2) states 
that the provisions of 37 
CFR 1.136 and 1.550(c) are 
not available to extend the time to initiate judicial 
review.




 

Requests for extension of time to seek judicial 
review under 37 CFR 1.304 should be addressed as 
follows:

Mail Stop 8

Director of the U.S. Patent and Trademark Office

P.O. Box 1450 

Alexandria, VA 22313-1450

Requests may also be hand-carried to the Office of 
the Solicitor.



VI. APPLICATION UNDER JUDICIAL REVIEW


The administrative file of an application under judicial 
review, even though carried to a court, will not be 
opened to the public by the U.S. Patent and Trademark 
Office, unless it is otherwise available to the 
public under 37 CFR 1.11.

During judicial review, the involved application or 
reexamination is not under the jurisdiction of the 
examiner or the Board, unless remanded to the U.S. 
Patent and Trademark Office by the court. Any 
amendment  can be admitted only under the provisions 
of 37 CFR 1.198. See MPEP §
 
1214.07.



VII. SERVICE OF COURT PAPERS ON THE 
DIRECTOR

Rule 5(b) of the Federal Rules of Civil Procedure 
provides in pertinent part:

Whenever under these rules service is required or permitted 
to be made upon a party represented by an attorney 
the service shall be made upon the attorney unless 
service 
upon the party is ordered by the court. Service 
upon the attorney . . . shall be made by delivering a 
copy 
to the attorney or party or by mailing it to the attorney 
or party at the attorney’s or party’s last known 
address 
. . . .

Similarly, Rule 25(b) of the Federal Rules of 
Appellate Procedure provides that “[s]ervice on a 
party represented by counsel must be made on the 
party’s counsel.” 

Accordingly, all service copies of papers filed in 
court proceedings in which the Director is a 
party must be served on the Solicitor of the Patent and 
Trademark Office. Service on the Solicitor may be 
effected in either of the following ways: 

(A)By hand between 8:30 A.M. and 5:00 P.M. 
EST to the Office of the Solicitor at 600 Dulany 
Street, Madison West Building, Room 8C43, Alexandria, 
VA 22314.

(B)By mail in an envelope addressed as follows:

Office of the Solicitor

P.O. Box 15667

Arlington, VA 22215

While the above mail service address may be supplemented 
to include the name of the particular attorney 
assigned to the court case, it must not be 
supplemented to refer to either the Director or 
the U.S. Patent and Trademark Office.

Any court papers mailed to an address other than 
the above mail service address or delivered by hand to 
the U.S. Patent and Trademark Office are deemed to 
have been served on the Director when actually 
received in the Office of the Solicitor.

The above mail service address should not be used 
for filing a notice of appeal to the Federal Circuit. See 
MPEP § 1216.01. Nor should the above mail service 
address be used for noncourt papers, i.e., papers 
which are intended to be filed in the U.S. Patent and 
Trademark Office in connection with an application 
or other proceeding pending in the U.S. Patent and 
Trademark Office. ANY NONCOURT PAPERS 
WHICH ARE MAILED TO THE ABOVE MAIL 
SERVICE ADDRESS WILL BE RETURNED TO 
THE SENDER. NO EXCEPTIONS WILL BE 
MADE TO THIS POLICY.

1216.01Appeals to the Federal Circuit 
[R-3]

35 U.S.C. 142. Notice of appeal.

When an appeal is taken to the United States Court of Appeals 
for the Federal Circuit, the appellant shall file in the Patent and 
Trademark Office a written notice of appeal directed to the Director, 
within such time after the date of the decision from which the 
appeal is taken as the Director prescribes, but in no case less than 
60 days after that date.

35 U.S.C. 143. Proceedings on appeal.

With respect to an appeal described in section 142 of this 
title, the Director shall transmit to the United States Court of 
Appeals for the Federal Circuit a certified list of the documents 
comprising the record in the Patent and Trademark Office. The 
court may request that the Director forward the original or certified 
copies of such documents during the pendency of the appeal. 
In an ex parte case or any reexamination case, the Director shall 




 

submit to the court in writing the grounds for the decision of the 
Patent and Trademark Office, addressing all the issues involved in 
the appeal. The court shall, before hearing an appeal, give notice 
of the time and place of the hearing to the Director and the parties 
in the appeal.

