An applicant may appeal to the Board of Patent Appeals and Interferences when he or she believes their invention deserves to patent in spite of being rejected. The circumstances for which it is appropriate to file an appeal and what is required to file for one are discussed here. In order to appeal, an individual must follow a particular prosecution process which involves filing a Notice of Appeal and two months later an Appeal Brief.

After an Appeal Brief is filed, the Board will decide whether or not to accept the appeal and if so, they will begin prosecuting it. The Board will reply to the applicant by either requesting more documents or by allowing the questionable claims to patent. If the Board denies the claims, the applicant may appeal the decision to the U.S. Court of Appeals for Federal Circuit.

Appeals will definitely be tested on the exam and probably to a fairly large extent. Appeal topics to know cold include; the Appeal Brief, actions after an appeal and the withdrawal or dismissal of the appeal.

1201 Introduction
All appeals are sent to the Board of Patent Appeals and Interferences whereas all petitions are handled by the Commissioner of Patents and Trademarks - petitions must be filed within 2 months of the action complained about.

When an applicant believes that the rules of the PTO have denied him or her the patent protection he or she is entitled to, the discretionary matters to follow must be resolved by judicial processes where the differences of opinion concern the denial of patent claims because of prior art or material deficiencies in the disclosure set forth in the application, questions relate to the merits and must be resolved by appealing - the prematureness of a final rejection may not be advanced as grounds for an appeal. An applicant cannot transfer a matter from the Board to an interference.

The basic appeal process is as follows:
1. the applicant files a Notice of Appeal;
2. an Appeal Brief is due two months after the PTO receives a proper Notice of Appeal
the examiner answers the appeal.

The failure to remove all grounds of rejection and otherwise place an application in condition for allowance or to file an appeal after the final rejection will result in the application becoming abandoned unless one or more claims has been allowed. If claims stand allowed, the examiner will take action on these claims.

1204 Notice of appeal

35 U.S.C. 134 Appeal to the Board of Patent Appeals and Interferences.
(a) PATENT APPLICANT.- An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
(b) PATENT OWNER.- A patent owner in any reexamination proceeding may appeal from the final rejection of any claim by the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
(c) THIRD-PARTY.- A third-party requester in an inter partes proceeding may appeal to the Board of Patent Appeals and Interferences from the final decision of the primary examiner favorable to the patentability of any original or proposed amended or new claim of a patent, having once paid the fee for such appeal.

§ 41.31 Appeal to Board.
(a) Who may appeal and how to file an appeal.
(1) Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(2) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title before November 29, 1999, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(3) Every owner of a patent under ex parte reexamination filed under § 1.510 of this title on or after November 29, 1999, any of whose claims has been finally (§ 1.113 of this title) rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period provided under § 1.134 of this title for reply.
(b) The signature requirement of § 1.33 of this title does not apply to a notice of appeal filed under this section.
(c) An appeal, when taken, must be taken from the rejection of all claims under rejection which the applicant or owner proposes to contest. Questions relating to matters not affecting the merits of the invention may be required to be settled before an appeal can be considered.
(d) The time periods set forth in paragraphs (a)(1) through (a)(3) of this section are extendable under the provisions of § 1.136 of this title for patent applications and § 1.550(c) of this title for ex parte reexamination proceedings.

The Notice of Appeal is a Notice that the applicant plans to appeal. Once the Notice is sent in, the applicant will only have two months to file an Appeal Brief in order to proceed with the appeal.

Appeals - How and When:
1. The applicant may appeal once the claims have been rejected twice.
2. A patent owner who is involved in a reexamination proceeding may appeal from the final rejection.

