1400

OCR transcription for search; preserved printed pages are authoritative

<!-- PageHeader="Section 14." -->

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\*

*****.. ...
Time for Filla Brief
Examiner's Statricht
Citation of Dostate:
Discovery of New Ground of Rejection
efter Appenl
Withdrawal of Fieni leportion

No Ttelement arzmary
Oral Mentthe

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# Section 14. (Continued)

14-2-5.

Appeal Withdrawn on Claims Not Allowed

-2-6.

Examiner Sustained in Whole or in Part

-2-7-

Reopening of Prosecution

-3.

Withdrawal or Dismissal of Appoal

- 3-1.

Withdrawal of Appeal

-3-2. ☒

Claims Standing Allowed

-3-3. ☒

Partial Withdrawal

-3-4.

Failure to Prosecute Apponi

-3-5. ☒

Case Before the Court

-4- ☒

Appeals to Courts

-4-1. ☒

To Court of Customs and Patent Appeals

-4-1.1. ☒

Feriod for Response

-4-2. ☒

Suits under R. S. 4915

-4-2.1. ☒

Period of Response

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14\.

<!-- PageHeader="APPEAL" -->

## 14-1

## Introduction

The Patent Office in administering the Fremt laws
makes many decisions of a discretionary Batut. will the
applicant may feel dentes him the talent galettes to
which he is entitled. The differences of ipation on sich
matters can only be justly resolved by prescribing and
following judicial procedures. Where the file teados of
opinion concern the denial of patent . Jahim Lamuse of
prior art or material deficiencies in the disclosure det
forth in the application or because several Atvisible in
ventions are joined in the name tane, the questiona there
by rained are said to relate to merity and apat procedury
within the Patent Office and to the court; but Tosy Leon
provided by statute ..

The line of demarcation between thinkit after)
for the Board and petitionable matte. . For AN SINH CI !!
ly hear o question which they believe should be de ideo bv
the Commissioner, and the Commissioner Wil dt With
entertain n petition where the question prevented is ad
appealable matter, (except, of course, when i ]" villa
ns ono member of n Doard of Appealdi.

14-1-1. Present system of Review va di latte 's pro

Examiner

Appeal to traid of An 1

R.S. 4911

Appronl to U,3.
Court of Customs
and latent Aptoala

U ... . pres Court
*********
1 1/ 2007
*

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14-1-2.
Constitution of Boar !

Sec. 482 R.S. provides for constitution of the
Board of Appeals as follows.

The Commissioner of Intenta, the First Angintant
Commissioner the Assistant Commissioners, and the
Examiners in Chief shall constitute n Board of Appeals,
whose duty it shall be on written petition of the appel -
Innt, to review and determine upon the validity of the
adverse decisions of Examiners upon applications for
patents and for reissues of patents. Each appeal shall
be heard by nt least three members of the Board of Appeals,
the members hearing auch appeal to be designated by the
Commissioner ..

14-1-3.
Administrative Handling

The Mails and Files Division on receipt of an
oppeal and the brief filed in confection therewith for.
warda them to the Board room where they are entored by
the Administrative Asalatant to the Board in a register
of appenis. They are then sent to the examining division
having jurisdiction of the case.

The dates of the appeal and brief and of the
ezaminer's anawer thereto are entered in the clerk's
register. Then the craminer's answer Is mailed, the
file, together with the photographic copies of the
drawings, If any, lo forwarded to the Board of Appeals,
which sets the case for hearing. It is not necessary to
Send copies of the references relied upon as these are
ordered by the administrative assistant to the Board.

14-1-4.
Prerequisites for Appeal

Rule 32.1 Appeal to the Board of
Appeals. Every applicant for a patent or
for reissue of a patent, any of the claimo
of whose amrlication have been twice ro-
jected, or who has been given a final ro-
Jection (rule 15.3), and every applicant.
who has been twice required to divide his
oppltention (rule 11.1), may, upon the pay-
mont of the fee required by law, opponl from
the decision of the Primary Examiner to the
Board of Annenis within the time allowed for
response .

The appeal munt set forth in writing
the points of the decision upon which it is
taken end Identify the rejected claim or
claims appealed, and must be signed by the

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€

applicant or his duly authorized attorney
or agent.

Except as otherwise provided by rules
11.4 and 23.6 appeal when taken must be
taken from the rejection of all clnima under
rejection which applicant proposes to con
test. Questions relating to matter! not
affecting the merits of the invention may be
required to be settled before an appant can
be considered.

