[Federal Register Volume 76, Number 225 (Tuesday, November 22, 2011)]
[Rules and Regulations]
[Pages 72270-72299]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-29446]



[[Page 72269]]

Vol. 76

Tuesday,

No. 225

November 22, 2011

Part III





United States 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; Final Rule

  Federal Register / Vol. 76 , No. 225 / Tuesday, November 22, 2011 / 
Rules and Regulations  

[[Page 72270]]


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DEPARTMENT OF COMMERCE

United States 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: Final rule.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) amends the rules governing practice before the Board of Patent 
Appeals and Interferences (Board or BPAI) in ex parte patent appeals. 
The Office amends the rules to: Remove several of the briefing 
requirements for an appeal brief, provide for the Board to take 
jurisdiction over the appeal earlier in the appeal process, no longer 
require examiners to acknowledge receipt of reply briefs, 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, 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 clarify that, for purposes 
of the examiner's answer, any rejection that relies upon Evidence not 
relied upon in the Office action from which the appeal is taken shall 
be designated as a new ground of rejection. The Office also withdraws a 
previously published final rule that never went into effect.

DATES: Effective Date: This rule is effective on January 23, 2012 
except withdrawal of the final rule published June 10, 2008 (73 FR 
32938) and delayed indefinitely on December 10, 2008 (73 FR 74972) is 
effective November 22, 2011.
    Applicability Date: This rule is applicable to all appeals in which 
a notice of appeal is filed on or after January 23, 2012.

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 41472 (July 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 32938 (June 10, 2008)). This final rule stated 
that the effective and applicability date was December 10, 2008. On 
June 9, 2008, the Office published a 60-day Federal Register notice (73 
FR 32559 (June 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 58943 (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 date of the final rule was not December 10, 2008, and 
that the effective and applicability date 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. 26, 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 
indefinitely delayed 2008 final rule and seeking public comment via a 
public roundtable and written comment (74 FR 67987 (Dec. 22, 2009)).
    In light of the comments received to these notices, the Office then 
published a notice of proposed rulemaking (NPRM) in the Federal 
Register (75 FR 69828 (Nov. 15, 2010)), which proposed to rescind the 
indefinitely delayed 2008 final rule and proposed new changes to the 
rules of practice before the Board in ex parte appeals. The public was 
invited to submit written comments. Comments were to be received on or 
before January 14, 2011. Comments received on or before January 14, 
2011, were considered.
    The Office also considered three comments received after January 
14, 2011. The Office now publishes this final rule taking into 
consideration the comments received to the NPRM.
    The Office received a comment offering an alternative rendition of 
the procedural history of these rules and claiming that OMB rejected 
the Office's original Information Collection Request. The Preamble of 
the NPRM accurately reflects the history of this rule. Accordingly, no 
changes have been made to the description of the procedural history in 
the Preamble of the final rule. Furthermore, OMB approved the Office's 
original Information Collection Request. See Notice of Office of 
Management and Budget Action, ICR Ref. No. 200809-0651-003 (Dec. 22, 
2009), http://www.reginfo.gov/public/do/PRAMain hyperlink; then search 
0651-0063; then follow ``Approved with change'' hyperlink. OMB has also 
pre-approved the Information Collection Request associated with these 
final rules. See Notice of Office of Management and Budget Action, ICR 
Ref. No. 201010-0651-001 (Jan. 4, 2011), http://www.reginfo.gov/public/do/PRAMain hyperlink; then search 0651-0063; then follow 
``Preapproved'' hyperlink.
    The Office received two comments suggesting that the Board already 
implemented the delayed 2008 final rule (73 FR 32938 (June 10, 2008), 
implementation of which was indefinitely delayed by 73 FR 74972 (Dec. 
10, 2008)). This is not true. The Office has not implemented the 
indefinitely delayed 2008 final rule.
    One commenter suggested that the fact that the Board sometimes has 
stated

