MPEP § 1214.05 — Cancellation of Claims Not Appealed (Annotated Rules)
§1214.05 Cancellation of Claims Not Appealed
This page consolidates and annotates all enforceable requirements under MPEP § 1214.05, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Cancellation of Claims Not Appealed
This section addresses Cancellation of Claims Not Appealed.
Key Rules
Notice of Appeal Filing
Pursuant to 37 CFR 41.31(c), an appeal is presumed to be taken from the rejection of all claims. 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reverses the examiner on the remaining appealed claims, the withdrawal is treated as an authorization to cancel the withdrawn claims. It is necessary for the examiner to notify the appellant of the cancellation of the withdrawn claims. See MPEP § 1205.02.
PTAB Jurisdiction
Pursuant to 37 CFR 41.31(c), an appeal is presumed to be taken from the rejection of all claims. 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reverses the examiner on the remaining appealed claims, the withdrawal is treated as an authorization to cancel the withdrawn claims. It is necessary for the examiner to notify the appellant of the cancellation of the withdrawn claims. See MPEP § 1205.02.
Citations
| Primary topic | Citation |
|---|---|
| Notice of Appeal Filing PTAB Jurisdiction | 37 CFR § 41.31(c) |
| Notice of Appeal Filing PTAB Jurisdiction | MPEP § 1205.02 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 1214.05 — Cancellation of Claims Not Appealed
Source: USPTO1214.05 Cancellation of Claims Not Appealed [R-11.2013]
Pursuant to 37 CFR 41.31(c), an appeal is presumed to be taken from the rejection of all claims. 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. It is necessary for the examiner to notify the appellant of the cancellation of the withdrawn claims. See MPEP § 1205.02.