MPEP 1205
| ← MPEP 1204 | ↑ MPEP 1200 | MPEP 1206 → |
1205 Appeal Brief
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 A statement of the status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims that are being appealed.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
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
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.
