[Federal Register Volume 75, Number 219 (Monday, November 15, 2010)]
[Proposed Rules]
[Pages 69827-69849]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-28493]



[[Page 69827]]

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Part IV





Department of Commerce





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Patent and Trademark Office



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37 CFR Parts 1 and 41



Rules of Practice Before the Board of Patent Appeals and Interferences 
in Ex Parte Appeals; Proposed Rule

Federal Register / Vol. 75 , No. 219 / Monday, November 15, 2010 / 
Proposed Rules

[[Page 69828]]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 41

[No. PTO-P-2009-0021]
RIN 0651-AC37


Rules of Practice Before the Board of Patent Appeals and 
Interferences in Ex Parte Appeals

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking; request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) proposes changes to rules governing practice before the Board 
of Patent Appeals and Interferences (Board or BPAI) in ex parte patent 
appeals. After considering public comments raised in response to an 
Advanced Notice of Proposed Rulemaking, which proposed potential 
modifications to the stayed final rule, the Office is proposing to 
rescind the stayed final rule and is issuing this notice seeking public 
comment on proposed new revisions to the current rule. The goal of this 
proposed rulemaking is to simplify the appellate process in a manner 
that effects an overall lessening of the burden on appellants and 
examiners to present an appeal to the Board.

DATES: The deadline for receipt of written comments on the proposed 
rulemaking is 5 p.m. Eastern Standard Time on January 14, 2011.

ADDRESSES: Written comments on the proposed rulemaking should be sent 
by electronic mail message over the Internet addressed to 
[email protected]. Comments on the proposed rulemaking may also be 
submitted by mail addressed to: Mail Stop Interference, Director of the 
United States Patent and Trademark Office, P.O. Box 1450, Alexandria, 
VA 22313-1450, marked to the attention of ``Linda Horner, BPAI Rules.'' 
Although comments may be submitted by mail, the USPTO prefers to 
receive comments via the Internet.

FOR FURTHER INFORMATION CONTACT: Linda Horner, Administrative Patent 
Judge, Board of Patent Appeals and Interferences, by telephone at (571) 
272-9797, or by mail addressed to: Mail Stop Interference, Director of 
the United States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, VA 22313-1450, marked to the attention of Linda Horner.

SUPPLEMENTARY INFORMATION:

Background

    On July 30, 2007, the Office published a notice of proposed 
rulemaking governing practice before the Board in ex parte patent 
appeals (72 FR 41,472 (Jul. 30, 2007)). The notice was also published 
in the Official Gazette. 1321 Off. Gaz. Pat. Office 95 (Aug. 21, 2007). 
The public was invited to submit written comments. Comments were to be 
received on or before September 28, 2007.
    On June 10, 2008, a final rulemaking was then published in the 
Federal Register (73 FR 32,938 (Jun. 10, 2008)). This final rule stated 
that the effective and applicability dates were December 10, 2008. On 
June 9, 2008, the Office published a 60-day Federal Register notice (73 
FR 32,559 (Jun. 9, 2008)) requesting the Office of Management and 
Budget (OMB) establish a new information collection for BPAI items in 
the final rule and requesting public comment on the burden impact of 
the final rule under the provisions of the Paperwork Reduction Act 
(PRA). On October 8, 2008, the Office published a 30-day Federal 
Register notice (73 FR 58,943 (Oct. 8, 2008)) stating that the proposal 
for the collection of information under the final rule was being 
submitted to OMB and requesting that comments on the proposed 
information collection be submitted to OMB. Because the information 
collection process had not been completed by the original effective and 
applicability date of the final rule, the Office published a Federal 
Register notice (73 FR 74972 (Dec. 10, 2008)) notifying the public that 
the effective and applicability dates of the final rule was not 
December 10, 2008, and that the effective and applicability dates would 
be delayed until a subsequent notice.
    On January 20, 2009, the Assistant to the President and Chief of 
Staff instructed agencies via a memorandum entitled, ``Regulatory 
Review,'' (74 FR 4435 (Jan. 20, 2009)) to consider seeking comments for 
an additional 30 days on rules that were published in the Federal 
Register and had not yet become effective by January 20, 2009. On 
January 21, 2009, the Office of Management and Budget issued a 
memorandum entitled, ``Implementation of Memorandum Concerning 
Regulatory Review,'' (available at http://www.whitehouse.gov/sites/default/files/omb/assets/agencyinformation_memoranda_2009_pdf/m09-08.pdf) which provided agencies further guidance on such rules that had 
not yet taken effect. For such rules, both memoranda stated that 
agencies should consider reopening the rulemaking process to review any 
significant concerns involving law or policy that have been raised.
    On December 22, 2009, the Office published an Advance Notice of 
Proposed Rulemaking (ANPRM) proposing further modifications to the 
stayed final rule and seeking public comment via a public roundtable 
and written comment (74 FR 67,987 (Dec. 22, 2009)).

Request for Comments

    In light of the comments received to these notices, the Office is 
now proposing to rescind the stayed final rule and is proposing new 
changes to the current rules of practice before the Board in ex parte 
appeals, and is publishing this Notice of Proposed Rulemaking (NPRM) to 
solicit input from interested members of the public on the proposed new 
changes to the current rule.

Purposes for Proposed Changes to the Current Rule

    The USPTO proposes to amend the rules of practice in ex parte 
patent appeals to avoid undue burden on appellants or examiners to 
provide information from the record to the Board, to eliminate any gap 
in time from the end of briefing to the commencement of the Board's 
jurisdiction, to clarify and simplify petitions practice in appeals, 
and to reduce confusion as to which claims are on appeal. For example, 
the Office proposes to amend the rules to: (1) Remove several of the 
current briefing requirements for an appeal brief, (2) provide for the 
Board to take jurisdiction over the appeal earlier in the appeal 
process, (3) eliminate the Board's authority, absent the Director's 
approval, to remand an application to the examiner, (4) no longer 
require examiners to acknowledge receipt of reply briefs, (5) create 
specified procedures under which an appellant can seek review of an 
undesignated new ground of rejection in either an examiner's answer or 
in a Board decision, (6) provide that the Board will presume that the 
appeal is taken from the rejection of all claims under rejection unless 
cancelled by an applicant's amendment, and (7) clarify that, for 
purposes of the examiner's answer, any rejection that relies upon new 
evidence shall be designated as a new ground of rejection.
    For clarity, this notice refers in places to the ``current'' Board 
rules. The current rules in effect are the current Board rules as 
published in 37 CFR 41.1 through 41.81 (2010).
    One purpose of this proposed rulemaking is to ensure that the Board

[[Page 69829]]

has adequate information to decide ex parte appeals on the merits, 
while not unduly burdening appellants or examiners with unnecessary 
briefing requirements. In particular, the goal of this proposed 
rulemaking is to effect an overall lessening of the burden on 
appellants and examiners to present an appeal to the Board. For 
example, statements of the status of claims, the status of amendments, 
the grounds of rejection to be reviewed on appeal, and the claims 
appendix would no longer be required in the appeal brief (Proposed 
Bd.R. 41.37) or in the examiner's answer. Because this information is 
already available in the Image File Wrapper, it is unnecessary for 
appellants or examiners to provide this information to the Board. 
Moreover, by eliminating these briefing requirements, the Office 
expects to reduce the number of non-compliant appeal briefs and the 
number of examiners' answers returned to the examiner due to non-
compliance, which are a significant cause of delays on appeal. See 
USPTO, Top Eight Reasons Appeal Briefs are Non-Compliant, http://www.uspto.gov/ip/boards/bpai/procedures/top_8_reasons_appeal_brf_dec09.pdf.
    Another purpose of this proposed rulemaking is to eliminate any gap 
in time from the end of briefing to the commencement of the Board's 
jurisdiction, and to minimize the number of appeals that transfer back-
and-forth between the Board and the examiner. For example, under the 
proposed rules, the Board would take jurisdiction upon the earlier of 
the filing of a reply brief or the expiration of the time in which to 
file a reply brief (Proposed Bd.R. 41.35(a)). Examiners would no longer 
be required to acknowledge receipt of the reply brief (Proposed Bd.R. 
41.43 [removed]). The proposed rules also eliminate the Board's 
independent authority to remand an application to an examiner (Proposed 
Bd.R. 41.50(a)). Therefore, the Board would be required to decide the 
appeal on the merits, and only with the Director's approval may the 
Board remand an application back to the examiner (Proposed Bd.R. 
41.35(c)).
    The proposed rulemaking is also intended to clarify and simplify 
petitions practice on appeal. For example, except under limited 
circumstances, any information disclosure statement or petition filed 
while the Board possesses jurisdiction over the proceeding would be 
held in abeyance until the Board's jurisdiction ends (Proposed Bd.R. 
41.35(d)). Also, in response to public comments, and based on a 
comprehensive survey of case law from the United States Court of 
Appeals for the Federal Circuit (Federal Circuit) and United States 
Court of Customs and Patent Appeals (CCPA), the Office will provide 
improved guidance in the Manual of Patent Examination Procedure (MPEP), 
discussed infra, as to what constitutes a new ground of rejection in an 
examiner's answer. The proposed rulemaking explicitly sets forth the 
procedure under which an appellant can seek review of the Office's 
failure to designate a new ground of rejection in either an examiner's 
answer (Proposed Bd.R. 41.40) or in a Board decision (Proposed Bd.R. 
41.50(c)).
    Another purpose of this proposed rulemaking is to reduce confusion 
as to which claims are on appeal. For example, under the proposed 
rules, the Board would presume that the appeal is taken from the 
rejection of all claims under rejection unless cancelled by an 
applicant's amendment (Proposed Bd.R. 41.31(c)). This change would 
simplify practice for the majority of appellants who seek review of all 
claims under rejection by obviating the need to enumerate the rejected 
claims that are being appealed. This proposed rule would avoid the 
unintended cancellation of claims by the Office due to appellant's 
mistake in the listing of the claims in either the notice of appeal or 
in the appeal brief. Under current practice, if an appellant 
incorrectly lists the claims on appeal, or is silent in the brief as to 
some of the claims under rejection, then the Office assumes that such 
claims are not on appeal, and notes that those non-appealed claims 
should be cancelled by the examiner. Ex parte Ghuman, 88 USPQ2d 1478, 
2008 WL 2109842 (BPAI 2008) (precedential) (holding that when appellant 
does not appeal some of the claims under rejection and does not 
challenge the Examiner's rejection of these claims, then the Board will 
treat these claims as withdrawn from the appeal, which operates as an 
authorization for the Examiner to cancel those claims from the 
application). The Office is proposing to change this practice in order 
to avoid the unintended cancellation of claims due to oversight or 
mistake by appellants in listing the claims on appeal. This proposed 
change would replace the Office's procedure under Ghuman and simplify 
practice for examiners by no longer requiring examiners to cancel non-
appealed claims.
    The SUPPLEMENTARY INFORMATION in this notice provides: (1) A brief 
explanation of the proposed changes to the current rule, (2) a 
discussion of the differences between the proposed rule and the current 
rule, and (3) a copy of the proposed amendments to the regulatory text.

Brief Explanation of Proposed Changes to the Current Rule

    The notable changes in the proposed rule, as compared to the 
current Board rule, are: (1) The Board would presume that an appeal is 
taken from the rejection of all claims under rejection unless cancelled 
by an amendment filed by appellant (Proposed Bd.R. 41.31(c)); (2) the 
Board would take jurisdiction upon the filing of a reply brief or the 
expiration of time in which to file such a reply brief, whichever is 
earlier (Proposed Bd.R. 41.35(a)); (3) the requirements to include 
statements of the status of claims and grounds of rejection to be 
reviewed on appeal and the requirements to include a claims appendix, 
an evidence appendix and a related proceedings appendix would be 
eliminated from the appeal brief (Proposed Bd.R. 41.37(c)); (4) the 
Board may apply default assumptions if a brief omits a statement of the 
real party-in-interest or a statement of related cases (Proposed Bd.R. 
41.37(c)(1)(i) and (ii)); (5) for purposes of the examiner's answer, 
any rejection that relies upon new evidence shall be designated as a 
new ground of rejection (Proposed Bd.R. 41.39(a)(2)); (6) the appellant 
can await a decision on a petition seeking review of an examiner's 
failure to designate a rejection in the answer as a new ground of 
rejection prior to filing a reply brief (Proposed Bd.R. 41.40) and 
thereby avoid having to file a request for extension of time in which 
to file the reply brief; and (7) the examiner's response to a reply 
brief would be eliminated (Proposed Bd.R. 41.43 [removed]). A more 
detailed discussion of all of the proposed changes follows.

Discussion of Proposed Changes to the Current Rule

Explanation of Proposed Changes

    Existing rules in Part 1 are denominated as ``Rule x'' in this 
supplementary information. A reference to Rule 1.136(a) is a reference 
to 37 CFR 1.136(a) (2010).
    Existing rules in Part 11 are denominated as ``Rule x'' in this 
supplementary information. A reference to Rule 11.18(a) is a reference 
to 37 CFR 11.18(a) (2010).
    Existing rules in Part 41 are denominated as ``Bd.R. x'' in this 
supplementary information. A reference to Bd.R. 41.3 is a reference to 
37 CFR 41.3 (2010).
    Proposed rules are denominated as ``Proposed Bd.R. x'' in this 
supplementary information.

[[Page 69830]]

    The Board has jurisdiction to consider and decide ex parte appeals 
in patent applications (including reissue, design and plant patent 
applications) and ex parte reexamination proceedings.
    The proposed rules do not propose to change any of the rules 
relating to inter partes reexamination appeals. Nor do the proposed 
rules propose to change any of the rules relating to contested cases.
    For purposes of this notice of proposed rulemaking, some paragraphs 
that are proposed to be deleted are shown as ``reserved.'' These 
``reserved'' paragraphs will be deleted entirely in the final rule, and 
the remaining paragraphs in each section will be renumbered, as 
appropriate.

Discussion of Proposed Changes to Specific Rules

Part 1

Termination of Proceedings
    Proposed Rule 1.197 proposes to revise the title of this section 
and to delete paragraph (a), the provision that sets forth when 
jurisdiction passes from the Board to the examiner after a decision has 
been issued by the Board. The operative language of this paragraph has 
been incorporated into Proposed Bd.R. 41.54, except that ``transmittal 
of the file'' has been omitted. Most patent application files are 
electronic files (Image File Wrapper files), not paper files. 
Accordingly, a paper file is no longer ``transmitted'' to the examiner. 
The changes to Proposed Rule 1.197 and Proposed Bd.R. 41.54 are 
intended to more accurately reflect the fact that files are handled 
electronically within the Office, and do not imply that there would be 
a change in the practice for passing jurisdiction back to the examiner 
after decision by the Board--the process would remain the same under 
the proposed rule.
    The ANPRM did not propose any changes to this section. As such, no 
comments were received in connection with this section.

Part 41

Authority
    The listing of authority for Part 41 would be revised to add 
references to 35 U.S.C. 132, 133, 306, and 315. Section 132 provides 
that the Director shall prescribe by regulations to provide for the 
continued examination of applications for patent at the request of the 
applicant. Section 133 states that upon failure of the applicant to 
prosecute the application within six months after any action therein, 
the application shall be regarded as abandoned. Section 306 establishes 
the patent owner's right to appeal in an ex parte reexamination 
proceeding. Section 315 establishes the right to appeal in an inter 
partes reexamination proceeding.

Subpart A

Citation of Authority
    Proposed Bd.R. 41.12 proposes to delete from the current rule the 
requirements: (1) To cite to particular case law reporters, and (2) to 
include parallel citations to multiple reporter systems. The proposed 
rule indicates a Board preference for citations to certain reporters 
and for limited use of non-binding authority.
    The ANPRM proposed to delete the requirement in Bd.R. 41.12 to use 
parallel citations. The Office received one comment that the changes to 
this section proposed in the ANPRM were unclear. Specifically, the 
comment questioned whether the proposed changes made certain citations 
mandatory or if the citations were a preference of the Board. The 
Office also received one comment stating that requiring reporter cites 
is burdensome on parties and does not provide any efficiency to the 
Board. This comment further noted that requiring the filing of a copy 
of authorities relied upon would be unduly burdensome.
    This section of the proposed rule has been revised to eliminate the 
previously proposed requirement to cite to a particular case law 
reporter and the previous requirement to include parallel citations to 
multiple reporter systems. The requirement to include pinpoint 
citations, whenever a specific holding or portion of an authority is 
invoked, is maintained. Because Administrative Patent Judges have 
access to both the West Reporter System and the United States Patents 
Quarterly, it is unnecessary for appellants to cite to both reporters.
    The proposed rule, as well as the current rule, states that 
appellants should provide a copy of an authority if the authority is 
not an authority of the Office and is not reproduced in the United 
States Reports or the West Reporter System. This provision is designed 
to ensure that a full record is before the Administrative Patent Judge 
to allow an efficient and timely decision to be made on the merits of 
the case.