The Notice of Appeal:
1. does not need to identify the claims being appealed
does not need to be signed;
2. an unsigned Notice of Appeal will not be returned.
3. in order to file an appeal after a final rejection, the Notice of Appeal must be filed to the PTO and the fee must be paid.
4. The limitation of twice or finally rejected does not have to be related to a particular application, for example, if a claim is rejected in a parent application, and then rejected in a continuing application, the applicant can file an appeal in the continuing application even though the claim was only rejected once in his or her current application.
5. An applicant cannot file an appeal in a continuing or an RCE until the application is under a rejection.
6. The Notice of Appeal must be filed within the period for reply set in the last Office action, which is normally 3 months for applications.
7. The Notice of Appeal and appropriate fee may be filed up to 6 months from the date of the final rejection, so long as an appropriate petition and fee for an extension of time is filed either prior to or with the Notice of Appeal.
8. The examiner will not file a patentability report for difficult material presented in appeals.
9. The Office will notify the applicant of non-compliance in cases where the Notice of Appeal is defective:
a. a Notice of Appeal will be considered defective when it is not timely filed -when appellant files the Appeal Brief without a Notice of Appeal first, the Office will treat the Appeal Brief as both.
10. An applicant may reinstate an appeal after prosecution is reopened by sending in a new Notice of Appeal and a new Appeal Brief.
11. Previously paid appeal fees will be applied to the new appeal as long as a decision by the Board was not made on the prior appeal.

1205 Appeal Brief

§ 41.37 Appeal brief
(a) (1)Appellant must file a brief under this section within two months from the date of filing the notice of appeal under § 41.31.
(2) The brief must be accompanied by the fee set forth in § 41.20(b)(2)
(b) On failure to file the brief, accompanied by the requisite fee, within the period specified in paragraph (a) of this section, the appeal will stand dismissed.
(c) (1)The brief shall contain the following items under appropriate headings and in the order indicated in paragraphs (c)(1)(i) through (c)(1)(x) of this section, except that a brief filed by an appellant who is not represented by a registered practitioner need only substantially comply with paragraphs (c)(1)(i) through (c)(1)(iv) and (c)(1)(vii) through (c)(1)(x) of this section:
(i) Real party in interest. A statement identifying by name the real party in interest.
(ii) Related appeals and interferences. A statement identifying by application, patent, appeal or interference number all other prior and pending appeals, interferences or judicial proceedings known to appellant, the appellant's legal representative, or assignee which may be related to, directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal. Copies of any decisions rendered by a court or the Board in any proceeding identified under this paragraph must be included in an appendix as required by paragraph (c)(1)(x) of this section.
(iii) Status of claims. A statement of the status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims that are being appealed.
(iv) Status of amendments. A statement of the status of any amendment filed subsequent to final rejection.
(v) Summary of claimed subject matter. A concise explanation of the subject matter defined in each of the independent claims involved in the appeal, which shall refer to the specification by page and line number, and to the drawing, if any, by reference characters. For each independent claim involved in the appeal and for each dependent claim argued separately under the provisions of paragraph (c)(1)(vii) of this section, every means plus function and step plus function as permitted by 35 U.S.C. 112, sixth paragraph, must be identified and the structure, material, or acts described in the specification as corresponding to each claimed function must be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters.
(vi) Grounds of rejection to be reviewed on appeal. A concise statement of each ground of rejection presented for review.
(vii) Argument. The contentions of appellant with respect to each ground of rejection presented for review in paragraph (c)(1)(vi) of this section, and the basis therefor, with citations of the statutes, regulations, authorities, and parts of the record relied on. Any arguments or authorities not included in the brief or a reply brief filed pursuant to § 41.41 will be refused consideration by the Board, unless good cause is shown. Each ground of rejection must be treated under a separate heading. For each ground of rejection applying to two or more claims, the claims may be argued separately or as a group. When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. Any claim argued separately should be placed under a subheading identifying the claim by number. Claims argued as a group should be placed under a subheading identifying the claims by number. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.
(viii) Claims appendix. An appendix containing a copy of the claims involved in the appeal.
(ix) Evidence appendix. An appendix containing copies of any evidence submitted pursuant to §§ 1.130, 1.131, or 1.132 of this title or of any other evidence entered by the examiner and relied upon by appellant in the appeal, along with a statement setting forth where in the record that evidence was entered in the record by the examiner. Reference to unentered evidence is not permitted in the brief. See § 41.33 for treatment of evidence submitted after appeal. This appendix may also include copies of the evidence relied upon by the examiner as to grounds of rejection to be reviewed on appeal.
(x) Related proceedings appendix. An appendix containing copies of decisions rendered by a court or the Board in any proceeding identified pursuant to paragraph (c)(1)(ii) of this section.
(2) A brief shall not include any new or nonadmitted amendment, or any new or non
admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or
other evidence filed after final action but before or on the same date of filing an appeal and §
41.33 for amendments, affidavits or other evidence filed after the date of filing the appeal.
(d) If a brief is filed which does not comply with all the requirements of paragraph (c) of this section, appellant will be notified of the reasons for noncompliance and given a time period within which to file an amended brief. If appellant does not file an amended brief within the set time period, or files an amended brief which does not overcome all the reasons for non-compliance stated in the notification, the appeal will stand dismissed.
(e) The time periods set forth in this section are extendable under the provisions of § 1.136 of this title for patent applications and § 1.550(c) of this title for ex parte reexamination proceedings.

