1200

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1200 Appeal

Introductory

1201
1202
Ex Parte Review of Matters Pertaining to
Merits

1203
Constitution of Board

1204
Administrative Handling

1205
Prerequisites for Appeal

1206

Time for Filing Brief

1207
Amendment Filed With or After Appeal But
Before Examiner's Answer

1208
Examiner's Answer

1208.01

Discovery of New Ground of Rejection After
Appeal
Withdrawal of Final Rejection

1208.02

1209
Oral Hearing
1210
Actions Subsequent to Examiner's Answer But
Before Board's Decision

1211

1212

Remand by Board to Consider Amendment
Remand by Board to Consider Affidavits

1213

Decision by Board

1213.01

Recommendations of Board

1214
Actions following Decision by Board

1214.01
New Ground of Rejection

1214.02

Procedure after Decision

1214.03
Rehearing and Reconsideration

1214.04
Examiner Reversed

1214.05

Cancelation of Withdrawn Claims

Examiner Sustained in Whole or in Part

1214.06
1214.07
1215

Reopening of Prosecution
Withdrawal or Dismissal of Appeal

1215.01
Withdrawal of Appeal

1215.02
Claims Standing Allowed

1215.03
Partial Withdrawal

1215.04
Failure to Prosecute Appeal

1215.05
Case Before the Court

1216
Appeals to Courts

1216.02

1216.01
To Court of Customs and Patent Appeals
Suits under R. S. 4915

## 1201 Introductory

The Patent Office in administering the Patent
Laws makes many decisions of a discretionary
nature which the applicant may feel deny him
the patent protection to which he is entitled.
The differences of opinion on such matters can
be justly resolved only by prescribing and fol-
lowing judicial procedures. Where the differ-
ences of opinion concern the denial of patent
claims because of prior art or material deficien-
cies in the disclosure set forth in the application
or because several divisible inventions are
joined in the same case, the questions thereby
raised are said to relate to merits, and appeal
procedure within the Patent Office and to the
courts has long been provided by statute.

The line of demarcation between appealable
matters for the Board and petitionable matters
for the Commissioner should be carefully ob-
served. The Board will not ordinarly hear a
question which it believes should be decided by
the Commissioner, and the Commissioner will
not ordinarily entertain a petition where the
question presented is an appealable matter (ex-
cept, of course, when he is sitting as one member
of a Board of Appeals).

## 1202 02 Ex Parte Review of Matters Per- taining to Merits

Examiner

Appeal to Board of Appeals
1
R. S. 4911
or
R. S. 4915
Civil Action

Appeal to U. S. Court
of Customs and Patent
Appeals

U. S. District Court

Appeal to U. S. Court
of Appeals

U. S. Supreme Court
(by writ of certiorari
which is rarely
granted )

## 1203 Constitution of Board

Sec. 482 R. S .; 35 U. S. C. 7, provides for con-
stitution of the Board of Appeals as follows :

The Commissioner of Patents, the first assistant com-
missioner, the assistant commissioners, and the exam-
iners in chief shall constitute a board of appeals, whose
duty it shall be, on written petition of the appellant, to
review and determine upon the validity of the adverse
decisions of examiners upon applications for patents
and for reissues of patents and in interference cases.
Each appeal shall be heard by at least three members
of the board of appeals, the members hearing such ap-
peal to be designated by the commissioner.

## 1204. Administrative Handling

Ex parte appeals to the Board of Appeals,
and all papers relating thereto, are forwarded
directly to the Board for docketing. The case
is then obtained from the division on a charge
which gives the Docket Clerk the date of appeal
and appeal number for entry on her records.
On receipt of the brief, the case is returned to
the Examining Division for the answer required
by Rule 193.

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The dates of the brief and of the Examiner's
answer thereto are entered on the cards. When the
Examiner's answer is mailed, the file, together with
photographic copies of the drawings is returned to
the Board of Appeals. It is not necessary to send
copies of the references relied upon as these are
ordered by the Administrative Officer to the Board.
(Order No. 2893, Revised.)

