How is an application handled when no claims stand allowed after a Board decision?
When no claims stand allowed after a Board decision, the following procedure applies: The proceedings in the application are terminated as of the date when the time for filing a court action expires. The application is no longer considered pending. A Notice of Abandonment should be prepared and mailed once the period for seeking review…
Read MoreWhat are the fee requirements if an applicant elects to reopen prosecution after a Board decision?
If an applicant elects to reopen prosecution after a Board decision, they would have to pay the appeal fees if a new appeal is subsequently filed. The MPEP states: “Moreover, if applicant elects to reopen prosecution under 37 CFR 41.50(a)(2)(ii) or 41.50(b)(1) after a decision by the Board, then applicant would have to pay the…
Read MoreWhat happens if an appellant files both an amendment and a request for rehearing in response to a new ground of rejection?
When an appellant files both an amendment (or new evidence) and a request for rehearing in response to a new ground of rejection, the treatment depends on whether this is done for all or only some of the rejected claims. The MPEP provides guidance on this situation: “If an appellant files an appropriate amendment or…
Read MoreWhat is the procedure when claims stand allowed after a Board decision?
When claims stand allowed after a Board decision, the following procedure applies: The appellant is not required to file a reply. The examiner issues the application or ex parte reexamination certificate on the claims which stand allowed. The examiner may cancel rejected claims by examiner’s amendment. The MPEP states: The appellant is not required to…
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