Subpart B

Definitions
    Proposed Bd.R. 41.30 proposes to add a definition of ``Record'' to 
the current rule so that, when subsequent sections of Subpart B refer 
to the ``Record'', it is clear what constitutes the official record on 
appeal. The proposed rule would state that the official record contains 
the items listed in the content listing of the image file wrapper, 
excluding papers that were denied entry. The proposed definition of 
``Record'' includes the items listed in the content listing of the 
image file wrapper because, in some cases, physical items that form 
part of the official file are not able to be scanned into the image 
file wrapper and are maintained elsewhere, such as in an artifact file. 
Some examples of such items include original drawings in design patent 
applications and sequence listings. In such cases, the image file 
wrapper will include an entry in the contents listing that points to 
this artifact file.
    The ANPRM proposed to amend Bd.R. 41.30 to add a definition of 
``Record'' to mean ``the official content of the file of an application 
or reexamination proceeding on appeal.'' The Office received only one 
comment to this proposed change in the ANPRM, which approved of the 
proposal.
    This section of the proposed rule includes a slightly different, 
but clearer, definition of ``Record'' than that which was proposed in 
the ANPRM. In particular, the definition in Proposed Bd.R. 41.30 
explicitly excludes any amendment, evidence, or other document that was 
denied entry. Because an examiner's refusal to enter an amendment, 
evidence, or other document is a petitionable matter that is not 
subject to review by the Board, the exclusion of such un-entered 
documents from the proposed definition of ``Record'' reflects the fact 
that the Board's review of patentability determinations is properly 
based on the record of all entered documents in the file.
Appeal to the Board
    Proposed Bd.R. 41.31(a) proposes to revise the current rule to make 
clear that an appeal to the Board is taken by filing a notice of 
appeal. This proposed change is not intended to change the current 
practice of the Office. The Office currently requires appellants to 
file a notice of appeal in order to appeal an adverse decision of the 
examiner to the Board.
    The ANPRM proposed to amend 41.31(a) to clarify that an appeal is 
taken to the Board by filing a notice of appeal. The Office received a 
comment that the changes proposed in the ANPRM, which would have 
deleted reference to the statutory conditions under which a right of 
appeal arises, lacked clarity. Specifically, the comment noted that it 
would promote efficiency to retain the specific statutory conditions 
for appeal

[[Page 69831]]

in the rules to provide clarity to appellants and practitioners who 
might read only the rules and not the underlying statutes. Proposed 
Bd.R. 41.31 proposes to keep the language of sections (a)(1), (a)(2), 
and (a)(3) found in the current rule, thus retaining the statutory 
conditions under which a right of appeal arises.
    The Office received another comment that proposed eliminating the 
notice of appeal requirement altogether because it causes unnecessary 
delay in the appellate process. This suggestion is not adopted. The 
filing of the notice of appeal is an important procedural step of the 
larger prosecution process at the Office. For example, the filing of a 
notice of appeal triggers the appellant's ability to file a pre-appeal 
brief conference request.
    The Office received a comment to the ANPRM requesting that the 
Office provide statistics on the Pre-Appeal Brief Conference program. 
For each full fiscal year (FY) since the Pre-Appeal Brief Conference 
program was launched, the following charts show: (1) The annual number 
of such requests, (2) the percent of notices of appeal that contain a 
request, (3) the outcomes of the conferences, and (4) a comparison of 
the outcomes of the Pre-Appeal Brief Conference to the Appeal 
Conference.

                             Pre-Appeal Brief Conference Effects: Actions in Response to Request for Pre-Appeal Brief Review
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                                                                           Frequency of     Proceed to      Prosecution   All rejections     Defective
                           FY                                Number of       requests          board         reopened        withdrawn        request
                                                             requests        (percent)       (percent)       (percent)       (percent)       (percent)
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06......................................................           6,525              24              55              37               5               3
07......................................................           7,240              25              56              38               4               2
08......................................................           8,255              27              59              37               2               2
09......................................................           9,967              30              56              39               3               2
10......................................................          12,019              34              56              38               5               1
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                         Appeal Conference Effects: Actions in Response to Appeal Brief
----------------------------------------------------------------------------------------------------------------
                                                               Prosecution     All rejections
                   FY                        Examiner's         reopened          withdrawn       Other action
                                          answer (percent)      (percent)         (percent)         (percent)
----------------------------------------------------------------------------------------------------------------
98......................................                58                12                29                 1
99......................................                52                15                32                 1
00......................................                46                21                32                 1
01......................................                40                25                34                 1
02......................................                38                26                34                 1
03......................................                38                29                31                 1
04......................................                39                32                27                 2
05......................................                39                35                24                 2
06......................................                49                30                19                 2
07......................................                56                28                14                 2
08......................................                59                28                12                 1
09......................................                56                27                16                 1
10......................................                59                23                17                 1
----------------------------------------------------------------------------------------------------------------

    Proposed Bd.R. 41.31(b) proposes to revise the current rule to make 
clear that the signature requirements of Rules 1.33 and 11.18(a) do not 
apply to the notice of appeal. This proposed change updates paragraph 
(b) to add a reference to Rule 11.18(a) to avoid any conflict between 
the rules of practice in ex parte appeals and the rules governing 
practice by registered practitioners before the Office.
    The ANPRM proposed to remove the provision that a notice of appeal 
need not be signed. One comment requested clarification as to why the 
ANPRM proposed to delete paragraph (b) of the current rule. The comment 
suggested removing this flexibility might lead to mistakes and more 
work for both the Office and appellants to correct such mistakes. In 
light of this comment, Proposed Bd.R. 41.31(b) would retain the 
provision that a notice of appeal need not be signed and would further 
clarify that Rule 11.18(a) does not apply to a notice of appeal, so as 
to avoid any conflict in the requirements for practitioners under this 
title.
    Proposed Bd.R. 41.31(c) proposes to revise the current rule so that 
an appeal, when taken, would be presumed to seek review of all of the 
claims under rejection unless canceled by an amendment filed by the 
appellant. This proposed change, obviates the need for the majority of 
appellants who seek review of all claims under rejection to 
affirmatively state (in the notice of appeal and/or in the status of 
claims section of the appeal brief) which claims are on appeal. Rather, 
under Proposed Bd.R. 41.31(c), the Board would presume that an 
appellant intends to appeal all claims under rejection except for those 
that the appellant has canceled. This proposed change avoids the 
unintended cancellation of claims by the Office due to an appellant's 
mistake in the listing of the claims in either the notice of appeal or 
in the appeal brief. Under current practice, if an appellant 
incorrectly lists the claims on appeal, or is silent in the brief as to 
any of the claims under rejection, then the Office assumes that such 
claims are not on appeal, and notes that those non-appealed claims 
should be cancelled by the examiner. Ex parte Ghuman, 88 USPQ2d 1478, 
2008 WL 2109842 (BPAI 2008) (precedential) (holding that when appellant 
does not appeal some of the claims under rejection and does not 
challenge the Examiner's rejection of these claims, then the Board will 
treat these claims as withdrawn from the appeal, which operates as an 
authorization for the Examiner to cancel those claims from the 
application). The proposed rule would avoid potential unintended 
cancellation of claims due to oversight or mistake by appellants in 
listing the claims on appeal. This proposed change would replace the 
Office's procedure under Ghuman and simplify practice for examiners by 
no

[[Page 69832]]

longer requiring examiners to cancel non-appealed claims. Any appellant 
who wishes to appeal fewer than all rejected claims should file an 
amendment cancelling the non-appealed claims. If an appellant does not 
file an amendment cancelling claims that the appellant does not wish to 
appeal, but then also fails to provide any argument in the appeal brief 
directed to those claims, then the Board may simply affirm any 
rejections against such claims.
Amendments and Affidavits or Other Evidence After Appeal
    Proposed Bd.R. 41.33(c) proposes to delete cross-references to 
Bd.R. 41.50(a)(2)(i) and Bd.R. 41.50(c) from the current rule. As noted 
infra, Proposed Bd.R. 41.50 proposes to delete paragraph (a)(2)(i) from 
the current rule and to amend paragraph (c) so that it is no longer 
applicable to Proposed Bd.R. 41.33(c).
    Proposed Bd.R. 41.33(d)(2) proposes to delete the cross-reference 
to Bd.R. 41.50(a)(2)(i) from the current rule. As noted infra, Proposed 
Bd.R. 41.50 proposes to delete paragraph (a)(2)(i) from the current 
rule.
    The ANPRM proposed to limit the types of amendments and evidence 
that could be filed on or after an appeal brief. The restrictions set 
forth in the ANPRM were identical to the restrictions in current Bd.R. 
41.33.
    The Office received one comment that the restrictions set forth in 
the ANPRM would limit the examiner's ability to enter amendments or 
evidence after an appeal is filed, thus potentially preventing an 
examiner from entering an amendment suggested by the examiner that 
would possibly render the claims allowable. The comment suggested 
adding a third condition for allowance to section (b) for an examiner-
approved amendment and to add a new rule allowing appellants to submit 
examiner-requested evidence after an appeal is filed.
    Proposed Bd.R. 41.33 does not substantively change the current 
rule. Both the current rule and the rule proposed in this NPRM restrict 
the types of amendments and evidence that can be filed after filing a 
brief. This approach is designed to promote efficiency of the Board in 
its review by ensuring that the Board has the benefit of the examiner's 
final evaluation of the weight and sufficiency of any evidence relied 
upon by appellants prior to the Board rendering a decision on appeal.
    The Office received another comment that the restrictions set forth 
in the ANPRM would prevent appellants from submitting evidence to rebut 
an examiner's position raised for the first time after a notice of 
appeal is filed, specifically in an examiner's answer. Proposed Bd.R. 
41.40 has been added to respond to the comments desiring clarification 
of how appellants can file a petition to the Director under Rule 1.181 
seeking review of the examiner's failure to designate a rejection as a 
new ground of rejection if they feel that the examiner's answer 
contains a new ground of rejection that necessitates the filing of new 
amendments or new evidence. Thus, appellants are afforded due process 
by granting a fair opportunity to respond to all aspects of a rejection 
prior to appeal. Since the filing of such a Rule 1.181 petition tolls 
the period for filing a reply brief, appellants would not need to incur 
the expense of preparing and filing a reply brief if their petition is 
granted, and examiners would not be required to respond to appellants' 
requests under Rule 1.136(b) for extensions of time in which to file a 
reply brief while the petition is being decided.
    The Office received another comment that the rule proposed in the 
ANPRM seemed to conflict with Sec.  556(d) of the Administrative 
Procedure Act (APA) which guarantees the right to submit rebuttal 
evidence in agency proceedings and with case law from the Federal 
Circuit. As noted supra, the Proposed Bd.R. 41.40 in this NPRM provides 
appellants with procedures to file a petition to the Director under 
Rule 1.181 seeking review of the examiner's failure to designate a 
rejection as a new ground of rejection and, consequently, if granted, 
have an opportunity to reopen prosecution and submit rebuttal evidence, 
consistent with the APA.
Jurisdiction Over Appeal
    Proposed Bd.R. 41.35(a) proposes to revise the current rule to 
provide that jurisdiction over the appeal passes to the Board upon the 
filing of a reply brief or the expiration of the time in which to file 
such a reply brief, whichever is earlier. This proposed change is 
deemed necessary because current Bd.R. 41.35(a) provides that the Board 
acquires jurisdiction upon transmittal of the file to the Board. Most 
patent application files are electronic files (Image File Wrapper 
files), not paper files. Accordingly, a paper file is no longer 
``transmitted'' to the Board.
    The Board intends to continue sending a docket notice as a courtesy 
to appellants to indicate that the Board has assigned an appeal number 
to the appeal. By having the Board's jurisdiction commence immediately 
upon the filing of a reply brief or the expiration of the time in which 
to file such a reply brief, there would be no affirmative step required 
to be taken by the Board prior to assuming jurisdiction and no gap in 
time from the end of the briefing to the commencement of jurisdiction 
by the Board.
    The ANPRM proposed that jurisdiction of the Board would begin when 
a docketing notice was mailed by the Board. The Office received one 
comment suggesting that an appeal should be instantly docketed at the 
Board upon receipt of a reply brief. The Office has adopted this 
proposed change substantially as suggested, while taking into account 
that some appellants may choose not to file a reply brief. The Office 
received another comment suggesting that jurisdiction should pass to 
the Board upon the filing of the notice of appeal, and thus, the Board 
would be the only entity reviewing briefs for compliance with the rule. 
The Office chose not to adopt this proposed change, because if the 
Board acquired jurisdiction upon filing of a notice of appeal, this 
change would foreclose the opportunity for the examiner, upon reviewing 
the appeal brief, to find some or all of the appealed claims patentable 
prior to the Board taking jurisdiction, thus obviating the need to 
proceed with the appeal. To address the concern raised by the public 
comment, the Office chose instead to implement a streamlined procedure 
for review of briefs in ex parte appeals in which the Chief Judge of 
the Board is the sole reviewer of briefs for compliance with the rules. 
A streamlined procedure for review of briefs in appeals involving both 
patent applications (75 FR 15,689 (March 30, 2010)) and ex parte 
reexamination proceedings (75 FR 29,321 (May 25, 2010)) has already 
been implemented. As such, the Board is currently the only reviewing 
body for appeal brief compliance.
    Proposed Bd.R. 41.35(b) proposes to remove from the current rule 
the provision that gives the Board the power to return an appeal to the 
examiner if the Board deems that a file is not complete or not in 
compliance with the requirements of Subpart B. Rather, if a file is not 
in condition for the Board to render a decision on the appeal, the file 
may be remanded to the examiner by a Director-ordered remand pursuant 
to Bd.R. 41.35(c). Proposed Bd.R. 41.35(b) also proposes to revise the 
current rule to make clear when the Board's jurisdiction ends so that 
no gaps in time exist between the end of the Board's jurisdiction and 
further action by the examiner.
    The ANPRM similarly proposed revising Bd.R. 41.35(b) to set forth 
when the Board's jurisdiction ends. The Office

