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OCR transcription for search; preserved printed pages are authoritative

# Chapter 1200 Appeal

1201

Introductory

1202
Fix Parte Review of Matters Pertaining to
Merits
Constitution of Board

1208

1204

Administrative Building

1205

Prerequisites for Appeal; Some Matters Han-
dled Concurrently With Appeal

1206
Time for Filing Brief
1207
Amendment Filled With or After Appeal

1208
Examiner's Answer

1208.01
New Ground of Rejection in Examiner's
Answer
1208.02
Withdrawal of Final Rejection

1200
Oral Hearing

1210

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

1211

Remand by Board to Consider Amendment

1212

Remand by Board to Consider Affidavits

1213

Decision by Board

1218.01
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

Cancellation of Withdrawn Claims

1214.08
Examiner Sustained in Whole or in Part

1214.07
Reopening of Prosecution

1215
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
To Court of Customs and Patent Appeals
1216.02
Civil Suits

## 1201 Introductory

The Patent Office in administering the Pat-
ent Laws makes many decisions of a discretion-
ary nature which the applicant may feel deny
him the patent protection to which he is en-
titled. The differences of opinion on such mat-
ters can be justly resolved only by prescribing
and following judicial procedures. Where the
differences of opinion concern the denial of
patent claims because of prior art or material
deficiencies in the disclosure set forth in the
application, 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 demarestion 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

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

## 1203 Constitution of Board [R-16]

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

Extract from 35 U.S.C. 7 Board of Appeals. The ex-
aminers-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 ap-
peal to be designated by the Commissioner. The Board
of Appeals has sole power to grant rehearings.

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, to-
gether with the photographic copies of the
drawings is returned to the Board of Appeals.
It is not necessary to send copies of the refer-
ences relied upon as these are ordered by the
Administrative Officer to the Board.

If the brief is not filed within the time des-
ignated by Rule 192, the Administrative Offi-
cer to the Board will notify the appellant that
the appeal stands dismissed.

"SPECIAL" CASE

Subject alone to diligent prosecution by the
applicant, an application for patent that once
has been made special and advanced out of
turn by the Commissioner or an Assistant
Commissioner for examination will continue to
be special throughout its entire course of prose-
cution in the Patent Office, including appeal,
if any, to the Board of Appeals.

## 1205 Prerequisites for Appeal; Some Matters Handled Concurrently With Appeal [R-16]

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.

Rule 206 permits partial appeal in cases where
there are both finally rejected claims copied
from a patent and other claims not ready for ap-
peal. See 1210 and 1101.02 (f).

Ex parte prosecution of an appeal under Rule
191 may proceed concurrently with an inter-
ference proceeding involving the same applica-
tion provided the Primary Examiner who for-
wards the appeal certifies, in a memorandum to
be placed in the file, that the subject matter of
the interference does not conflict with the sub-
ject matter of the appealed claims. See Rule
212, 1103.

### 1206 Time for Filing Brief

Rule 192. Appellant's bricf. (a) 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
which should refer to the drawing by reference char-
acters, 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. The Board of Appeals may, for suficient
cause shown, extend the time for filling the brief to a
date not later than sixty days after the original expira-
tion date. Any longer or further extensions must be
sought from the Commissioner. All requests for ex-
tensions must be filed prior to the expiration of the
period sought to be extended.

(b) On failure to file the brief within the time al-
lowed, the appeal shall stand dismissed.

Where the brief is not filed but an amend-
ment 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 pend-
ing 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

The record on appeal should be essentially
the record before the examiner at the time ap-
peal is taken. Thus, no amendments, except
under Rule 193 (b), presented after appeal has
been taken should be entered for purposes of
appeal, and no exception should be made to
this, see Rule 116(c). Amendments, argu-
ments, or affidavits filed concurrently with or
of even date with appeal notice will be con-
strued as filed after appeal for the purpose of
this procedure, even though they may be the
first response to the final action. In accordance

with Rule 195, affidavits or exhibits submitted
after the case has been appealed should be con-
sidered for entry only if applicant makes the
necessary showing why they were not earlier
presented; Rule 195 should be strictly construed
in this regard. If after appeal has been taken,
a paper is presented which on its face clearly
places the application in condition for allow-
ance, such paper should be entered and a notice
of allowability (POL-255) promptly sent to
applicant. If such paper does not on its face
place the application in condition for allowance,
it should not be considered further (unless in
the examiner's judgment there are only minor
matters which could be readily cleared up in a
telephone interview leading to a notice of allow-
ance) and proposed amendments therein should
not be entered. Notification that such papers
do not place the application in condition for
allowance will be made by use of a form letter
(POL-309).

