1. Appeal Practice Refresher Office of Patent Training

2. 03-24-11Refresher- Appeals Practice2 Objectives You will gain knowledge on the following: The Appellate review process of an application The contents of an Appeal and how it is processed in the USPTO The contents of an Examiner’s Answer How to properly submit an Examiner’s Answer What happens when the case passes to the BPAI

3. 03-24-11Refresher- Appeals Practice3 Appeal Practice and Examiner’s Answer MPEP Chapter 1200

4. 03-24-11Refresher- Appeals Practice4 Appellate Review

5. 03-24-11Refresher- Appeals Practice5 Court Review of an Issued Patent Patent Examiner Issued Patent Presumed Valid 35 USC § 282 Infringement Action U.S. District Court Appeal U.S. Court of Appeals for the Federal Circuit U.S. Supreme Court | | | |

6. 03-24-11Refresher- Appeals Practice6 Elements of an Appeal Notice of Appeal (37 CFR 41.31) Pre-Appeal Brief Conference Request- Optional (See: 1296 Off. Gaz. Pat. Office 67 (July 12, 2005)) Appeal Brief (37 CFR 41.37) Examiner’s Answer (37 CFR 41.39) Reply Brief - Optional (37 CFR 41.41) Examiner’s Response to Reply Brief Supplemental Examiner’s Answer- Optional Request for Oral Hearing - Optional Board of Patent Appeals and Interferences (BPAI) Decision Request for Rehearing- Optional (37 CFR 41.52)

7. 03-24-11Refresher- Appeals Practice7 Notice of Appeal Patent Appeal Center reviews the Notice of Appeal for timeliness and determines whether the proper fee is paid. Patent Appeal Center will notify Appellant of any defect in a Notice of Appeal via form PTOL-461. See: MPEP §1204; 35 USC §134 and 37 CFR §41.31

8. 03-24-11Refresher- Appeals Practice8 Pre-Appeal Brief Request Pre-Appeal Brief Requests must be filed concurrently with the filing of the Notice of Appeal and prior to filing the Appeal Brief. The Patent Appeal Center will enter the Pre- Appeal Brief Requests for review (PTO/SB/33) and determine whether the requests comply with the submission requirements. See: Pre-Appeal Brief Conference Pilot Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005). Patent Appeal Center will notify Appellant of any defect in a Pre-Appeal Brief Request.

9. 03-24-11Refresher- Appeals Practice9 Pre-Appeal Brief Request (cont.) Request should specify clear errors in fact in the examiner’s rejections or the examiner’s omissions of one or more essential elements needed for a prima facie rejection Requests are limited to appealable, not petitionable matters After a Conference is held, a response to the Request should be mailed within 45 days of receipt of the Request

10. 03-24-11Refresher- Appeals Practice10 Papers Filed After Notice of Appeal Amendments filed after the filing date of the Notice of Appeal, but before the Appeal Brief, may be admitted as provided by 37 CFR §1.116 (amendments and evidence after final action and prior to appeal). See: 37 CFR §41.33(a). See: MPEP §1206; 37 CFR § 41.33

11. 03-24-11Refresher- Appeals Practice11 Papers Filed After Notice of Appeal (cont.) Amendments filed on or after the filing date of an Appeal brief may be admitted: 1) To cancel claims, where the cancellation does not affect the scope of other pending claims in the proceeding; or 2 )To rewrite dependent claims into independent form. See: 37 CFR § 41.33(b). All other amendments will not be admitted except by 37 CFR §§ 41.39(b)(1) [amendment in response to new ground of rejection by the examiner], 41.50 (a)(2)(i), 41.50(b)(1) and 41.50(c) [prosecution of case after Board decision, including remands]. See: 37 CFR § 41.33(c).