The basics of the Appeal Brief:
1. An appeal brief should state the reasons why the applicant believes his or her claims should not be rejected;
2. After filing a Notice of Appeal, the appellant must file an Appeal Brief plus the fee:
a. the Appeal Brief is due two months from the date the Notice of Appeal is filed by the appellant
in the Appeal Brief, the appellant must state that the claims do not stand or fall together;
b. the appellant must present arguments as to why each claim is separately patentable, merely pointing out the differences in what the claims cover is not a sufficient argument as to why the claims are separately patentable.
3. When is the Appeal Brief due?
a. an Appeal Brief must be filed within 2 months from the Office receipt date on the Notice of Appeal;
b. this 2 month period is extendable under 37 C.F.R. 1.136
c. a proper Appeal Brief must be filed before the petition to revive the application and reinstate the appeal will be considered on its merits -alternatively, a continuing application or an RCE may be filed;
d. the time extended for an Appeal Brief is added to the calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Sat, Sun or Federal holiday;
e. although the failure to file the Appeal Brief within the permissible time will result in a dismissal of the appeal, if any claims stand allowed, the application will not become abandoned by the dismissal, but will be returned to the examiner for action on the allowed claims;
f. the appellant will be given the longest of the following time periods to submit a proper Appeal Brief and the fee (otherwise the appeal will be dismissed):
i. 1 month or 30 days from the mailing of the notification of non-compliance;
ii. within the time period for the reply to the action from which appeal has been taken;
iii. within 2 months from the date of the Notice of Appeal.
4. Sample timeline:
a. Notice of Appeal 9/19/02;
b. Appeal Brief due date (initially due on 11/19/02) - nonstatutory time period that may be extended under 37 C.F.R. 1.136(a);
c. Appeal Brief filed on 3/18/03;
d. The applicant received a 4 month extension (6 month maximum statutory period).
5. Appeal brief content:
a. only 1 copy of the appeal brief is required and it must address the following issues:
i. exactly who the real party in interest is - this prevents prejudices or financial interests to play a role in the outcome;
ii. any other related appeals and interferences - identified by application number and filing date;
iii. status of each claim - identifying whether each one has been allowed, rejected, canceled, etc.;
iv. status of the amendments
b. a summary of the claimed subject matter.
i. grounds of rejection to be reviewed on appeal - a concise statement of each ground of rejection presented for review;
ii. the argument -the appellant's contention with respect to each ground of rejection presented and the basis for those contentions, including citations of authorities, statutes, and parts of the record relied upon. All arguments which the appellant want the Board to consider must be presented in the Appeal Brief.
c. claims appendix:
i. contains a copy of the claims involved in the appeal;
ii. evidence appendix;
iii. related proceedings appendix.
6. In the case of a noncompliant Appeal Brief, the applicant will be given 1 month or 30 days (whichever is longer) from the date of the mailing of the non-compliance notice to file an amended brief.
a. The amended brief may either be a new brief or one with replacement sections