In accordance with the above, the Brief
should be directed to the claims and to the
record of the case as they appeared upon filing
the appeal, but it may, of course, withdraw
from consideration on appeal any claims or is-
sues as desired by appellant.

Upon timely filing of a Brief, it will be re-
ferred to the examiner for his consideration of
its propriety as to the appeal issues and for
preparation of an Examiner's Answer if the
Brief is proper and the application is not allow-
able. The Examiner's Answer will normally
be of the shortened type referring to and rely-
ing on the final action; it may withdraw
rejection of claims or any objection or require-
ment as desired by the examiner. No new
ground of rejection or objection should be in-
corporated in the Examiner's Answer without
express approval in each case by the Group
Manager. See 1005. See 714.13 for procedure
on handling amendments filed after final action
and before appeal.

## 1208 Examiner's Answer

Rule 193. Examiner's answer. (a) The primary ex-
aminer 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.

Appealed cases in which the brief has been
filed should be reviewed by conference in the
Group, those participating being (1) a Primary
Examiner, (2) the Examiner charged with prep-
aration of the Examiner's Answer and (3) an-
other Examiner having sufficient experience to
be of assistance in the consideration of the
merits of the issues on appeal.

Where the Primary Examiner has, himself,
examined an application and made the final
rejection a conference relative to such a case, if
appealed, is discretionary with him.

If a conference is held, the Primary Exam-
iner should weigh the arguments of the other
Examiners but it is his responsibility to make
the final decision. During the conference, con-
sideration should be given to the possibility of
dropping cumulative art rejections and elimi-
nating technical rejections of doubtful value.

On the Examiner's Answer, the third person
(conferee) should place his initials below those
of the Examiner who prepared the Answer,
thus: ABC (conf.). This does not indicate,
necessarily, concurrence with the position taken
in the Answer.

If the Examiner charged with the responsi-
bility of preparing the Answer reaches the con-
clusion that the appeal should not be forwarded
and the Primary Examiner approves, no con-
ference is held.

Before preparing the answer, the Examiner
should make certain that all amendments ap-
proved for entry have in fact been physically
entered in the application. 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 ap-
pellant'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 appel-
lant's copy of the claims. The Examiner
should treat affidavits or exhibits in accordance
with Rule 195, reporting his conclusions only
on those admitted.

If the brief fails to respond to any ground of
rejection advanced by the Examiner, the Ex-
aminer should simply inform the Board of
Appeals of this fact in his Answer and specify
the particular claims affected. Since such lack

of response to any ground of rejection will re-
salt in dismissal of the appeal as to the claims
affected, the claims involved need not be treated
further by the Examiner in bis answer.

Because of the practice of the Patent Office
in entering amendments after final action un-
der justifiable circumstances for purpose of ap-
peal, many cases coming before the Board of
Appeals for consideration 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 re-
jected claims, or both. The new claims or fi-
nally rejected claims as amended frequently
contain limitations not in the claims treated in
the final rejection. The arguments in the ap-
pellant'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 compli-
cates the task of rendering a decision.

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 super-
sedes the former. Such a situation confuses

the issue and likewise poses difficulties for the
Board since it is not clear exactly what the
Examiner's ultimate position is.

In view of the complete and thorough
development of the issues at the time of final
rejection it is possible to save time in preparing
the Examiner's Answer required by Rule 193
by taking the following steps:

A. Examiners may incorporate in the answer
their statement of the grounds or rejection
merely by reference to the final rejection (or
other action on which it is based. 706.07).
Only those statements of grounds of rejection as
appear in a single prior action should be incor-
porated by reference. Statements of grounds
of rejection appearing in actions other than the
aforementioned single prior action should be
quoted in the answer. The page and paragraph
of the final action or other single prior action
which it is desired to incorporate by reference
should be explicitly identified. Of course, if
the examiner feels that some further explana-
tion of the rejection is necessary he should in-
clude it in the answer but ordinarily he may
avoid another recital of the issues and another
elaboration of the grounds of rejection. The
answer should also include any necessary rebut-
tal of arguments presented in the appellant's
brief if the final action does not adequately
meet the arguments.

1208.01

B. If the appellant (1) fails to describe the
invention, as required by Rule 192, or (2) fails
to describe the reference, the examinar is no
longer required to provide these omissions.
The examiner should, however, include such
description and explanation in the answer if he
feels it necessary to properly and effectively
present his case to the Board of Appeals.