It in to be observed that auch appoat to the Board
Ites only from a rejection of claima, a requirement to
divide being considered an n rejection of the claims for
minjoinder of invention ..

In addition, such opreal must include All the
Finally rejected claims standing on the chan at the time
appeal is taken and the aprent will not ordinarily be for
worded where only some of the rejected Infin hav : hoan
twice or finally rejected. Ex parte brown 1002 C.D. 51
98 0.0. 1705.

Exceptions.

A. Rule 11.A permita an appeal from a final ra.
quirement for division in advance of any further action
on the claims. The prosecution of the remains a Holm
may be continued durine auch appenl.

B. Rul- 23 6 permite portfel appeal 1 .000
where there are finally rejected claims off ley iper-
piont .

14-1-5.
Time Før Filing Filet

Rule A32.2 Appellent's brief. The
appellant shall, within sixty doya from the
date of the operal. or ff in - mouth.
from the Inte of the action appede, few 14
much time in later file a brief of th
*********** ******
reply to maintain his mpinel, Irbrilho 4
copy of the claims Invol ve, At thee street
time flexthe Ufo deres or omo1 40
1 .. ..

On failure to file the brief rethe.
the time lord, the moment atul % 11:
١٩٠ed.

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# Examiner's Statement

Rule A32.3: Examiner's answer. The
Primary Examiner may, within such time as
may be directed by the Commissioner, furnish
a written statement in answer to the appel-
lant's brief including a concise explanation
of the invention claimed and of the refer-
ences and grounds of rejection, supplying a
copy to the appellant. If the Primary
Examiner shall find that the appeal in 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 Commissioner as provided in rule 31 .1.

The appellant may file a reply brief
directed only to such new points as may be
raised in the Examiner's nnawer, within
twenty days from the date of such answer.

The Examinar should also include with such state-
ment three, new photostatic copies of the drawing in the
casa, if there be one, as it stands at the time of appeal.

Of particular Importance is the necessity for ex-
plaining clearly the pertinence of the references. The
references should be specifically applied and where a
reference includes many pages of description or several
sheets of drawings and only a portion of the name is re-
lied upon, the Board would be considerably hnined if the
Examiner identifies the particular part of the description
by page (and line if appropriate) or pages and in the case
of the drawing by figure or figures. The Board hos the
authority to remind a case to the Examiner for a better
statement.

It is well for the Examiner to bear in mind that "a
case well stated is half proved". He should realize that
he is closer to the fact of the case than the Board and
should give them as much background of the case as neces-
anty to facilitate an understanding of the issues involved.

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

A form suitable for auch statement is no follows:

\*

Entitled
in
Apnonl in Board of Appeals
on Appeal No. ..

Application

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## Examiner's statement

This is an annanl from the final rejection
of Claims 1. 4, 5, And 7 which are all the claims
in the case.

(If they are allowed in the case this fnet.
should be stated thus: Claims 2. 4. and 6 have
been allowed. That Introductory sentence would
be modified to meet the situation accordingly.
If appeal is also taken from a requirement. to
divide between cert in grours of olnime, that
fact should also be recited in the opening para-
graph.)

The appealed cinims are as follows
(Rejected claims copied in sequence, single
space, with ordinala)

The referencen rolled upon are as follows:

MacFiedelbaum 1,000,001 Jen. 3. 1010
711ch
2.000,002 Dec. 13, 1935

(Here follows a concise, poraphranad ox-
planation of the Invention cin imed )

( Following nbove 19 a rentetomant of the
several grounds of rejection of the chains
involved) .

For the reasons nhove riven !* I ur-04
that the final rejection should be sustained.

14-1-6.1
Citation of Decisions

In an Examiner a statement, when ser a decision of
the United States Court of Customs and Talent Apronin Is
cited, much citation should include that from the official
reports of that court (for instance. 22 (/TA 015), nm
should such decision not then have been gediahed in the
Officiel reports of ihnt vonrt, it should be indicated
that it is a decision of such court And the olention from
the Federal Reporter be given if it has been published
there.

As regards decisions of the supreme Court of the
United 'tates and the Federal Courta, the citation should
Do given from the Official reports of the Supreme Court.

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and the Federal Reporter, respectively, and should such de-
cision have been published in the Crficial Gazette and not
then published elsewhere, the court by whom the case was
decided should be indicated and the date of the decision
given.

