MPEP § 1215.04 — Dismissal of Appeal (Annotated Rules)
§1215.04 Dismissal of Appeal
This page consolidates and annotates all enforceable requirements under MPEP § 1215.04, 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.
Dismissal of Appeal
This section addresses Dismissal of Appeal. Primary authority: 37 CFR 41.37, 37 CFR 1.136(a)), and 37 CFR 1.136(a). Contains: 3 requirements, 7 guidance statements, 1 permission, and 2 other statements.
Key Rules
Grounds for Dismissal of Appeal
If no brief is filed within the time prescribed by 37 CFR 41.37, the appeal stands dismissed by operation of the rule. Unless appellant specifically withdraws the appeal as to rejected claims, the appeal should not be dismissed until the extended period (5 months of extension are available under 37 CFR 1.136(a)) to file the brief has expired.
If no brief is filed within the time prescribed by 37 CFR 41.37, the appeal stands dismissed by operation of the rule. Unless appellant specifically withdraws the appeal as to rejected claims, the appeal should not be dismissed until the extended period (5 months of extension are available under 37 CFR 1.136(a)) to file the brief has expired.
Applications having no allowed claims will be abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. However, as provided in MPEP § 1214.07, if an amendment has been filed which obviously places an application in condition for allowance, regardless of whether the amendment is filed with an RCE, the primary examiner may recommend that the amendment be entered. Note also MPEP § 1002.02(d), which requires the concurrence of the supervisory patent examiner.
Applications having no allowed claims will be abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. However, as provided in MPEP § 1214.07, if an amendment has been filed which obviously places an application in condition for allowance, regardless of whether the amendment is filed with an RCE, the primary examiner may recommend that the amendment be entered. Note also MPEP § 1002.02(d), which requires the concurrence of the supervisory patent examiner.
Applications having no allowed claims will be abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. However, as provided in MPEP § 1214.07, if an amendment has been filed which obviously places an application in condition for allowance, regardless of whether the amendment is filed with an RCE, the primary examiner may recommend that the amendment be entered. Note also MPEP § 1002.02(d), which requires the concurrence of the supervisory patent examiner.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
- (A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only.
- (B) Claims 1 – 3 are rejected. The examiner should hold the application abandoned.
- (C) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1. The examiner should hold the application abandoned.
- (D) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; independent claim 3 is allowed. If no amendment rewriting claim 2 in independent form has been filed, the examiner should cancel claims 1 and 2 and issue the application.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations (A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations (A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
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(B) Claims 1 – 3 are rejected.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
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The examiner should hold the application abandoned.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
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(C) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
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The examiner should hold the application abandoned.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
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(D) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; independent claim 3 is allowed.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
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If no amendment rewriting claim 2 in independent form has been filed, the examiner should cancel claims 1 and 2 and issue the application.
An appeal will also be dismissed if an applicant fails to timely and fully reply to a notice of noncompliance with 37 CFR 41.37(d). See MPEP § 1205.03 and 37 CFR 41.37(d). As in examples (B) – (C) above, if no allowed claims remain in an application, the application is abandoned as of the date the reply to the notice was due. The applicant may petition to revive the application as in other cases of abandonment, and to reinstate the appeal. If the appeal is dismissed, but allowed claims remain in the application, as in examples (A) and (D) above, the application is not abandoned; to reinstate the claims cancelled by the examiner because of the dismissal, the applicant must petition under 37 CFR 1.182 to reinstate the claims and the appeal, but a showing equivalent to a petition to revive under 37 CFR 1.137 is required. In either event, a proper reply to the notice of noncompliance must be filed before the petition will be considered on its merits.
An appeal will also be dismissed if an applicant fails to timely and fully reply to a notice of noncompliance with 37 CFR 41.37(d). See MPEP § 1205.03 and 37 CFR 41.37(d). As in examples (B) – (C) above, if no allowed claims remain in an application, the application is abandoned as of the date the reply to the notice was due. The applicant may petition to revive the application as in other cases of abandonment, and to reinstate the appeal. If the appeal is dismissed, but allowed claims remain in the application, as in examples (A) and (D) above, the application is not abandoned; to reinstate the claims cancelled by the examiner because of the dismissal, the applicant must petition under 37 CFR 1.182 to reinstate the claims and the appeal, but a showing equivalent to a petition to revive under 37 CFR 1.137 is required. In either event, a proper reply to the notice of noncompliance must be filed before the petition will be considered on its merits.
