1200

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1200 Appeal

Introductory

1201
1202
Ex Parte Review of Matters Pertaining to
Merits

Constitution of Board

Administrative Handling

Prerequisites for Appeal

1208

1208.01

New Ground of Rejection in Examiner's
Answer

1208.02

Withdrawal of Final Rejection

1209

Oral Hearing

1210

Actions Subsequent to Examiner's Answer But
Before Board's Decision

1211
1212
1213

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

1213\. 01
1214

Recommendations of Board
Actions following Decision by Board

1214\. 01
New Ground of Rejection

1214.02

Procedure after Decision

1214.03
Rehearing and Reconsideration

1214.04
1214. 05

Examiner Reversed

1214.06

1214.07
1215

Cancelation of Withdrawn Claims
Examiner Sustained in Whole or in Part
Reopening of Prosecution
Withdrawal or Dismissal of Appeal

1215\. 01
Withdrawal of Appeal

1215.02
Claims Standing Allowed

1215.03
Partial Withdrawal

1215.04
Dismissal of Appeal

1215.05
Case Before the Court

1216
Appeals to Courts

1216.01

1216\. 02

To Court of Customs and Patent Appeals
Civil Suits

## 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,

the questions thereby raised are said to relate
to merits, and appeal procedure within the Pat-
ent Office and to the courts has long been pro-
vided 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 ordinarily 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.

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

Examiner

### Appeal to Board of Appeals

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

Civil Action
U. S. District Court

Appeal to U. S. Court
of Appeals
1

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

## 1203 Constitution of Board

35 U. S. C. 7, provides for constitution of the
Board of Appeals as follows:

### § 7. Board of Appeals

The examiners-in-chief shall be persons of
competent legal knowledge and scientific ability.
The Commissioner, the assistant commissioners,
and the examiners-in-chief shall constitute a
Board of Appeals, which, on written appeal of
the applicant, shall review adverse decisions of
examiners upon applications for patents. Each
appeal shall be heard by at least three members
of the Board of Appeals, the members hearing
such appeal to be designated by the Commis-
sioner. The Board of Appeals has sole power
to grant rehearings.

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1203
1204
1205
1206
Time for Filing Brief
1207
Amendment Filed With or After Appeal But
Before Examiner's Answer
Examiner's Answer

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Whenever the Commissioner considers it
necessary to maintain the work of the Board
of Appeals current, he may designate any
patent examiner of the primary examiner grade
or higher, having the requisite ability, to serve
as examiner-in-chief for periods not exceeding
six months each. An examiner so designated
shall be qualified to act as a member of the
Board of Appeals. Not more than one such
primary examiner shall be a member of the
Board of Appeals hearing an appeal.

## 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 ap-
plication file 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.

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 by the Com-
missioner or an Assistant Commissioner for exam-
ination will continue to be special throughout its en-
tire course of prosecution in the Patent Office,
including appeal, if any, to the Board of Appeals.
(Extract from Notice of Dec. 3, 1954.)

## 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), may, upon
the payment of the fee required by law, appeal from the
decision of the primary examiner to the Board of Ap-
peals 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 rule 206, appeal
when taken must be taken from the rejection 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.

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. 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
the time allowed for response to 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 invention
and a copy of the claims involved, at the same time
indicating if he desires an oral hearing. Two extra
copies of the brief are required if an oral hearing is
requested.

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 1207, 1215.01 and 1215.02.

See 1215.04 for practice relating to dismissal
of appeal.

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

An amendment filed with or after appeal
should ordinarily be given immediate consider-
ation to determine if it places the case in con-
dition for allowance or in better form for
appeal. If the amendment places the case in
condition for allowance, the Notice of Allow-
ance is sufficient notification that it has been
entered. If it is not possible to process the
application and mail the Notice of Allowance
immediately, the Examiner should promptly
write a letter substantially as follows:

"In view of the amendment filed (date), this
application has been reconsidered and found
allowable. The Notice of Allowance will be
sent in due course."