35 U.S.C. 144. Decision on appeal.

The United States Court of Appeals for the Federal Circuit 
shall review the decision from which an appeal is taken on the 
record before the Patent and Trademark Office. Upon its determination 
the court shall issue to the Director its mandate and opinion, 
which shall be entered of record in the Patent and Trademark 
Office and shall govern the further proceedings in the case.

37 CFR 1.302. Notice of appeal.



(a)When an appeal is taken to the U.S. Court of Appeals 
for the Federal Circuit, the appellant shall give notice thereof to 
the Director within the time specified in § 1.304.

(b)In interferences, the notice must be served as provided in 
§ 41.106(e) of this title.

(c)In ex parte reexamination proceedings, the notice must 
be served as provided in § 1.550(f).

(d)In inter partes reexamination proceedings, the notice 
must be served as provided in § 1.903.

(e)Notices of appeal directed to the Director shall be mailed 
to or served by hand on the General Counsel as provided in § 
104.2.

Filing an appeal to the Federal Circuit requires that 
the applicant, the owner of a patent involved in a reexamination 
proceeding, or a party to an interference 
proceeding: (A) file in the U.S. Patent and Trademark 
Office a written notice of appeal (35 U.S.C. 142) 
directed to the Director and (B) file with the Clerk 
of the Federal Circuit a copy of the notice of appeal 
and pay the docket fee for the appeal, as provided by 
Federal Circuit Rule 52. 37 CFR 1.301.

For a notice of appeal to be considered timely filed 
in the U.S. Patent and Trademark Office, it must: (A) 
actually reach the U.S. Patent and Trademark Office 
within the time specified in 37 CFR 1.304 (including 
any extensions) or (B) be mailed within the time specified 
in 37 CFR 1.304 (including any extensions) by 
“Express Mail” in accordance with 37 CFR 1.10.

A Notice of Appeal to the Federal Circuit should 
not be mailed to the Director, the Board or the 
examiner. Nor should it be mailed to the Solicitor’s 
mail service address for court papers given in MPEP 
§
 
1216. Instead, it should be filed in the U.S. Patent 
and Trademark Office in any one of the following 
ways:

(A)By mail addressed as follows, in which case 
the notice of appeal must actually reach the U.S. 
Patent and Trademark Office by the due date:

Mail Stop 8

Director of the U.S. Patent and Trademark Office

P.O. Box 1450 

Alexandria, VA 22313-1450

(B)By “Express Mail” (U.S. Postal Service only) 
under 37 CFR 1.10 addressed as follows, in which 
case the notice of appeal is deemed filed on the “date-
in” on the “Express Mail” mailing label:

Mail Stop 8

Director of the U.S. Patent and Trademark Office

P.O. Box 1450 

Alexandria, VA 22313-1450

(C)By hand to the Office of the Solicitor, at 
600 Dulany Street, Madison West Building, Room 
8C43, Alexandria, VA 22314.

A copy of the notice of appeal and the docket fee 
should be filed with the Clerk of the Federal Circuit, 
whose mailing and actual address is:

U.S. Court of Appeals for the Federal Circuit

717 Madison Place, N.W.

Washington, DC 20439

The Solicitor, prior to a decision by the Federal Circuit, 
may request that the case be remanded to the 
U.S. Patent and Trademark Office and prosecution 
reopened. See MPEP §
 
1214.07.





I. OFFICE PROCEDURE FOLLOWING 
DECISION BY THE FEDERAL CIRCUIT

After the Federal Circuit has heard and decided the 
appeal, an uncertified copy of the decision is sent to 
the U.S. Patent and Trademark Office and to the 
appellant and appellee (if any).