The Examiner should reconsider his position
in the light of the arguments presented in the
brief, and should expressly withdraw any re-
jections not adhered to. This should be done
even though 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 ma-
chine, a statement of its mode of operation. In
certain cases where the pertinence of the ref-
erences 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 selec-
tion of the preferred or best ground. The
Board may also remand a case to the Exam-
iner for further search where it feels that the
most pertinent art has not been cited.

When files are forwarded, soft copies and
prints of references fastened therein should not
be disturbed. The Service Branch of the Board
will discard any unnecessary copies.

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

POL-84
IN RE APPLICATION OF

Ser. No.
Filed

Before the Board of Appeals
Appeal No.

For

# EXAMINER'S ANSWER

"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 the appellant's brief." (If
any claims are incorrect, they should be cor-
rectly reproduced in the answer.)

Statement as to any ground of rejection not
argued or responded to by applicant and the
particular claims affected by such lack of
response.

"The references of record relied on are:

1,736,481 Smith ________ 6-20
1,804.324
Jones
7-23

(In citing non-patent references, the current
location of the reference should be specified by
class and subclass or, if not classified, the par-

ticular location in the Office where a copy can
be found. In addition, the citation should spe-
cify the precise page or pages of the reference
relied on. Omit all references not involved in
the appeal.)

Statement of the grounds of rejection.

Reference to final rejection or prior action for
a clear exposition of the rejection. If necessary,
description and explanation of the alleged in-
vention and references to properly present the
Examiner's case.

Response to the allegations and arguments in
the brief not already met by the final rejection.
If a new ground of rejection is raised, see
1208.01.

For case having patentability report see
705.01 (a).

1208.01 New Reference, New Objec-
tion or New Ground of Rejec-
tion in Examiner's Answer

At the time of preparing his answer to an
appeal brief, the Examiner may decide that he
should cite a new reference, raise a new objec-
tion, or apply a new ground of rejection (new
reference, double patenting, statutory bar or
other reason for rejection) against some or all
of the appealed claims. The Group Manager's
approval must be obtained prior to writing the
Answer for any new reference or new ground
of rejection or objection incorporated in the
Examiner's Answer.

After prior approval of the Group Manager
is obtained, all Answers citing new references or
containing new grounds of rejection or objec-
tion must be routed over the Supervisory Pri-
mary Examiner's desk. These should then be
brought to the attention of the Manager for his
review and approval. The Manager will stamp
"approved" on the file copy, only, of the Answer
if it cites new art or applies a new ground of
rejection or objection and meets with his ap-
proval. If approval is given to the citation of
new references, the Answer will be mailed by
the Group and will include copies of the new
references. Reference Order Center will not be
involved in these actions. Also, a PO-892 must
be completed for the file for use by the printer
in case of issuance as a patent. The Board will
return to the Director's Office any Answer con-
taining (1) any newly cited reference ( for any
purpose) or (2) a new ground of rejection,
where such Answer does not bear an approved
stamp.

In order to introduce a new ground of re-
jection it is necessary either to reopen the ex
parte prosecution before the Examiner or to
include the new rejection in the Examiner's
Answer, depending on existing circumstances.
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 re-
sponse to be expected. For example, if the raf-
erence is basic and metarially better in meeting
all of the claims, reopening 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 standing allowed the prosecution should
be reopened.

Where a new ground of rejection is raised
in the Examiner's Answer, the Appellant, un-
der Rule 193(b) has sixty days within which
he may file a reply. The appellant's reply,
insofar as the new ground of rejection is con-
cerned, may include any amendment or mate-
rial 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 re-
mand, consideration will be limited to amend-
ments and facts pertinent to the new ground
of rejection.

It is important that the new ground with re-
gard to which the Group Manager has been
consulted be clearly indicated as such so that
the Board of Appeals can readily identify those
applications where the appellant is entitled to a
period of sixty days for reply. Any new refer-
ence should be cited under the caption "New
Reference(s)." The references of record relied
upon 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 in<
volving a new reference is raised for the first
time in the Answer after consultation with the
Group Manager 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 following 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 amendment or material appropri-
ate to the new ground and may request remand
to the Examiner to consider such amendment,
or material. Prosecution otherwise remains
closed. Failure to respond to the new ground
of rejection may be construed as an acquies-
cence in this rejection."