Where the amendment is filed a reasonable
time before the brief is due, and the Examiner
believes the amendment qualifies for entry, the
amendment is entered forthwith and appellant

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(

(

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notified as soon as possible so that the brief may
be directed to the claims as amended. Entry
may be denied because the proposed amendment
would cancel the finally rejected claims and sub-
stitute others, only some of which are admissible
for purpose of appeal. If entry is denied, ap-
pellant should be advised to this effect promptly
so that he may petition, if he so desires, from
the Examiner's refusal to admit the amendment.

Where the amendment is filed with or after
the brief or too late to be considered before the
brief is due and the Examiner believes that it
qualifies for entry, the amendment is entered
forthwith and a notification to that effect in the
Examiner's Answer suffices. If entry is denied,
appellant should be advised to this effect
promptly so that he may petition, if he so de-
sires, from the Examiner's refusal to admit the
amendment, and the preparation of the Exam-
iner's Answer should be delayed for twenty days
for that reason. The above is taken from the
Notice of January 5, 1953.

In the consideration of an amendment pre-
sented before the filing of the brief, a new or
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 his brief, he should clearly indi-
cate whether he accepts the entry of the amend-
ment under the condition specified or whether
he is proceeding with the appeal as to the claims
as finally rejected.

# 1208 Examiner's Answer

Rule 193. 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 of argument as may be raised in the
examiner's answer, within twenty days from the date
of such answer. However, if the examiner's answer
states a new ground of rejection appellant may file
a reply thereto within sixty days from the date of such
answer; such reply may include any amendment or
material appropriate to the new ground.

Before preparing the answer, the Examiner should
make certain that all amendments approved for
entry have in fact been physically entered in the
application. (Extract from Notice of Dec. 1, 1952.)

This is important to insure that the claims
considered by the Board are the same as those
forming the basis of the appeal.

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 the
allegations or arguments in the brief and should
call attention to any errors in appellant's copy
of the claims. The Examiner should treat
affidavits or exhibits in accordance with Rule
195, reporting his conclusions only on those
admitted.

Because of the practice of the Patent Office in
entering amendments after final action under justi-
fiable circumstances for purpose of appeal, many
cases coming before the Board of Appeals for con-
sideration contain claims which are not the claims
treated in the Examiner's final rejection. They are
either entirely new claims or amended versions of
the finally rejected claims, or both. The new claims
or finally rejected claims as amended frequently
contain limitations not in the claims treated in the
final rejection. The arguments in the appellant's
brief are directed to the new claims. Under such
circumstances the mere reference in the Examiner's
Answer to the final rejection for a statement of his
position would leave the Board, insofar as the new
claims are concerned, with an uncrystallized issue
and without the benefit of the Examiner's view,
which complicates the task of rendering a decision.

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It also not infrequently happens that an Examiner
will state his position in the answer in a manner
that represents a shift from the position stated in
the final rejection without indicating that the last
stated position supersedes the former. Such a situ-
ation confuses the issue and likewise poses difficulties
for the Board since it is not clear exactly what the
Examiner's ultimate position is.

The Examiner should not rely on the final rejec-
tion for a statement of his position but should in
every case, whether or not the claims have been
amended after final rejection, include in his answer
a full statement of all of the grounds of rejection
on which he then relies. He should point out the
particular part of each reference relied on and apply
the references to the claims actually before the
Board for consideration so that the Board will have
in one paper a complete exposition of the Examiner's
position.

The Examiner should reconsider his position in
the light of the arguments presented in the brief
and should expressly withdraw any rejections not
adhered to. Any rejection not repeated and dis-
cussed in the answer may be taken by the Board
as having been withdrawn.

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 its mode of operation. In certain cases where
the pertinence of the references is not clear, the
Board may call upon the Examiner for a further
explanation. In the case of multiple rejections of
a cumulative nature, the Board may also remand
for selection of the preferred or best ground. The
Board may also remand a case to the Examiner for
further search where it feels that the most pertinent
art has not been cited.

No soft copies of references not cited in the Ex-
aminer's answer should be left in the file. (Extract
from Notice of April 8, 1957.)

A form suitable for the Examiner's Answer is as
follows:

# POL-84

## IN RE APPLICATION OF

Ser. No.

Appeal No.

Filed

Before the Board of Appeals

For

## EXAMINER'S ANSWER

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

"A correct copy of the appealed claims appears on
page - of the applicant's brief." (If any claims are
incorrect, they should be correctly reproduced in the
answer.)