An appeal may be dismissed if an appellant fails to timely and fully reply to a substitute examiner’s answer which was written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a)(1). Pursuant to 37 CFR 41.50(a)(1), the appellant must, within two months, from the date of the substitute examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. If the appellant fails to timely and fully reply to the substitute examiner’s answer the appeal will be dismissed as to the claims subject to the rejection remanded by the Board and those claims cancelled. The examiner may use form paragraph 12.286 to inform the appellant of their options.
An appeal may be dismissed if an appellant fails to timely and fully reply to a substitute examiner’s answer which was written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a)(1). Pursuant to 37 CFR 41.50(a)(1), the appellant must, within two months, from the date of the substitute examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. If the appellant fails to timely and fully reply to the substitute examiner’s answer the appeal will be dismissed as to the claims subject to the rejection remanded by the Board and those claims cancelled. The examiner may use form paragraph 12.286 to inform the appellant of their options.
If formal matters remain to be attended to, the examiner should take appropriate action on such matters. For example (1) the examiner may handle the formal matters by examiner’s amendment (see MPEP § 1302.04) or (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant is required to correct and set a shortened period for reply. Note that further prosecution on the application or reexamination proceeding is closed except as to such formal matters.
If formal matters remain to be attended to, the examiner should take appropriate action on such matters. For example (1) the examiner may handle the formal matters by examiner’s amendment (see MPEP § 1302.04) or (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant is required to correct and set a shortened period for reply. Note that further prosecution on the application or reexamination proceeding is closed except as to such formal matters.
Revival Petition Requirements
An appeal will also be dismissed if an applicant fails to timely and fully reply to a notice of noncompliance with 37 CFR 41.37(d). See MPEP § 1205.03 and 37 CFR 41.37(d). As in examples (B) – (C) above, if no allowed claims remain in an application, the application is abandoned as of the date the reply to the notice was due. The applicant may petition to revive the application as in other cases of abandonment, and to reinstate the appeal. If the appeal is dismissed, but allowed claims remain in the application, as in examples (A) and (D) above, the application is not abandoned; to reinstate the claims cancelled by the examiner because of the dismissal, the applicant must petition under 37 CFR 1.182 to reinstate the claims and the appeal, but a showing equivalent to a petition to revive under 37 CFR 1.137 is required. In either event, a proper reply to the notice of noncompliance must be filed before the petition will be considered on its merits.
An appeal will also be dismissed if an applicant fails to timely and fully reply to a notice of noncompliance with 37 CFR 41.37(d). See MPEP § 1205.03 and 37 CFR 41.37(d). As in examples (B) – (C) above, if no allowed claims remain in an application, the application is abandoned as of the date the reply to the notice was due. The applicant may petition to revive the application as in other cases of abandonment, and to reinstate the appeal. If the appeal is dismissed, but allowed claims remain in the application, as in examples (A) and (D) above, the application is not abandoned; to reinstate the claims cancelled by the examiner because of the dismissal, the applicant must petition under 37 CFR 1.182 to reinstate the claims and the appeal, but a showing equivalent to a petition to revive under 37 CFR 1.137 is required. In either event, a proper reply to the notice of noncompliance must be filed before the petition will be considered on its merits.
Ex Parte Appeals to PTAB
As provided in 37 CFR 41.45(b) and MPEP § 1208.01, if the appeal forwarding fee set forth in 37 CFR 41.20(b)(4) is not paid within the period set forth in 37 CFR 41.45(a), the appeal will stand dismissed.
An appeal may be dismissed if an appellant fails to timely and fully reply to a substitute examiner’s answer which was written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a)(1). Pursuant to 37 CFR 41.50(a)(1), the appellant must, within two months, from the date of the substitute examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. If the appellant fails to timely and fully reply to the substitute examiner’s answer the appeal will be dismissed as to the claims subject to the rejection remanded by the Board and those claims cancelled. The examiner may use form paragraph 12.286 to inform the appellant of their options.
Examiner's Answer Content
As provided in MPEP § 1207.03, with TC Director approval, 37 CFR 41.39(a)(2) permits the entry of new grounds of rejection in an examiner’s answer. If the appellant does not timely respond to the examiner’s answer, form paragraph 12.279.02 may be used to dismiss the appeal as to the claims subject to the new grounds of rejection.
As provided in MPEP § 1207.03, with TC Director approval, 37 CFR 41.39(a)(2) permits the entry of new grounds of rejection in an examiner’s answer. If the appellant does not timely respond to the examiner’s answer, form paragraph 12.279.02 may be used to dismiss the appeal as to the claims subject to the new grounds of rejection.