1206 Amendments and affidavits or other evidence filed with or after appeal

§ 41.33 Amendments and affidavits or other evidence after appeal.
(a) Amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date a brief is filed pursuant to § 41.37 may be admitted as provided in § 1.116 of this title.
(b) Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted:
(1) To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or
(2) To rewrite dependent claims into independent form.
(c) All other amendments filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1) and 41.50(c).
(d) (1) An affidavit or other evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and prior to the date of filing a brief pursuant to § 41.37 may be admitted if the examiner determines that the affidavit or other evidence overcomes all rejections under appeal and that a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented has been made.
(2) All other affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).

1. Amendments must be submitted in a separate paper.
2. They are not a matter of right.
3. Amendments filed after the filing of a Notice of Appeal, but prior to the date of filing a brief, may only be admitted to:
a. cancel claims;
b. comply with any requirement of form expressly set forth in a previous action;
c. present rejected claims in better form for consideration on appeal;
d. amend the specification or claims upon a showing of good and sufficient reasons as to why the amendment is necessary and was not earlier presented.
4. Amendments filed on or after the filing of an appeal brief may only be admitted to:
a. cancel claims (where such cancellation does not affect the scope of any other pending claim in the proceeding); or
b. rewrite dependent claims into independent form.
5. Affidavits or other evidence submitted after the filing of a Notice of Appeal, but prior to an appeal brief, may be admitted if the examiner determines that:
a. the affidavit or other evidence overcomes all rejections under appeal; and
b. a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented has been made.

1207 Examiner's Answer

§ 41.39 Examiner's answer.
(a) (1) The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief including such explanation of the invention claimed and of the references relied upon and grounds of rejection as may be necessary, supplying a copy to appellant. If the primary examiner determines that the appeal does not comply with the provisions of §§ 41.31 and 41.37 or does not relate to an appealable action, the primary examiner shall make such determination of record.
(2) An examiner's answer may include a new ground of rejection.
(b) If an examiner's answer contains a rejection designated as a new ground of rejection, appellant must within two months from the date of the examiner's answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:
(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. Any amendment or submission of affidavits or other evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address each new ground of rejection as set forth in § 41.37(c)(1)(vii) and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.
(c) Extensions of time under § 1.136 (a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136 (b) of this title for extensions of time to reply for patent applications and § 1.550 (c) of this title for extensions of time to reply for ex parte reexamination proceedings.

After an appeal brief has been filed and the issues of the appeal have been considered, the examiner may:
1. reopen prosecution to enter a new ground of rejection (must have the approval of the supervisory patent examiner);
2. withdraw the final rejection and allow the application if appropriate -maintain the appeal by holding an appeal conference and draft an examiner's answer.
a. If the examiner's answer is filed on or after September 13, 2004, it may include a new ground of rejection.

Appeal Conference
1. An appeal conference is necessary when an acceptable Appeal Brief has been filed and the examiner decides that the appeal should go forward.
2. The participants of the appeal conference include:
a. the examiner charged with preparing the examiner's answer;
b. the supervisory patent examiner;
c. a conferee (an examiner with experience in the issues on appeal).
3. Once the conference between the three examiners is held, an examiner's answer to the Appeal Brief will be prepared.
a. If the examiner's answer contains a new ground of rejection, the appellant will be given a 2-month time period to reply to the new ground of rejection.

Examiner's Answer
1. This is a written statement from the examiner that serves to address the Appeal Brief.
2. The examiner's answer will be written within 2 months of the receipt of the Appeal Brief by the examiner.
3. The answer will contain a response to the arguments in the brief, note any errors in the appellant's claims, and state any rejections that are to be withdrawn.
4. A new ground of rejection is permitted in an examiner's answer mailed on or after September 13, 2004.
5. An examiner's answer may contain a new ground of rejection.
6. If the examiner's answer contains a new ground of rejection, then the appellant must within two months from the date of receiving the examiner's answer either:
a. reopen the prosecution of the application (the appeal will be treated as withdrawn);
i. the appellant should file a reply in compliance with 37 C.F.R. 1.111 that addresses each new ground of rejection set forth in the examiner's answer.
ii. the examiner may make the next Office action final if the new ground of rejection was:
necessitated by amendment.
b. or based on information presented in an IDS, maintain the appeal by filing a reply brief in compliance with 37 C.F.R. 41.37 which addresses each new ground of rejection.
i. the reply brief must include:
1) an identification page (appellant's name, application number, application filing date, title of the invention, name of the examiner, art unit of examiner, and title of the paper which should be "Reply Brief');
2) a status of claims page;
3) the grounds of rejection to be reviewed on appeal page(s);
4) argument page(s)
7. if the appellant fails to provide a timely reply, the appeal will be dismissed following the explanation set forth in MPEP 1215:
a. extensions of time under 37 C.F.R. 1.136(a) are not applicable to the two month time period as stated above;
b. extensions under 37 C.F.R. 1.136(b) may be made for patent applications and extensions under 37 C.F.R. 1.550(c) may be made for ex parte reexamination proceedings.
8. New grounds of rejection are not limited to rejections made in response to arguments presented in the appeal brief:
a. they may be made against some or all of the appealed claims;
b. they are not be permitted to reject a previously allowed or objected to claim (in this case, prosecution should be reopened).
9. Appellant may not request to reopen prosecution if the examiner's answer does not have a new ground of rejection.
10. The examiner may provide a supplemental examiner's answer to the reply brief
this may not include any new grounds of rejection.
11. The appellant may file another reply brief within 2 months from the mailing of the supplemental examiner's answer.
12. The examiner may provide a supplemental examiner's answer in response to:
a. a reply brief that raises new issues;
b. a remand by the Board for further consideration of a rejection under 37 C.F.R. 41.50(a);
c. a remand by the Board for other purposes that are not for further consideration of a rejection under 37 C.F.R. 41.50(a).

1208 Reply Briefs and Examiner's Responses to Reply Brief

§ 41.41 Reply brief.
(a) (1)Appellant may file a reply brief to an examiner's answer within two months from the date of the examiner's answer.
(2) A reply brief shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. See § 1.116 of this title for amendments, affidavits or other evidence filed after final action but before or on the same date of filing an appeal and § 41.33 for amendments, affidavits or other evidence filed after the date of filing the appeal.
(b) A reply brief that is not in compliance with paragraph (a) of this section will not be considered. Appellant will be notified if a reply brief is not in compliance with paragraph (a) of this section.
(c) Extensions of time under § 1.136 (a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136 (b) of this title for extensions of time to reply for patent applications and § 1.550 (c) of this title for extensions of time to reply for ex parte reexamination proceedings.
§ 41.43 Examiner's response to reply brief
(a) (1)After receipt of a reply brief in compliance with § 41.41, the primary examiner must acknowledge receipt and entry of the reply brief. In addition, the primary examiner may withdraw the final rejection and reopen prosecution or may furnish a supplemental examiner's answer responding to any new issue raised in the reply brief.
(2) A supplemental examiner's answer responding to a reply brief may not include a new ground of rejection.
(b) If a supplemental examiner's answer is furnished by the examiner, appellant may file another reply brief under § 41.41 to any supplemental exam-iner's answer within two months from the date of the supplemental examiner's answer.
(c) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.

1. The appellant may file a reply brief within 2 months from the mailing date of the examiner 's answer or supplemental examiner 's answer.
2. The appellant is required to file a reply brief or a reply under 37 C.F.R. 1.111 when the examiner's answer contains a new ground of rejection.
3. The appellant is not normally required to file a reply brief to respond to the answer.
4. In the case of no reply brief within the 2 month period of time, the application will be forwarded to the Board for a decision on the appeal.

1209 Oral hearing

§ 41.47 Oral hearing.
(a) An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing.
(b) If appellant desires an oral hearing, appellant must file, as a separate paper captioned "REQUEST FOR ORAL HEARING," a written request for such hearing accompanied by the fee set forth in § 41.20(b)(3) within two months from the date of the examiner's answer or supplemental examiner's answer.
(c) If no request and fee for oral hearing have been timely filed by appellant as required by paragraph (b) of this section, the appeal will be assigned for consideration and decision on the briefs without an oral hearing.
(d) If appellant has complied with all the requirements of paragraph (b) of this section, a date for the oral hearing will be set, and due notice thereof given to appellant. If an oral hearing is held, an oral argument may be presented by, or on behalf of, the primary examiner if considered desirable by either the primary examiner or the Board. A hearing will be held as stated in the notice, and oral argument will ordinarily be limited to twenty minutes for appellant and fifteen minutes for the primary examiner unless otherwise ordered.
(e) (1)Appellant will argue first and may reserve time for rebuttal. At the oral hearing, appellant may only rely on evidence that has been previously entered and considered by the primary examiner and present argument that has been relied upon in the brief or reply brief except as permitted by paragraph (e)(2) of this section. The primary examiner may only rely on argument and evidence relied upon in an answer or a supplemental answer except as permitted by paragraph (e)(2) of this section.
(2) Upon a showing of good cause, appellant and/or the primary examiner may rely on a new
argument based upon a recent relevant decision of either the Board or a Federal Court.
(f) Notwithstanding the submission of a request for oral hearing complying with this rule, if the Board decides that a hearing is not necessary, the Board will so notify appellant.
(g) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.

1. An oral hearing:
a. should be requested only when the appellant considers such a hearing necessary for a proper presentation of the appeal;
b. may be requested within two months of the date the examiner's answer was sent -the request must be filed in writing in a separate paper;
c. requires a fee.
2. If the request for the oral hearing is improper, the appeal will be assigned for consideration and a decision on the briefs will be made without an oral hearing.
3. In the oral hearing, the appellant may only reply on evidence that has been previously entered and considered by the examiner and present arguments that have been relied upon in the brief or reply brief.

1210 Actions subsequent to examiner's answer but before Board's decision

§ 41.35 Jurisdiction over appeal.
(a) Jurisdiction over the proceeding passes to the Board upon transmittal of the file, including all briefs and examiner's answers, to the Board.
(b) If, after receipt and review of the proceeding, the Board determines that the file is not complete or is not in compliance with the requirements of this subpart, the Board may relinquish jurisdiction to the examiner or take other appropriate action to permit completion of the file.
(c) Prior to the entry of a decision on the appeal by the Board, the Director may sua sponte order the proceeding remanded to the examiner.

1. Jurisdiction does not pass to the Board just because a Notice of Appeal has been filed, the Board must accept the appeal before jurisdiction is passed to it.
2. Jurisdiction is normally transferred from the examiner to the Board:
a. 2 months after the examiner's answer, plus mail room time, if no reply brief has been timely filed;
b. after a supplemental examiner's answer, pursuant to a remand from the Board has been mailed;
c. after the examiner has notified the appellant by written communication that the reply brief has been entered and considered and that the application will be forwarded to the Board.
3. When an application is re-filed, the Board should promptly be notified.
4. Failure to notify the Board may result in the Board's refusing an otherwise proper request to vacate its decision.
5. Example: if a Notice of Appeal is already filed, but the Appeal Brief has not been prepared and the applicant finds data in his or her original notes that would materially aid in persuading the Board as to the patentability of the appealed claims, the applicant should incorporate the data in an affidavit and send the affidavit together with Appeal Brief to the PTO. In this case, since jurisdiction has not passed to the Board, the examiner may admit the affidavit, but require a showing of good and sufficient reasons why the affidavit was not presented earlier.