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"The references of record relied on are:

"Smith
1,736,481
June 21, 1920

"Jones
1,894, 324
July 31, 1923"

(In citing non-patent references, the current lo-
cation of the reference should be specified by class
and subclass or, if not classified, the particular lo-
cation in the Office where a copy can be found. In
addition, the citation should specify the precise
page or pages of the reference relied on. Omit all
references not involved in the appeal.)

Description of the invention. (If adequately de-
scribed 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 before
the Board.

Response to the allegations and arguments in the
brief.

If a new ground of rejection is raised, see 1208.01.
For case having patentability report see 705.01 (a).
(Notice of April 8, 1957.)

### 1208.01 New Ground of Rejection in Examiner's Answer

At the time of preparing his answer to an appeal
brief, the Examiner may discover a new ground of
rejection (new reference, double patenting, statutory
bar or other reason for rejection) which should be
used against some or all of the appealed claims. In
order to introduce this new ground of rejection it
is necessary to reopen the ex parte prosecution be-
fore the Examiner or to include the new rejection
in the Examiner's Answer depending on existing cir-
cumstances. When the Examiner feels that a new
ground of rejection is necessary, he should consult
the Supervisory Examiner before writing the Exami-
ner's Answer to determine the procedure to be fol-
lowed. The resulting action requires the approval
of the Supervisory Examiner before mailing.

The choice of action to be followed will depend on
such factors as the history of the prosecution, the
number of claims affected, the importance of the
new ground of rejection, the significance of the new
reference and the nature of the response to be ex -.
pected, For example, if the reference is basic and
materially better in meeting all of the claims, re-
opening of the prosecution would ordinarily be
approved. On the other hand, if the new reference
anticipates some but not all of the claims or supplies
a minor lack in art already relied on inclusion of the
new ground in the Examiner's Answer would nor-
mally be the approved procedure. Of course, if the
new ground of rejection applies to any claim stand-
ing allowed the prosecution should be reopened.

Where a new ground of rejection is raised in the
Examiner's Answer, the Appellant, under Rule 193
(b) has sixty days within which he may file a reply.

1,

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The appellant's reply, insofar as the new ground of
rejection is concerned, may include any amendment
or material appropriate to the new ground. The
Board of Appeals in its discretion may remand the
case to the examiner to consider such amendment
or material. In the event of remand, consideration
will be limited to amendments and facts pertinent to
the new ground of rejection. (Notice of March 13,
1952, Revised.)

It is important that the new ground be clearly
indicated as such so that the Board of Appeals can
readily identify those applications where the appel-
lant is entitled to a period of sixty days for reply.
The reference should be cited under the caption
"New Reference(s)." The references of record relied
upon, if listed in the Answer, should appear under
a caption to that effect, i. e., "The references of
record relied on are:" even though no new references
are cited.

Likewise when a ground of rejection not involving
a new reference is raised for the first time in the
Answer (with the approval of the Supervisory Ex-
aminer) the fact that it is a new ground should be
clearly indicated, thus: THIS IS A NEW GROUND
OF REJECTION. or some equivalent statement.

The Examiner's Answer which includes a new
ground of rejection should conclude with the follow-
ing paragraph:

"In view of the new ground of rejection appellant
has sixty days within which he may file a reply to
this Answer. Such reply may include any amend-
ment or material appropriate to the new ground and
may request remand to the Examiner to consider
such amendment or material. Prosecution other-
wise remains closed. Failure to respond to the new
ground of rejection may be construed as an acquies-
cence in the rejection." (Notice of March 18, 1952,
Revised.)

If the Examiner discovers a new ground of rejec-
tion while considering claims presented in a proposed
amendment filed after final rejection or appeal, he
should follow the practice set forth in Section 1207.
(Notice of February 14, 1957.)

## 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, the 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 re-
maining rejected claims. If he finds, upon re-
consideration, 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.

## 1210 Actions Subsequent to Examin- er'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.

#### 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).

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
removed from the Board's docket.

See 1208.01.

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#### 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.

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.

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 specifled
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.

However, if the Examiner knows of refer-
ences 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 recom-
mended), 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.