In due course, the Clerk of the Federal Circuit forwards 
to the U.S. Patent and Trademark Office a certified 
copy of the court’s decision. This certified copy is 
known as the “mandate.” The mandate is entered in 
the file of the application, reexamination or interference 
which was the subject of the appeal. The date 




 

the mandate was issued by the Federal Circuit
marks the conclusion of the appeal, i.e., the termination 
of proceedings as that term is used in 35 
U.S.C. 
120. See 37 CFR 1.197(b), or “termination of the 
interference” as that term is used in 35 U.S.C. 135(c).

The Federal Circuit’s opinion may or may not be 
precedential. Whether or not the opinion is precedential, 
the U.S. Patent and Trademark Office will not 
give the public access to the administrative record of 
an involved application, or to the file of an interference, 
unless it is otherwise available to the public 
under 37 CFR 1.11. However, since the court record 
in a 35 U.S.C. 141 appeal generally includes a copy of 
at least part of the application, such may be inspected 
at the Federal Circuit. In re Mosher, 248 F.2d 956, 115 
USPQ 140 (CCPA 1957).

In an ex parte appeal, after the mandate is 
issued, the application or reexamination file 
is then returned to the appropriate U.S. Patent and 
Trademark Office official for further proceedings consistent 
with the mandate. See MPEP § 1214.06 for 
handling of claims dependent on rejected claims. 

A.All Claims Rejected

If all claims in the case stand rejected, proceedings 
in the case are considered terminated on the issue
date  of the Federal Circuit’s mandate. Because the 
case is no longer considered pending, it is ordinarily 
not open to subsequent amendment and prosecution 
by the applicant. Continental Can Company v. 
Schuyler, 326 F. Supp. 283, 168 USPQ 625 (D.D.C. 
1970). However, exceptions may occur where the 
mandate clearly indicates that further action in the 
U.S. Patent and Trademark Office is to be taken in 
accordance with the Federal Circuit’s opinion.

B.Some Claims Allowed

Where the case includes one or more allowed 
claims, including claims allowed by the examiner 
prior to appeal and claims whose rejections were 
reversed by either the Board or the court, the proceedings 
are considered terminated only as to any claims 
which still stand rejected. 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 . Thus, if no formal matters 
remain to be attended to, the examiner will pass 
the application to issue forthwith on the allowed 
claims or, in the case of 
a reexamination, will issue a 
“Notice of Intent to Issue a Reexamination Certificate 
and/or Examiner’s Amendment.” See MPEP § 2287. 
The examiner should set forth the reasons for allowance, 
referring to and incorporating a copy of 
the 
appellate brief and the court decision. See MPEP 
§
 
1302.14. 

If formal matters remain to be attended to, the 
examiner promptly should take appropriate action on 
such matters, such as by an examiner’s amendment or 
by an Office action setting a 1-month (but not less 
than 30-day) shortened statutory period for reply. 
However, the application or reexamination proceeding 
is considered closed to further prosecution except 
as to such matters.

C.Remand 

Where the decision of the court brings up for action 
on the merits claims which were not previously considered 
on the merits (such as a decision reversing a 
rejection of generic claims in an application containing 
claims to nonelected species), the examiner will 
take the case up for appropriate action on the matters 
thus brought up. 

D.Reopening of Prosecution

In rare situations it may be necessary to reopen 
prosecution of an application after a decision by the 
Federal Circuit. Any Office action proposing to 
reopen prosecution after a decision by the Federal 
Circuit must be forwarded to the Office of the Deputy 
Commissioner for Patent Examination Policy for 
written approval, which will be indicated on the 
Office action.



II. DISMISSAL OF APPEAL

After an appeal is docketed in the Federal Circuit, 
failure to prosecute the appeal, such as by appellant’s 
failure to file a brief, may result in dismissal of the 
appeal by the court. Under particular circumstances, 
the appeal also may be dismissed by the court on 
motion of the appellant and/or the Director.

The court proceedings are considered terminated as 
of the date of the mandate. After dismissal, the action 
taken by the examiner will be the same as set forth 
above under the heading “Office Procedure Following 
Decision by the Federal Circuit.”