If the brief is not filed within the time desig-
nated by Rule 192, the Administrative Officer
to the Board will notify the appellant that the
appeal stands dismissed.

Subject alone to diligent prosecution by the appli-
cant, an application for patent that has once been
made special and advanced out of turn for examina-
tion will continue to be special throughout its entire
course of prosecution in the Patent Office, including
appeal, if any, to the Board of Appeals. (Extract
from Notice of Aug. 9, 1950.) See 708.01 (b).

## 1205 Prerequisites for Appeal

Rule 191 Appeal to Board of Appeals. (a) Every
applicant for a patent or for reissue of a patent, any
of the claims of which have been twice rejected, or who
has been given a final rejection (rule 113), and every
applicant who has been twice required to divide his
application (rule 143), may, upon the payment of the
fee required by law, appeal from the decision of the
primary examiner to the Board of Appeals within the
time allowed for response.

(b) The appeal must identify the rejected claim or
claims appealed, and must be signed by the applicant
or his duly authorized attorney or agent.

(c) Except as otherwise provided by rules 144 and
206, appeal when taken must be taken from the rejec-
tion of all claims under rejection which applicant
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.

It is to be observed that such appeal to the
Board lies only from a rejection of claims, a
requirement to divide being considered as a
rejection of the claims for misjoinder of
invention.

In addition, such appeal must include all the
finally rejected claims or claims twice rejected
in the case at the time appeal is taken and the
appeal will not ordinarily be forwarded where
only some of the rejected claims have been twice
or finally rejected. Ex parte Brown, 1902 C. D.
51; 98 O. G. 1705.

Exceptions :

A. Rule 144 permits an appeal from a final
requirement for division in advance of any fur-

ther action on the claims. The prosecution of
the elected claims may be continued during such
appeal.

B. Rule 206 permits partial appeal in cases
where there are finally rejected claims copied
from a patent.

## 1206 Time for Filing Brief

Rule 192 Appellant's brief. The appellant shall,
within sixty days from the date of the appeal, or
within six months from the date of the action appealed
from if such time is later, file a brief of the authorities
and arguments on which he will rely to maintain his
appeal, including a concise explanation of the inven-
tion and a copy of the claims involved, at the same
time indicating if he desires an oral hearing.

On failure to file the brief within the time allowed,
the appeal shall stand dismissed.

Where the brief is not filed but an amendment
is presented within the period allowed for filing
the brief which places the case in condition for
allowance, the amendment may be entered as
the application retains its pending status during
said period. See 1215.01 and 1215.02.

## 1207 Amendment Filed With or After Appeal but Before Examiner's Answer

An amendment filed with or after appeal but
before the Examiner's answer is prepared,
should be given immediate consideration.
Since an applicant has the right to petition
from an adverse holding as to the entry of any
amendment, irrespective of the status of the case
at the time of filing the amendment, he is en-
titled to be advised as to its entry or non-entry.
Such notification may be given in the Exam-
iner's answer if the amendment is entered; but
where entry is denied, the appellant should ordi-
narily be advised to this effect promptly and
the preparation of the Examiner's answer
delayed for twenty days to enable the appellant
to petition, if he so desires, from the Examiner's
refusal to admit the amendment.

However, where the amendment is presented
before the filing of the brief and it can be readily
determined on inspection that the amendment
materially simplifies or clarifies the issues on
appeal, the Examiner need not wait until he
prepares the answer, but may enter the same
forthwith and notify the appellant as soon as
practicable in order that the appellant may be
so advised before preparing the brief.

In the consideration of an amendment pre-
sented before the filing of the brief, a new or

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1208

better reference, not previously of record, may
be discovered, which reference is pertinent not
only to the claims as amended but also to the
claims as finally rejected. In such a case, the
examiner should consider the propriety of re-
opening the prosecution. If such a course of
action is determined upon, the matter should be
referred to the Supervisory Examiner in ac-
cordance with Sec. 1208.01.