### 14-1-6.2. Discovery of New Ground of Rejection after Appeal

Sometimes, after appeal, a reference is found which
the Examiner feels should be included in the Examiner's
statement. Since the inclusion of such a reference would
pive the appellant the option of reopening prosecution, the
Examiner should secure the permission of the Supervisory
Examiner before doing so. Where the newly found reference
applies also to allowed claims or where the new reference
drastically alters the issues involved in the appeal, the
Supervisory Examiner may recommend that the appeal be held
in abeyance and the prosecution reopened.

If the Examiner's statement includes a new reference
or other grounds of rejection, the appellant may proceed
with the aprenl or may request that the case be returned to
the Examiner for resumed prosecution which is the practice
stated in Ex parte Mevey 1891 C. D. 115; 56 0. G. 805. If
the appellant elects to proceed before the Examiner, he
must file a proper response within the statutory period
dating from the Examiner's statement. The mere request for
remand in not a sufficient response. The appellant should
respond to the new ground of rejection.

Where the appellant acts outside the statutory period
to restore the case to active status before the Examiner,
the Examiner returns the case to the Board with a report of
this fact. The case retains its status as being on appeal
provided the request for remand was made prior to the date
of hearing and without withdrawing the appeal; see Ex parte
McIlvaine 164 Ms. 979; Case No. 5, 23 J. P. O. S. 857.

14-1-6.3.
Withdrawal of Final Rejection

The Examiner can withdraw the final rejection at any
time prior to the hearing. It is possible that after read-
ing the brief that Examiner 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 allowable 'he
should so specify in the Examiner's statement and confine
his arguments to the remaining rejected claims. If he finds,
upon reconsideration, that all the rejected claims are
allowable, or where the aprlicant in his brief withdraws the
appeal as to some of the rejected claims and the Examiner
finds that remaining claims to be allowable, he should noti-
fy the Administrative Assistant of the Board of this fact

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so that the appeal may be removed from the records.

Where Statement is not.
14-1-6.4.
Found Necessary

An examiner's statement need not be made in those
cases where (l) appellant's brief contains a concise ex-
planation of the intention cinimed, (2) the finn) rejec-
tion is deemed sufficient in that all questions raised by
the brief are fully answered and (3) the appeal is regular
in fon. In such cases, the following statement should be
made:

"Appellant'a brief has been fully considered
and is not found to raise Any points not covered
by the final rejection, accordingly, no Examiner's
Statement is deemed to be necessary."

14-1-7.
Or Hearing

Rule 132.5. Consigg. If no request for
oral hearing has been made on filing or the
brief, the appeal will he maniened for consi -
deration and deci lon. If the appellent. hon
requested an oral hearing, a day of henring
will be set and due notice thereor given to
the appellant. Henring will be held om
stated In the notice, and oral argument will
be limited to one half hour unless otherwise
ordered before the hearing beginn.

14-1-8.
Amendment Filed With or After Appeal
but Before Examiner's Statement

It is not of infrequent occurrence that an amend-
ment is filed alor : with an appeal. Failure of an exomi -
ner to notify an applicant of the digposition mode of
auch amendment, or of one filed after apneni but before
forwarding the Examiner's Statement, may leave the appli-
cant uninformed an to the exact matter upon which the
appeal must be prosecuted. Since an applicant has the
right to petition from an adverse holdthe ant to the entry
of any Amendment, irrespective of the status of the cose
nt the time of filin this omendment, he is entitled to be
advised as to its entry or non entry. Such notification
may be given in the Examiner's Statement if the amendment
is entered but where entry in dented. the applicant
should ordiantily be advised to this effect in advance of
the Examiner a Statement and the preparation of the state.
mont delayed for a time sufficient to enable the applicant
lo petition, if he ao denires, From the Examiner's refusal
to admit the amendment. Ex parte Boch 1005 CD 383; 118
06 1463.

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Where the amendment is rerused entry, the Examiner
should write a letter stating the reasons for non-entry
such as, for example, a. the claims as amended present
now issues requiring further consideration or search, b.
since the amendment presents additional claims without
cancelling corresponding finally rejected claims it is
not considered as placing the application in better con-
dition for appeal; Ex parte Wirt 1905 CD 247, 117 OG 599.

The refusal should never be made to appear to be
arbitrary. The proposed amendment should be given suffi-
cient consideration at least to determine whether it ob-
viously places any of the claims in condition for allow-
ance or would simplify the issues on apneal.