 

In the event of a dismissal for a reason other than 
failure to prosecute the appeal, the status of the application, 
reexamination proceeding or interference must 
be determined according to the circumstances leading 
to the dismissal.

1216.02Civil Suits Under 35 U.S.C. 145 
[R-3]

A 35 U.S.C. 145 civil action is commenced by filing 
a complaint in the U.S. District Court for the District 
of Columbia within the time specified in 37 CFR 
1.304 (see MPEP § 1216). Furthermore, copies of the 
complaint and summons must be served in a timely 
manner on the Solicitor, the U.S. Attorney for the District 
of Columbia, and the 
Attorney General in the 
manner set forth in Rule 4(i) of the Federal Rules of 
Civil Procedure. 
 
Regarding timely service, see Walsdorf 
v. Comm’r, 229 
USPQ 559 (D.D.C. 1986) and 
Hodge v. Rostker, 501 F. Supp. 332 (D.D.C. 1980). 
When a 35 U.S.C. 145 civil action is filed, a notice 
thereof is placed in the application or reexamination 
file, which ordinarily will be kept in the Solicitor’s 
Office pending termination of the civil action. All 
the expenses of the proceedings shall be paid by the 
applicant (see 35 U.S.C. 145).

In an action under 35 U.S.C. 145, the plaintiff may 
introduce evidence not previously presented to the 
U.S. Patent and Trademark Office. However, plaintiff 
will be precluded from presenting new issues, at least 
in the absence of some reason of justice put forward 
for failure to present the issue to the U.S. Patent and 
Trademark Office. DeSeversky v. Brenner, 424 F.2d 
857, 858, 164 USPQ 495, 496 (D.C. Cir. 1970); 
MacKay v. Quigg, 641 F. Supp. 567, 570, 231 USPQ 
907, 908 (D.D.C. 1986). Furthermore, new evidence 
is not admissible in district court where it was available 
to the parties but was withheld from the U.S. 
Patent and Trademark Office as a result of fraud, bad 
faith, or gross negligence. DeSeversky, 424 F.2d at 
858 n.5, 164 USPQ at 496 n.5; California Research 
Corp. v. Ladd, 356 F.2d 813, 821 
n.18, 148 USPQ 
404, 473 n.18 (D.C. Cir. 1966); MacKay, 641 F. Supp. 
at 570, 231 USPQ at 908; Monsanto Company v. 
Kamp, 269 F. Supp. 818, 822, 154 USPQ 259, 
260 
(D.D.C. 1967); Killian v. Watson, 121 USPQ 507, 
507 
(D.D.C. 1958).

Upon termination of the civil action, a statement of 
the court’s final disposition of the case is placed in the 
application or reexamination file, which is then 
returned to the examiner for action in accordance 
with 
the same procedures as follow termination of a 
35 U.S.C. 141 appeal. See MPEP § 1216.01. 37 CFR 
1.197(b) provides that a civil action is terminated 
when the time to appeal the judgment expires. Where 
the exact date when the civil action was terminated is 
material, the date may be ascertained from the Solicitor’s 
Office.

The procedures to be followed in the U.S. Patent 
and Trademark Office after a decision, remand, or dismissal 
of the case by the district court are the same as 
the procedures followed with respect to 35 U.S.C. 141appeals. See MPEP §
 
1216.01.

Where a civil action involving an application has 
been dismissed before coming to trial, the application 
will not be opened to the public unless it is otherwise 
available to the public under 37 CFR 1.11. However, 
the complaint and any other court papers not under a 
protective order are open to the public and may be 
inspected at the Office of the Clerk for the U.S. District 
Court for the District of Columbia, located in the 
U.S. Courthouse, 333 Constitution Avenue, N.W., 
Washington, DC 20001. The court papers in the 
Office of the Solicitor are not generally made available 
for public inspection.

Any subpoena by the district court for an application 
or reexamination file should be hand-carried to 
the Office of the Solicitor.