On the other hand, the new reference may
not affect the status of the finally rejected.
claims but be pertinent to the claims as
amended. If the examiner believes that they
should be considered by the Board, either with
or in place of the finally rejected claims, the
new reference should be cited and applied to
the amended claims, Applicant should be in-
formed that the amendment has not been en-
tered since it does not place the application in
condition for allowance, but that the amend-
ment may be entered for purposes of appeal sub-
ject to the provision that the prosecution will
not be reopened before the examiner. This
action should be submitted to the Supervisory
Examiner before mailing. Sec. 1208.01. The
applicant (or his attorney) should also be in-
formed that in preparing his brief, he should
clearly indicate whether he accepts the entry
of the amendment under the condition specified
or whether he is proceeding with the appeal as
to the claims as finally rejected.

### 1208 Examiner's Answer

Rule 198 Examiner's answer. (a) The primary
examiner may, within such time as may be directed by
the Commissioner, furnish a written statement in
answer to the appellant's brief including such explana-
tion of the invention claimed and of the references and
grounds of rejection as may be necessary, supplying a
copy to the appellant. If the primary examiner shall
find that the appeal is not regular in form or does not
relate to an appealable action, he shall so state and a
petition from such decision may be taken to the Com-
missioner as provided in rule 181.

(b) The appellant may file a reply brief directed
only to such new points as may be raised in the exam-
iner's answer, within twenty days from the date of
such answer.

The Examiner should furnish the appellant
with a written statement in answer to the appel-
lant's brief within sixty calendar days after the
filing of the brief.

The answer should contain a response to any
allegations or arguments in the brief not suffi-
ciently treated in the final action, and should
call attention to any errors in appellant's copy
of the claims. The Examiner should treat affi-
davits or exhibits in accordance with Rule 195,

reporting his conclusions only on those ad
mitted. If the Examiner finds that the appli-
cability of the references to the appealed claims
or the grounds of rejection have not been suffi-
ciently explained in the final rejection, he should
further explain the same. To the extent that is
specified in Rule 106, he shall designate the
particular part of each reference relied on

The Board has authority to remand a case to
the Examiner for a fuller description of the
claimed invention and, in the case of a machine,
a statement of the mode of operation. In cer-
tain cases where the pertinence of the references
is not clear, the Board may call upon the Ex-
aminer for a further explanation.

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.

No soft copies of references not cited in the
Examiner's answer should be left in the file.

A form suitable for such answer is as follows:

POL-84
(Date Stamp)

Entitled

"APPEAL NO.

in

BEFORE THE BOARD OF

Application

APPEALS"

(Name of Attorney)

"Examiner's Statement"

"This is an appeal from the final rejection
of claims ______.. Claims ______ are allowable."

"A correct copy of the appealed claims ap-
pears on page _of applicant's brief." (If any
claims are incorrect, take appropriate action.)
"The references relied on are :

Smith
1, 736, 481
June 21, 1920
Jones.
1, 894, 324
July 31, 1923"

(If references are correctly listed in applicant's
brief they need not be reproduced, but page of
brief on which they occur should be stated.)

Description of the invention. (If adequately
described in applicant's brief, merely so state.)

Brief description of the references. (If
adequately described in applicant's brief, merely
so state.)

Application of the references to the claims.
(This may be by reference to the Office action
containing the final rejection, if this action is
adequate and appropriate.)

Response to any allegations or arguments in
the brief not sufficiently treated in the final
action.

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## 1208.01 Discovery of New Ground of Rejection After Appeal

In the event that a reference or ground of re-
jection is discovered after appeal has been taken,
the matter should be called to the attention of
the Supervisory Examiner. See 1207.

## 1208.02 Withdrawal of Final Rejec- tion

The Examiner may withdraw the final re-
jection at any time prior to the hearing. It is
possible that after reading the brief that Ex-
aminer may be convinced that some or all of the
finally rejected claims are allowable. Where he
is of the opinion that some of the claims are al-
lowable he should so specify in the Examiner's
answer and confine his arguments to the remain-
ing rejected claims. If he finds, upon recon-
sideration, that all the rejected claims are al-
lowable, or where the applicant in his brief
withdraws the appeal as to some of the rejected
claims and the Examiner finds the remaining
claims to be. allowable, he should notify the
Administrative Officer of the Board of this fact
so that the appeal may be removed from the
records. See 706.07 (c) to 706.07 (e).