# 1208.02 Withdrawal of Final Rejee- tion [R-16]

The Examiner may withdraw the final re-
jection at any time prior to the mailing of the
Examiner's Answer. It is possible that after
reading the brief, the Examiner may be con-
vinced 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 Answer and confine
his arguments to the remaining rejected claims.
If he finds, upon reconsideration, that all the re-
jected claims are allowable, or where the ap-
plicant in his brief withdraws the appeal as
to some of the rejected claims and the Exam-
iner finds the remaining claims to be allowable,
he should notify the Board of this fact so that
the appeal may be removed from the records.
Moreover, the Board should be notified when-
ever the application is withdrawn from appeal
under any circumstance. See 706.07(c) to
706.07 (e).

In applications where an interference has re-
sulted from the applicant copying claims from
the patent which provided the basis for final re-
jection, the Examiner should notify the Board
of Appeals of the withdrawal of the rejection
based on that patent so that the appeal may be
dismissed as to the involved claims.

## 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 [R-16] JURISDICTION OF BOARD

Upon mailing of the Examiner's answer on
appeal, jurisdiction of the case with respect to
the appeal rests exclusively with the Board of
Appeals. Any amendment, affidavit, or other
paper relating to the appeal, filed thereafter
but prior to the decision of the Board, may be
considered by the Examiner only in the event
the case is remanded to him by the Board for
that purpose.

#### DIVIDED JURISDICTION

Where appeal is taken from the final rejec-,
tion of one or more copied claims only, jurisdic-

tion of the rest of the case remains with the Ex-
aminer, and prosecution of the remaining claims
may proceed as though the entire case was un-
der his jurisdiction. Also, where the Exam-
iner certifies in writing that there is no conflict
of subject matter, an appeal to the Board of
Appeal may proceed concurrently with an
interference.

## 1211 Remand by the Board To Con- sider Amendment

There is no obligation resting on the Board
to consider new or amended claims submitted
while it has jurisdiction of the appeal. In re
Sweet, 1943 C.D. 535; 556 O.G. 726. A pro-
posed amendment may be remanded for such
consideration as the Examiner may see fit to
give. Such an amendment, unless filed under
Rule 193 (b), will be treated in the same way
as an amendment after final rejection.

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
Clerk of Board being so notified in order that
the case may be removed from the Board's
docket.

## 1212 Remand To Consider Affidavits [R-16]

Rule 195. Affidavits after appeal. Affidavits or ex-
bibits 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 be-
fore the mailing of the Examiner's answer will
be considered for entry only if the applicant
makes the necessary showing under Rule 195 as
to why they were not earlier presented. Au-
thority from the Board is not necessary to con-
sider such affidavits. Affidavits filed as a first
response to a final rejection and prior to a notice
of appeal should be entered and considered
without a showing as to why they were not filed
earlier. Affidavits filed as a second response to
a final rejection and prior to a notice of appeal
should be entered and considered only if accom-
panied by a proper showing under Rule 116(b).
See 714.13.

In the case of affidavits filed after the mail-
ing of the Examiner's answer, the Examiner
is without authority to consider the same in the
absence of a remand by the Board. When a
case is remanded to the Examiner for the con-
sideration of such affidavits, the Examiner, after
having given 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 appellant. If such
an affidavit is not accompanied by the showing
required under Rule 195, the Examiner will not
consider its merits. If the delay in filing such
affidavit is satisfactorily explained, the Exam-
iner will admit the same and consider its
merits. If this affidavit is accepted as overcom-
ing 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 record, or having a publication date more
than one year prior to the applicant's filing
date, is found, it may be substituted 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
submitted for this purpose, not remanded to
the Examiner, are considered only as argu-
ments. In re Martin, 1946 C.D. 180; 586 O.G.
347.

### 1213 Decision by Board [R-16]

Extract of Rule 196. 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 [R-16]

Ertract of Rule 196. Decision by the Board of Ap-
peals. . . . (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.

If the Examiner knows of references or rea-
sons which were not before the Board, such a
favorable recommendation is not binding upon
him. Likewise, any change in a favorably rec-
ommended claim other than the amendments
recommended would tend to destroy the force
of such recommendation. Ex parte Young, 18
Gour. 24: 31.

In the absence of an express recommenda-
tion, 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 amend-
ment. 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.

## 1214 Actions Following Decision by Board

### 1214.01 New Ground of Rejection [R-16]

Extract from Rule 196. Decisions 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 considered 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 nee-
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 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;
1955 C.D. 3. A shortened period for response
may be set in the Board's decision.