Applicant cannot as a matter of right add new
claims after a final rejection (Rule 16.2), or reinstate
previously cancelled claims, for purpose of appeal.

14-1-8.1.

Actions Subsequent

.

to Examiner's Statement
but Before Board 's Decision

# JURISDICTION OF BOARD

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

# DIVIDED JURISDICTION

Where appeal is taken only from the final rejection
of a copied patent claim or claims only, jurisdiction of
the rest of the case remains with the Examiner, and prose-
cution of the unallowed claims should proceed as though
the entire case was under the jurisdiction of the Examiner.

## 14-1-8.2. Remand by the Board to Consider Amendment

Where an amendment or an affidavit is filed in an
appealed application prior to the Board's decision, the
Board usually remands the case to the Examiner for such
consideration of the amendment or affidavit as he may seo
fit to give.

If the proposed amendment is in effect an abandon-
ment of the appeal, as, by canceling the appealed claims
and adding new ones which the Examiner is willing to allow,
or so amending the appenled claims as to render them

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patenteble in the opinion of the Examiner, the amendment
will be entered, the Administrative Assistant to the Board
of irments being so notified in order that the case may be
stricken from the Doari's dockat.

The Board may also remand the case to the Examiner
for further search where it feels that the most pertinent
art has not been cited

14-1-8.3.
Remand To Consider Affidavita

Rule $2.6 Affidavits after appeal.
Affidavits or exhibits submitted after the
case has been anpealed will not be admitted
by the Board without a showing of good and
sufficient reasons why they were not earlier
presented, and without remanding the case to
the Primary Examiner for consideration; but
the Board of Apposis may, in its discretion,
refuse to remand st. case and proceed with
the same without admitting the affidavits or
exhibits.

When a case is remanded to the examiner for the con-
Sideration of affidavits, the examiner, after having given
the affidavits such consideration 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 undor Rule 18-1 is not accompanied
by the showing required by Rule 32.6, the examiner will not
consider the merita of such Affidavit.

If. however, the delny in filing the affidavit is
satisfactorily explained the examiner will then admit the
same and consider its merits. If this affidavit is ac-
cepted as overcoming the reference, 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 0.G. 759 .
14 .10.
Decision by Board
&

Rule 32.7 Decision by the Board of

Appeals. The Board of Appeals, in its deci-
slon, may affirm or reverse the decision of
the Primary Examiner in whole or in part on
the grounds and on the claims specified in

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the Examiner's stateme .t. The affirmance
of the rejection of a claim on any of the
grounds as specified in his statement con-
stitutes a general affirmance of the deci-
sion of the Primary Examiner on that claim,
except as to any grounds specifically ro-
versed.

### 14-1-9.1. Recommendations

Rule 32.7.
Should the de-
cision of the Board of Appeals include mu ex-
plicit statement that a claim may be allowed
in amended form, applicant shall have the
right to amend in conformity with such state-
ment, which shall be binding on the Primary
Examiner, in the absence of new references
or grounds of rejection.

However, if the examiner krows of references or
reasons which were not before the Board, such a favorable
recommendation is no' binding upon him. Likewise should
applicant make any change in a favorably recommended claim,
the same would tend to destroy the force of such recommen-
dation. Ex parte Young 18 Gour. 24:31.

## 14-2. Actions Following Decision by Board

### 14-2-1. New Ground of Rejection

Rule 32.7. . .... . . Should the
Board of Appeals discover any grounds not
involved in the appeal for rejecting any
claim, it may include in its decision a re-
jection on such grounds with its reasons for
so holding. The appellant may then have the
case reconsidered by the Board of Appeals,
with or without appropriate amendment of the
claims so rejected; the Board may remand the
case to the Primary Examiner for statement
of his views, or other appropriate action.
Where such request for reconsideration is
made, the Board of Appeals shall if necessary
render a new decision. The appellant may
waive reconsideration by the Board of Appeals
and treat the decision, including the added
grounds for rejection given by the Board of
Appeala, 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 1.6., within sixty calendar days
from the Board's decision. By proceeding in this manner,

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the applicant waives his right to further prosecution be-
fore the Examiner. In re Gren fiel i tif CD 531: 400 0.G.
226.