## 1209 Oral Hearing

Rule 194 Hearing. If no request for oral hearing
has been made by the appellant, the appeal will be
assigned for consideration and decision. If the ap-
pellant has requested an oral hearing, a day of hearing
will be set, and due notice thereof given to the appel-
lant. Hearing will be held as stated in the notice, and
oral argument will be limited to one-half hour unless
otherwise ordered before the hearing begins.

[Old Rule 137]

## 1210 Actions Subsequent to Exami- ner's Answer but Before Board's Decision

JURISDICTION OF BOARD

With the mailing of the Examiner's answer
on appeal, jurisdiction of the case passes to the
Board of Appeals; and any amendment or af-
fidavit filed thereafter but prior to the decision
of the Board will be considered by the Exam-
iner only in the event the case is remanded to
him by the Board.

### DIVIDED JURISDICTION

Where appeal is taken from the final rejec-
tion of a copied patent claim or claims only,
jurisdiction of the rest of the case remains with
the Examiner, and prosecution of the unallowed
claims may proceed as though the entire case

was under the jurisdiction of the Examiner.

Divided jurisdiction is also present in those
cases where appeal is taken from a final require-
ment for division only. The prosecution of the
claims to the elected claims may simultaneously
proceed before the Examiner as if no appeal
had been taken.

## 1211 Remand by the Board to Consider Amendment

There is no obligation resting on the Board
to consider new or amended claims submitted
while it has jurisdiction of the appeal. Ex
parte Moore, 1923 C. D. 13; 307 O. G. 4. In re
Sweet, 1943 C. D. 535; 556 O. G. 726. In re
Shea, 1944 C. D. 535; 568 O. G. 201. In un-
usual situations a proposed amendment may be
remanded for such consideration as the Exam-
iner may see fit to give. In such cases the
amendment will be treated in the same way as
an amendment after final rejection (see 714.12
and 1210).

If the proposed amendment is in effect an
abandonment of the appeal, as, by canceling the
appealed claims, other claims being present
which are patentable in the opinion of the Ex-
aminer, the amendment will be entered, the
Administrative Officer to the Board of Appeals
being so notified in order that the case may be
stricken from the Board's docket.

## 1212 Remand To Consider Affidavits

Rule 195 Affidavits after appeal. Affidavits or ex-
hibits submitted after the case has been appealed will
not be admitted without a showing of good and suffi-
cient reasons why they were not earlier presented.
[Old Rule 138]

Affidavits filed with or after appeal but before
the mailing of the Examiner's answer will be
treated in the same manner as affidavits filed
after final rejection. Authority from the Board
is not necessary to consider such affidavits. See
1210.

In the case of affidavits filed after the mailing
of the Examiner's answer, the Examiner is with-
out authority to consider the same in the ab-
sence of a remand by the Board.

When a case is remanded to the Examiner for
the consideration of affidavits, the Examiner,
after having given the affidavits such considera-
tion as the facts in the case require, will return
the case to the Board of Appeals with his report,
a copy of which should be forwarded to the ap-
plicant's attorney.

If an affidavit under Rule 131 is not accompa-
nied by the showing required by Rule 195, the
Examiner will not consider the merits of such
affidavit.

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1214.01

If, however, the delay in filing such affidavit
is satisfactorily explained, the Examiner will
then admit the same and consider its merits .: If
this affidavit is accepted as overcoming the ref-
erence, or references, used in the final rejection,
and a new reference having a filing date prior to
the date of invention established in the affidavit,
or having a publication date more than one year
prior to the applicant's filing date, is found, it
may be substituted by the Examiner for the one
overcome without thereby reopening the case
to further prosecution before the Examiner.
Ex parte Bowyer, 1939 C. D. 5; 505 O. G. 759.