[[Page 69833]]

received no comments in response to this proposed change.
    Proposed Bd.R. 41.35(c) proposes to add to the current rule a 
paragraph heading and a cross-reference to a relevant section of the 
rule.
    Proposed Bd.R. 41.35 proposes to add a new paragraph (d) to the 
current rule to provide that, except for petitions authorized by part 
41 of this title, the Board would not return or remand an application 
for consideration of an information disclosure statement or a petition 
filed while the Board possesses jurisdiction, and that consideration of 
such filings would be held in abeyance until the Board's jurisdiction 
ends. The Board's jurisdiction begins upon the filing of the reply 
brief or upon the expiration of the time for filing a reply brief. 
Therefore, under both current and Proposed Bd.R. 41.33(d)(2), the 
filing of an information disclosure statement during the Board's 
jurisdiction constitutes the introduction of untimely evidence. 
Similarly, because Rule 1.181 provides that petitions must be filed 
within two months of the mailing date of the action or notice from 
which relief is requested, and because the Board's jurisdiction begins 
up to two months after the mailing date of the examiner's answer 
(assuming no petition under Rule 1.181 is filed), it follows that all 
petitions relating to the examination phase of the application or 
reexamination proceeding ought to be filed prior to the time the Board 
takes jurisdiction. It is in the interest of compact prosecution that 
the Office not delay a decision on appeal for consideration of untimely 
evidence and petitions. Proposed Bd.R. 41.35(d) excludes ``petitions 
authorized by this part.'' For example, petitions authorized by part 41 
include petitions under Bd.R. 41.3.
    Proposed Bd.R. 41.35(d) was not part of the ANPRM, and thus no 
comments were received pertaining to it.
Appeal Brief--Timing and Fee; and Failure To File a Brief
    Proposed Bd.R. 41.37(a) and (b) propose to add paragraph headings 
to the current rule.
    The ANPRM proposed minor wording changes to paragraphs (a) and (b), 
but proposed no substantive amendments. No comments were received 
regarding these paragraphs. In order to avoid changes to the current 
rule that are not necessary for clarification or improved practice and 
procedure, these paragraphs of the proposed rule add only descriptive 
headings and the remainder of the text is the same as the current rule.
Appeal Brief--Content of Appeal Brief--Preamble
    Proposed Bd.R. 41.37(c)(1) proposes to add a paragraph heading to 
the current rule. Additionally, Proposed Bd.R. 41.37(c)(1) proposes to 
add the introductory phrase ``Except as otherwise provided in this 
paragraph'' to the current rule to clarify that several of the content 
requirements listed in paragraph (c)(1) contain exceptions that may 
result in an appeal brief containing fewer than all items listed in 
paragraph (c)(1). Proposed Bd.R. 41.37(c)(1) would also revise the 
current rule to correct the cross-references in light of further 
changes to this section, discussed infra.
Appeal Brief--Content of Appeal Brief--Real Party in Interest
    Proposed Bd.R. 41.37(c)(1)(i) proposes to revise the current rule 
to provide that the statement identifying the real party in interest 
should be accurate as of the date of filing of the appeal brief. 
Proposed Bd.R. 41.37(c)(1)(i) would revise the current rule to allow 
the Board to assume, if the statement of real party in interest is 
omitted from the appeal brief, that the named inventors are the real 
party in interest. These changes are proposed to decrease the burden on 
appellants by allowing appellants to omit this statement if the named 
inventors are the real party in interest. The purpose of this section 
is to enable Administrative Patent Judges to determine whether they 
have a conflict of interest with the real parties in the case and then 
to appropriately recuse themselves if such a conflict of interest is 
found. The information required in Proposed Bd.R. 41.37(c)(1)(i) is the 
minimum information needed by the Board to effectively make this 
determination.
    The ANPRM proposed a default rule that if the brief omits this 
statement, the Office would assume that the named inventors are the 
real party in interest. The Office received no comments in response to 
these proposed changes.
    The proposed rule includes substantially the same default provision 
as the ANPRM, but it states that the Office ``may'' make the 
assumption. Thus, the Office is not required to make the assumption if 
it is aware of information to the contrary.
Appeal Brief--Content of Appeal Brief--Related Appeals and 
Interferences
    Proposed Bd.R. 41.37(c)(1)(ii) would be revised to limit the 
required disclosure of related appeals, interferences and judicial 
proceedings (collectively ``related cases'') to only those which: (1) 
Involve an application or patent owned by the appellant or assignee, 
(2) are known to appellant, and (3) may have a bearing on the Board's 
decision. The section would also be revised to permit appellants to 
omit the statement entirely if there are no such related cases, and to 
provide a default assumption for the Office in the event the statement 
is omitted.
    The ANPRM proposed revising this requirement to make clear that 
appellants are under a continuing obligation to update the statement of 
related cases. The ANPRM also proposed a default rule that if the brief 
omits this statement; the Office would assume that there are no such 
related cases.
    The Office received several comments to the proposed changes to 
this section in the ANPRM (41.37(g) of the ANPRM). Specifically, one 
comment stated that the language of the ANPRM was overly broad, and 
suggested that the rule should be narrowed to require disclosure of 
only applications of the assignee, and that the continuing obligation 
to update this information was unduly burdensome to appellants. Another 
comment stated that the information that was required in the ANPRM was 
available to the Office and that requiring appellants to disclose this 
level of detail would be unduly burdensome. Another comment was 
concerned with charges of inequitable conduct for failure to include 
related appeals and proposed that the rules require appellants to 
identify only related U.S. court actions and decisions, and that the 
Office should bear the burden of searching the IFW system to identify 
related cases. Another comment stated that the rules should not impose 
a continuing obligation to update this information throughout the 
course of the appeal as that places a large burden on appellants. 
Another comment posited that the language in the ANPRM was overbroad 
and vague. Another comment stated that the term ``significant'' used in 
the ANPRM was indefinite. Another comment expressed concern that the 
term ``related case'' was used differently in the ANPRM than it is used 
for Information Disclosure Statements and suggested clarifying the term 
or adopting new terminology.
    In response to some of the concerns raised by these comments, the 
proposed rule has narrowed the information required to be included in 
the statement of related cases in the appeal brief, as compared to the 
current rule, to limit the statement to appeals in cases which are 
owned by the same appellant(s) or assignee. The proposed rule removes 
the language in the prior proposed Bd.R.

[[Page 69834]]

41.37(c)(1)(ii) regarding a continuing obligation to update this 
information. The proposed rule in this NPRM retains a default 
provision, originally proposed in the ANPRM, so that a statement that 
there are ``no known related cases'' is not required and that fact 
``may'' be inferred from the absence of a statement. The proposed rule 
also no longer requires filing of copies of decisions in related cases. 
The narrowed scope of this proposed section, as compared to the current 
rule, lessens the burden on appellants from the statement that is 
currently required and addresses concerns raised in the comments 
received to the ANPRM.
Appeal Brief--Content of Appeal Brief--Status of Claims
    Proposed Bd.R. 41.37(c)(1)(iii) omits the current requirement for 
the appeal brief to contain an indication of the status of claims.
Appeal Brief--Content of Appeal Brief--Statement of Last Entered 
Amendment
    Proposed Bd.R. 41.37(c)(1)(iv) proposes to eliminate the current 
requirement to provide a statement of the status of any amendment filed 
subsequent to final rejection, and would require that appellants simply 
provide a statement identifying, by date of filing, the last entered 
amendment of the claims. The proposed rule also provides a default that 
the Office may assume no amendments to the claims exist if the appeal 
brief omits this statement.
    The ANPRM, like the current rule, required the appeal brief to 
include a statement of the status of all amendments filed after final 
rejection. The Office is proposing instead in this NPRM that the Office 
bear the burden of reviewing the IFW to identify the claims on appeal. 
The proposed rule requires appellants to provide the date of filing of 
the last entered amendment only so that the Board will know the set of 
claims to which the appellant's arguments apply.
Appeal Brief--Content of Appeal Brief--Summary of Claimed Subject 
Matter
    Proposed Bd.R. 41.37(c)(1)(v) proposes to revise the current rule 
to require that the summary of claimed subject matter include an 
annotated copy of each rejected independent claim wherein the 
annotations would appear after each limitation in dispute by appellant 
and include a reference to the specification in the Record showing 
support for the claim language sufficient to allow the Board to 
understand the claim. Proposed Bd.R. 41.37(c)(1)(v) would also apply to 
each means plus function or step plus function recitation in dispute by 
appellant. Additionally, Proposed Bd.R. 41.37(c)(1)(v) would clarify 
that reference to the pre-grant patent application publication is not 
sufficient to satisfy the requirements for the summary of claimed 
subject matter.
    The ANPRM proposed to revise the summary of claimed subject matter 
to require an annotated copy of each element of each independent claim. 
The ANPRM also proposed to revise this requirement to call for an 
annotated copy of every means plus function or step plus function 
recitation in any independent claim on appeal or in any dependent claim 
separately argued.
    The Office received a comment that it was not clear in the ANPRM 
whether this rule would have imposed a requirement to cite every 
instance of support, or simply to provide citations sufficient to 
understand the scope and meaning of the claim limitations. Another 
comment similarly requested the Office to clarify that this provision 
is only an aid to understanding the claimed subject matter, and that 
the Office will construe claims based upon the entire disclosure. 
Another comment suggested that the rule should not require appellants 
to cite to every instance of support in the Specification, but only the 
``best'' support in the Specification.
    These comments were well taken. The proposed rule makes clear that 
the reference to the specification and figures required under this 
section need only be ``sufficient to understand the claim,'' thus 
clarifying that every reference to the claim limitation in the 
specification need not be cited.
    The Office received numerous comments that the rule should not 
require appellants to map claim elements not in dispute. Some comments 
stated that it is against a practitioner's interest to say more than 
what is required for issues on appeal as it raises potential 
malpractice issues for practitioners. Other comments stated that 
requiring appellants to map all claim elements, including elements not 
in dispute, would be comparable to requiring the practitioner to 
evaluate claim support, which would potentially waive arguments or take 
positions that create estoppels or disclaimers, leading to potential 
malpractice claims.
    In response to these comments, the proposed rule limits the 
requirement to annotate the claims to only those limitations which are 
actually in dispute, thus significantly limiting any potential estoppel 
or malpractice issues.
    The Office received another comment suggesting that there should be 
no requirement to map claim support for independent claims which are 
not argued separately as they will be affirmed or rejected as a group.
    The Office declined to change this requirement of the current rule. 
Thus, the proposed rule still requires appellants to provide a summary 
of claimed subject matter for each rejected independent claim. The 
Office decided not to change this requirement because each independent 
claim in a group may be different in scope and no one claim may clearly 
be the ``broadest.'' The Board has the option to select a single claim 
from a group to decide the appeal as to the group of claims. The Board 
needs claim mapping for each independent claim so that it can select 
which claim is representative of the group. Otherwise, appellants might 
select one claim to map and the Board might decide to select a 
different claim as representative of the group, in which case the Board 
will not have the benefit of the claim summary for the selected 
representative claim.
    The proposed rule further clarifies the requirement for reference 
to the specification by noting that it should be by annotation of the 
actual claim language with reference to the page and line number or 
paragraph number of the specification. The proposed rule further 
clarifies that citation to the pre-grant publication of the application 
is not acceptable.
    The Office received one comment suggesting that the Board clarify 
the current rule by giving examples and guidance to practitioners 
rather than by adopting a new rule. The following are examples of 
acceptable claim summaries:
    In each example, the only claim limitation in dispute in the 
appeal, and thus the only claim limitation annotated, is the ``pivot 
axle'' limitation of the claim.
Example 1:
1. An apparatus, comprising:
    A first arm;
    a second arm; and
    a pivot axle (Spec. 6, ll. 1-10; Spec. 7, ll. 21-27; figs. 1, 2) 
disposed between said first arm and said second arm.
Example 2:
1. An apparatus, comprising:
    A first arm;
    a second arm; and
    a pivot axle (paras. 0032, 0033, 0040; figs. 1, 2) disposed between 
said first arm and said second arm.
    The Office received one comment requesting that the rule should 
allow various formats based on USPTO provided models, including a 
columnar chart, which would provide more

[[Page 69835]]

flexibility to appellants. This suggestion was not adopted because the 
formats received under the current rule vary widely, with some 
summaries containing little to no useful information. It is important 
to impose a specific format for this rule to ensure that the Board 
obtains the information that will be most useful. This requirement for 
a strict format has been offset with a lessening of the burden on 
appellants by requiring annotation only for those elements in dispute. 
Also, the proposed rule is more flexible than the current rule in that 
it allows citation to paragraph number, rather than limiting citations 
to page and line number of the specification.
    The Office received another comment that the current rule is 
sufficient to provide an ``easy reference guide * * * to the relevant 
sections of the specification'' and that a more detailed requirement 
(such as that proposed in the ANPRM) is unnecessary. In drafting the 
proposed rule, the current rule was used as the basis for the 
revisions, rather than the rule proposed in the ANPRM. Proposed Bd.R. 
41.37(c)(1)(v) would provide a less detailed requirement than Bd.R. 
41.37(c)(1)(v) because the proposed rule requires annotation only for 
those elements in dispute.
    The Office received another comment suggesting that if appellant 
does not identify structure for a Sec.  112, ] 6 analysis, then ``for 
purposes of the appeal'' such limitations should not be limited to 
their corresponding structure under Sec.  112, ] 6. In light of the 
Federal Circuit's decision in In re Donaldson Co., 16 F.3d 1189, 1195 
(Fed. Cir. 1994) (en banc), in which the court held that the Office 
``may not disregard the structure disclosed in the specification 
corresponding to [means-plus-function] language when rendering a 
patentability determination,'' the Board cannot ignore the structure 
corresponding to a means plus function limitation to decide an appeal. 
As a compromise, the proposed rule does not require appellant to 
provide claim mapping for a Sec.  112, ] 6 limitation if that 
limitation is not in dispute.
Appeal Brief--Content of Appeal Brief--Grounds of Rejection To Be 
Reviewed on Appeal
    Bd.R. 41.37(c)(1)(vi) requires that the appeal brief include a 
statement of the grounds of rejection. The proposed rule eliminates the 
requirement for a statement of the grounds of rejection from the brief. 
Under Proposed Bd.R. 41.31(c), discussed supra, the Board would presume 
that all rejections made in the Office Action from which the appeal was 
taken are before it on appeal, unless appellant cancels the claim(s) 
subject to a particular rejection. Moreover, under Proposed Bd.R. 
41.37(c)(1)(vii), discussed infra, the headings of the argument section 
of the brief shall reasonably identify the ground of rejection being 
contested. Therefore, it is unnecessary for the appeal brief to contain 
a separate statement of the grounds of rejection on appeal--a source of 
internal inconsistency in appeal briefs filed under the current rules.
Appeal Brief--Content of Appeal Brief--Argument
    Proposed Bd.R. 41.37(c)(1)(vii) proposes to revise the current rule 
to clarify that the argument section should specifically explain why 
the examiner erred as to each ground of rejection contested by 
appellants. The proposed revision would also provide that, except as 
provided for in Proposed Bd.R. 41.41, 41.47, and 41.52, any arguments 
not included in the appeal brief will not be considered by the Board 
``for purposes of the present appeal.'' Additionally, Proposed Bd.R. 
41.37(c)(1)(vii) would require that each ground of rejection argued be 
set forth in a separate section with a heading that reasonably 
identifies the ground being argued therein. Further, the proposed rule 
would require that any claim(s) argued separately or as a subgroup be 
placed under a separate subheading that identifies the claim(s) by 
number.
    The ANPRM proposed to amend the argument section of the brief to 
require an explanation as to why the examiner erred. The ANPRM also 
stated that any finding or conclusion of the examiner that is not 
challenged would be presumed to be correct and that appellant would 
waive all arguments that could have been, but were not, addressed in 
the argument section of the brief.
    The Office received a large number of comments regarding the 
presumption of examiner correctness language in the ANPRM. Several 
comments stated that the proposed presumption of examiner correctness 
language improperly placed the burden of persuasion on appellants to 
show error in the examiner's rejection, is inconsistent with the 
statutory requirements of the Board, and is inconsistent with case law. 
Other comments noted concern that the duration and scope of the 
presumption of examiner correctness was not made clear in the proposed 
language of the ANPRM. Another comment noted that it is difficult to 
respond to all ``points'' stated by the examiner when the examiner's 
positions are not clearly delineated in the Office action. Other 
comments expressed concern that such a presumption would force 
appellants to contest every point made by the examiner instead of 
allowing them to focus the issues for appeal. In response to these 
comments, the proposed rule in this NPRM omits the presumption of 
examiner correctness from the rule.
    One comment suggested that the argument section of this rule should 
be changed to read, ``The 'argument' shall explain why the examiner 
erred as to each ground of rejection to be reviewed. Each ground of 
rejection shall be separately argued under a separate heading.'' The 
proposed rule substantially adopts this suggested language.
    The Office received further comments regarding the waiver language 
of this portion of the ANPRM. Specifically, the Office received some 
comments that the waiver provision would limit the Board's ability to 
independently review the examiner's rejections and base the decision on 
the entire record on appeal. Other comments stated that the waiver 
provision would lead to piecemeal review of the examiner's rejection. 
One comment suggested that, if the Board adopted this waiver language, 
the Board should also limit the review of the examiner's answer to the 
facts and reasons set forth therein. One comment distinguished between 
Federal Circuit waiver cases and BPAI waiver cases, because at the 
Federal Circuit both sides are precluded from raising new issues on 
appeal, whereas at the Board the examiner may raise new issues.
    The proposed rule in this NPRM omits the waiver language from the 
rule. Nonetheless, the case law supports the Office's position on 
waiver, so despite the waiver language not being included in the rule, 
the Board will still treat as waived, for purposes of the present 
appeal, any arguments not raised by appellant. See Hyatt v. Dudas, 551 
F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments 
appellant failed to make for a given ground of rejection as waived); In 
re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (declining to consider 
the appellant's new argument regarding the scope of a prior art patent 
when that argument was not raised before the Board); and In re 
Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997) (declining to consider 
whether prior art cited in an obviousness rejection was non-analogous 
art when that argument was not raised before the Board).
    The Office received another comment noting concern that the scope 
of the ``waiver'' is unclear, and noting that appellants should not be 
precluded from making arguments during