12. 03-24-11Refresher- Appeals Practice12 Papers Filed After Notice of Appeal (cont.) Affidavits or other evidence filed after the filing date of the Notice of Appeal but before the Appeal Brief may be admitted if: 1) It overcomes all rejections, and 2) Applicant submits good and sufficient reasons why the evidence is necessary and was not earlier presented. See: 37 CFR § 41.33(d)(1). All other affidavits and other evidence will not be admitted, except as permitted by 37 CFR §§ 41.39(b)(1) [filed in response to new ground of rejection by examiner], 41.50 (a)(2)(i) and 41.50(b)(1) [after remand by the BPAI or new ground of rejection by the BPAI]. See 37 CFR § 41.33(d)(2).

13. 03-24-11Refresher- Appeals Practice13 Appeal Brief The Appeal Center will process appeal briefs –Check for fee and timeliness –PALM Code: APBR –The status will not change. –Message BPAI for review and entry of Appeal brief. If the fee is missing or the appeal brief or fee is not timely filed, the Appeal Center will process PTOL-461 form. –PALM Code: 1460 APND –The status will change to: 120 See: MPEP §1205; 37 CFR §41.37

14. 03-24-11Refresher- Appeals Practice14 Appeal Brief (cont.) BPAI will review the appeal briefs for compliance with 37 CFR §41.37. If the brief is compliant, the status is changed in PALM and FWDX. –PALM Code: 1702 AP.B –The status will change to: 121. If the Appeal Brief is Non-compliant with 37 CFR §41.37, the BPAI will send Appellant a Notice of Non-compliant Brief requiring a corrected brief. The Appeal will not be docketed to the Examiner until a compliant brief is filed by Appellant.

15. 03-24-11Refresher- Appeals Practice15 Examiner’s Response to Appeal Brief Appeal Conference Follow guidelines set forth in your TC The appeal conference participants will determine if the examiner will write an Examiner’s Answer, allow the application, or reopen prosecution to add or improve rejections See: MPEP §1207.01 – Appeal Conference

16. 03-24-11Refresher- Appeals Practice16 Appeal Brief Headings 1.Real Party of Interest 2.Related Appeals and Interferences 3.Status of Claims 4.Status of Amendments 5.Summary of Claimed Subject Matter 6.Grounds of Rejection to be Reviewed on Appeal 7.Argument 8.Claims Appendix 9.Evidence Appendix 10.Related Proceedings Appendix See: MPEP §1205.02; 37 CFR §41.37

17. 03-24-11Refresher- Appeals Practice17 Appeal Brief Headings (cont.) The Examiner is no longer responsible to comment on the following sections of an Appeal Brief: Real Party in Interest Status of Amendments After Final Summary of Claimed Subject Matter Claims Appendix

18. 03-24-11Refresher- Appeals Practice18 Appeal Brief Headings (cont.) The Examiner is no longer responsible to comment on the following sections of an Appeal Brief: Examiner’s Statement of Grounds of Rejection –The examiner has no comment on the appellant’s statement of the grounds of rejection to be reviewed on appeal. Every ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory actions) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.” New grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF REJECTION.” (FP 12.154.01) See: Memorandum “Revised Procedures for Appeal Board Review”, March 29, 2010

19. 03-24-11Refresher- Appeals Practice19 Appeal Brief Headings (cont.) The section of the Appeal Brief the Examiner is still required to comment on: Status of Claims List claims that are rejected and pending in the application, including any claims that are rejected but were omitted from the appellant’s listing (if any) of appealed claims in the notice of Appeal. Do not list claims which are no longer rejected (FP 12.151.01)

20. 03-24-11Refresher- Appeals Practice20 The Examiner’s Answer Sections of the Examiner’s Answer 1.Real Party in Interest 2.Related Appeals and Interferences 3.Status of Claims 4.Status of Amendments after Final

21. 03-24-11Refresher- Appeals Practice21 Examiner’s Answer (cont.) 5.Summary of Claimed Subject Matter 6.Grounds of Rejection to be Reviewed on Appeal 7.Claims Appendix 8.Evidence Relied Upon List only those references used in the rejections on Appeal If no evidence is used, state no evidence is relied upon by the examiner in the rejection of the claims on appeal