Ex Parte Reexamination
If formal matters remain to be attended to, the examiner should take appropriate action on such matters. For example (1) the examiner may handle the formal matters by examiner’s amendment (see MPEP § 1302.04) or (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant is required to correct and set a shortened period for reply. Note that further prosecution on the application or reexamination proceeding is closed except as to such formal matters.
If formal matters remain to be attended to, the examiner should take appropriate action on such matters. For example (1) the examiner may handle the formal matters by examiner’s amendment (see MPEP § 1302.04) or (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant is required to correct and set a shortened period for reply. Note that further prosecution on the application or reexamination proceeding is closed except as to such formal matters.
Amendments in Reexamination
If formal matters remain to be attended to, the examiner should take appropriate action on such matters. For example (1) the examiner may handle the formal matters by examiner’s amendment (see MPEP § 1302.04) or (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant is required to correct and set a shortened period for reply. Note that further prosecution on the application or reexamination proceeding is closed except as to such formal matters.
If formal matters remain to be attended to, the examiner should take appropriate action on such matters. For example (1) the examiner may handle the formal matters by examiner’s amendment (see MPEP § 1302.04) or (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant is required to correct and set a shortened period for reply. Note that further prosecution on the application or reexamination proceeding is closed except as to such formal matters.
Petition to Revive (37 CFR 1.137)
An appeal will also be dismissed if an applicant fails to timely and fully reply to a notice of noncompliance with 37 CFR 41.37(d). See MPEP § 1205.03 and 37 CFR 41.37(d). As in examples (B) – (C) above, if no allowed claims remain in an application, the application is abandoned as of the date the reply to the notice was due. The applicant may petition to revive the application as in other cases of abandonment, and to reinstate the appeal. If the appeal is dismissed, but allowed claims remain in the application, as in examples (A) and (D) above, the application is not abandoned; to reinstate the claims cancelled by the examiner because of the dismissal, the applicant must petition under 37 CFR 1.182 to reinstate the claims and the appeal, but a showing equivalent to a petition to revive under 37 CFR 1.137 is required. In either event, a proper reply to the notice of noncompliance must be filed before the petition will be considered on its merits.
Appeal Brief Timing
An appeal may be dismissed if an appellant fails to timely and fully reply to a substitute examiner’s answer which was written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a)(1). Pursuant to 37 CFR 41.50(a)(1), the appellant must, within two months, from the date of the substitute examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. If the appellant fails to timely and fully reply to the substitute examiner’s answer the appeal will be dismissed as to the claims subject to the rejection remanded by the Board and those claims cancelled. The examiner may use form paragraph 12.286 to inform the appellant of their options.
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
In view of applicant’s failure to file a brief within the time prescribed by 37 CFR 41.37(a) , the appeal stands dismissed and the proceedings as to the rejected claims are considered terminated. See 37 CFR 1.197(b) .
This application will be passed to issue on allowed claim [1] provided the following formal matters are corrected. Prosecution is otherwise closed.
[2]
Applicant is required to make the necessary corrections within a shortened statutory period set to expire TWO (2) MONTHS from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136 but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).
- Appeal Dismissed Without Brief
- Appeal Not to Be Dismissed Without Brief
- Requirement for Timely and Full Reply to Notice of Noncompliance
- Application Abandoned If No Allowed Claims Remain
- Petition to Revive Application After Noncompliance
- Reinstating Claims After Dismissed Appeal With Allowed Claims
- Proper Reply Required Before Merits Consideration
- Appeal Will Stand Dismissed Without Forwarding Fee
Appellant failed to timely respond to the substitute examiner’s answer mailed on [1] that was written in response to a remand by the Board for further consideration of a rejection. Under 37 CFR 41.50(a)(2) , appellant must, within two months from the date of the substitute examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111 ; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41 , to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.50(a)(2) , the appeal as to claims [2] is dismissed, and these claims are canceled .
Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.