[[Page 72271]]

that an appellant must ``map claims'' indicates the delayed 2008 final 
rule is already in effect. Since 2004, the Office has used this 
language to indicate that the appellant had not explained the subject 
matter defined in each independent claim by reference to the 
specification by page and line number, and to the drawing, if any, by 
reference characters, as required by the 2004 regulations. The delayed 
2008 regulations required annotation in addition to mapping. Those 
regulations have not been implemented or enforced with respect to any 
applicant. Another commenter suggested that the indefinitely delayed 
2008 regulations must be in effect because the 2004 regulations 
permitted applicants to raise arguments in either the appeal brief or 
reply brief. This is an incorrect reading of the 2004 regulations. The 
inability to raise new arguments in a reply brief is inherent in the 
nature of a reply brief; it must reply to either an argument or 
response in an answer or the failure to include a response in an 
answer. The indefinitely delayed 2008 regulations made this requirement 
clearer, but it has always been a requirement.
    The Board rules as published in 37 CFR 41.1-41.81 (2010) will 
remain in effect until the changes set forth in the instant final rule 
take effect on the effective date. The Office also withdraws the 
indefinitely delayed 2008 final rule (73 FR 32938 (June 10, 2008)) that 
never went into effect. Therefore, any appeal brief filed in an 
application or ex parte reexamination proceeding in which a notice of 
appeal is filed on or after the instant effective date must be filed in 
compliance with final Bd.R. 41.37 set forth in this final rule.

Purposes for the Rule Changes

    One purpose of this final rule is to ensure that the Board 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 final rule 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, and the grounds of rejection to be 
reviewed on appeal are no longer required in the appeal brief (final 
Bd.R. 41.37) or in the examiner's answer. Similarly, the final rule no 
longer requires appellants to file an evidence appendix or a related 
proceedings appendix (final Bd.R. 41.37). Because much of 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 examiner's 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 final rule is to eliminate any gap in time 
from the end of briefing to the commencement of the Board's 
jurisdiction. For example, under the final rule, the Board takes 
jurisdiction upon the earlier of the filing of a reply brief or the 
expiration of the time in which to file a reply brief (final Bd.R. 
41.35(a)). Examiners are no longer required to acknowledge receipt of 
the reply brief (Bd.R. 41.43 [removed]).
    The final rule 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 will be held in abeyance 
until the Board's jurisdiction ends (final 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 Examining Procedure (MPEP), discussed infra, as to what 
constitutes a new ground of rejection in an examiner's answer. The 
final rule 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 (final Bd.R. 41.40) or in a 
Board decision (final Bd.R. 41.50(c)).
    Another purpose of this final rule is to reduce confusion as to 
which claims are on appeal. For example, under the final rule, the 
Board will presume that the appeal is taken from the rejection of all 
claims under rejection unless cancelled by an applicant's amendment 
(final Bd.R. 41.31(c)). This rule simplifies practice for appellants 
who seek review of all claims under rejection--the majority of 
appellants--by obviating the need to enumerate the rejected claims that 
are being appealed. Under the previous practice, if an appellant 
incorrectly listed the claims on appeal, or was silent in the brief as 
to some of the claims under rejection, then the Office assumed that 
such claims were not on appeal, and noted 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, 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). This final rule avoids 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. This 
final rule replaces the Office's procedure under Ghuman and also 
simplifies practice for examiners by no longer requiring examiners to 
cancel non-appealed claims.
    The Supplementary Information in this notice provides: (1) An 
explanation of the final rule, (2) a discussion of the differences 
between the final rule and the proposed rule, (3) a discussion of the 
comments received to the NPRM, (4) a discussion of rule making 
considerations and comments received regarding the discussion of rule 
making considerations in the NPRM and (5) a copy of the amended 
regulatory text.
    Rules in 37 CFR 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).
    Rules in 37 CFR 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).
    Rules in 37 CFR part 41 are denominated as ``Bd.R. x'' in this 
supplementary information. For example, a reference to Bd.R. 41.3 is a 
reference to 37 CFR 41.3 (2010) (as first published in 69 FR 50003 
(August 12, 2004)).
    Changes proposed in the NPRM are denominated as ``proposed Bd.R. 
x'' in this supplementary information. A reference to ``proposed Bd.R. 
41.30'' is a reference to the proposed rule as set forth in 75 FR 
69828, 69846 (Nov. 15, 2010).
    Final rules are denominated as ``final Bd.R. x'' in this 
supplementary information. A reference to final Bd.R. x is a reference 
to the rule that will take effect on the effective date of this final 
rule.
    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.