22. 03-24-11Refresher- Appeals Practice22 Examiner’s Answer (cont.) 9.Grounds of Rejection to be Reviewed on Appeal Use the same order as appellant’s Appeal Brief Examiner may set forth a New Ground of Rejection in the Examiner’s Answer (The Technology Center Director or designee must approve with their signature) 10. Response to Argument If an issue raised by Appellant was fully responded to in the Grounds of Rejection, then no additional response is required. If an issue raised by appellant was not responded to in the Grounds of Rejection, then a response must be provided here.

23. 03-24-11Refresher- Appeals Practice23 Examiner’s Answer (cont.) 11.Related Proceedings Appendix Verify that the material in the appendix is correct See: MPEP §1207; 37 CFR § 41.39; Memorandum “Revised Procedures for Appeal Board Review”, March 29, 2010

24. 03-24-11Refresher- Appeals Practice24 Items to Check Prior to Mailing the Examiner’s Answer All IDS statements have been properly considered All after final amendments have been properly entered or not entered All affidavits and declarations have been considered or acknowledged All rejections on appeal have been fully explained The Primary Examiner has signed the answer and all conferees have at least initialed next to their names Machine translations or English language equivalents of all foreign references used in the rejection(s) have been obtained and scanned into the file See: Memorandum “Machine Translation of a Non-English Document Being Relied Upon by the Examiner in Support of a Rejection in an Examiners Answer,” November 17, 2009)*

25. 03-24-11Refresher- Appeals Practice25 Additional Items to Check Prior to Forwarding Application to BPAI The reply brief is acknowledged by the examiner. A new ground of rejection is properly designated or has been approved by the TC Director. In response to a new ground of rejection, whether the appellant filed a reply brief or a reply under 37 CFR 1.111. All petitions have been decided. The examiner provided a copy of a reference relied upon in a rejection (e.g., a publication or patent relied upon in a new ground of rejection or the examiner referenced a dictionary definition and provided a copy of the relevant pages of the dictionary).

26. 03-24-11Refresher- Appeals Practice26 Examiner’s Answer Review The Appeal Center will review Examiner’s Answers  PALM Code: PACC  Status: 123 – mailed If correction is needed, the Appeal Center will process a Patent Appeal Center Return.  PALM Code: TCRD  Status: 119

27. 03-24-11Refresher- Appeals Practice27 Examiner’s Answer Review (cont.) If the Examiner’s Answer contains a new ground of rejection, the Appeal Center will enter a new PALM Code.  PALM Code: 1465 (Enter date of Examiner’s Answer)  RJ.NG (Rejection – New Grounds) The BPAI will not review Examiner’s Answers for compliance issues.

28. 03-24-11Refresher- Appeals Practice28 Patent Appeal Center Return Form Patent Appeal Center Return Application Number:Date: Examiner:GAU: Appeal Document(s) that caused this Return- Check at least one Document type:  IDS not addressed (see below)  Reference(s) do not appear on the 892/1449 form  Amendments not entered/considered  Reply Brief not considered  References not scanned into IFW  Grounds of Rejection not consistent wit the last office action  Improper use of form paragraph  No Appeal Conference Held  Appeal Brief/Office action date is incorrect on Examiner’s Answer coversheet

29. 03-24-11Refresher- Appeals Practice29 Appellant’s Reply to New Grounds of Rejection If the Examiner’s Answer contains a New Ground of Rejection, Appellant has one of two options within two months of the mailing date of the Examiner’s Answer: –Request that the prosecution of the application be reopened, or –Maintain the appeal by filing a Reply Brief See: MPEP §1207.03; 37 CFR §41.39(b)(1) & (2)

30. 03-24-11Refresher- Appeals Practice30 Appellant’s Reply to New Grounds of Rejection (cont.) The Reply Brief in response to a new ground of rejection: must address each new ground of rejection, and Must comply with 37 CFR §41.37(c)(i)(vii) to maintain the appeal. The Reply Brief may not be filed with any amendment or other evidence (If this is done, the Reply Brief will be treated as a request to reopen prosecution) The two month time period for reply is not extendable under 37 CFR §1.136(a). Appellant must file any request for extension of time under 37 CFR §1.136(b).