Applicant's right to amend in conformity with the
recommendation must be exercised within the period
allowed for seeking court review, ordinarily sixty
days from the date of the Board's decision. (Extract
from Notice of March 10, 1953.)

## 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 appealed claim, it may include in its
decision a statement to that effect with its reasons for
so holding, which statement shall constitute a rejection
of the claims. The appellant may submit an appropri-
ate 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 requests 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

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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 be filed within thirty days from the date
of the decision, the period set by Rule 197,
second paragraph. By proceeding in this man-
ner the applicant waives his right to further
prosecution before the Examiner. In re Green-
field, 1930 C. D. 531; 400 O. G. 226.

Where the Board's decision completely re-
moves the Examiner's rejection as to one or
more claims and substitutes a new one under
Rule 196 (b), the applicant, if he elects to pro-
ceed before the Examiner, must take such action
within six months from the Board's decision.
See the decision at 693 O. G. 136 modifying the
Notice of March 10, 1953. A shortened period
for response may be set in the Board's decision.

The applicant may amend the claims involved,
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
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 action under 35 U. S. C. 145. 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

Rule 197 (first paragraph). Action following deci-
sion. After decision by the Board of Appeals, the
case shall be returned to the primary examiner, sub-
ject to the applicant's right of appeal or other review,
for such further action by the applicant or by the
primary examiner, as the condition of the case may
require, to carry into effect the 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.

## 1214.03 Rehearing and Reconsidera- tion

Under Rule 197, any request or petition for
rehearing or reconsideration, or modification of
the decision, must be filed within thirty days
from the date of the original decision, unless
that decision is so modified as to become, in ef-
fect, a new decision, and the Board of Appeals
so states.

Any soft copies in the file wrapper should not
be removed until the period of reconsideration
expires.

## 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 neces-
sary to notify the applicant of the cancellation
of the withdrawn claims.

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# 1214.06 Examiner Sustained in Whole or in Part

Rule 197 (third paragraph). Action following de-
cision. When an appeal is or stands dismissed, or
when the time for appeal to the court or review by
civil action (rule 304) has expired and no such appeal
or civil action has been filed, proceedings in the ap-
plication are considered terminated as of the dismissal
or expiration date except in those applications in which
claims stand allowed or in which the nature of the
decision requires further action by the Examiner. If
an appeal to the court or a civil action has been filed,
proceedings in the application are similarly considered
terminated when the appeal or civil action is ter-
minated.

If the Examiner was sustained either in whole
or in part, it is improper to notify applicant of
the status of the case unless asked to do so. See
Ex parte Buchenberg 1924 C. D. 55; 327 O. G.
216. (Notice of Nov. 12, 1923, revised.)

In view of the fact that the time for seeking
review of a decision of the Board of Appeals by
the C. C. P. A. or the District Court is the same
for both tribunals, that is, sixty days, or sixty
days with the extension provided by Rule 304
in the event a petition for reconsideration or re-
hearing is seasonably filed before the Board, it
is no longer necessary to wait six months after
the Board's decision before taking up the ap-
plication for further action.

The third paragraph of Rule 197 provides the
basis for this reduction in time in those cases
where proceedings as to the rejected claims are
terminated by virtue of applicant's failure to
seek court review. Therefore, when the time
for seeking court review has passed (plus two
weeks_to allow for information as to the
filing of an appeal or civil action, if any,
to reach the Examiner) the Examiner must take
up the case for consideration. There are four
possible situations :

A. No claims stand allowed in the applica-
tion. The proceedings in the application are
terminated as of the date of the expiration of
the time for filing court action. The applica-
tion is no longer considered as pending. It is
to be stamped abandoned and sent to the Aban-
doned Files without notifying applicant.

1
B. Claims stand allowed in the application.
The applicant is not required to file a response.
The Examiner takes the case up and passes it
to issue on the claims which stand allowed. [A
red ink line should be drawn through the' re-
fused claims and the notation "Board Decision"
written in the margin in red ink. 7
.]

