How does the reversal of an examiner’s decision by the Board affect unappealed claims?
When the Board reverses an examiner’s decision on appealed claims, it can have significant implications for unappealed claims. MPEP 1214.05 states: “Where, in an appeal brief filed before January 23, 2012, an appellant withdraws some of the appealed claims (i.e., claims subject to a ground of rejection that the appellant did not present for review in the brief), and the Board reverses the examiner on the remaining appealed claims, the withdrawal is treated as an authorization to cancel the withdrawn claims.”
This means that if the Board reverses the examiner’s rejection on the appealed claims, any claims that were withdrawn or not presented for review in the appeal brief may be cancelled. The reversal of the examiner’s decision on some claims does not automatically preserve or reinstate claims that were not part of the appeal.
To learn more: