[Federal Register Volume 74, Number 238 (Monday, December 14, 2009)]
[Notices]
[Pages 66097-66098]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-29641]



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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2009-0020]


Procedure for Treating Rejected Claims That Are Not Being 
Appealed

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
considering changes to the procedure for handling notices of appeal and 
appeal briefs that identify fewer than all of the rejected claims as 
being appealed. Under the proposed procedure, if appellant files a 
notice of appeal, or an appeal brief, that clearly identifies fewer 
than all of the rejected claims as being appealed, the non-appealed 
rejected claims would be deemed canceled by operation of this action on 
the part of the appellant as of the date on which such a notice of 
appeal, or appeal brief, is filed, regardless of whether the appellant 
also files an amendment canceling the non-appealed rejected claims. The 
USPTO is requesting comments from the public regarding the proposed 
procedure set forth in this notice.

COMMENT DEADLINE DATE: To be ensured of consideration, written comments 
must be received on or before January 13, 2010. No public hearing will 
be held.

ADDRESSES: Written comments should be sent by electronic mail message 
over the Internet addressed to [email protected]. Comments may 
also be submitted by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of Joni Y. Chang. Although comments may be 
submitted by mail, the Office prefers to receive comments via the 
Internet.
    The written comments will be available for public inspection at the 
Office of the Commissioner for Patents, located in Madison East, Tenth 
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available 
via the Office's Internet Web site (address: http://www.uspto.gov). 
Because comments will be made available for public inspection, 
information that is not desired to be made public, such as an address 
or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Joni Y. Chang, Senior Legal Advisor, 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy, directly by telephone to 
(571) 272-7720, or by mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: The USPTO is considering changes to the 
procedure for handling notices of appeal and appeal briefs that 
identify fewer than all of the rejected claims as being appealed, in 
view of Ex parte Ghuman, 88 USPQ2d 1478 (Bd. Pat. App. & Int. 2008) 
(precedential) (provides for remand by the Board of Patent Appeals and 
Interferences (BPAI) if the examiner does not cancel claims identified 
as being not on appeal; the non-appealed rejected claims were 
considered withdrawn from the appeal where appellant limited the appeal 
to fewer than all of the pending rejected claims in the appeal brief). 
The USPTO is requesting comments from the public regarding the proposed 
procedure set forth in this notice because the USPTO desires the 
benefit of public comment. The USPTO will consider and address any 
relevant comments received.
    Background: After receiving a notification of an Office action that 
contains one or more rejections, applicant must file a reply to the 
Office action within the time period for reply set forth in the Office 
action to avoid abandonment of the application. See 35 U.S.C. 133. 
Pursuant to 35 U.S.C. 134, applicant may appeal the examiner's decision 
to the BPAI by filing a notice of appeal under 37 CFR 41.31 if at least 
one claim has been twice rejected. 37 CFR 1.113(c) provides that a 
reply to a final Office action is required to include cancellation of 
each rejected claim or appeal from the rejection of each rejected 
claim. For a reply to a non-final Office action, the applicant must 
address every ground of rejection set forth in the non-final action or 
cancel each rejected claim subject to any ground of rejection not 
addressed in the reply. See 37 CFR 1.111(b).
    There is no provision in 35 U.S.C. 134 or 37 CFR 1.113 for an 
applicant to appeal only a part of the examiner's decision. An appeal 
under 37 CFR 41.31 must be taken from the rejection of all claims under 
rejection which the applicant proposes to contest. See 37 CFR 41.31(c). 
In order to treat a notice of appeal as a proper reply to the Office 
action, the notice of appeal is considered an appeal to the entire 
examiner's decision, provided that the notice of appeal is accompanied 
by the required fee set forth in 37 CFR 41.20(b)(1) and is filed within 
the time period for reply set forth in the Office action. Therefore, if 
appellant does not wish to contest one of the rejected claims, 
appellant must file an amendment canceling that claim. The amendment 
must be filed separately from the notice of appeal and appeal brief.
    Notwithstanding the provisions of 35 U.S.C. 133 and 134, and 37 CFR 
1.111(b) and 1.113(c), some appellants file notices of appeal or appeal 
briefs that attempt to limit the appeal to fewer than all of the 
rejected claims without filing an amendment to cancel the non-appealed 
rejected claims. It has long been USPTO practice that an appellant must 
either appeal from the rejection of all of the rejected claims or 
cancel those claims not being appealed. See Ex parte Benjamin, 1903 
Dec. Comm. Pat. 132, 134 (1903). Thus, attempts to limit an appeal to 
fewer than all of the rejected claims, either by filing a notice of 
appeal or appeal brief that attempts to limit the appeal to fewer than 
all of the rejected claims, operates to withdraw the appeal as to the 
non-appealed rejected claims and operates as a cancellation of those 
claims from the application. See Manual of Patent Examining Procedure 
(MPEP) Sec.  1215.03.
    Proposed Procedure: Under the proposed procedure, if appellant 
clearly limits the appeal to fewer than all of the rejected claims in a 
notice of appeal, or an appeal brief, the non-appealed rejected claims 
would be deemed canceled by operation of this action on the part of the 
appellant as of the date on which such a notice of appeal, or appeal 
brief, is filed. The examiner should note in the examiner's answer that 
the non-appealed rejected claims are deemed canceled. However, a 
failure to note the cancellation of non-appealed rejected claims will 
not affect the canceled status of these claims because the non-appealed 
rejected claims are deemed canceled as of the date on which the notice 
of appeal, or appeal brief, is filed. Therefore, an application will 
not be returned or remanded by the BPAI for correction merely due to a 
failure of an examiner's answer to note the cancellation of non-
appealed rejected claims. After the decision by the BPAI and the 
jurisdiction is transferred back to the examiner for further action, or 
the prosecution is reopened without a decision by the BPAI, the 
examiner will notify appellant of the cancellation of the non-appealed 
rejected claims in the next Office action, unless the application is 
abandoned. For example, the examiner may include the following 
statement in the examiner's answer or in the next Office action after a 
BPAI decision: ``Claims 4-5 are deemed canceled because appellant