It is not the custom of the Board to remand
affidavits offered in connection with a request for
reconsideration of its decision. Affidavits sub-
mitted for this purpose, not remanded to the
Examiner, are considered only as arguments.
In re Martin, 1946 C. D. 180; 586 O. G. 347.

### 1213 Decision by Board

Rule 196 (first paragraph). Decision by the Board
of Appeals. (a) The Board of Appeals, in its decision,
may affirm or reverse the decision of the primary ex-
aminer 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
primary examiner on that claim, except as to any ground
specifically reversed.

### 1213.01 Recommendations of Board

Rule 196 (third paragraph). Decision by the Board
of Appeals. (c) Should the decision of the Board of
Appeals include an explicit statement that a claim may
be allowed in amended form, applicant shall have the
right to amend in conformity with such statement,
which shall be binding on the primary examiner in the
absence of new references or grounds of rejection.

[Old Rule 139]

However, if the Examiner knows of references
or reasons which were not before the Board,
such a favorable recommendation is not binding
upon him. Likewise, should applicant make
any change in a favorably recommended claim
(other than the amendments recommended),
the same would tend to destroy the force of such
recommendation. Ex parte Young, 18 Gour.
24: 31.

In the absence of an express recommendation,
a remark by the Board that a certain feature
does not appear in a claim is not to be taken as
a recommendation that the claim be allowed if
the feature is supplied by amendment. Ex parte
LeBlanc, 1902 C. D. 1; 98 O. G. 225. Ex parte
Norlund, 1913 C. D. 161; 192 O. G. 989.

## 1214 Actions Following Decision by Board

### 1214.01 New Ground of Rejection

Rule 196 (second paragraph) Decision by the Board
of Appeals .; (b) Should the Board of Appeals have
knowledge of any grounds not involved in the appeal
for rejecting any claim, it may include in its decision
a statement to that effect with its reasons for so hold-
ing, which statement shall constitute a rejection of
the claims. The appellant may submit an appropriate
amendment of the claims so rejected or a showing of
facts, or both, and have the matter reconsidered by
the primary examiner. The statement shall be bind-
ing upon the primary examiner unless an amendment
or showing of facts not previously of record be made
which, in the opinion of the primary examiner, avoids
the additional ground for rejection stated in the deci-
sion. The applicant may waive such reconsideration
before the primary examiner and have the case re-
considered by the Board of Appeals upon the same
record before them. Where request for such recon-
sideration is made the Board of Appeals shall, if nec-
essary, render a new decision which shall include all
grounds upon which a patent is refused. The applicant
may waive reconsideration by the Board of Appeals
and treat the decision, including the added grounds
for rejection given by the Board of Appeals, as a final
decision in the case.

The request for reconsideration by the Board
must of course be filed while the case is still
within the Board's jurisdiction. The time dur-
ing which the request may be filed is fixed by
Rule 197. By proceeding in this manner the
applicant waives his right to further prosecu-
tion before the Examiner. In re Greenfield,
1930 C. D. 531; 400 O. G. 226.

Where the applicant elects to proceed before
the Examiner, the statement of the Board stands
as a rejection and the application is placed in
the files awaiting action by applicant which
action must be taken within six months from
the date of the Board's decision. Ex parte
King, 1928 C. D. 1; 366 O. G. 3. Ex parte
Buchenberg, 1924 C. D. 55; 327 O. G. 216.

The applicant may amend the claims in-
volved, or substitute new claims to avoid the
art or reasons adduced by the Board. Ex parte
Burrowes, 1904 C. D. 155; 110 O. G. 599. Such
amended or new claims must be directed to
the same subject matter as the appealed claims,
Ex parte Comstock, 1923 C. D. 82; 317 O. G. 4.

Argument without amendment of the claims
so rejected can result only in a final rejection
of the claims, since the Examiner is without
authority to allow the claims unless amended

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### 1214.02

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or unless the rejection be overcome by a showing
of facts not before the Board. The new ground
of rejection raised by the Board does not reopen
the prosecution except as to that subject matter
to which the new rejection was applied.