Where the applicant electo to proceed before the
Examiner, the statement of the Board Lands as a rejection
and the application is placed in the vites awaiting nction
by applicant which action must be fan withm six months
from the date of the Board's decir. n. Ex parte King 1928
C.D. 1. 350 0.4 5, ex parro Richequery 1924 C.D. 55: 327
O.G. 210.

The applicant may amane misa vairs, of substitute
new claims to avoid the art of re stort ndenend by the
Board. Ex parte Burrowes 1904 2.2. 155; 110 0.0. 599.
Such amended of new alomma must be directed to the same
subject matter as the appealed claima, Ex parte Comstock
1923 C.D. 82: 317 0.0. 4.

Argument without ar ment of the claims no rejected
can result only in a finns ar ation of the cinins, since
the examiner in without authority to Llow cho ein ms un-
less mmended or unless the rejection ho overonme by n show ...
ing of freis not before the Board, The new round of re-
jection raised by the Board does not tropen t'y prosecution
except ns to that subject matter to which the new cojection
was applied.

As n third option, applicant may trent much docistop
of the Ponrd ao final and file either a dire a pont there.
from to the C C. P.A., or a suit in equity under R.3. 1915.
In re Growali 1930 C.D. 360, 397 0.5. 3. Where the appli-
cant avalin himself of the third option. he waives his
right to reconsideration by the Board, or b° the examine".
discussed above. In re Heinz 1010 0.0. 202 :5: 0.6, 1014.
14-2-2.
Procedure after Decision

After an appeal to the Board of Appeut has been
decided, a copy of the decision in mailed to the a mettant
and the spirital placed in the file. The wImmtive
Assistant to the Board notes the decision on the file
wrapper ated in the record of ampents, and then forwardn
the flin to the Primary Examiner through tte office of the
Supervisory Vanmitert

Aby request of petition far roherring or second) .
deration rem bo find before the limit of oral to the
** ** * Om A Patent EX Ep. (0)
rule : . fr atar of time for Appeal to the court).

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14-2-3.
Rehearing and R-consideration

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 cnlen-
dar days following the Board's decision for the convenience
of the Board in the event that the appellant requests re-
consideration.

14-2-4.
Examiner Reversed

A complete reversal of the examiner's rejection
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 bet-
ter references. This is particularly so where the appli-
cation has meanwhile been transferred or assigned to an
examiner 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 knowledge of the existence of a particular refer-
ence which obviously meets the terms of any of the appeal-
ed claims as to which the examiner was readvised, he
should submit the matter to the Supervisory Examiner to
determine whether the Commissioner should be requested to
authorize the reopening prosecution under Rule 32.9 for
the purpose of entering the new rejection.

### 14-2-5. Appeal Withdrawn on Claims Not Allowed

Where an appellant withdraws some of the appealed
claims, and the Board reverses the examiner on the remain-
ing 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.

## 14-2-6. Examiner Sustained in Whole or in Part

If the examiner was sustained either in whole or in
port, the next action must be taken by the applicant,
either by way of further appeal or suit in equity or by
cancelation of the rejected claims if there be an allowed
claim in the case. It is improper to notify applicant of
the status of the case unless naked to do so.

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14-2-7.
Reopening of Prosecution

Rule 32,9 Reopening after devision.
Cases which have been decided by the Board
of Appenis will not be reopened by the
Primary Examiner, except under the provisions
of rule 32.7, without the written authority
of the Commissioner, and then only for the
consideration of matters not already adjudi -
cated, Sufficient cause being shown.

Some times an amendment is filed after the Board's
decision which does not carry into effect any recommenda-
tion made by the Board and which presents a new or amended
claim or claims. In view of the fact that the prosecution
of the case is definitely closed, the applicant clearly is
not. entitled to have such amendment entered as a matter of
right. However, if the amendment obviously places the case
In condition for allowance, the Primary Examiner should en-
dorse in the amendatory paper a recommendation that the
amendment be admitted, and on approval by the Supervisory
Examinor the amendment will be entered.

Where the amendment cannot be entered, the Examiner
should write to the applicant notifying him that the amend-
ment cannot be entered and stating the reason why. The re-
fusal should never be made to appear arbitrary or capri-
cious. A letter such as the following might be used:

The amendment filed ----- after the Board's
decision is refused entry because the prosecution
is closed and the Examiner is without, authority
to entor the same; see Rule 32.9. Moreover, the
new claims (or claims as amended ) rais: new
issues requiring further consideration or search.