[[Page 69836]]

continued prosecution based on a waiver set forth in a prior appeal. 
Several comments suggested that the waiver should be limited in 
applicability for ``purposes of appeal only.'' The proposed rule 
permits the Board to refuse to consider arguments not raised in the 
appeal brief, except as provided in Proposed Bd.R. 41.41, 41.47, and 
41.52. This proposed language is substantially the same as the current 
Bd.R. 41.37(c)(1)(vii), which states that ``[a]ny arguments or 
authorities not included in the brief or a reply brief filed pursuant 
to Sec.  41.41 will be refused consideration by the Board, unless good 
cause is shown.'' Proposed Bd.R. 41.41, 41.47, and 41.52 have 
provisions allowing certain new arguments for good cause in reply 
briefs, at oral hearing, or in requests for rehearing which ensure that 
appellants have a full and fair opportunity to be heard before the 
Board. The proposed rule clarifies that the Board's right to refuse 
consideration of arguments not raised is ``for purposes of the present 
appeal'' so as to clarify that such right of refusal does not extend to 
subsequent Board appeals in the same or related applications. See 
Abbott Labs. v. TorPharm, Inc., 300 F.3d 1367, 1379 (Fed. Cir. 2002) 
(``[P]recedent has long supported the right of an applicant to file a 
continuation application despite an unappealed adverse Board decision, 
and to have that application examined on the merits. Where the Patent 
Office has reconsidered its position on patentability in light of new 
arguments or evidence submitted by the applicant, the Office is not 
forbidden by principles of preclusion to allow previously rejected 
claims.'' (internal citation omitted)).
    Proposed Bd.R. 41.37(c)(1)(vii) also proposes to revise the current 
rule to clarify the proper use of headings and to require the use of 
subheadings in order to clearly set out the ground of rejection and the 
specific claims to which each argument presented applies. These 
headings and subheadings will make certain that arguments are not 
overlooked by the examiner or the Board. The Office received one 
comment suggesting that allowing ``substantial'' compliance with the 
heading requirement of the appeal brief would prevent unnecessary 
delays in the appellate process. The comment stated that the 
requirement for headings has sometimes been interpreted by the Office 
to require a verbatim correlation to the ground of rejection as 
articulated by the examiner. The comment suggested that to prevent this 
requirement from being interpreted as a verbatim requirement, the rule 
should contain the following language ``An appeal brief that 
substantially complies with the content requirements will not be deemed 
non-compliant for minor errors in form.'' While the Office declined to 
add this proposed language to the rule, now that the Office has a sole 
reviewer of appeal briefs for compliance with this rule, the content 
requirements of this paragraph will not be interpreted as verbatim 
requirements and briefs will not be held non-compliant for minor 
formatting issues. In particular, as to the heading requirement, 
Proposed Bd.R. 41.37(c)(1)(vii) requires, ``Each ground of rejection 
contested by appellant must be argued under a separate heading, each 
heading shall reasonably identify the ground of rejection being 
contested (e.g., by claim number, statutory basis, and applied 
reference, if any).'' This proposed language means that the heading 
should contain enough detail so that the Office knows which ground of 
rejection is being argued. As to the subheading requirement, Proposed 
Bd.R. 41.37(c)(1)(vii) requires, ``Under each heading identifying the 
ground of rejection being contested, any claim(s) argued separately or 
as a subgroup shall be argued under a separate subheading that 
identifies the claim(s) by number.'' The Office offers the following 
examples of appropriate headings and subheadings which can be used for 
claims argued as a group, subgroup, or separately.
    Example 1: Claims 1-20 are pending. Claims 1-10 are rejected under 
35 U.S.C. 102(b) as being anticipated by Smith, and claims 11-20 are 
rejected under 35 U.S.C. 103(a) as being unpatentable over Smith and 
Jones. Appellant wishes to argue claims 1-10 as a group, and wishes to 
argue claims 11-19 as a subgroup and claim 20 separately.
[Heading 1:] ``Rejection of claims 1-10 under 35 U.S.C. 102(b) as 
anticipated by Smith''
    [Add Argument for claims 1-10 here].


    (Note:
     Because claims 1-10 are being argued as a single group for this 
ground of rejection, there is no need for any subheadings.)


{time} [Heading 2:] ``Rejection of claims 11-20 under 35 U.S.C. 103(a) 
over Smith and Jones''

    [Subheading 1:] ``Claims 11-19''
    [Add Argument for claims 11-19 here].
    [Subheading 2:] ``Claim 20''
    [Add Argument for claim 20 here].
    Example 2: Same facts as in Example 1 above.
[Heading 1:] ``Anticipation Rejection''
    [Add Argument for claims 1-10 here]


    (Note:
    Because there is only one anticipation rejection in the appeal, 
this heading is sufficient for the Board to know which ground of 
rejection is being argued. Also, because claims 1-10 are being 
argued as a single group for this ground of rejection, there is no 
need for any subheadings.)


{time} [Heading 2:] ``Obviousness Rejection''


    (Note:
     Because there is only one obviousness rejection in the appeal, 
this heading is sufficient for the Board to know which ground of 
rejection is being argued.)


    {time} [Subheading 1:] ``Claims 11-19''
    [Add Argument for claims 11-19 here].
    [Subheading 2:] ``Claim 20''
    [Add Argument for claim 20 here].
Appeal Brief--Content of Appeal Brief--Claims Appendix
    The proposed rule deletes Bd.R. 41.37(c)(1)(viii).
    Bd.R. 41.37(c)(1)(viii) and the ANPRM required appellants to 
include a claims appendix with the brief. The proposed rule deletes the 
claims appendix from the briefing requirements. Because the last 
entered amendment is the most accurate reflection of the claims on 
appeal, the Office would look to the claims as presented in the last 
entered amendment as the claims on appeal.
Appeal Brief--Content of Appeal Brief--Evidence Appendix
    The proposed rule deletes Bd.R. 41.37(c)(1)(ix).
    Bd.R. 41.37(c)(1)(ix) and the ANPRM required appellants to include 
an evidence appendix with the brief. The Office received comments 
expressing concern that requiring inclusion of an evidence appendix 
including copies of documents already available to the Board in the 
Record is burdensome on appellants and does not improve efficiency at 
the Board. The proposed rule deletes the evidence appendix from the 
briefing requirements to address these concerns. The Office decided to 
assume the burden of locating copies of the evidence relied upon in the 
Record rather than requiring appellants to provide copies with their 
appeal brief. While it is no longer a requirement to include an 
evidence appendix, the Office strongly encourages and appreciates 
receiving copies of the evidence relied upon. This ensures that the 
Board is considering the proper evidence and avoids any confusion as to

[[Page 69837]]

the particular evidence referenced in the appeal brief. In the 
alternative, the Board recommends that appellants clearly identify in 
the appeal brief the evidence relied upon using a clear description of 
the evidence along with the date of entry of such evidence into the 
Image File Wrapper.
Appeal Brief--Content of Appeal Brief--Related Proceedings Appendix
    The proposed rule deletes Bd.R. 41.37(c)(1)(x).
    Bd.R. 41.37(c)(1)(x) and the ANPRM required appellants to include a 
related proceedings appendix with the brief. The Office received one 
comment expressing concern about the cost burden that this requirement 
imposes on appellants. To address this concern, the proposed rule 
deletes the related proceedings appendix from the briefing 
requirements.
Appeal Brief--New or Non-Admitted Amendments or Evidence
    Proposed Bd.R. 41.37(c)(2) adds a sentence to the current rule to 
make clear in the rule the current Office procedure for review of an 
examiner's refusal to admit an amendment or piece of evidence by 
petition to the Director under Rule 1.181.
Appeal Brief--Notice of Non-Compliance
    Proposed Bd.R. 41.37(d) proposes to revise the current rule to add 
a paragraph heading and to provide that under the Office's new 
streamlined procedure for review of ex parte appeal briefs for 
compliance with the rule, review of a determination of non-compliant 
appeal brief should be requested via a petition to the Chief Judge.
    While the ANPRM did not propose to substantively amend this section 
of the current rule, the Office received many comments at the 
roundtable and in the written comments expressing concern that too many 
briefs were being returned as non-compliant.
    To address this concern, the Board, independently from these 
proposed rules, implemented a streamlined procedure for review of 
briefs for compliance with Bd.R. 41.37(c) under which the Board has the 
sole authority to hold briefs as non-compliant (75 FR 15,689 (March 30, 
2010)). This process ensures consistent application of the appeal brief 
rules and leads to fewer determinations of non-compliance. As this 
change has already been implemented, appellants should notice a 
decrease in determinations of non-compliance immediately. Also, because 
the proposed rule includes fewer overall briefing requirements and 
provides for default assumptions if certain portions of the brief are 
omitted, the proposed rule will result in even fewer determinations 
that briefs are non-compliant than under the current rule.
Appeal Brief--Extensions of Time
    Proposed Bd.R. 41.37(e) proposes to add a paragraph heading to the 
current rule.
Examiner's Answer
    Proposed Bd.R. 41.39(a) proposes to add a paragraph heading and 
preamble to the current rule.
    Proposed Bd.R. 41.39(a)(1) proposes to revise the current rule to 
provide that the examiner's answer, by default, incorporates all the 
grounds of rejection set forth in the Office action which is the basis 
for the appeal, including any modifications made via advisory action or 
pre-appeal brief conference decision, except for any grounds of 
rejection indicated by the examiner as withdrawn in the answer. 
Proposed Bd.R. 41.39(a)(1) proposes to delete the requirement that the 
answer include an explanation of the invention claimed and of the 
grounds of rejection, since the Board would rely on appellant's 
specification and summary of claimed subject matter for an explanation 
of the invention claimed and would rely on the statement of the 
rejection(s) in the Office action from which the appeal is taken.
    Proposed Bd.R. 41.39(a)(2) proposes to revise the current rule to 
provide that if a rejection set forth in the answer relies on any new 
evidence not relied on in the Office action from which the appeal is 
taken, then the rejection must be designated as a new ground of 
rejection, and any answer that contains such a new ground of rejection 
must be approved by the Director.
    The Office received a comment requesting that the rule make clear 
that any new ground of rejection raised in the examiner's answer must 
be approved by a Technology Center Director. This requirement is 
currently in the MPEP. See MPEP Sec.  1207.03. The Office chose to 
include a requirement in the proposed rule that the Director must 
approve a new ground of rejection in the examiner's answer to make 
clear that the Office plans to continue this requirement for 
supervisory review of new grounds of rejection. The Director may choose 
to delegate this authority as appropriate.
    The Office received several comments requesting parity between the 
requirements and restrictions on the appeal brief (e.g., no new 
evidence) and those placed on the answer. Additionally, some comments 
stated that if examiners are permitted to use new evidence in the 
answer, then appellants should be able to add new evidence in the 
briefs. The Office also received comments stating that it is often 
unclear when a new reference actually constitutes a new ground of 
rejection and requesting that examiners should be required to disclose 
where a rejection was first entered into the record so as to prevent 
examiners from adding rejections without so designating them. These 
comments also raised concerns that when a potential new ground of 
rejection is not so designated, it forces appellants to file a request 
for continued examination which negatively impacts patent term. Another 
comment suggested that examiners should be barred from citing new 
evidence in an answer unless they designate it as a new ground of 
rejection. In view of these comments, the Office proposes to amend the 
rule to clarify that, for purposes of the examiner's answer, any 
rejection which relies upon new evidence shall be designated as a new 
ground of rejection. The proposed rule would continue to provide 
appellants the option to reopen prosecution or maintain the appeal by 
filing a reply brief to respond to the new ground of rejection.
    To further address the desire for parity, the content requirements 
for appeal briefs have been significantly decreased so as not to create 
a disparity in the requirements between the brief and the answer. 
Content requirements for the examiner's answer were not included in the 
rule, because the Office needs to retain flexibility to add content 
requirements as needed by revision of the MPEP. However, the Office 
plans to continue to require that the examiner's answer contain a 
grounds of rejection section that would set forth any rejections that 
have been withdrawn and any new grounds of rejection, and the answer 
would further be required to contain a response to arguments section to 
include any response the examiner has to arguments raised in the appeal 
brief. See MPEP Sec.  1207.02. The answer would no longer be required 
to restate the grounds of rejection. The Board would instead rely on 
the statement of the grounds of rejection in the Office action from 
which the appeal was taken (as modified by any subsequent Advisory 
Action or Pre-Appeal Brief Conference Decision).
    The Office received several comments opposing an examiner's right 
to enter a new ground of rejection in an examiner's answer. While the 
Office agrees that the entry of new grounds of rejection in an 
examiner's answer

[[Page 69838]]

