What happens if a petition to designate a new ground of rejection is granted?
If a petition to designate a new ground of rejection is granted, the following occurs: The appellant is given a two-month time period to file a reply under 37 CFR 1.111 to reopen prosecution before the primary examiner. No corrected examiner’s answer is provided. The appellant may present amendments, evidence, and/or arguments directed to other…
Read MoreWhat is the ‘claims appendix’ in a patent appeal brief?
The ‘claims appendix’ is a required component of a patent appeal brief, as specified in MPEP 1205.02. According to the MPEP: “An appendix containing a copy of the claims involved in the appeal.” Key points about the claims appendix: It should contain a clean copy of the claims. The claims should not include any markings…
Read MoreWhat options does an applicant have when faced with a new ground of rejection in an Examiner’s Answer?
What options does an applicant have when faced with a new ground of rejection in an Examiner’s Answer? When an applicant encounters a new ground of rejection in an Examiner’s Answer, they have two main options as outlined in MPEP 1207.03: Request reopening of prosecution: The applicant can file a reply under 37 CFR 1.111…
Read MoreWhat options does an appellant have after prosecution is reopened?
When prosecution is reopened after an appeal brief has been filed, the appellant has several options to avoid abandonment of the application. According to MPEP 1207.04, the options are: (A) file a reply under 37 CFR 1.111, if the Office action is non-final; (B) file a reply under 37 CFR 1.113, if the Office action…
Read MoreWhat are the appellant’s options when an Examiner’s Answer includes new grounds of rejection?
When an Examiner’s Answer includes new grounds of rejection, the appellant has two main options: Reopen prosecution: File a reply under 37 CFR 1.111 within two months of the Examiner’s Answer. Maintain the appeal: File a reply brief under 37 CFR 41.41 within two months of the Examiner’s Answer. The MPEP provides specific guidance: “Accordingly,…
Read MoreWhat options does an appellant have if a new ground of rejection is designated in an Examiner’s Answer?
When a new ground of rejection is designated in an Examiner’s Answer, the appellant has two options according to MPEP 1207.03: Reopen prosecution: The appellant can request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111 within two months from the mailing of the Examiner’s Answer. Maintain the…
Read MoreDoes withdrawing an appeal abandon the entire patent application?
No, withdrawing an appeal does not abandon the entire patent application if there are allowed claims. According to MPEP 1215.02: “If an application contains allowed claims, as well as claims on appeal, the withdrawal of the appeal does not operate as an abandonment of the application” This means that the application remains active with the…
Read MoreWhat are the requirements for an appeal brief in a patent application?
An appeal brief in a patent application must comply with the requirements set forth in 37 CFR 41.37. The key requirements include: Only one copy of the appeal brief is required. The brief must be filed within two months from the date of filing the notice of appeal. The appeal brief fee is $0.00. The…
Read MoreCan amendments be submitted with a reply brief in response to a new ground of rejection?
No, amendments cannot be submitted with a reply brief in response to a new ground of rejection. According to MPEP 1207.03(c): “A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is…
Read MoreCan a claim lost in interference be reinstated or modified instead of cancelled?
While MPEP 1302.04(d) briefly mentions “Cancellation of Claim Lost in Interference [R-08.2012] See MPEP Chapter 2300“, it doesn’t provide details on alternatives to cancellation. However, based on the practices outlined in MPEP Chapter 2300, there are some potential alternatives to outright cancellation: Modification: In some cases, the applicant may be able to modify the lost…
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