1211 Remand by Board
1. There is no obligation resting on the Board to consider new or amended claims that are submitted while the case is on appeal. However, if a proposed amendment results in the abandonment of the appeal (such as one canceling the claims on appeal), the amendment must be entered.
2. The Board has the authority to remand a case to the examiner when necessary, which may occur when the Board needs the examiner to:
a. clarify references;
b. select the best ground;
c. search or consider an amendment;
d. to prepare a supplemental examiner's answer to a reply brief.
3. Where an affidavit or declaration is filed after the filing of a notice of appeal but before a decision by the Board, the examiner is without authority to consider the affidavit or declaration unless:
a. the examiner determines that the affidavit or declaration overcomes all rejections under appeal, and;
b. a showing of good and sufficient reasons why the affidavit or declaration is necessary and was not earlier presented has been made

1212 Board requires appellant to address matter
1. the Board is authorized to require an appellant to clarify the record by addressing any matter deemed appropriate for a reasoned decision on the appeal, this may include:
a. the applicability of particular case law that has not been previously identified as
relevant to an issue in the appeal
b. the applicability of prior art that has not been made of record
2. appellant will be given a non-extendable time period to reply
3. a failure to respond in time will result in the dismissal of an appeal

1213 Decision by Board

§ 41.50 Decisions and other actions by the Board
(a) (1)The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed. The Board may also remand an application to the examiner.
(2) If a supplemental examiner's answer is written in response to a remand by the Board for further consideration of a rejection pursuant to paragraph (a)(1) of this section, the appellant must within two months from the date of the supplemental examiner's answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:
(i) Reopen prosecution. Request that prosecution be reopened before the examiner
by filing a reply under § 1.111 of this title with or without amendment or submission
of affidavits (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. Any
amendment or submission of affidavits or other evidence must be relevant to the
issues set forth in the remand or raised in the supplemental examiner's answer. A
request that complies with this paragraph will be entered and the application or the
patent under ex parte reexamination will be reconsidered by the examiner under the
provisions of § 1.112 of this title. Any request that prosecution be reopened under
this paragraph will be treated as a request to withdraw the appeal.
(ii) Maintain appeal. Request that the appeal be maintained by filing a reply brief as
provided in § 41.41. If such a reply brief is accompanied by any amendment,
affidavit or other evidence, it shall be treated as a request that prosecution be
reopened before the examiner under paragraph (a)(2)(i) of this section.
(b) Should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement constitutes a new ground of rejection of the claim. A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board makes a new ground of rejection, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
(c) The opinion of the Board may include an explicit statement of how a claim on appeal may be amended to overcome a specific rejection. When the opinion of the Board includes such a statement, appellant has the right to amend in conformity therewith. An amendment in conformity with such statement will overcome the specific rejection. An examiner may reject a claim so-amended, provided that the rejection constitutes a new ground of rejection.
(d) The Board may order appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal. Appellant will be given a nonextend-able time period within which to respond to such an order. Failure to timely comply with the order may result in the sua sponte dismissal of the appeal.
(e) Whenever a decision of the Board includes a remand, that decision shall not be considered final for judicial review. When appropriate, upon conclusion of proceedings on remand before the examiner, the Board may enter an order otherwise making its decision final for judicial review.
(f) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.

1. during its decision, the Board of Appeals may:
a. affirm or reverse the examiner -find a new ground of rejection
2. an explicit statement by the Board on how a claim on appeal may be amended to overcome a specific rejection is not a statement that a claim so amended is allowable
3. any Board decision is available for public inspection if rendered in a file open to the public
if the Board decision is rendered in a file that is not open to the public, and if the Director believes that special circumstances warrant publication, then the decision may be published or made available for public inspection

1214 Procedure following decision by Board

§ 41.54 Action following decision.
After decision by the Board, the proceeding will be returned to the examiner, subject to appellant's right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the proceeding may require, to carry into effect the decision.