should be a rare occurrence, the Office determined that the option to 
enter a new ground of rejection in an examiner's answer should be 
retained in the proposed rule for those situations in which new 
evidence comes to light later in the prosecution. The proposed rule 
codifies the Office's standing procedure that requires supervisory 
approval of each new ground of rejection.
    The Office received some comments suggesting to allow appellants 
the option of reopening prosecution regardless of whether or not an 
examiner designates a rejection as containing a new ground. The Office 
received a further comment requesting the Office provide further 
guidance as to what constitutes a new ground of rejection.
    An appellant always has the option to reopen prosecution after 
filing a notice of appeal, by filing a request for continued 
examination (RCE) during the pendency of the application, but under the 
proposed rule the Office would allow appellant to reopen prosecution 
without having to file an RCE only if the examiner's answer is 
designated as containing a new ground of rejection. Proposed new Bd.R. 
41.40, discussed infra, delineates the process by which appellant can 
seek review of the primary examiner's failure to designate a rejection 
as a new ground of rejection should appellant feel that the examiner's 
answer contains a new ground of rejection that has not been designated 
as such.
    The following discussion provides guidance to appellants and 
examiners as to the Office's view of what constitutes a new ground of 
rejection. This discussion is limited for ``purposes of the examiner's 
answer,'' as per Proposed Bd.R. 41.39(a)(2). This discussion does not 
apply to final rejections under Rule 1.113. The reason for this 
distinction is that Rule 1.116 affords applicants the opportunity to 
submit rebuttal evidence after a final rejection but before or on the 
same date of filing a notice of appeal. An appellant's ability to 
introduce new evidence after the filing of an appeal is more limited 
under Bd.R. 41.33(d) and proposed Bd.R. 41.33(d) than it is prior to 
the appeal. Thus, applicants are able to present rebuttal evidence in 
response to a final rejection, while they are not permitted to do so in 
response to an examiner's answer on appeal, unless an answer is 
designated as containing a new ground of rejection.
    If new evidence (such as a new prior art reference) is applied or 
cited for the first time in an examiner's answer, then Proposed Bd.R. 
41.39(a)(2) requires that the rejection be designated as a new ground 
of rejection. If the citation of a new prior art reference is necessary 
to support a rejection, it must be included in the statement of 
rejection, which would be considered to introduce a new ground of 
rejection. Even if the prior art reference is cited to support the 
rejection in a minor capacity, it should be positively included in the 
statement of rejection and be designated as a new ground of rejection. 
In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).
    Relying on new evidence, however, is not the only way to trigger a 
new ground of rejection in an examiner's answer. A ``position or 
rationale new to the proceedings''--even if based on evidence 
previously of record--may give rise to a new ground of rejection. In re 
De Blauwe, 736 F.2d 699, 706 n.9 (Fed. Cir. 1984) (stating that where 
the Office advances ``a position or rationale new to the proceedings, 
an applicant must be afforded an opportunity to respond to that 
position or rationale by submission of contradicting evidence'' (citing 
In re Eynde, 480 F.2d 1364 (CCPA 1973))).
    To avoid triggering a new ground of rejection in an examiner's 
answer, the examiner is not required to use identical language in both 
the examiner's answer and the Office action from which the appeal is 
taken. It is not a new ground of rejection, for example, if the 
examiner's answer responds to appellant's arguments using different 
language, or restates the reasoning of the rejection in a different 
way, so long as the evidence relied upon is the same and the ``basic 
thrust of the rejection'' is the same. In re Kronig, 539 F.2d 1300, 
1303 (CCPA 1976); see also In re Noznick, 391 F.2d 946, 949 (CCPA 1968) 
(no new ground of rejection made when ``explaining to appellants why 
their arguments were ineffective to overcome the rejection made by the 
examiner''); In re Krammes, 314 F.2d 813, 817 (CCPA 1963) (``It is well 
established that mere difference in form of expression of the reasons 
for finding claims unpatentable or unobvious over the references does 
not amount to reliance on a different ground of rejection.'' (citation 
omitted)); In re Cowles, 156 F.2d 551, 1241 (CCPA 1946) (holding that 
the use of ``different language'' does not necessarily trigger a new 
ground of rejection).
    The following examples are intended to provide guidance as to what 
constitutes a new ground of rejection in an examiner's answer. What 
constitutes a ``new ground of rejection'' is a highly fact-specific 
question. See, e.g., Kronig, 539 F.2d at 1303 (finding new ground 
entered based upon ``facts of this case'' and rejecting other cases as 
controlling given ``distinctive facts at bar''); In re Ahlert, 424 F.2d 
1088, 1092 (CCPA 1970) (``[l]ooking at the facts of this case, we are 
constrained to hold'' that a new ground was entered). If a situation 
arises that does not fall neatly within any of the following examples, 
it is recommended that the examiner identify the example below that is 
most analogous to the situation at hand, keeping in mind that ``the 
ultimate criterion of whether a rejection is considered `new' * * * is 
whether appellants have had fair opportunity to react to the thrust of 
the rejection.'' Kronig, 539 F.2d at 1302.
Factual Situations That Constitute a New Ground of Rejection
    1. Changing the statutory basis of rejection from Sec.  102 to 
Sec.  103. If the examiner's answer changes the statutory basis of the 
rejection from Sec.  102 to Sec.  103, then the rejection should be 
designated as a new ground of rejection. For example, in In re Hughes, 
345 F.2d 184 (CCPA 1965), the Board affirmed an examiner's rejection 
under Sec.  102 over a single reference. On appeal, the Solicitor 
argued that the Board's decision should be sustained under Sec.  103 
over that same reference. The court declined to sustain the rejection 
under Sec.  103, holding that a change in the statutory basis of 
rejection would constitute a new ground of rejection, and observed that 
``the issues arising under the two sections [Sec. Sec.  102 and 103] 
may be vastly different, and may call for the production and 
introduction of quite different types of evidence.'' Hughes, 345 F.2d 
at 186-87. See also In re Moore, 444 F.2d 572 (CCPA 1971) (holding the 
Board's decision contained a new ground of rejection, wherein the 
examiner rejected the claims under Sec.  102 based on applicant's 
failure to show prior discovery of utility, and wherein the Board 
affirmed the rejection based on obviousness of that utility under Sec.  
103).
    2. Changing the statutory basis of rejection from Sec.  103 to 
Sec.  102, based on a different teaching. If the examiner's answer 
changes the statutory basis of the rejection from Sec.  103 to Sec.  
102, and relies on a different portion of a reference which goes beyond 
the scope of the portion that was previously relied upon, then the 
rejection should be designated as a new ground of rejection. For 
example, in In re Echerd, 471 F.2d 632, 635 (CCPA 1973), the examiner 
rejected the claims under Sec.  103 over a combination of two 
references. The Board then changed the ground of rejection to Sec.  102 
over one of those references, relying on a different portion of that 
reference for some claim limitations, and asserted that the

[[Page 69839]]

remaining claim limitations were inherently present in that reference. 
The court held that the Board's affirmance constituted a new ground of 
rejection. Echerd, 471 F.2d at 635 (``[A]ppellants should have been 
accorded an opportunity to present rebuttal evidence as to the new 
assumptions of inherent characteristics.'' (citation omitted)).
    3. Citing new calculations in support of overlapping ranges. If a 
claim reciting a range is rejected as anticipated or obvious based on 
prior art that falls within or overlaps with the claimed range (see 
MPEP Sec. Sec.  2131.03 and 2144.05), and the rejection is based upon 
range values calculated for the first time in the examiner's answer, 
then the rejection should be designated as a new ground of rejection. 
For example, in In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005), the 
examiner rejected the claims under Sec.  103 based on overlapping 
ranges of particle sizes and size distributions. The Board affirmed the 
rejection, but included in its decision an Appendix containing 
calculations to support the prima facie case of obviousness. The court 
held the Board's reliance upon those values to constitute a new ground 
of rejection, stating that ``the Board found facts not found by the 
examiner regarding the differences between the prior art and the 
claimed invention, which in fairness required an opportunity for 
response.'' Kumar, 418 F.3d at 1368 (citation omitted).
    4. Citing new structure in support of structural obviousness. If, 
in support of an obviousness rejection based on close structural 
similarity (see MPEP Sec.  2144.09), the examiner's answer relies on a 
different structure than the one on which the examiner previously 
relied, then the rejection should be designated as a new ground of 
rejection. For example, in In re Wiechert, 370 F.2d 927 (CCPA 1967), 
the examiner rejected claims to a chemical composition under Sec.  103 
based on the composition's structural similarity to a prior art 
compound disclosed in a reference. The Board affirmed the rejection 
under Sec.  103 over that same reference, but did so based on a 
different compound than the one the examiner cited. The court held that 
the Board's decision constituted a new ground of rejection, stating, 
``Under such circumstances, we conclude that when a rejection is 
factually based on an entirely different portion of an existing 
reference the appellant should be afforded an opportunity to make a 
showing of unobviousness vis-a-vis such portion of the reference.'' 
Wiechert, 370 F.2d at 933.
    5. Pointing to a different portion of the claim to maintain a ``new 
matter'' rejection. If, in support of a claim rejection under 35 U.S.C. 
112, first paragraph, based on new matter (see MPEP Sec.  2163.06), a 
different feature or aspect of the rejected claim is believed to 
constitute new matter, then the rejection should be designated as a new 
ground of rejection. For example, in In re Waymouth, 486 F.2d 1058, 
1059 (CCPA 1973), the claims included the limitation ``said sodium 
iodide * * * present in amount of at least 0.17 mg./cc. of said arc 
tube volume.'' The examiner's rejection stated that the claimed 
``sodium iodide'' constituted new matter because the specification was 
alleged only to disclose ``sodium.'' The Board affirmed the rejection, 
but did so on a ``wholly different basis,'' namely, that the 
specification failed to disclose the claimed ``0.17 mg./cc.'' volume 
limitation. Waymouth, 486 F.2d at 1060. The court held that the Board's 
rationale constituted a new ground of rejection, ``necessitating 
different responses by appellants.'' Id. at 1061.
Factual Situations That Do Not Constitute a New Ground of Rejection
    1. Citing a different portion of a reference which goes no farther 
than, and merely elaborates upon, what is taught in the previously 
cited portion of that reference. If the examiner's answer cites a 
different portion of an applied reference which goes no farther than, 
and merely elaborates upon, what is taught in the previously cited 
portion of that reference, then the rejection does not constitute a new 
ground of rejection. For example, in In re DBC, 545 F.3d 1373 (Fed. 
Cir. 2008), the examiner rejected the claims under Sec.  103 over a 
combination of references, including the English translation of the 
abstract for a Japanese patent. The examiner cited the English abstract 
for two claim limitations: (1) Mangosteen rind, and (2) fruit or 
vegetable juice. The Board affirmed the rejection under Sec.  103 over 
the same references, but instead of citing the abstract, the Board 
cited an Example on page 16 of the English translation of the Japanese 
reference, which was not before the examiner. DBC, 545 F.3d at 1381. 
Importantly, the Board cited the Example for the same two claim 
limitations taught in the abstract, and the Example merely elaborated 
upon the medicinal qualities of the mangosteen rind (which medicinal 
qualities were not claimed) and taught orange juice as the preferred 
fruit juice (while the claim merely recited fruit or vegetable juice). 
Hence, the Example merely provided a more specific disclosure of the 
same two generic limitations that were fully taught by the abstract. 
The court held that this did not constitute a new ground of rejection 
because ``the example in the translation goes no farther than, and 
merely elaborates upon, what is taught by the abstract.'' DBC, 545 F.3d 
at 1382 n.5.
    2. Changing the statutory basis of rejection from Sec.  103 to 
Sec.  102, but relying on the same teachings. If the examiner's answer 
changes the statutory basis of the rejection from Sec.  103 to Sec.  
102, and relies on the same teachings of the remaining reference to 
support the Sec.  102 rejection, then the rejection does not constitute 
a new ground of rejection. For example, in In re May, 574 F.2d 1082 
(CCPA 1978), a claim directed to a genus of chemical compounds was 
rejected under Sec.  103 over a combination of references. The primary 
reference disclosed a species that fell within the claimed genus. Both 
the examiner and the Board cited the species to reject the claim under 
Sec.  103. The court affirmed the rejection, but did so under Sec.  
102, stating that ``lack of novelty is the epitome of obviousness.'' 
May, 574 F.2d at 1089 (citing In re Pearson, 494 F.2d 1399, 1402 (CCPA 
1974)). Because the court relied on the same prior art species as both 
the examiner and Board, the court held that this did not constitute a 
new ground of rejection. May, 574 F.2d at 1089.
    3. Relying on fewer than all references in support of a Sec.  103 
rejection, but relying on the same teachings. If the examiner's answer 
removes one or more references from the statement of rejection under 
Sec.  103, and relies on the same teachings of the remaining references 
to support the Sec.  103 rejection, then the rejection does not 
constitute a new ground of rejection. For example, in In re Kronig, 539 
F.2d 1300, 1302 (CCPA 1976), the examiner rejected the claims under 
Sec.  103 over four references. The Board affirmed the rejection under 
Sec.  103, but limited its discussion to three of the references 
applied by the examiner. Id. The Board relied upon the references for 
the same teachings as did the examiner. The court held that this did 
not constitute a new ground of rejection. Kronig, 539 F.2d at 1303 
(``Having compared the rationale of the rejection advanced by the 
examiner and the board on this record, we are convinced that the basic 
thrust of the rejection at the examiner and board level was the 
same.''). See also In re Bush, 296 F.2d 491, 495-96 (CCPA 1961) 
(Examiner rejected claims 28 and 29 under Sec.  103 based upon 
``Whitney in view of Harth;'' Board did not enter new ground of 
rejection by relying only on Whitney).
    4. Changing the order of references in the statement of rejection, 
but relying on the same teachings of those references.

[[Page 69840]]

If the examiner's answer changes the order of references in the 
statement of rejection under Sec.  103, and relies on the same 
teachings of those references to support the Sec.  103 rejection, then 
the rejection does not constitute a new ground of rejection. For 
example, in In re Cowles, 156 F.2d 551, 552 (CCPA 1946), the examiner 
rejected the claims under Sec.  103 over ``Foret in view of either 
Preleuthner or Seyfried.'' The Board affirmed the rejection under Sec.  
103, but styled the statement of rejection as to some of the rejected 
claims as ``Seyfried in view of Foret,'' but relied on the same 
teachings of Seyfried and Foret on which the examiner relied. The court 
held that this did not constitute a new ground of rejection. Cowles, 
156 F.2d at 554. See also In re Krammes, 314 F.2d 813, 816-17 (CCPA 
1963) (holding that a different ``order of combining the references'' 
did not constitute a new ground of rejection because each reference was 
cited for the ``same teaching'' previously cited).
    5. Considering, in order to respond to applicant's arguments, other 
portions of a reference submitted by the applicant. If an applicant 
submits a new reference to argue, for example, that the prior art 
``teaches away'' from the claimed invention (see MPEP Sec.  2145), and 
the examiner's answer points to portions of that same reference to 
counter the argument, then the rejection does not constitute a new 
ground of rejection. In In re Hedges, 783 F.2d 1038 (Fed. Cir. 1986), 
the claimed invention was directed to a process for sulfonating 
diphenyl sulfone at a temperature above 127[deg] C. Id. at 1039. The 
examiner rejected the claims under Sec.  103 over a single reference. 
The applicant submitted three additional references as evidence that 
the prior art teaches away from performing sulfonation above 127[deg] 
C, citing portions of those references which taught lower temperature 
reactions. The Board affirmed the rejection, finding the applicant's 
evidence unpersuasive. On appeal, the Solicitor responded to the 
applicant's ``teaching away'' argument by pointing to other portions of 
those same references which, contrary to applicant's argument, 
disclosed reactions occurring above 127[deg] C. The court held that 
this did not constitute a new ground of rejection because ``[t]he 
Solicitor has done no more than search the references of record for 
disclosures pertinent to the same arguments for which [applicant] cited 
the references.'' Hedges, 783 F.2d at 1039-40.
    Proposed Bd.R. 41.39(b) proposes to revise the current rule to add 
a paragraph heading. No changes are proposed to Bd.R. 41.39(b)(1). 
Proposed Bd.R. 41.39(b)(2) does not propose to substantively revise the 
current rule--the phrase ``each new ground of rejection'' would be 
moved to a different location in the sentence in which it currently 
appears to increase the clarity of the sentence. The Office received a 
comment stating that the two-month time period for responding to a new 
ground of rejection is too short to allow appellants to properly 
respond and that the period should be the same as that afforded to 
applicants during prosecution (3 months under Rule 1.136(a)). The 
Office declined to adopt the suggestion to change the current rule 
because such a change in the time period would increase the overall 
appeal pendency. The Office notes that appellant can seek extensions of 
time of this two-month time period under Rule 1.136(b) for patent 
applications or Rule 1.550(c) for ex parte reexamination proceedings.
    The Office received another comment stating that the requirement in 
the rule proposed in 41.39(b)(2) of the ANPRM requiring appellants to 
file a request to docket the appeal be deleted as it would place an 
increased burden on appellant. The proposed rule does not propose to 
change the substance of Bd.R. 41.39(b)(2), which requires appellants to 
file a reply brief addressing each new ground of rejection in order to 
maintain the appeal as to the claims subject to the new ground of 
rejection.
    Proposed Bd.R. 41.39(c) proposes to add a paragraph heading to the 
current rule.
Tolling of Time Period To File a Reply Brief
    Proposed Bd.R. 41.40 is proposed to be added to clearly set forth 
the exclusive procedure for appellant to request review of the primary 
examiner's failure to designate a rejection as a new ground of 
rejection via a petition to the Director under Rule 1.181. This 
procedure should be used if an appellant feels an answer includes a new 
ground of rejection that has not been designated as such, and wishes to 
reopen prosecution so that new amendments or evidence may be submitted 
in response to the rejection. However, if appellant wishes to submit 
only arguments, the filing of a petition under Rule 1.181 would not be 
necessary because appellant may submit the arguments in a reply brief.
    Proposed Bd.R. 41.40(a) would provide that any such petition under 
Rule 1.181 would be required to be filed within two months from the 
entry of the examiner's answer and prior to the filing of a reply 
brief.
    Proposed Bd.R. 41.40(b) would provide that a decision granting such 
a Rule 1.181 petition would require appellants to file a reply under 
Rule 1.111 within two months from the date of the decision to reopen 
prosecution. The appeal would be dismissed if appellant fails to timely 
file a reply.
    Proposed Bd.R. 41.40(c) would provide that a decision refusing to 
grant such a Rule 1.181 petition would allow appellants a two-month 
time period in which to file a single reply brief under Proposed Bd.R. 
41.41.
    Proposed Bd.R. 41.40(d) would provide that if a reply brief is 
filed prior to a decision on the Rule 1.181 petition, then the filing 
of the reply brief would act to withdraw the petition and maintain the 
appeal. Jurisdiction would pass to the Board upon the filing of the 
reply brief, and the petition under Rule 1.181 would not be decided on 
the merits.
    Proposed Bd.R. 41.40(e) would provide that the time periods 
described in this section are not extendable under Rule 1.136(a) and 
appellant would need to seek any extensions of time under the 
provisions of Rules 1.136(b) and 1.550(c) for extensions of time to 
reply for patent applications and ex parte reexaminations, 
respectively.
    Proposed Bd.R. 41.40 is designed to address the numerous comments 
received regarding new grounds of rejection by examiners in answers. 
This proposed rule clearly explains the proper manner for appellants to 
address a situation where an appellant believes that an examiner's 
answer contains an undesignated new ground of rejection. The proposed 
rule does not create a new right of petition--appellants have always 
had the opportunity to file a petition under Rule 1.181 if an appellant 
felt that the examiner's answer contained a new ground of rejection not 
so designated. This proposed section of the rule merely lays out the 
process to better enable appellant to address such concerns. The 
proposed rule also now tolls the time period for filing a reply brief, 
so appellants can avoid the cost of preparing and filing a reply brief 
prior to the petition being decided, and can avoid the cost altogether 
if the petition is granted and prosecution is reopened. Similarly, the 
tolling provision would spare examiners the burden of having to act on 
appellants' requests under Rule 1.136(b) for extension of the two-month 
time period for filing a reply brief while the Rule 1.181 petition is 
being decided.
Reply Brief
    Proposed Bd.R. 41.41(a) proposes to revise the current rule to add 
a

