What should be included in an appellant brief for an inter partes reexamination?
An appellant brief for an inter partes reexamination must include several key elements as specified in 37 CFR 41.67(c)(1). The MPEP states: “37 CFR 41.67(c)(1) requires that the appellant shall provide, in the appellant brief, the authorities and arguments on which the appellant will rely to maintain the appeal, a concise explanation of subject matter…
Read MoreWhat happens after a reply brief is filed in response to an Examiner’s Answer?
After a reply brief is filed in response to an Examiner’s Answer, the jurisdiction over the appeal passes to the Board. According to MPEP § 2275: “After receipt of a reply brief in compliance with 37 CFR 41.41 or the expiration of the time in which to file such a reply brief (37 CFR 41.35),…
Read MoreHow should an examiner handle withdrawn rejections in an Examiner’s Answer?
When handling withdrawn rejections in an Examiner’s Answer, an examiner should: List withdrawn rejections under the subheading “WITHDRAWN REJECTIONS” Explain which rejections are being withdrawn and why Update the status of affected claims if all rejections on a claim are withdrawn The MPEP states: “Under the subheading ‘WITHDRAWN REJECTIONS,’ the examiner should list any grounds…
Read MoreCan I withdraw my Pre-Appeal Brief Request?
Can I withdraw my Pre-Appeal Brief Request? Yes, you can withdraw your Pre-Appeal Brief Request. The MPEP states, Applicants may request to withdraw the appeal by filing a request for continued examination (RCE) under 37 CFR 1.114 with the appropriate fee. (MPEP 1204.02) Here are some key points about withdrawing a Pre-Appeal Brief Request: Filing…
Read MoreWhat happens if an Administrative Patent Judge becomes unavailable during the rehearing process?
The MPEP 1214.03 addresses the situation where an Administrative Patent Judge (APJ) becomes unavailable during the rehearing process. It states: “Should an Administrative Patent Judge (APJ) retire or otherwise become unavailable to reconsider a decision, normally another APJ will be designated as a substitute for the unavailable APJ.” This procedure ensures that: The rehearing process…
Read MoreWhat happens if an appellant doesn’t argue a non-statutory double patenting rejection in their appeal brief?
If an appellant doesn’t argue a non-statutory double patenting (NSDP) rejection in their appeal brief, the examiner should: Maintain the rejection in the Examiner’s Answer Include a warning about potential consequences The MPEP provides a form paragraph (FP 12.278) for this situation, which states in part: “This appeal includes a rejection of claims [1] which…
Read MoreWhat is the time limit for responding to a substitute examiner’s answer after a Board remand?
According to MPEP § 1211.01, the appellant has TWO MONTHS from the date of the substitute examiner’s answer to respond. The MPEP states: “The appellant must within TWO MONTHS from the date of the substitute examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the…
Read MoreWhat is the time limit for responding to a new ground of rejection in an examiner’s answer?
According to MPEP 1207.03(c), the appellant has two months from the date of the examiner’s answer to respond to a new ground of rejection. The MPEP states: “The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c)…
Read MoreWhat is the ‘summary of claimed subject matter’ in a patent appeal brief?
The ‘summary of claimed subject matter’ is a required component of a patent appeal brief, as outlined in MPEP 1205.02. According to the MPEP, it should include: “A concise explanation of the subject matter defined in each of the rejected independent claims, which shall refer to the specification in the Record by page and line…
Read MoreHow does a substitute examiner’s answer affect a patent appeal?
A substitute examiner’s answer can significantly impact a patent appeal. MPEP 1215.03 states: “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…
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