[[Page 66098]]

attempted to limit the appeal to fewer than all of the rejected claims 
by submitting an identification of claims being appealed that did not 
include these rejected claims in the notice of appeal or the appeal 
brief.''
    37 CFR 41.31 does not provide for an identification of the claims 
whose rejection is being appealed. A notice of appeal that does not 
identify any claims would be accepted as an appeal of all of the 
rejected claims, unless the appeal brief indicates otherwise. 
Therefore, if appellant files a notice of appeal and appeal brief that 
do not clearly limit the appeal to fewer than all of the rejected 
claims, all of the rejected claims would be considered to be on appeal. 
The BPAI will have the jurisdiction to review the examiner's decision 
as to all of the rejected claims and all of the grounds of rejection 
set forth by the examiner.
    If a notice of appeal does not identify the claims on appeal and 
its appeal brief contains inconsistency regarding whether all of the 
rejected claims are being appealed (e.g., appellant lists fewer than 
all of the rejected claims in the status of claims section of the 
appeal brief and then lists all of the rejected claims in the grounds 
of rejection to be reviewed on appeal section, or other sections, of 
the appeal brief), all of the rejected claims would be considered to be 
on appeal. If a notice of appeal does not identify the claims on appeal 
and all of the sections of its appeal brief consistently identify fewer 
than all of the rejected claims being appealed, then the appeal brief 
has clearly limited the appeal to fewer than all of the rejected claims 
and the non-appealed rejected claims will be deemed canceled by 
operation of the filing of such an appeal brief as of the date on which 
the appeal brief is filed.
    The proposed procedure will apply to notices of appeal and appeal 
briefs filed under 37 CFR 41.31 and 41.37. Similarly, the proposed 
procedure will also apply to notices of appeal or cross appeal and 
appeal briefs filed by patent owners in ex parte and inter partes 
reexamination proceedings.

    Dated: December 8, 2009.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E9-29641 Filed 12-11-09; 8:45 am]
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