[[Page 69841]]

paragraph heading and to clarify that appellants may file only one 
reply brief and that such a reply brief must be filed within two months 
of either the examiner's answer or a decision refusing to grant a 
petition under Rule 1.181 to designate a new ground of rejection in an 
examiner's answer.
    The ANPRM proposed to amend this rule by explicitly stating that 
the rule allows for only a single reply brief. The Office received no 
comments directed to this proposed change and has thus adopted it in 
these proposed rules.
    Proposed Bd.R. 41.41(b) proposes to add a paragraph heading and 
subsections to the current rule and to delete the current provision 
that a reply brief which is not in compliance with the provisions of 
the remainder of proposed Bd.R. 41.41 will not be considered by the 
Board. Specifically, proposed paragraph (b)(1) prohibits a reply brief 
from including new or non-admitted amendments or evidence, which is the 
same language as current Bd.R. 41.41(a)(2). The Office received one 
comment suggesting that appellants should be allowed to rely on new 
evidence in a reply brief. The Office declined to adopt this suggestion 
because it is important that the Board have the benefit of the 
examiner's initial evaluation of any evidence relied upon by appellants 
prior to the Board deciding any issues pertaining to the relevance and 
weight to be given to such evidence in deciding the issues on appeal.
    Proposed Bd.R. 41.41(b)(2) would provide that any arguments which 
were not raised in the appeal brief or are not made in response to 
arguments raised in the answer would not be considered by the Board, 
absent a showing of good cause.
    The ANPRM proposed amending the rule to limit reply briefs to 
responding to points made in the examiner's answer and to disallow new 
arguments that were not made previously in the appeal brief and are not 
responsive to the answer. The Office received a few comments suggesting 
that new arguments should be allowed in reply briefs to address new 
arguments and issues presented in the answer--as well as to address new 
grounds of rejection. The proposed rule allows new arguments in the 
reply brief that are responsive to arguments raised in the examiner's 
answer, including any designated new ground of rejection. See Proposed 
Bd.R. 41.41(b)(2)(ii).
    The Office also received a few comments suggesting that there be a 
limited option to raise additional arguments or to revise arguments in 
a reply brief to address intervening changes in the law. The Office 
agrees that an intervening change in the law, if pertinent to the 
issues before the Board, is ``good cause'' for allowing new or revised 
arguments to be raised in a reply brief. Proposed paragraph (b)(2) 
provides a ``good cause'' exception to the rule against raising new 
arguments.
    The Office received a comment that any requirement for appellants 
to identify any new, versus previously presented, arguments would be 
difficult to enforce and would lead to disputes about what is ``new.'' 
The proposed rule contains no requirement for appellants to identify 
new arguments.
    The ANPRM proposed certain additional formatting requirements for 
reply briefs. The Office received a comment requesting that these 
formatting requirements be removed from the proposed rule. The proposed 
rule in this NPRM contains none of these specific formatting 
requirements for reply briefs.
    Proposed Bd.R. 41.41(c) proposes to add a paragraph heading to the 
current rule.
Examiner's Response to Reply Brief
    The proposed rule would delete Bd.R. 41.43.
    The ANPRM proposed to delete Bd.R. 41.43, which currently requires 
the examiner to acknowledge reply briefs and allows examiners to file 
supplemental answers. The Office received one comment in favor of 
removing the section of the rule and no comments opposed to this 
proposed change. In keeping with the ANPRM, the proposed rule would 
delete Bd.R. 41.43 in its entirety.
Oral Hearing
    Proposed Bd.R. 41.47 proposes removing references to the 
supplemental examiner's answer in paragraphs (b) and (e)(1), as the 
proposed rules do not allow for supplemental examiner's answers. The 
proposed rule would further revise paragraph (b) to change the time 
period in which a request for oral hearing is due to take into account 
the potential for the time period for filing a reply brief to be tolled 
under Proposed Bd.R. 41.40.
    The ANPRM proposed several changes to this section of the rules. 
The Office did not receive any comments to these proposed changes. 
Despite no opposition to the changes proposed in the ANPRM, in an 
effort to avoid changing the current rule except where necessary, the 
current rule was used as the basis for the proposed changes to this 
section in this NPRM.
Decisions and Other Actions by the Board
    Proposed Bd.R. 41.50(a) proposes to revise the current rule by: 
Adding a paragraph heading; deleting the subsection separation in Bd.R. 
41.50(a)(1) and (2); deleting the provision allowing the Board to 
remand applications to the examiner; and deleting the provision 
allowing an examiner to write a supplemental examiner's answer in 
response to a remand by the Board for further consideration of a 
rejection. This proposed rule would not provide for the Board, under 
its independent authority, to remand an application to the examiner. 
The proposed rule would retain the portion of current rule which 
provides a mechanism for the Director to order an application remanded 
under Bd.R. 41.35(c). The Director has the option to delegate this 
remand power as appropriate.
    The ANPRM proposed to revise the current rule so that only the 
Chief Administrative Patent Judge had the authority to remand an 
application to the examiner. The Office received a wide range of 
comments regarding this proposed modification, some comments in direct 
contradiction with others. Two comments expressed the view that the 
Chief Administrative Patent Judge should not have sole authority over 
merits remands. However, another comment expressed the opposite view 
that allowing the Chief Administrative Patent Judge to issue remand 
orders would improve the appellate process before the Board. Another 
comment expressed the view that the Board should issue remands 
sparingly. Yet another comment expressed the distinct view that the 
remand power is an important tool for the Board to require an examiner 
to correct errors and that it promotes efficiency at the Board by 
freeing judges from doing the job of the examiner and allows the 
examiner to correct errors based on oversight. The comment further 
notes that if the panel could no longer remand an application, it would 
require the Board to force decisions into either an affirmance or 
reversal and would negatively impact the quality of the Board 
decisions. However, another comment was in favor of the proposed 
change, noting that the Board has used its remand power to avoid 
deciding cases on the merits and instead remanded cases to the 
examiner. The Office agrees with some of the comments noting that 
remands should be used sparingly. The Office's position is that 
Director-ordered remands would be used in most instances to correct 
errors in the appeal that prevent the

[[Page 69842]]

Board from otherwise deciding the issues before it. The Board would 
decide the issues before it based on the rejections as presented by the 
examiner and the arguments made by appellant. This proposed rule would 
lead to more compact prosecution because it would provide an incentive 
for examiners to fully explain and articulate the rejections earlier in 
the prosecution.
    Proposed Bd.R. 41.50(b) proposes to add a paragraph heading to the 
current rule. Additionally, Proposed Bd.R. 41.50(b) would revise the 
current rule to clarify the language in the rule allowing the Board to 
enter a new ground of rejection. The proposed rule also proposes to 
revise the language in paragraph (b)(1) to clarify the language and to 
make it consistent with other modifications in the proposed rule (i.e., 
deleting the reference to the Board remanding the matter to the 
examiner). Proposed Bd.R. 41.50(b)(2) proposes to revise the current 
rule to reference the definition of ``Record'' provided in Proposed 
Bd.R. 41.30.
    Bd.R. 41.50 provides the Board with the authority to enter a new 
ground of rejection. The Office received a comment to the ANPRM in 
favor of allowing the Board to enter a new ground of rejection in a 
decision. The Office received other comments, however, opposing the 
Board's authority to enter a new ground of rejection. In order for the 
Board to protect the public from the issuance of claims that have been 
foreclosed by intervening changes in law, and to shape the law on 
patentability in areas not yet addressed by the Federal Circuit, the 
Office determined that the Board should retain its authority to enter 
new grounds of rejection. Additionally, this authority to enter a new 
ground is important in situations where the Board's articulation of its 
reasons for sustaining a rejection goes beyond the thrust of the 
examiner's articulation of the rejection, such that appellant has not 
had a fair opportunity to respond to the reasoning. In such cases, the 
Board would designate its decision as containing a new ground of 
rejection to give appellants an opportunity to respond.
    The Office received two comments requesting that the time frame for 
responding to a new ground of rejection raised in a decision be changed 
to three months. As discussed supra, in the interest of avoiding an 
increase in appeal pendency, the Office did not adopt this suggestion. 
The concerns raised in the comments are understood. However, the 
proposed rule retains the two-month response time frame in the interest 
of ensuring that the appeal proceeds expeditiously and efficiently. The 
Office notes that the rule provides for extensions of time to respond 
under Rule 1.136(b) for patent applications and Rule 1.550(c) for ex 
parte reexamination proceedings. See Proposed Bd.R. 41.50(d).
    The Office also received a comment requesting that appellants be 
given the option to submit new arguments, evidence, and amendments to 
the Board in response to a new ground of rejection. The proposed rule 
allows appellants to submit new arguments in response to a designated 
new ground of rejection in a request for rehearing without reopening 
prosecution. See Proposed Bd.R. 41.52(a)(3). As in the current rule, 
the proposed rule requires appellants to reopen prosecution to 
introduce new amendments or evidence. The current rule is retained in 
this regard because the examiner, with his/her subject matter 
expertise, should be the first to review new amendments and/or evidence 
submitted in an application, prior to the Board's appellate-level 
review.
    Proposed Bd.R. 41.50(c) proposes to revise the current rule to 
remove the Board's power to suggest how a claim may be amended to 
overcome a rejection and proposes to add new language to the rule 
explaining the procedure by which appellants can seek review of a 
panel's failure to designate a decision as containing a new ground of 
rejection. The proposed rule provides that review of decisions which 
appellants believe contain a new ground of rejection should be 
requested through a request for rehearing consistent with the 
provisions of Proposed Bd.R. 41.52.
    The Office received a comment to the ANPRM that appellants should 
be afforded the right to respond to new grounds of rejection presented 
in decisions from the Board regardless of whether they are designated 
as such. To address this concern, the proposed rule allows appellants 
to respond to new grounds, whether or not designated as such, in a 
request for rehearing. Proposed Bd.R. 41.52(a)(3) allows for new 
arguments in a request for rehearing responding to a new ground of 
rejection designated as such, and Proposed Bd.R. 41.52(a)(4) allows for 
new arguments in a request for rehearing to argue that the Board's 
decision contains an undesignated new ground of rejection. If such a 
request for rehearing under Proposed Bd.R. 41.52(a)(4) is granted, then 
the Board would modify its original decision to designate the decision 
as containing a new ground of rejection under Proposed Bd.R. 41.50(b) 
and provide appellants with the option to either reopen prosecution 
under Proposed Bd.R. 41.50(b)(1) or request rehearing on the merits of 
the designated new ground of rejection under Proposed Bd.R. 
41.50(b)(2).
    Proposed Bd.R. 41.50(d) proposes to revise the current rule to add 
a paragraph heading, and to delete the ``non-extendable'' limitation on 
the response time period which appears in the current rule. The Office 
received a comment at the roundtable discussion held on January 20, 
2010, questioning why this time period was not extendable and noting 
that appellants may have good cause to show why additional time might 
be needed. The proposed rule, by removing the ``non-extendable'' 
limitation from the rule, now allows appellants to seek extensions of 
time under Rule 1.136(b) for patent applications and Rule 1.550(c) for 
ex parte reexamination proceedings. The Office received another comment 
to the ANPRM asserting that the ability of the Board to allow evidence 
to be submitted under Proposed Bd.R. 41.50(d) is not consistent with 
the prohibition in Proposed Bd.R. 41.33 prohibiting submission of 
additional evidence. The Office determined that it was important to 
retain this authority to seek additional briefing and information from 
appellants in those rare cases where the Board felt such additional 
briefing and information would help the Board provide a more informed 
decision.
    The proposed rule proposes to delete current Bd.R. 41.50(e) 
consistent with the change in Proposed Bd.R. 41.50(a), as the Board 
would no longer remand cases under this provision.
    Proposed Bd.R. 41.50(e) would contain the language of current Bd.R. 
41.50(f) and proposes to add a paragraph heading.
Rehearing
    Proposed Bd.R. 41.52(a)(1) proposes to add cross-references to 
relevant sections of the rule and to revise the current rule to clarify 
that arguments which are not raised and evidence which was not 
previously relied upon are not permitted in the request for rehearing, 
unless consistent with the remainder of Proposed Bd.R. 41.52(a).
    Proposed Bd.R. 41.52(a)(2) proposes to delete the requirement of a 
showing of good cause for appellants to present new arguments based on 
a recent relevant decision of the Board or the Federal Circuit. This 
change is proposed because it is the Office's position that a new 
argument based on a recent relevant decision would inherently make a 
showing of good cause and thus

[[Page 69843]]

the text of the current rule seemed redundant.
    Proposed Bd.R. 41.52(a)(3) proposes to revise the current rule to 
change the word ``made'' to ``designated'' to clarify that new 
arguments are permitted in response to a new ground of rejection 
designated as such in the Board's opinion.
    The proposed rules seek to add Proposed Bd.R. 41.52(a)(4) to make 
clear that new arguments are permitted in a request for rehearing for 
appellants seeking to have the Board designate its decision as 
containing a new ground of rejection that has not been so designated.
    The proposed rules would not modify Bd.R. 41.52(b).
    The ANPRM proposed barring new arguments in requests for rehearing 
except in response to a new ground of rejection or a new legal 
development. The Office received a comment that the rule proposed in 
the ANPRM barring new arguments was too restrictive in its scope 
because it did not allow for new arguments in the event that the Board 
used logic not set forth by the examiner. To address the concerns 
raised in the comments, Proposed Bd.R. 41.52 has been revised to 
specifically allow appellants to present new arguments in a request for 
rehearing when they believe that the Board has made a new ground of 
rejection that has not been so designated. Additionally, appellants are 
specifically permitted to make new arguments to respond to a designated 
new ground of rejection in a request for rehearing.
Action Following Decision
    Proposed Bd.R. 41.54 is substantially the same as Bd.R. 41.54, 
except that the proposed rule proposes to revise the current rule to 
specifically state that jurisdiction over an application or a patent 
under ex parte reexamination passes to the examiner after a decision on 
appeal is issued by the Board. This slight revision to the language of 
the current rule is proposed to incorporate the language of Rule 
1.197(a), which would be deleted under the proposed rules. By 
incorporating the language of Rule 1.197(a) into Proposed Bd.R. 41.54, 
the rules for passing jurisdiction back to the examiner after decision 
by the Board would not be substantively changed.
Sanctions
    The ANPRM proposed including a new section to the rule to clarify 
instances in which the Board could impose sanctions on an appellant. 
The Office received numerous comments opposing the addition of a new 
section on sanctions. The proposed rule does not include any such 
section.