- Requirement for Timely and Full Reply to Notice of Noncompliance
- Application Abandoned If No Allowed Claims Remain
- Petition to Revive Application After Noncompliance
- Reinstating Claims After Dismissed Appeal With Allowed Claims
- Proper Reply Required Before Merits Consideration
- Appeal Dismissed Without Brief
- Appeal Not to Be Dismissed Without Brief
- Appeal Will Stand Dismissed Without Forwarding Fee
Citations
| Primary topic | Citation |
|---|---|
| Appeal Brief Timing Ex Parte Appeals to PTAB Grounds for Dismissal of Appeal | 37 CFR § 1.111 |
| Grounds for Dismissal of Appeal | 37 CFR § 1.136(a) |
| Grounds for Dismissal of Appeal Petition to Revive (37 CFR 1.137) Revival Petition Requirements | 37 CFR § 1.137 |
| Grounds for Dismissal of Appeal Petition to Revive (37 CFR 1.137) Revival Petition Requirements | 37 CFR § 1.182 |
| Ex Parte Appeals to PTAB | 37 CFR § 41.20(b)(4) |
| Grounds for Dismissal of Appeal | 37 CFR § 41.37 |
| Grounds for Dismissal of Appeal Petition to Revive (37 CFR 1.137) Revival Petition Requirements | 37 CFR § 41.37(d) |
| Examiner's Answer Content | 37 CFR § 41.39(a)(2) |
| Appeal Brief Timing Ex Parte Appeals to PTAB Grounds for Dismissal of Appeal | 37 CFR § 41.41 |
| Ex Parte Appeals to PTAB | 37 CFR § 41.45(a) |
| Ex Parte Appeals to PTAB | 37 CFR § 41.45(b) |
| Appeal Brief Timing Ex Parte Appeals to PTAB Grounds for Dismissal of Appeal | 37 CFR § 41.50(a)(1) |
| Grounds for Dismissal of Appeal | MPEP § 1002.02(d) |
| Grounds for Dismissal of Appeal Petition to Revive (37 CFR 1.137) Revival Petition Requirements | MPEP § 1205.03 |
| Examiner's Answer Content | MPEP § 1207.03 |
| Ex Parte Appeals to PTAB | MPEP § 1208.01 |
| Grounds for Dismissal of Appeal | MPEP § 1214.07 |
| – | MPEP § 1215.04 |
| Amendments in Reexamination Ex Parte Reexamination Grounds for Dismissal of Appeal | MPEP § 1302.04 |
| Amendments in Reexamination Ex Parte Reexamination Grounds for Dismissal of Appeal | Form Paragraph § 12.209 |
| Examiner's Answer Content | Form Paragraph § 12.279.02 |
| Appeal Brief Timing Ex Parte Appeals to PTAB Grounds for Dismissal of Appeal | Form Paragraph § 12.286 |
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 § 1215.04 — Dismissal of Appeal
Source: USPTO1215.04 Dismissal of Appeal [R-10.2019]
I. DISMISSAL BECAUSE NO BRIEF WAS FILEDIf no brief is filed within the time prescribed by 37 CFR 41.37, the appeal stands dismissed by operation of the rule. Unless appellant specifically withdraws the appeal as to rejected claims, the appeal should not be dismissed until the extended period (5 months of extension are available under 37 CFR 1.136(a)) to file the brief has expired.
Applications having no allowed claims will be abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. However, as provided in MPEP § 1214.07, if an amendment has been filed which obviously places an application in condition for allowance, regardless of whether the amendment is filed with an RCE, the primary examiner may recommend that the amendment be entered. Note also MPEP § 1002.02(d), which requires the concurrence of the supervisory patent examiner.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
- (A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only.
- (B) Claims 1 – 3 are rejected. The examiner should hold the application abandoned.
- (C) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1. The examiner should hold the application abandoned.
- (D) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; independent claim 3 is allowed. If no amendment rewriting claim 2 in independent form has been filed, the examiner should cancel claims 1 and 2 and issue the application.
If formal matters remain to be attended to, the examiner should take appropriate action on such matters. For example (1) the examiner may handle the formal matters by examiner’s amendment (see MPEP § 1302.04) or (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant is required to correct and set a shortened period for reply. Note that further prosecution on the application or reexamination proceeding is closed except as to such formal matters.
¶ 12.209 Appeal Dismissed – Allowed Claims, Formal Matters Remaining
In view of applicant’s failure to file a brief within the time prescribed by 37 CFR 41.37(a), the appeal stands dismissed and the proceedings as to the rejected claims are considered terminated. See 37 CFR 1.197(b).
This application will be passed to issue on allowed claim [1] provided the following formal matters are corrected. Prosecution is otherwise closed.
[2]
Applicant is required to make the necessary corrections within a shortened statutory period set to expire TWO (2) MONTHS from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136 but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133).
Examiner Note:
- 1. For use if the notice of appeal was filed on or after January 23, 2012.
- 2. This form paragraph should only be used if the formal matters cannot be handled by examiner’s amendment. See MPEP § 1215.04.
- 3. In bracket 2, insert a description of the formal matters to be corrected.
- 4. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected. See MPEP § 1215.04.