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
or unless the rejection be overcome by a show-
ing 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 op-
tion, 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 [R-16]

Extract from Rule 197. Action following decision.
(a) After decision by the Board of Appeals, the case
shall be returned to the primary examiner, subject to
the applicant's right of appeal or other review, for such
further action by the applicant or by the primary ex-
aminer, 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 Clerk of Board notes the decision on
the file wrapper and in the record of appeals,
and then forwards the file to the Primary Ex-
aminer through the office of the Group Manager.

#### 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
effect, a new decision, and the Board of Ap-
peals so states.

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

#### 1214.04 Examiner Reversed [R-16]

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

meanwhile been transferred or assigned to an
Examiner other than the one who finally re-
jected the claims. The second Examiner
should give full faith and credit to his prede-
cessor's search. Of course, if the Examiner
has specific knowledge 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 Group Manager to
determine whether the Commissioner should
be requested to authorize the reopening of pros-
ecution under Rule 198 for the purpose of en-
tering the new rejection.

### 1214.05 Cancellation 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 nec-
essary to notify the applicant of the cancel-
lation of the withdrawn claims.

### 1214.06 Examiner Sustained in Whole or in Part [R-16]

Botract from Rule 197. Aotion following decision
. . . (c) 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 filled, 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 termi-
nated.

If the Examiner was sustained either in
whole or in part, it is improper to notify ap-
plicant of the status of the case unless asked
to do so. See Ex parte Buchenberg 1924 C.D.
55; 327 O.G. 216.

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 ex-
tension provided by Rule 304 in the event a peti-
tion for reconsideration or rehearing is sea-
sonably filed before the Board. When the time
for seeking court review (plus two weeks to al-
low for information as to the filing of an appeal
or civil action, if any, to reach the Examiner)

has passed without such review being sought,
the Examiner must take up the case for con-
sideration. The situations which can arise will
involve one or more of the following five circum-
stances :

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.

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 Deci-
sion" written in the margin in red ink.

If uncorrected matters of form which cannot
be handled without written correspondence re-
main in the case, the Examiner should take ap-
propriate 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 ex-
pired and no further action has been taken
by applicant, the proceedings as to the rejected
claims are considered terminated; see Rule 197
(c)."

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

(Set out formal matter(s) requiring cor-
rection.)

(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

# 1215.03

indicated 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 per-
mitted for court review, ordinarily sixty days
from the date of the decision, the Examiner
should proceed in the manner indicated for
situations A, B, or C, depending on which is
appropriate to the case. See 1213.01.

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
overlooked because every case, except those in
which all claims stand rejected after the
Board's decision, is up for action by the Ex-
aminer in the event no court review has been
sought. Consequently, 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 immediately 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 Exam-
iner should endorse on the amendatory paper a
recommendation that the amendment be ad-
mitted, and with the concurrence of the Group
Supervisor and approval by the appropriate
Director, the amendment will be entered.

Where the amendment cannot be entered, the
Examiner should write to the applicant noti-
fying him that the amendment, cannot be en-

tered 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."

In the event that claims stand allowed in the
case under the conditions set forth in 1214.06
(paragraph B), the case should be passed to
issue.

## 1215 Withdrawal or Dismissal of Ap- peal

## 1215.01 Withdrawal of Appeal

Where, after appeal has been filed and be-
fore decision by the Board of Appeals, an
appellant withdraws 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 with-
drawn 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. (Basis: Notice, Sept. 3, 1948.)

If a brief has been filed within the time per-
mitted by Rule 192 (or any extension thereof)
and appellant withdraws the appeal, the case
is returned to the Examiner. If there are no
allowed claims in the case, the Examiner writes
a letter of abandonment.

## 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 abandon-
ment of the application. but is considered a
withdrawal of the appealed claims and author-
ity to the Examiner to cancel the same. An
amendment canceling the appealed claims is
equivalent to a withdrawal of the appeal.

## 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 con-
tinues as to the remaining claims. The with-
drawn claims will be canceled by the Examiner
when necessary without further action by the
applicant.

## 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 dismissed is not an action in
the case and does not start any period for
reply. If no claims stand allowed the appli-
cation 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 ap-
plication, the failure to file a brief and conse-
quent dismissal of the appeal is to be treated
as a withdrawal of the appeal and of any
claim not standing allowed. The application
should be passed to issue forthwith when the
file is received from the Board of Appeals.
However, if formal matters remain to be at-
tended to, the Examine, should take appropri-
ate 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 termi-
nated; see Rule 197, third paragraph.

