MPEP § 1215.03 — Partial Withdrawal (Annotated Rules)
§1215.03 Partial Withdrawal
This page consolidates and annotates all enforceable requirements under MPEP § 1215.03, 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.
Partial Withdrawal
This section addresses Partial Withdrawal. Primary authority: 37 CFR 41.31(c), 37 CFR 41.50(a), and 37 CFR 1.111. Contains: 1 requirement and 1 permission.
Key Rules
Notice of Appeal Filing
If an appellant wishes to remove claims from consideration on appeal, the appellant must submit an amendment to cancel the claims from the application. See 37 CFR 41.31(c) and 41.33. An appellant may, of course, choose not to present arguments or rely upon particular evidence as to certain claim rejections; however, such arguments and evidence are waived for purposes of the appeal and the Board may summarily sustain any grounds of rejections not argued. See MPEP §§ 1205.02 and 1214.05.
Reply Brief Filing
If appellant fails to respond to a new ground of rejection made in an examiner’s answer by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the examiner’s answer, the appeal will be sua sponte dismissed by the Board as to the claims subject to the new ground of rejection.
New Ground of Rejection by Board
Similarly, if appellant fails to respond to a substitute examiner’s answer that is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a) by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the substitute examiner's answer, the appeal will sua sponte dismissed by the Board as to the claims subject to the rejection for which the Board has remanded the proceeding. Such substitute examiner’s answer may also include a new ground of rejection.
Citations
| Primary topic | Citation |
|---|---|
| New Ground of Rejection by Board Reply Brief Filing | 37 CFR § 1.111 |
| Notice of Appeal Filing | 37 CFR § 41.31(c) |
| New Ground of Rejection by Board | 37 CFR § 41.50(a) |
| Notice of Appeal Filing | 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 § 1215.03 — Partial Withdrawal
Source: USPTO1215.03 Partial Withdrawal [R-11.2013]
If an appellant wishes to remove claims from consideration on appeal, the appellant must submit an amendment to cancel the claims from the application. See 37 CFR 41.31(c) and 41.33. An appellant may, of course, choose not to present arguments or rely upon particular evidence as to certain claim rejections; however, such arguments and evidence are waived for purposes of the appeal and the Board may summarily sustain any grounds of rejections not argued. See MPEP §§ 1205.02 and 1214.05.
If appellant fails to respond to a new ground of rejection made in an examiner’s answer by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the examiner’s answer, the appeal will be sua sponte dismissed by the Board as to the claims subject to the new ground of rejection.
Similarly, if appellant fails to respond to a substitute examiner’s answer that is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a) by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the substitute examiner’s answer, the appeal will sua sponte dismissed by the Board as to the claims subject to the rejection for which the Board has remanded the proceeding. Such substitute examiner’s answer may also include a new ground of rejection.