How are non-elected claims handled after a Board decision?

When handling non-elected claims after a Board decision: If elected claims are in condition for allowance, non-elected claims should be considered for rejoinder. If the Board reverses all rejections of a generic claim, pending claims drawn to non-elected species must be acted upon. Exception: If the examiner reopens prosecution with a new ground of rejection…

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Can an appellant request multiple rehearings?

Generally, an appellant is limited to a single request for rehearing. However, there is a specific exception to this rule. According to MPEP 1214.03: “No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the…

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What is the examiner’s responsibility regarding cancelled claims after a Board decision?

After a Board decision in a patent appeal, the examiner has specific responsibilities regarding cancelled claims. According to MPEP 1214.05, “It is necessary for the examiner to notify the appellant of the cancellation of the withdrawn claims.” This means that if claims are considered withdrawn and subsequently cancelled due to the appellant not presenting them…

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What actions can an examiner take if the Board affirms some rejections but reverses others?

When the Board affirms some rejections but reverses others in a patent application, the examiner has several options. According to MPEP 1214, the examiner should take one of the following actions: Allow the application: If the affirmed rejection(s) can be overcome by an examiner’s amendment, the examiner may allow the application after obtaining approval from…

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What are the consequences of requesting a rehearing instead of filing an amendment in response to a new ground of rejection?

When an appellant chooses to request a rehearing under 37 CFR 41.50(b)(2) instead of filing an amendment or new evidence under 37 CFR 41.50(b)(1), there are significant consequences. The MPEP outlines these consequences: “By proceeding in this manner, the appellant waives their right to further prosecution before the examiner. In re Greenfield, 40 F.2d 775,…

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What happens if the Board reverses the examiner’s rejection in a patent application?

When the Board reverses the examiner’s rejection in a patent application, the following procedures apply: The application is returned to the examiner. The examiner must take action consistent with the Board’s decision. If the Board’s decision includes an approval for claims, those claims should be allowed. The examiner must follow the Board’s instructions for any…

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What happens when the Board affirms the examiner’s rejection but reverses rejections on dependent claims?

When the Board affirms a rejection against independent claims but reverses all rejections against dependent claims, the examiner has two options after the period for further appeal expires: Convert the dependent claims into independent form by examiner’s amendment, cancel all claims with affirmed rejections, and issue the application. Set a 2-month time limit for the…

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What constitutes an “appropriate amendment” when responding to a new ground of rejection by the Board?

An “appropriate amendment” in response to a new ground of rejection by the Board is one that addresses the specific issues raised in the new rejection. The MPEP provides guidance on what constitutes an appropriate amendment: “An amendment is ‘appropriate’ under the rule if it amends one or more of the claims rejected, or substitutes…

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