1. After a decision has been made by the Board, a copy is mailed to the appellant. Once the copy of the decision has been mailed, the applicant will have two months to request a rehearing or file an amendment.
2. following a new ground of rejection raised by the Board, the appellant has 2-months to either:
a. request a rehearing
b. reopen prosecution before the examiner by submitting an appropriate amendment and/or new evidence
3. the 2-month time period is not extendable under 37 C.F.R. 1.136(a), but may be under 37 C.F.R. 1.136(b) or 37 C.F.R. 1.550(c) in the case of a reexamination

§ 41.52 Rehearing.
(a) (1)Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. 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 Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3) of this section. When a request for rehearing is made, the Board shall render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing, and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing.
(2) Upon a showing of good cause, appellant may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection made pursuant to § 41.50(b) are permitted.
(b) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.

1. arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief are not permitted in the request for rehearing except:
a. upon a showing of good cause, appellant may present a new argument based upon a recent decision of the Board or a Federal Court, and
b. new arguments responding to a new ground of rejection

§ 1.197 Return of jurisdiction from the Board of Patent Appeals and Interferences; termination of proceedings.
(a) Return of jurisdiction from the Board of Patent Appeals and Interferences. Jurisdiction over an application or patent under ex parte reexamination proceeding passes to the examiner after a decision by the Board of Patent Appeals and Interferences upon transmittal of the file to the examiner, subject to appellant's right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the application or patent under ex parte reexamination proceeding may require, to carry into effect the decision of the Board of Patent Appeals and Interferences.
(b) Termination of proceedings.
(1) Proceedings on an application are considered terminated by the dismissal of an appeal or the failure to timely file an appeal to the court or a civil action (§ 1.304) except:
(i) Where claims stand allowed in an application; or
(ii) Where the nature of the decision requires further action by the examiner.
(2) The date of termination of proceedings on an application is the date on which the appeal is dismissed or the date on which the time for appeal to the U.S. Court of Appeals for the Federal Circuit or review by civil action (§ 1.304) expires in the absence of further appeal or review. If an appeal to the U.S. Court of Appeals for the Federal Circuit or a civil action has been filed, proceedings on an application are considered terminated when the appeal or civil action is terminated. A civil action is terminated when the time to appeal the judgment expires. An appeal to the U.S. Court of Appeals for the Federal Circuit, whether from a decision of the Board or a judgment in a civil action, is terminated when the mandate is issued by the Court.

1. if the Board decides that claims stand allowed, then the appellant is not required to file a reply
2. if the Board decides that no claims stand allowed, then:
a. the proceedings in the application are terminated (this will take effect as of the date of the expiration of the time for filing court action)
b. the application is no longer considered as pending
c. it will be abandoned

1215 Withdrawal or dismissal of appeal
1. if at least one allowed claim remains in the application, an application is not abandoned if the appeal is dismissed
2. once the appellant has filed a Notice of Appeal, the appellant may also request that prosecution be reopened for the following situations:
a. in response to a new ground of rejection made in an examiner's answer, appellant may file a reply that addresses the new ground of rejection within two months from the mailing of the examiner's answer
b. in response to a supplemental examiner's answer that is written in response to a remand by the Board for further consideration of a rejection, the appellant may file a reply that addresses the rejection in the supplemental answer within two months of its mailing
3. an appellant may withdraw an appeal at any time, however, unless there are claims allowed, the withdrawal will result in the abandonment of the application

1216 Judicial review
1. an applicant who is dissatisfied with a decision by the Board may appeal the decision to the U.S. Court of Appeals for Federal Circuit or may have a remedy by civil action against the Commissioner in U.S. District Court for District of Columbia
2. by filing an appeal to the Federal Circuit, the applicant waives the right to seek judicial review by a civil action
3. after an appeal is docketed in the Federal Circuit, failure to prosecute the appeal, such as by an appellant's failure to file a brief, may result in the dismissal of the appeal by the court