MPEP 1215

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1215 Withdrawal or Dismissal of Appeal[edit | edit source]

1215.01 Withdrawal of Appeal[edit | edit source]

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the final rejection has expired, the application is to be considered abandoned as of the date on which the appeal was withdrawn unless there are allowed claims in the case.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.