31. 03-24-11Refresher- Appeals Practice31 Reply Brief Must be filed within 2 months of the date of Examiner’s Answer No automatic extension of time (See 37 CFR §1.136(b)) Requests under 37 CFR § 1.136(b) must be accompanied with a $200 fee (See 37 CFR §1.17(g)) Must request extension of time within the 2 month time period May not include new evidence or new amendments. Reply Briefs initially reviewed by Patent Appeal Center for formalities See: MPEP §1208; 37 CFR § 41.41

32. 03-24-11Refresher- Appeals Practice32 Examiner’s Response to Reply Brief The examiner may file a Supplemental Examiner’s Answer to respond to new issues raised in the reply brief. The Supplemental Examiner’s Answer may not include a new ground of rejection. If the Reply Brief is in response to a new grounds of rejection, the examiner may write a Supplemental Examiner’s Answer to address new issues raised in the reply brief.

33. 03-24-11Refresher- Appeals Practice33 Examiner’s Response to Reply Brief (cont.) The Technology Center Director or designee must approve and sign each Supplemental Examiner’s Answer. The Appellant may file a Reply Brief in Response to the Supplemental Examiner’s Answer within 2 months of date of the Supplemental Examiner’s Answer See: MPEP §1208; 37 CFR § 41.43

34. 03-24-11Refresher- Appeals Practice34 Requests for Oral Hearing Must be filed within 2 months of the date of the Examiner’s Answer or Supplemental Examiner’s Answer  No automatic extension of time (See 37 CFR §1.136(b))  Must request the extension of time within 2 month time period Must have the appropriate fee  Requests under 37 CFR §1.136(b) must be accompanied with a $200 fee (See 37 CFR §1.17(g))  If inappropriate fee, the request will be denied See: MPEP §1209; 37 CFR §41.47

35. 03-24-11Refresher- Appeals Practice35 Requests for Oral Hearing (cont.) Must be in a separate paper –Must be entitled “REQUEST FOR ORAL HEARING” The Board will handle these situations Primary Examiner may present an oral argument at the hearing

36. 03-24-11Refresher- Appeals Practice36 What Happens when the Case Passes to the Board? The Board gains jurisdiction once the file, including briefs and examiner answer(s), has been transmitted to the Board (37 CFR §41.35)

37. 03-24-11Refresher- Appeals Practice37 What Happens when the Case Passes to the Board? (cont.) The Board will review the application to: A. Determine that the case is ready for appeal B. Determine that the case is not ready for a decision on appeal. The Board can, after receipt and review, remand the file to the Examiner for action to complete and/or correct the file. Prior to a Board Decision the TC Director may, sua sponte, order the file be remanded to the examiner.* If the Board determines that a substantive response is needed to a Reply Brief, the case will be remanded to the examiner for preparation of a Supplemental Examiner’s Answer.

38. 03-24-11Refresher- Appeals Practice38 Decision by the Board The Board (BPAI) may:  Affirm  Affirm-in-part  Reverse  Enter a new ground of rejection  Remand Review MPEP §1214 for guidance on the procedure following a decision by the BPAI Contact your SPE to confirm a course of action See: MPEP §1213; 37 CFR § 41.50

39. 03-24-11Refresher- Appeals Practice39 Summary You should now be more familiar with: The process of Appeal Review. How to ensure your Examiner’s answer is docketed by the BPAI. What happens to your case once docketed by the BPAI.

40. 03-24-11Refresher- Appeals Practice40 Questions? Thank You