14-3.
Withdrawal or Dismissal of Appeal

14-3-1.
Withdrawal of appeal

Where, after appeal has been filed and before deci-
sion by the Board of Appeals, an appellant, withdraws the
appeal more than six months after the date of the final
rejection, the application !a to be considered abandoned
as of the date on which the anneel was withdrown unless
there are allowed claims in the case.

Where a letter abandoning the application 18
filed in accordance with (win 19.4. the effec-
Live date of abandonment to the date of filing
of nuch letter, which is the usual practice.

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## 14-3-2. Claims Standing Allowed

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

### 14-3-3. 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.

## 14-3-4 . 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 the apreal stands dismissed and the application
is considered as abandoned on the date set for the filing
of the brief regardless of whether there are allowed
claims. The letter from the Board of Appeals notifying
the appellant that the appeal stands dismissed is not an
action in the case and does not start a new period for
reply.

14-3-5.
Case Before the Court

When the case is before the court either on anneal
or in a civil action under R. S. 4915, the status of the
application in the event of a dismissal must be determined
according to the circumstances 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.

14-4.
Appeals to Courts

Files of cases carried to the Courts, either by
appeal to the Court of Customs and Patent Appeals or by
suit in equity in the District Court for the District of
Columbia, are not opened by the Patent Office to the pub-
11 C.

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 jurisdiction

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of the examiner; and any amendment, as one copying claims
from a patent for interference purposes, can be admitted
only under the provisions of Rule 32.9.

14-4-1.
To Court of Customs and Patent 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 Division to whom the appeal is
sont obtains the file from the Primary Examiner and selects
those papers which should for the transcript of record,
notifies appellant of the papers selected, and forwards a
list of the references to the Manuscript Division.

After the Court has heard and decided the appeal,
a copy of the decision is sent to the Patent Office and
one to the appellant. Where the appellant files a peti-
tion for rehearing, the court's ruling thereon is communi-
cated 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 together with a copy to be mailed to the
appellant. This copy is a duplicate of the uncertified
copy first forwarded, unless modified as a result of the
petition for rehearing or, possibly, altered to correct
some minor error. This certified copy constitutes the
"final order" of the court. But the date of the certifi-
cate itself is not controlling as to the statutory period
running against the case .

The Docket Division mails to the applicant his copy
of the court 's decision, and enters the other copy in the
application file. The Docket Clerk also makes a copy for
publication in the Official Gazette.

The file is then returned to the Primary Examiner.
Further action, if any, on the part of the examiner is de-
termined by the court's decision. No action is taken by
the examiner unless all claims appealed have been allowed.

In the case of an appeal to the Court of Customs
and Patent Appeals, a transcript of the record must be
filed with the Court within the specified 60-day period
following the decision of the Board of Appeals. The deci-
sion 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 appli-
cation becomes a part of the court record, it may of course
be inspected by anyone.

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Similar practice applies in the case of an amond-
ment filed after a decision by one of the courts (R.S.
4911 or 4915), as in the case of such an amendment filed
subsequent to a decision by the Board of Appeals.

### 14-4-1.1. Period for Response

In a case appealed to the C.C.P.A., the statutory
period starts with the date on which the Court renders its
decision, as appears at the top of the carbon copy certi-
fled to the Office by the Clerk of the Court at a later
date. However, if the appellant seasonably petitions for
a rohearing this stays the running of the statutory period,
and a new one begins with the date of decision on the peti-
tion. This date may not appear in the Office file but may
be had from the Solicitor's Office. (Ex parte C. 167 Ms.
552 and 666.)

## 14-4-2. Suits Under R.J. 1915

When a suit under R.S. 4915 is filed a Notice there-
of signed by the Solicitor of the Patent Office is placed
in the application file. The file, however, is returned
to the examining division and remains in the custory of
the Examiner until the case comes up for trial, after which
the file is kept in the Solicitor's office pending termi-
nation of the suit. The applicant is required to furnish
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 of the application to the
public necessarily results from the filing of the suit.
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 complaint is open to the public.

Files subpoenaed by Court may be sent to the Court
in care of a Patent Office employe 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

14-4-2.1.
Period of Response

A decision, whether favorable or unfavorable, fol-
lowing the trial in a civil action under R.S. 1915 marks
by its date the beginning of a new statutory period. But
the dismissal of such suit either on motion or for want of
prosecution does not date a new statutory period. (Ex
parte M-167 Ms. 786) .