As a third option, applicant may treat such
decision of the Board as final and file either a
direct appeal therefrom to the C. C. P. A., or
a civil suit under R. S. 4915, 35 U. S. C. 63. In
re Crowell, 1930 C. D. 360, 397 O.G. 3. Where
the applicant avails himself of the third option,
he waives his right to reconsideration by the
Board, or by the Examiner, discussed above.
In re Heinz, 1910 C. D. 292; 151 O. G:1014

### 1214.02 Procedure After Decision

After an appeal to the Board of Appeals has
been decided, a copy of the decision is mailed
to the appellant and the original placed in the
file. The Administrative Officer to the Board
notes the decision on the file wrapper and in the
record of appeals, and then forwards the file
to the Primary Examiner through the office of
the Supervisory Examiner.

Any request or petition for rehearing or re-
consideration must be filed before the limit of
appeal to the U. S. Court of Customs and Patent
Appeals expires. (See Rule 302 for statement
of time for appeal to the court.)

### 1214.03 Rehearing and Reconsidera- tion

Where there is an affirmance of the Examiner
on any claim, the soft copies of the patents used
in the original appeal should be left in the file
for at least sixty calendar days following an
adverse decision by the Board for the conveni-
ence of the Board in the event that the appellant
requests reconsideration.

### 1214.04 Examiner Reversed

A complete reversal of the Examiner's re-
jection brings the case up for immediate action
by the Examiner.

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 has mean-
while been transferred or assigned to an Ex-
aminer other than the one who finally rejected
the claims. The second Examiner should give
full faith and credit to his predecessor's search.
Of course, if the Examiner has specific knowl-
edge of the existence of a particular reference
which obviously meets the terms of any of the
appealed claims as to which the Examiner was
reversed, he should submit the matter to the

Supervisory Examiner to determine whether the
Commissioner should be requested to authorize
the reopening of prosecution under Rule 198 for
the purpose of entering the new rejection.

### 1214.05 Cancelation of Withdrawn Claims

Where an appellant withdraws some of the
appealed claims, 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 not necessary
to notify the applicant of the cancellation of the
withdrawn claims. But see 1215.04.

#### 1214.06 % Examiner Sustained in Whole or in Part

If the Examiner was sustained either in whole or
in part, the next action must be taken by the appli-
cant, either by way of further appeal or civil action
or by cancellation of the rejected claims if there be
an allowed claim in the case. It is improper to notify
applicant of the status of the cases unless asked to do
so. See Ex parte Buchenberg, 1924 C. D. 55; 327
O. G. 216. (Notice of Nov. 12, 1923, revised.)

#### 1214.07 Reopening of Prosecution

Rule 198 Reopening after decision. Cases which
have been decided by the Board of Appeals will not be
reopened or reconsidered by the primary examiner, ex-
cept under the provisions of rule 196, without the writ-
ten authority of the Commissioner, and then only for
the consideration of matters not already adjudicated,
sufficient cause being shown.

\-
[Old Rule 140]

Sometimes an amendment is filed after the
Board's decision which does not carry into ef-
fect any recommendation made by the Board
and which presents a new or amended claim or
claims. In view of the fact that the prosecu-
tion of the case is definitely closed, the appli-
cant clearly is not entitled to have such amend-
ment entered as a matter of right. However,
if the amendment obviously places the case in
condition for allowance, the Primary Examiner
should endorse on the amendatory paper a
recommendation that the amendment be ad-
mitted, and on approval by the Supervisory
Examiner the amendment will be entered.

Where the amendment cannot be entered, the
Examiner should write to the applicant notify-
ing him that the amendment cannot be entered
and stating the reason why. The refusal
should never be made to appear arbitrary or
capricious. A letter such as the following
might be used;

The amendment filed
after the
Board's decision is refused entry because the

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prosecution is closed and the new claims (or
claims as amended) raise new issues which
require further consideration or search.