"This application will be passed to issue on
claims (identify) which stand allowed pro-
vided the following formal matter(s) is (are)
corrected. Prosecution is otherwise closed."

(Set out formal matter(s) requiring cor-
rection.)

(Set Shortened Statutory Period for re-
sponse.)

The time for filing the brief can be extended
as set forth in Rule 192. Any petition for such
extension must be received before the date the
brief is due or the expiration of a previously
granted extension and must show good cause
for the extension. If the time for filing the
brief has passed and the application has conse-
quently become abandoned, the applicant may
petition to revive the application, as in other
cases of abandonment, and to reinstate the ap-
peal: 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 So-
licitor and Law Examiners on behalf of the
Commissioner.

## 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 leading to the dismissal. In no
event will the application be considered aban-
doned as of a date prior to the date of the
dismissal by reason of the dismissal alone.

## 1216 Appeals to Courts

Files of cases carried to the courts, either by
appeal to the Court of Customs and Patent
Appeals 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 group 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

An applicant dissatisfied with the decision
of the Board of Appeals may within 60 days
of the date of the Board's decision file a "Notice
of Appeal" in the Patent Office.

When the Office of the Solicitor receives the
appeal, it acknowledges receipt of the notice
and requests that an order (called praecipe)
be filed within 20 days. The order or praecipe
states the exact papers to be certified which
forms the transcript of record that is trans-
mitted to the court.

The transcript of record, petition and fec
must be filed in the court within 40 days (exclu-
sive of Sundays and legal holidays) from the
date upon which said "Notice of Appeal" was
filed; provided the Commissioner does not
extend such time.

The appeal is docketed in the court if the
petition, transcript and fee are timely filed. If
not timely filed, there is no specific order of
dismissal by the court but the rules of the court
restore jurisdiction to the Patent Office. If no
claims stand allowed proceedings are consid-
ered terminated on the last day the petition,
transcript and fee were due (since up to this
day the case was alive and appellant could take
some action).

After restoration of jurisdiction to the Patent
Office the action taken by the examiner will
be the same as set forth in the paragraphs under
"Action Following Decision by Court".

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 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 deci-
sion on the appealed claims. This copy is a
duplicate of the uncertified copy first for-
warded, unless modified as a result of the peti-
tion for rehearing or, possibly, altered to cor-
rect some minor error. The receipt of this copy
by the Patent Office marks the conclusion of the
appeal. 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
becomes a part of the court record, it may of
course be inspected there by anyone.

The Solicitor enters the certified copy of the
Court's decision in the application file and
returns it to the Primary Examiner. The So-
licitor uses the uncertified copy as a basis for
publication of the decision in the Official
Gazette.

### ACTION FOLLOWING DECISION BY COURT

1\. All claims rejected. If all claims in the
case stand rejected. proceedings on the applica-
tion are considered terminated on the date of
receipt of the Court's certificate and the appli-
cation is not open to subsequent amendment
and prosecution by the applicant. The appli-
cation is no longer considered pending.

2\. 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 appli-
cant canceling the rejected claims is not con-
sidered 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
Examiner with an appropriate notation on the
margin, to avoid confusion of the printer.
However. if formal matters remain to be at-
tended to, the Examiner should take appro-
priate action on such matters, setting a short-
ened period for reply, but the application 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
matters if any should be taken care of and the
case passed for issue.

3\. 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 appro-
priate action on the matters thus brought up,
but the case is not considered open to further
prosecution except as to such matters.

## DISMISSAL OF APPEAL

After the appeal is docketed in the Court,
failure to prosecute the appeal, as by failure
to print the record or failure to file the brief,
will result in dismissal of the appeal by the
Court; or there may be a dismissal by the Court
at the request of the appellant. The proceed-
ings are considered terminated and the applica-
tion abandoned if applicable as of the date of
dismissal. see section 1215.05.

After dismissal, if no claims stand allowed
the action taken by the examiner will be the
same as set forth in paragraph 1 of the above
section; if claims stand allowed the action is
in accordance with paragraph 2.

## 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
original notice by the Solicitor and the appli-
cation is returned to the Examiner, whose
subsequent procedure is the same as his action
following appeal, described in 1216.01, supra.
If the exact date when proceedings were ter-
minated 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
complaint, 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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OCR transcription for search; preserved printed pages are authoritative

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