Rulemaking Considerations

    Executive Order 12866: This rulemaking has been determined to be 
significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    Administrative Procedure Act: The changes in the proposed rule 
relate solely to the procedure to be followed in filing and prosecuting 
an ex parte appeal to the Board.
    Therefore, these rule changes involve rules of agency practice and 
procedure under 5 U.S.C. 553(b)(A), and prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553(b)(A) (or 
any other law). See Bachow Commc'ns, Inc. v. F.C.C., 237 F.3d 683, 690 
(D.C. Cir. 2001) (rules governing an application process are ``rules of 
agency organization, procedure, or practice'' and exempt from the 
Administrative Procedure Act's notice and comment requirement); Merck & 
Co. v. Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996) (the rules of 
practice promulgated under the authority of former 35 U.S.C. 6(a) (now 
in 35 U.S.C. 2(b)(2)) are not substantive rules to which the notice and 
comment requirements of the Administrative Procedure Act apply); 
Fressola v. Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) (``it is 
extremely doubtful whether any of the rules formulated to govern patent 
or trade-mark practice are other than `interpretive rules, general 
statements of policy, * * * procedure, or practice' '' (quoting C.W. 
Ooms, The United States Patent Office and the Administrative Procedure 
Act, 38 Trademark Rep. 149, 153 (1948)).
    Because the proposed rule is procedural, it is not required to be 
published for notice and comment. Nevertheless, the Office is 
publishing this notice in the Federal Register and in the Official 
Gazette of the United States Patent and Trademark Office in order to 
solicit public comment before implementing the rule.
    Regulatory Flexibility Act: Prior notice and an opportunity for 
public comment are not required pursuant to 5 U.S.C. 553 or any other 
law. Neither a Regulatory Flexibility Act analysis nor a certification 
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is 
applicable to this notice of proposed rulemaking. See 5 U.S.C. 603.
    Nonetheless, the Deputy General Counsel for General Law of the 
United States Patent and Trademark Office has certified to the Chief 
Counsel for Advocacy of the Small Business Administration that, for the 
reasons discussed below, this notice of proposed rulemaking, Rules of 
Practice Before the Board of Patent Appeals and Interferences in Ex 
Parte Appeals [RIN 0651-AC37], will not have a significant economic 
impact on a substantial number of small entities. See 5 U.S.C. 605(b) 
(Regulatory Flexibility Act).
    There are no fee changes associated with the proposed rule. The 
estimates of economic impact provided below are based on agency 
expertise in patent prosecution practice.

Claims on Appeal

    In those instances where appellants wish to appeal all claims under 
rejection, which are the majority of appeals, there will be a cost 
savings. The proposed changes eliminate the requirement for appellants 
to affirmatively state (in the status of claims section of the appeal 
brief), all of the claims on appeal. There may be a slight increase in 
cost, however, to a small subset of appellants who choose not to appeal 
all of the rejected claims. For this small subset of appellants, the 
proposed rule would require cancellation of any non-appealed claims by 
filing an amendment.
    The Office estimates that, for those appellants choosing to appeal 
fewer than all of the rejected claims, this proposed change may result 
in two hours of attorney time toward the preparation of such an 
amendment. For purposes of comparison, the 2009 report of the Committee 
on Economics of Legal Practice of the American Intellectual Property 
Law Association (``the AIPLA 2009 Report'') notes that the median cost 
for the preparation and filing of a patent application amendment/
argument of minimal complexity is $1,850. Using the AIPLA 2009 Report's 
median billing rate for attorneys in private firms of $325 per hour, 
this cost equates to approximately 5.7 hours of attorney time. The 
Office's estimate of two hours of attorney time ($650) for an amendment 
merely canceling claims is based on the fact that such an amendment 
will not contain an argument section, unlike a regular patent 
application amendment/argument. As such, the Office estimates that the 
amendment to cancel claims will be significantly less time-consuming 
than a regular patent application amendment/argument.
    Based on the Office's experience, it estimates that such an 
amendment canceling claims will only be filed in approximately 1% of 
appeals. The Board decided Ex parte Ghuman, 88 USPQ2d 1478, 2008 WL 
2109842 (BPAI 2008) (precedential) in May 2008. Of the approximately 
2,056 reported Board decisions and orders issued in the remainder of FY 
2008, only ten such

[[Page 69844]]

decisions and orders cited Ghuman in noting that an appellant had 
withdrawn claims from appeal. In FY 2009 (October 2008-September 2009), 
of the approximately 5,612 reported Board decisions and orders, only 
twenty cited Ghuman in noting that an appellant had withdrawn claims 
from appeal. In FY 2010 (October 2009-September 2010), of the 
approximately 5,990 reported Board decisions and orders, only twenty-
six cited Ghuman in noting that an appellant had withdrawn claims from 
appeal. While these numbers may not represent a precise indication of 
the numbers of appeals where appellants chose not to appeal all of the 
rejected claims, these figures are provided as an indication of the 
relatively small number of appeals in which appellants choose to appeal 
fewer than all of the rejected claims without canceling such unappealed 
claims prior to appeal. Based on this data, the Office found that 
approximately 0.41% of all appeals had Ghuman issues, i.e., where fewer 
than all of the rejected claims were appealed. For purposes of 
calculating additional cost to appellants from this proposed rule 
change, the Office rounded up to 1% and used this as a conservative 
(high) estimate for the number of amendments expected. As such, this 
proposed rule change will not have a significant economic impact on a 
substantial number of small entities.
    Additionally, for the majority of appellants this proposed change 
will likely result in cost savings. Because the current rule allows 
appellants to appeal fewer than all of the claims under rejection, the 
current rule also requires appellants to affirmatively state (in the 
status of claims section of the appeal brief), all of the claims on 
appeal. Under this proposed rule, the Board would presume that 
appellants intend to appeal all claims under rejection unless those 
claims under rejection for which review is not sought are canceled. 
This proposed change to the rule allows the Office to eliminate the 
current requirement for appellants to identify the claims on appeal in 
the appeal brief. Thus, in those instances where appellants wish to 
appeal all claims under rejection, which represents the majority of 
appeals, the appellant's burden is lessened by not having to include a 
listing of the status of all of the claims under rejection.

Changes to Appeal Brief Requirements

    The Office also estimates a net cost savings to all appellants as a 
result of the proposed changes to the appeal brief requirements. In 
particular, the Office estimates a savings due to the proposed 
elimination of certain appeal brief requirements and proposed changes 
to other requirements to make them more flexible. The Office estimates 
a small increase in cost to the subset of appellants who choose to 
argue claims separately or as a subgroup.
    For the subset of appellants who choose to argue claims separately 
or as a subgroup, the small increase in cost would merely be the 
addition of subheadings before separately argued claims or subgroups. 
The Office estimates this added burden may increase the time it takes 
to prepare an appeal brief by 0.2 hours for those appellants who choose 
to separately argue claims. This estimate is based on the Office's view 
of the time it would take to add subheadings based on agency expertise 
in patent prosecution practice. The estimated small increase in cost 
would not apply to all appeal briefs because some appellants choose to 
argue all of the claims rejected under a ground of rejection as a 
single group. However, since the Office does not track the number of 
appeals in which appellants argue all claims as a single group versus 
the number of appeals in which appellants argue some claims separately, 
the Office has applied this increase to the estimate of all appeal 
briefs filed. Nevertheless, this proposed change will not have a 
significant economic impact on a substantial number of small entities.
    Notably, the overall proposed changes to the appeal brief 
requirements will result in net savings to appellants. By allowing for 
more flexibility in how an appellant chooses to present an appeal to 
the Board and by eliminating many current appeal brief requirements, 
appellants will incur less cost overall in preparation of appeal 
briefs. As discussed infra in the Paperwork Reduction Act section of 
the notice, the Office estimates a net average savings in preparation 
time under the proposed rule of three hours of attorney time as 
compared to the previous estimate under the current rule. This estimate 
is based on the Office's view of the net time saved in preparation of 
an appeal brief as a result of the proposed changes based on agency 
expertise in patent prosecution practice. As such, the overall average 
attorney time and cost it will take to prepare an appeal brief under 
the proposed rule will be reduced from 34 hours ($11,050) to 31 hours 
($10,075). Using the median billing rate of $325 per hour, as published 
in the AIPLA 2009 Report, the Office estimates that these proposed rule 
changes will result in an average savings of $975 per appeal brief. 
This savings will apply equally to large and small entities.
    Accordingly, any costs related to the filing of an amendment 
canceling claims and the addition of subheadings to an appeal brief 
will not have a significant economic impact on a substantial number of 
small entities. Moreover, proposed changes to the rule, as a whole, 
will likely result in a net cost savings to an appellant and, 
therefore, also not have a significant economic impact on a substantial 
number of small entities.
    Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2 
U.S.C. 1532, that agencies prepare an assessment of anticipated costs 
and benefits before issuing any rule that may result in expenditure by 
State, local, and tribal governments, in the aggregate, or by the 
private sector, of $100 million or more (adjusted annually for 
inflation) in any given year. This rule would have no such effect on 
State, local, and tribal governments or the private sector.
    Executive Order 13132: This rulemaking does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Paperwork Reduction Act: This proposed rule involves information 
collection requirements which are subject to review by the Office of 
Management and Budget under the Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.). The collections of information in the rule have 
been reviewed and previously approved by OMB under control numbers 
0651-0031 and 0651-0063.
    As stated above in the Regulatory Flexibility Act section of this 
notice, while the majority of the changes to the rule being proposed 
will either have no impact on or will lessen the burden to the public 
as compared to the collection of information previously approved by 
OMB, the Office has identified two proposed changes that may, in 
certain circumstances, increase the burden to the public.
    Specifically, the Office has estimated that the proposed change to 
Bd.R. 41.31(c) will impose an increased burden of two hours time to a 
small subset of appellants (1%) who choose not to seek review of all 
claims under rejection by requiring such appellants to file an 
amendment canceling any unappealed claims, or otherwise have the Board 
treat all rejected claims as being on appeal. Additionally, the Office 
estimated that the proposed change to the briefing requirements in 
Bd.R. 41.37(c)(1)(vii) (requiring appellants to place any claim(s) 
argued separately or as a subgroup under a separate subheading that 
identifies the

[[Page 69845]]

claim(s) by number) would result in 0.2 hours of added time for those 
appellants who choose to separately argue their claims. The estimates 
are based on the Office's expertise in patent prosecution practice. 
This increase in burden hours would not apply to all appeal briefs 
because some appellants choose to argue all of the claims rejected 
under a ground of rejection as a single group. However, since the 
Office does not track the number of appeals in which appellants argue 
all claims as a single group versus the number of appeals in which 
appellants argue some claims separately, for purposes of estimating the 
overall burden, the Office has applied this 0.2 hour increase to the 
estimate of all appeal briefs filed.
    The Office has also specifically identified below at least eleven 
proposed changes that will lessen the burden to the public as compared 
to the current rule.
    1. The proposed change to Bd.R. 41.12(b) lessens the burden on 
appellant by removing the current requirement for appellant to include 
parallel citations (Bd.R. 41.12(a)(2)-(3)) to both the West Reporter 
System and to the United States Patents Quarterly for any decision 
other than a United States Supreme Court decision, and further lessens 
the burden on appellant by no longer requiring citation to a particular 
reporter.
    2. The proposed change to Bd.R. 41.37(c)(1)(i) lessens the burden 
on appellant because it provides for a default in the event that this 
item is omitted from the brief, such that the appellant is not required 
to include this section in the brief if the inventors are the real 
party in interest.
    3. The proposed change to Bd.R. 41.37(c)(1)(ii) lessens the burden 
on appellant because it: (a) Limits the duty to provide information as 
to only those related cases that involve an application or patent co-
owned by appellant or assignee; (b) provides a default assumption in 
the event that this item is omitted from the brief so that appellants 
are no longer required to make a statement that ``there are no such 
related cases''; and (c) no longer requires filing of copies of 
decisions in related proceedings.
    4. The proposed change to Bd.R. 41.37(c)(1)(iii) lessens the burden 
on appellant by eliminating the requirement to identify the status of 
claims in the appeal brief.
    5. The proposed change to Bd.R. 41.37(c)(1)(iv) lessens the burden 
on appellant by lessening the required disclosure from a statement of 
the status of any amendments to simply an identification of the filing 
date of the last-entered amendment. This proposed change further 
lessens the burden on appellant by providing a default assumption of no 
such amendments in the event that this item is omitted from the brief, 
such that the appellant is not required to include this section in the 
brief in the event that no amendments were made to the claims.
    6. The proposed change to Bd.R. 41.37(c)(1)(v) lessens the burden 
on appellant by limiting the summary of the claimed subject matter to 
require annotation only for ``each limitation in dispute by 
appellant.'' The proposed rule provides more flexibility than the 
current rule by allowing citation to paragraph number (instead of 
limiting citation to page and line number). The proposed rule similarly 
limits the requirement for a Sec.  112, ] 6 summary to only those 
recitations ``in dispute by appellant.'' The proposed change also 
clarifies the current Office policy, which does not allow reference to 
the patent application publication in the summary of claim subject 
matter. Since improper reference to the patent application publication 
is a current cause of defective briefs, this rule change is proposed to 
reduce confusion.
    7. The proposed change to Bd.R. 41.37(c)(1)(vi) lessens the burden 
on appellant by eliminating the requirement that appellant state the 
grounds of rejection to be reviewed on appeal in the appeal brief. The 
Board would look to documents already of Record (i.e., the Office 
action from which the appeal is taken and any subsequent Advisory 
Action or Pre-Appeal Conference Decision) to determine the grounds of 
rejection on appeal.
    8. The proposed change to Bd.R. 41.37(c)(1)(vii) lessens the burden 
on appellant by allowing appellant's headings to ``reasonably identify 
the ground being contested (e.g., by claim number, statutory basis, and 
applied reference, if any).'' The current rule has occasionally been 
interpreted as a verbatim requirement and resulted in briefs being 
found defective for failure to state the ground of rejection in the 
heading exactly the same as stated in the Office action from which the 
appeal was taken. The proposed rule clarifies that this is not a 
verbatim requirement and allows more flexibility in the brief.
    9. The proposed change to Bd.R. 41.37(c)(1)(viii) lessens the 
burden on appellant by eliminating the requirement for appellants to 
file a claims appendix containing a copy of claims on appeal. The Board 
would look to the last-entered amendment in the Record to identify the 
claims on appeal.
    10. The proposed change to Bd.R. 41.37(c)(1)(ix) lessens the burden 
on appellant by eliminating the requirement for appellant to file an 
evidence appendix containing copies of evidence relied upon. The Board 
would look to the Record to obtain copies of the evidence relied upon 
in the briefs.
    11. The proposed change to Bd.R. 41.37(c)(1)(x) lessens the burden 
on appellant by eliminating the requirement for appellant to file a 
related proceedings appendix containing copies of decisions in related 
proceedings. The Board would look to the records in the Office and 
other publicly available sources to locate and review decisions 
rendered in any related proceedings.
    In the approved information collection [OMB Control Number 0651-
0063], the Office estimated the average appeal brief took 34 hours to 
prepare. In light of the proposed changes to the current rule for 
briefing requirements for filing appeal briefs, and taking into account 
the eleven proposed changes that will lessen the burden and the one 
proposed change (i.e., addition of subheadings) that will add a burden, 
the agency estimates that the proposed changes to the current rule will 
result in a net average decrease of approximately 3 hours per appeal 
brief from the prior estimate, thereby lowering the previous average 
estimate of approximately 34 hours to 31 hours to prepare an appeal 
brief. This estimate is based on the net impact of the proposed changes 
and time saved in preparation of an appeal brief based on agency 
expertise in patent prosecution practice. Using the median billing rate 
of $325 per hour, as published in the AIPLA 2009 Report, the Office 
estimates that these proposed rule changes will result in an average 
savings of $975 per appeal brief.
    The Office notes that the number and significance of these proposed 
changes effecting a lessening of the burden to appellants substantially 
outweigh the proposed changes that may result, in certain 
circumstances, in increased burden to appellants. The Office will 
submit an information collection package to OMB for its review and 
approval.
    Interested persons are requested to send comments regarding this 
information collection, including suggestions for reduction of this 
burden to: (1) The Office of Information and Regulatory Affairs, Office 
of Management and Budget, New Executive Office Building, Room 10202, 
725 17th Street, NW., Washington, DC 20503, Attention: Desk Officer for 
the Patent and Trademark Office; and (2) The Board of Patent Appeals 
and

[[Page 69846]]

Interferences, P.O. Box 1451, Alexandria, VA 22313-1451, Attention: 
Linda Horner.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and recordkeeping 
requirements, Small Businesses.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

Proposed Amendments to the Regulatory Text

    For the reasons stated in the preamble, the Under Secretary of 
Commerce for Intellectual Property and Director of the United States 
Patent and Trademark Office proposes to amend 37 CFR parts 1 and 41 as 
follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for part 1 continues to read as follows:

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

    2. Amend Sec.  1.197 by revising the section heading and removing 
and reserving paragraph (a).
    The revision reads as follows:


Sec.  1.197  Termination of proceedings.