1

If matters of form needing attention remain
in the case, the Examiner should take appro-
priate action but prosecution is otherwise closed.
A letter such as the following is suggested :

"In view of the fact that the period for seek-
ing court review of the decision by the Board of
Appeals rendered (date of decision) has expired
and no further action has been taken by appli-
cant, the proceedings as to the rejected claims
are considered terminated; see Rule 197, third
paragraph."

"The application will be passed to issue on
claims (identify) which stand allowed provided
the following formal matter(s) is (are)
promptly corrected. Prosecution is otherwise
closed."

(Set out formal matter(s) requiring correc-
tion.)

(Set Shortened Statutory Period for re-
sponse.)

C. Claims require action. If the decision of
the Board is an affirmance in part and includes
a reversal of a rejection that brings certain
claims up for action on the merits, such as a
decision allowing generic claims in a case con-
taining claims to nonelected species not pre-
viously 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.

D. 196 (b) rejection. Where the Board
makes a new rejection under Rule 196 (b) and
no action is taken with reference thereto by the
applicant within six months, or such shortened
period as may be set in the Board's decision, the
examiner should proceed in the manner indi-
cated for situations A, B, or C, depending on
which is appropriate to the case. See 1214.01.

E. 196 (c) recommendation. Where the
Board makes a recommendation under Rule 196
(c) and no action is taken with reference thereto
by the applicant within the time permitted for
court review, ordinarily sixty days from the
date of the decision, the Examiner should pro-
ceed in the manner indicated for situations A,
B, or C, depending on which is appropriate to
the case. See 1213.01.

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The practice under situations A, B, and C is
similar to the practice after a decision of the
Court outlined in Section 1216.01.

In view of the above practice, Examiners must
be very careful that applications which come
back from the Board of Appeals are not over-
looked because every case, except those in which

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all claims stand rejected after the Board's de-
cision, is up for action by the Examiner in the
event no court review has been sought. Conse-
quently, when a file is received after decision by
the Board of Appeals, it must be examined and
appropriate precautions taken to indicate the
presence of allowed claims, if any. This may
be done by writing the notation "Allowed
Claims" on "Contents" of file wrapper imme-
diately below endorsement "Decision by
Board".

See Sections 1216.01 and 1216.02 for proce-
dure where court review is sought.

## 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.

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
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
decision 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 appeal
does not operate as an abandonment of the applica-
tion, 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 Dismissal of Appeal

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.
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 is to be considered closed to further
prosecution except as to such matters.

A letter such as the following is suggested:

"In view of applicant's failure to file a brief within
the time prescribed by Rule 192, the appeal stands
dismissed and the proceedings as to the rejected
claims are considered terminated; see Rule 197, third
paragraph.

"This application will be passed to issue on claims
(identify) which stand allowed provided the follow-

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ing formal matter(s) is (are) promptly corrected.
Prosecution is otherwise closed."

(Set out formal matter(s) requiring correction.)
(Set Shortened Statutory Period for response.)

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 filling 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, Revised.)

## 1215.05 Case Before the Court

When the case is before the court either on appeal
or in a civil action under 35 U. S. C. 145, the status
of the application in the event of a dismissal must
be determined according to the circumstances lead-
ing to the dismissal. In no event will the applica-
tion be considered abandoned as of a date prior
to the date of the dismissal by reason of the dis-
missal 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 Ap-
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
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 suggests to
appellant those papers which in his opinion
should form the transcript of record. The
appellant then orders a transcript, including
certified copies of such papers as he desires, to
be prepared and transmitted to the court.

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 certified copy
in the application file. The Solicitor uses the
uncertified copy as a basis for publication of the
decision 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 there 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." (35 U. S. C. 144.)
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.

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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 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, Revised.)

## 1216.02 Civil Suits

When a suit under 35 U. S. C. 145 is filed
a notice thereof signed by the Solicitor of the
Patent Office is placed in the application file.
The file is kept in the Solicitor's office pending
termination of the suit. When the suit is ter-
minated, a statement indicating the final dis-
position of it by the court is placed on the orig-
inal notice by the Solicitor and the application
is returned to the Examiner, whose subsequent
procedure is the same as his action following
appeal, described in 1216.01, supra. If the ex-
act date when proceedings were terminated is
material, it may be ascertained by inquiring at
the Solicitor's office.

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
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
civil action 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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