#### 1215. Withdrawal or Dismissal of Ap- peal

##### 1215.01 Withdrawal of Appeal

Where, after appeal has been filed and before de-
cision by the Board of Appeals, an appellant with-
draws the appeal more than six months after the
date of the final rejection, 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 Rule 138, the effective date of
abandonment is the date of filing of such letter.
(Extract from Notice, Sept. 3, 1948.)

##### 1215.02 Claims Standing Allowed

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

(Extract from Notice, Sept. 3, 1948.)

##### 1215.03 Partial Withdrawal

A withdrawal of the appeal as to some only of
the claims on appeal operates to withdraw those
claims from the case and the appeal continues as
to the remaining claims. The withdrawn claims
will be cancelled by the Examiner when necessary
without further action by the applicant.
(Extract from Notice, Sept. 3, 1948.)

##### 1215.04 Failure To Prosecute Appeal

If a brief is filed within the time allowed, failure
to appear at the hearing will result only in the case
being considered on brief. If no brief is filed in the
case of an application that was finally rejected be-
fore Mar. 1, 1949 (old rule case) the appeal stands
dismissed and the application is considered as aban-
doned on the date set for the filing of the brief
regardless of whether there are allowed claims. (Ex-
tract from Notice, Sept. 3, 1948.)

The last sentence of the foregoing notice
relates to appeals governed by the old rules.
With respect to appeals governed by the new
rules, the following practice is to be followed :

If no brief is filed within the time prescribed by
Rule 192, the appeal stands dismissed by operation

of the rule. The letter from the Board of Appeals
notifying the appellant that the appeal stands dis-
missed is not an action in the case and does not
start any period for reply. If no claims stand
allowed the application is considered as abandoned
on the date the brief was due. No notification of
the applicant that the application is abandoned is
necessary. If claims stand allowed in the applica-
tion, the failure to file a brief and consequent dis-
missal 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
when the file is received from the Board of Appeals,
the applicant being advised of the cancellation of the
claims that do not stand allowed. 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 applica-
tion is to be considered closed to further prosecution
except as to such matters.

The time for filing the brief set forth in Rule 192
can be extended only by the Commissioner. Any
petition for such extension must be received before
the date the brief is due and must show good cause
for the extension. If the time for filing the brief
has passed and the application has consequently
become abandoned, the applicant may petition to
revive the application, as in other cases of abandon-
ment, and to reinstate the appeal; if the application
is not abandoned the petition would be to reinstate
the claims and the appeal, but a showing equivalent
to that in the petition to revive would be required.
Such petitions will ordinarily be handled by the
Solicitor and Law Examiners on behalf of the Com-
missioner. (Notice of January 3, 1950.)

##### 1215.05 Case Before the Court

When the case is before the court either on appeal
or in a civil action under R. S. 4915, 35 U. S. C. 63,
the status of the application in the event of a dis-
missal must be determined according to the cir-
cumstances leading to the dismissal, In no event
will the application be considered abandoned as of
a date prior to the date of the dismissal by reason
of the dismissal alone.

(Extract from Notice, Sept. 3, 1948.)

##### 1216 Appeals to Courts

Files of cases carried to the courts, either by
appeal to the Court of Customs and Patent A.p-
peals or by civil action in the District Court for
the District of Columbia, are not opened by the
Patent Office to the public.

During the pendency of a suit, while the file
is retained in the examining division until the
case comes up for trial, the application is not
under the jurisdiction of the Examiner; and
any amendment, as one copying claims from

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a patent for interference purposes, can be ad-
mitted only under the provisions of Rule 198.

## 1216.01 To Court of Customs and Pat- ent Appeals

If, from an adverse decision by the Board,
appeal is taken to the U. S. Court of Customs
and Patent Appeals, the Chief of the Docket
Branch, to whom the appeal is sent, obtains the
file from the Primary Examiner and selects
those papers which in his opinion should form
the transcript of record, notifies appellant of
the papers selected, and forwards a list of the
references to the Manuscript and Lithographic
Branch.

After the court has heard and decided the
appeal, a copy of the decision is sent to the Pat-
ent Office and one to the appellant. Where
the appellant files a petition for rehearing, the
court's ruling thereon is communicated to the
Office and to the appellant by the clerk of the
court.