* * * * *

PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND 
INTERFERENCES

    3. Revise the authority citation for part 41 to read as follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 132, 
133, 134, 135, 306, and 315.

Subpart A--General Provisions

    4. Revise Sec.  41.12 to read as follows:


Sec.  41.12  Citation of authority.

    (a) For any United States Supreme Court decision, citation to the 
United States Reports is preferred.
    (b) For any decision other than a United States Supreme Court 
decision, citation to the West Reporter System is preferred.
    (c) Citations to authority must include pinpoint citations whenever 
a specific holding or portion of an authority is invoked.
    (d) Non-binding authority should be used sparingly. If the 
authority is not an authority of the Office and is not reproduced in 
the United States Reports or the West Reporter System, a copy of the 
authority should be provided.

Subpart B--Ex parte Appeals

    5. Amend Sec.  41.30 by adding a definition for ``record'' in 
alphabetical order to read as follows:


Sec.  41.30  Definitions.

* * * * *
    Record means the items listed in the content listing of the image 
file wrapper of the official file of the application or reexamination 
proceeding on appeal, excluding amendments, evidence, and other 
documents that were denied entry.
    6. Amend Sec.  41.31 by revising paragraphs (a) introductory text, 
(b) and (c) to read as follows:


Sec.  41.31  Appeal to Board.

    (a) Who may appeal and how to file an appeal. An appeal is taken to 
the Board by filing a notice of appeal.
* * * * *
    (b) The signature requirements of Sec. Sec.  1.33 and 11.18(a) of 
this title do not apply to a notice of appeal filed under this section.
    (c) An appeal, when taken, is presumed to be taken from the 
rejection of all claims under rejection unless cancelled by an 
amendment filed pursuant to Sec. Sec.  1.121, 1.173, or 1.530 of this 
title. Questions relating to matters not affecting the merits of the 
invention may be required to be settled before an appeal can be 
considered.
* * * * *
    7. Amend Sec.  41.33 by revising paragraphs (c) and (d)(2) to read 
as follows:


Sec.  41.33  Amendments and affidavits or other evidence after appeal.

* * * * *
    (c) All other amendments filed after the date of filing an appeal 
pursuant to Sec.  41.31(a)(1) through (a)(3) will not be admitted 
except as permitted by Sec. Sec.  41.39(b)(1) and 41.50(b)(1).
    (d) * * *
    (2) All other affidavits or other evidence filed after the date of 
filing an appeal pursuant to Sec.  41.31(a)(1) through (a)(3) will not 
be admitted except as permitted by Sec. Sec.  41.39(b)(1) and 
41.50(b)(1).
    6. Revise Sec.  41.35 to read as follows:


Sec.  41.35  Jurisdiction over appeal.

    (a) Beginning of jurisdiction. Jurisdiction over the proceeding 
passes to the Board upon the filing of a reply brief under Sec.  41.41 
or the expiration of the time in which to file such a reply brief, 
whichever is earlier.
    (b) End of jurisdiction. The jurisdiction of the Board ends when:
    (1) The Director enters a remand order (See Sec.  41.35(c)),
    (2) The Board enters a final decision (See Sec.  41.2 of this part) 
and judicial review is sought or the time for seeking judicial review 
has expired,
    (3) An express abandonment which complies with Sec.  1.138 of this 
title is recognized,
    (4) A request for continued examination is filed which complies 
with Sec.  1.114 of this title,
    (5) Appellant fails to take any required action under Sec. Sec.  
41.39(b), 41.50(b), or 41.50(d), and the Board enters an order of 
dismissal, or
    (6) Appellant reopens prosecution in response to a new ground of 
rejection entered in a decision of the Board (See Sec.  41.50(b)(1)).
    (c) Remand ordered by the Director. Prior to the entry of a 
decision on the appeal by the Board (See Sec.  41.50), the Director may 
sua sponte order the proceeding remanded to the examiner.
    (d) Documents filed during Board's jurisdiction. Except for 
petitions authorized by this part, consideration of any information 
disclosure statement or petition filed while the Board possesses 
jurisdiction over the proceeding will be held in abeyance until the 
Board's jurisdiction ends.
    8. Amend Sec.  41.37 by:
    a. Adding headings to paragraphs (a) introductory text, (b), (d) 
and (e);
    b. Revising paragraphs (c)(1);
    c. Revising the second sentences in paragraphs (c)(2) and (d); and
    d. Adding a new third sentence to paragraph (c)(2) and paragraph 
(d).
    The revisions and additions read as follows:


Sec.  41.37  Appeal brief.

    (a) Timing and fee. * * *
    (b) Failure to file a brief. * * *
    (c) Content of appeal brief. (1) Except as otherwise provided in 
this paragraph, the brief shall contain the following items under 
appropriate headings and in the order indicated in paragraphs (c)(1)(i) 
through (vii) 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), (ii), and (vii) of this 
section:
    (i) Real party in interest. A statement identifying by name the 
real party in

[[Page 69847]]

interest at the time the appeal brief is filed, except that such 
statement is not required if the named inventor or inventors are 
themselves the real party in interest. If an appeal brief does not 
contain a statement of the real party in interest, the Office may 
assume that the named inventor or inventors are 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 (collectively, 
``related cases'') which satisfy all of the following conditions: 
Involve an application or patent owned by the appellant or assignee, 
are known to appellant, the appellant's legal representative, or 
assignee, and may be related to, directly affect or be directly 
affected by or have a bearing on the Board's decision in the pending 
appeal, except that such statement is not required if there are no such 
related cases. If an appeal brief does not contain a statement of 
related cases, the Office may assume that there are no such related 
cases.
    (iii) [Reserved].
    (iv) Statement of last entered amendment. A statement identifying 
by date of filing the last entered amendment of the claims. If an 
appeal brief does not contain a statement of last entered amendment, 
the Office may assume that there are no amendments of the claims.
    (v) Summary of claimed subject matter. An annotated copy of each of 
the rejected independent claims, which shall, for each limitation in 
dispute by appellant, immediately after each such limitation, refer to 
the specification in the Record by page and line number or by paragraph 
number, and to the drawing, if any, by reference characters, sufficient 
to understand the claim. For each rejected independent claim, and for 
each dependent claim argued separately under the provisions of 
paragraph (c)(1)(vii) of this section, if the claim contains a means 
plus function or step plus function recitation as permitted by 35 
U.S.C. 112, sixth paragraph, then the annotated copy must identify, for 
every means plus function and step plus function recitation in dispute 
by appellant, the structure, material, or acts described in the 
specification in the Record as corresponding to each claimed function 
with reference to the specification in the Record by page and line 
number or by paragraph number, and to the drawing, if any, by reference 
characters. Reference to the patent application publication does not 
satisfy the requirements of this paragraph.
    (vi) [Reserved].
    (vii) Argument. The arguments of appellant with respect to each 
ground of rejection, and the basis therefor, with citations of the 
statutes, regulations, authorities, and parts of the Record relied on. 
The arguments shall explain why the examiner erred as to each ground of 
rejection contested by appellant. Except as provided for in Sec. Sec.  
41.41, 41.47 and 41.52, any arguments or authorities not included in 
the appeal brief will be refused consideration by the Board for 
purposes of the present appeal. Each ground of rejection contested by 
appellant must be argued under a separate heading, and each heading 
shall reasonably identify the ground of rejection being contested 
(e.g., by claim number, statutory basis, and applied reference, if 
any). For each ground of rejection applying to two or more claims, the 
claims may be argued separately (claims are considered by appellants as 
separately patentable), as a group (all claims subject to the ground of 
rejection stand or fall together), or as a subgroup (a subset of the 
claims subject to the ground of rejection stand or fall together). When 
multiple claims subject to the same ground of rejection are argued as a 
group or subgroup by appellant, the Board may select a single claim 
from the group or subgroup and may decide the appeal as to the ground 
of rejection with respect to the group or subgroup 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. Under each heading identifying the ground of 
rejection being contested, any claim(s) argued separately or as a 
subgroup shall be argued under a separate subheading that identifies 
the claim(s) by number. A statement which merely points out what a 
claim recites will not be considered an argument for separate 
patentability of the claim.
    (2) * * * See Sec.  1.116 of this title for treatment of 
amendments, affidavits or other evidence filed after final action but 
before or on the same date of filing an appeal and Sec.  41.33 for 
treatment of amendments, affidavits or other evidence filed after the 
date of filing the appeal. Review of an examiner's refusal to admit an 
amendment or evidence is by petition to the Director. See Sec.  1.181.
    (d) Notice of non-compliance. * * * If appellant does not, within 
the set time period, file an amended brief that overcomes all the 
reasons for non-compliance stated in the notification, the appeal will 
stand dismissed. Review of a determination of non-compliance is by 
petition to the Chief Judge. See Sec.  41.3.
    (e) Extensions of Time. * * *
    9. Amend Sec.  41.39 by revising paragraph (a); adding a heading to 
paragraph (b) introductory text; revising the second sentence of 
paragraph (b)(2); and adding a heading to paragraph (c) to read as 
follows:


Sec.  41.39  Examiner's answer.

    (a) Content of examiner's answer. The primary examiner may, within 
such time as may be directed by the Director, furnish a written answer 
to the appeal brief.
    (1) An examiner's answer is deemed to incorporate all of the 
grounds of rejection set forth in the Office action from which the 
appeal is taken (as modified by any advisory action and pre-appeal 
brief conference decision), unless the examiner's answer expressly 
indicates that a ground of rejection has been withdrawn.
    (2) An examiner's answer may include a new ground of rejection. For 
purposes of the examiner's answer, any rejection that relies upon any 
new evidence not relied upon in the Office action from which the appeal 
is taken (as modified by any advisory action) shall be designated by 
the primary examiner as a new ground of rejection. An examiner's answer 
that includes a new ground of rejection must be approved by the 
Director.
    (b) Appellant's response to new ground of rejection. * * *
* * * * *
    (2) * * * Such a reply brief must address as set forth in Sec.  
41.37(c)(1)(vii) each new ground of rejection and should follow the 
other requirements of a brief as set forth in Sec.  41.37(c). * * *
    (c) Extensions of time. * * *
    10. Add Sec.  41.40 to read as follows:


Sec.  41.40  Tolling of time period to file a reply brief.

    (a) Timing. Any request to seek review of the primary examiner's 
failure to designate a rejection as a new ground of rejection in an 
examiner's answer must be by way of a petition to the Director under 
Sec.  1.181 filed within two months from the entry of the examiner's 
answer and before the filing of any reply brief. Failure of appellant 
to timely file such a petition will constitute a waiver of any 
arguments that a rejection must be designated as a new ground of 
rejection.
    (b) Petition granted and prosecution reopened. A decision granting 
a petition under Sec.  1.181 to designate a new ground of rejection in 
an examiner's answer will provide a two-month time period in

[[Page 69848]]

which appellant must file a reply under Sec.  1.111 of this title to 
reopen the prosecution before the primary examiner. On failure to 
timely file a reply under Sec.  1.111, the appeal will stand dismissed.
    (c) Petition not granted and appeal maintained. A decision refusing 
to grant a petition under Sec.  1.181 to designate a new ground of 
rejection in an examiner's answer will provide a two-month time period 
in which appellant may file only a single reply brief under Sec.  
41.41.
    (d) Withdrawal of petition and appeal maintained. If a reply brief 
under Sec.  41.41 is filed within two months from the date of the 
examiner's answer and on or after the filing of a petition under Sec.  
1.181 to designate a new ground of rejection in an examiner's answer, 
but before a decision on the petition, the reply brief will be treated 
as a request to withdraw the petition and to maintain the appeal.
    (e) Extensions of time. Extensions of time under Sec.  1.136(a) of 
this title for patent applications are not applicable to the time 
period set forth in this section. See Sec.  1.136(b) of this title for 
extensions of time to reply for patent applications and Sec.  1.550(c) 
of this title for extensions of time to reply for ex parte 
reexamination proceedings.
    11. Amend Sec.  41.41 by revising paragraphs (a) and (b) and adding 
a heading to paragraph (c) to read as follows:


Sec.  41.41  Reply brief.

    (a) Timing. Appellant may file only a single reply brief to an 
examiner's answer within two months from the date of either the 
examiner's answer, or a decision refusing to grant a petition under 
Sec.  1.181 to designate a new ground of rejection in an examiner's 
answer.
    (b) Content. (1) A reply brief shall not include any new or non-
admitted amendment, or any new or non-admitted affidavit or other 
evidence. See Sec.  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 Sec.  41.33 for amendments, affidavits or other 
evidence filed after the date of filing the appeal.
    (2) Any argument raised in the reply brief which was not raised in 
the appeal brief, or is not responsive to an argument raised in the 
examiner's answer, including any designated new ground of rejection, 
will not be considered by the Board for purposes of the present appeal, 
unless good cause is shown.
    (c) Extensions of time. * * *


Sec.  41.43  [Removed]

    12. Remove Sec.  41.43.
    13. Amend Sec.  41.47 by revising paragraph (b) and revising the 
last sentence of paragraph (e)(1) to read as follows:


Sec.  41.47  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 Sec.  
41.20(b)(3) within two months from the date of the examiner's answer or 
on the date of filing of a reply brief, whichever is earlier.
* * * * *
    (e)(1) * * * The primary examiner may only rely on argument and 
evidence relied upon in an answer except as permitted by paragraph 
(e)(2) of this section.
* * * * *
    14. Revise Sec.  41.50 to read as follows:


Sec.  41.50  Decisions and other actions by the Board.

    (a) Affirmance and reversal. 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.
    (b) New ground of rejection. 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, and designate such a statement as 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 enters such a non-final decision, 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 prosecution will be reopened before 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 designated 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 
Sec.  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) Review of undesignated new ground of rejection. Any request to 
seek review of a panel's failure to designate a new ground of rejection 
in its decision must be raised by filing a request for rehearing as set 
forth in Sec.  41.52. Failure of appellant to timely file such a 
request for rehearing will constitute a waiver of any arguments that a 
decision contains an undesignated new ground of rejection.
    (d) Request for briefing and information. 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 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) Extensions of time. Extensions of time under Sec.  1.136(a) of 
this title for patent applications are not applicable to the time 
periods set forth in this section. See Sec.  1.136(b) of this title for 
extensions of time to reply for patent applications and Sec.  1.550(c) 
of this title for extensions of time to reply for ex parte 
reexamination proceedings.
    15. Amend Sec.  41.52 by revising the fourth sentence of paragraph 
(a)(1), paragraphs (a)(2) and (3), and adding paragraph (a)(4) to read 
as follows:


Sec.  41.52  Rehearing.

    (a)(1) * * * Arguments not raised, and evidence not previously 
relied upon, pursuant to Sec. Sec.  41.37, 41.41, or 41.47 are not 
permitted in the request for rehearing except as permitted by 
paragraphs (a)(2) through (4) of this section. * * *
    (2) 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 
designated pursuant to Sec.  41.50(b) are permitted.

[[Page 69849]]

    (4) New arguments that the Board's decision contains an 
undesignated new ground of rejection are permitted.
* * * * *
    16. Revise Sec.  41.54 to read as follows:


Sec.  41.54  Action following decision.

    After decision by the Board, jurisdiction over an application or 
patent under ex parte reexamination proceeding passes 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.

    Dated: October 21, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-28493 Filed 11-12-10; 8:45 am]
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