An appeal will also be dismissed if an applicant fails to timely and fully reply to a notice of noncompliance with 37 CFR 41.37(d). See MPEP § 1205.03 and 37 CFR 41.37(d). As in examples (B) – (C) above, if no allowed claims remain in an application, the application is abandoned as of the date the reply to the notice was due. The applicant may petition to revive the application as in other cases of abandonment, and to reinstate the appeal. If the appeal is dismissed, but allowed claims remain in the application, as in examples (A) and (D) above, the application is not abandoned; to reinstate the claims cancelled by the examiner because of the dismissal, the applicant must petition under 37 CFR 1.182 to reinstate the claims and the appeal, but a showing equivalent to a petition to revive under 37 CFR 1.137 is required. In either event, a proper reply to the notice of noncompliance must be filed before the petition will be considered on its merits.
III. DISMISSAL BECAUSE APPEAL FORWARDING FEE WAS NOT PAIDAs provided in 37 CFR 41.45(b) and MPEP § 1208.01, if the appeal forwarding fee set forth in 37 CFR 41.20(b)(4) is not paid within the period set forth in 37 CFR 41.45(a), the appeal will stand dismissed.
Applications having no allowed claims will be abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected. However, as provided in MPEP § 1214.07, if an amendment has been filed which obviously places an application in condition for allowance, regardless of whether the amendment is filed with an RCE, the primary examiner may recommend that the amendment be entered. Note also MPEP § 1002.02(d), which requires the concurrence of the supervisory patent examiner.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
- (A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only.
- (B) Claims 1 – 3 are rejected. The examiner should hold the application abandoned.
- (C) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1. The examiner should hold the application abandoned.
- (D) Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; independent claim 3 is allowed. If no amendment rewriting claim 2 in independent form has been filed, the examiner should cancel claims 1 and 2 and issue the application.
If formal matters remain to be attended to, the examiner should take appropriate action on such matters. For example (1) the examiner may handle the formal matters by examiner’s amendment (see MPEP § 1302.04) or (2) the examiner may use form paragraph 12.209 to describe the formal matters that applicant is required to correct and set a shortened period for reply. Note that further prosecution on the application or reexamination proceeding is closed except as to such formal matters.
IV. DISMISSAL AS TO CLAIMS SUBJECTED TO NEW GROUNDS OF REJECTION IN EXAMINER’S ANSWERAs provided in MPEP § 1207.03, with TC Director approval, 37 CFR 41.39(a)(2) permits the entry of new grounds of rejection in an examiner’s answer. If the appellant does not timely respond to the examiner’s answer, form paragraph 12.279.02 may be used to dismiss the appeal as to the claims subject to the new grounds of rejection.
¶ 12.279.02 Dismissal Following New Ground(s) of Rejection in Examiner’s Answer
Appellant failed to timely respond to the examiner’s answer mailed on [1] that included a new ground of rejection. Under 37 CFR 41.39(b) , if an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must, within two months from the date of the examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, addressing each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.39, the appeal as to claims [2] is dismissed, and these claims are canceled.
Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.
Examiner Note:
- 1. For use if the notice of appeal was filed on or after January 23, 2012.
- 2. In bracket 1, insert the mailing date of the examiner’s answer.
- 3. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
- 4. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.
An appeal may be dismissed if an appellant fails to timely and fully reply to a substitute examiner’s answer which was written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a)(1) . Pursuant to 37 CFR 41.50(a)(1) , the appellant must, within two months, from the date of the substitute examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. If the appellant fails to timely and fully reply to the substitute examiner’s answer the appeal will be dismissed as to the claims subject to the rejection remanded by the Board and those claims cancelled. The examiner may use form paragraph 12.286 to inform the appellant of their options .
¶ 12.286 Dismissal Following A Substitute Examiner’s Answer Written in Response to a Remand for Further Consideration of a Rejection
Appellant failed to timely respond to the substitute examiner’s answer mailed on [1] that was written in response to a remand by the Board for further consideration of a rejection. Under 37 CFR 41.50(a)(2), appellant must, within two months from the date of the substitute examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.50(a)(2), the appeal as to claims [2] is dismissed, and these claims are canceled.
Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.
Examiner Note:
- 1. For use if the notice of appeal was filed on or after January 23, 2012.
- 2. In bracket 1, insert the mailing date of the substitute examiner’s answer.
- 3. In bracket 2, insert the claim numbers of the claims subject to the rejection for which the Board has remanded the proceeding.
- 4. In bracket 3, insert the claim numbers of the claims that are not subject to the rejection.