Finally, the clerk of the court forwards to
the Office a certified copy of the court's decision
on the appealed claims. This copy is a dupli-
cate of the uncertified copy first forwarded,
unless modified as a result of the petition for
rehearing or, possibly, altered to correct some
minor error.

The Docket Branch enters the other copy in
the application file. The Solicitor makes a copy
for publication in the Official Gazette.

The file is then returned to the Primary Ex-
aminer. Further action, if any, on the part
of the Examiner is determined by the court's
decision.

In the case of an appeal to the Court of Cus-
toms and Patent Appeals, a transcript of the
record must be filed with the court within a
specified time after filing the reasons for ap-
peal. The decision of the court is published;
but unless the application becomes a patent, the
public is not given access to the application file
itself. Since a transcript of the application be-
comes a part of the court record, it may of
course be inspected by anyone.

### ACTION FOLLOWING APPEAL

1\. Certificate of the Court. After hearing the case
the Court returns to the Office "a certificate of its
proceedings and the decision, which shall be entered
of record in the Patent Office, and shall govern the
further proceedings in the case." (R. S. 4914; 35
U. S. C. 62.) The receipt of this certificate by the
Office marks the conclusion of the appeal.

2\. All claims rejected. If all claims in the case
stand rejected, proceedings on the application are
considered terminated on the date of receipt of the

Court's certificate and the application is not open
to subsequent amendment and prosecution by the
applicant. The application is no longer considered
pending.

3\. Some claims allowed. If some claims in the
case stand allowed, either by reversal of the Office
decision by the Court or by having been allowed by
the Examiner or the Board of Appeals, proceedings
are considered terminated as to the rejected claims.
Action by the applicant cancelling the rejected
claims is not considered necessary. The Examiner
will pass the case for issue forthwith on the allowed
claims, the applicant being advised of such action.
The rejected claims may be cancelled by the Exam-
iner with an appropriate notation on the margin, to
avoid confusion of the printer. 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 appli-
cation is considered closed to further prosecution
except as to such matters. If all claims in the case
stand allowed after the Court's decision formal mat-
ters if any should be taken care of and the case
passed for issue.

4\. Remand. If the decision of the Court is such
that it brings certain claims up for action on the
merits, such as a decision reversing a requirement
for division or a decision allowing generic claims
in a case containing claims to non-elected species not
previously acted upon, the Examiner will take the
case up for appropriate action on the matters thus
brought up, but the case is not considered open to
further prosecution except as to such matters.

5\. Dismissal of Appeal. If the appeal is dismissed
by the Court, the status of the application will be the
same as in paragraph 2 if no claim stands allowed.
If claims stand allowed action will be taken by the
Examiner as in paragraph 3.

6\. Special status of application. After termina-
tion of the appeal to the Court the application, in
those cases in which action by the Examiner is in
order (paragraphs 3 and 4), will be taken up for
such action immediately, and the application will be
special for any subsequent action by the Examiner.
(Notice of January 4, 1950.)

#### 1216.02 Suits Under R. S. 4915

When a suit under R. S. 4915, 35 U. S. C. 63,
is filed a notice thereof signed by the Solicitor of
the Patent Office is placed in the application
file. The file, however, is returned to the ex-
amining division and remains in the custody
of the Examiner until the case comes up for
trial, after which the file is kept in the Solici-
tor's office pending termination of the suit.

The applicant ordinarily furnishes to the
court a certified copy of the file wrapper and
contents at the time of the trial. If the suit is
dismissed before coming to trial, no disclosure

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1216.02

of the application to the public necessarily re-
sults. Unlike an appeal to the U. S. Court of
Customs and Patent Appeals, the filing of a suit
in equity does not require the immediate filing
of a transcript of the application. The com-
plaint, however, is open to the public.

Files subpoenaed by the court may be sent
to the court in care of a Patent Office employee
along with a certified copy, under stipulation
that the copy be retained by the court and the
original brought back to the Office by said
employee.

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