[[Page 72272]]

    The final rule does not change any of the rules relating to inter 
partes reexamination appeals. Nor does the final rule change any of the 
rules relating to contested cases.
    For purposes of the NPRM, some paragraphs that were proposed to be 
deleted were shown as ``reserved.'' These ``reserved'' paragraphs have 
been deleted entirely in the final rule, and the remaining paragraphs 
in each section have been renumbered, as appropriate.

Explanation of the Final Rule

    The notable changes to the rules are: (1) The Board will presume 
that an appeal is taken from the rejection of all claims under 
rejection unless cancelled by an amendment filed by appellant (final 
Bd.R. 41.31(c)); (2) the Board will 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 (final Bd.R. 41.35(a)); (3) the 
requirements to include statements of the status of claims, status of 
amendments, and grounds of rejection to be reviewed on appeal and the 
requirements to include an evidence appendix and a related proceedings 
appendix are eliminated from the appeal brief (final 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 
(final Bd.R. 41.37(c)(1)(i) and (ii)); (5) for purposes of the 
examiner's answer, any rejection that relies upon Evidence not relied 
upon in the Office action from which the appeal is taken (as modified 
by any advisory action) shall be designated as a new ground of 
rejection (final Bd.R. 41.39(a)(2)); (6) an 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 (final 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 is eliminated (final 
Bd.R. 41.43 [removed]). A more detailed discussion of the final rule 
follows.
    Further information relevant to particular rules appears in the 
analysis of comments portion of this final rule.

Part 1

Termination of Proceedings

    Final Rule 1.197 revises the title of this section and deletes 
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 final 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 final Rule 1.197 
and final 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 remains the same under the final rule.

Part 41

Authority

    The listing of authority for Part 41 is revised to add references 
to 35 U.S.C. 132, 133, 306, and 315. Section 132 states that the 
Director shall prescribe regulations to provide for the continued 
examination of applications for patent at the request of the applicant. 
Section 133 provides 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

    Bd.R. 41.12 is amended by deleting the following requirements: (1) 
To cite to particular case law reporters, and (2) to include parallel 
citations to multiple reporter systems. Because members of the Board 
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 rule indicates a Board preference, not a requirement, 
for citations to certain reporters and for limited use of non-binding 
authority. The requirement to include pinpoint citations, whenever a 
specific holding or portion of an authority is invoked, is retained.
    The final 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 
judges to allow an efficient and timely decision to be made on the 
merits of the case. A BPAI precedential decision is binding on the 
Board and is considered an ``authority of the Office'' and thus does 
not fall within the ambit of final Bd.R. 41.12(d).

Subpart B

Definitions

    Bd.R. 41.30 is amended to add a definition of ``Record'' so that, 
when subsequent sections of Subpart B refer to the ``Record'', it is 
clear what constitutes the official record on appeal. The final rule 
states that the official record contains the items listed in the 
content listing of the Image File Wrapper or the official file of the 
Office if other than the Image File Wrapper, excluding any amendments, 
Evidence, or other documents that were not entered. Because an 
examiner's refusal to enter an amendment, Evidence, or other documents 
is a petitionable matter that is not subject to review by the Board, 
the exclusion of such un-entered documents from the 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. An information disclosure statement or petition that is 
held in abeyance while the Board possesses jurisdiction over the 
proceeding is not an entered document and therefore is excluded from 
the definition of ``Record'' until such time as it is entered. The 
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 content listing that 
points to this artifact file. The final rule further clarifies that in 
the case of an issued patent being reissued or reexamined, the Record 
further includes the Record of the patent being reissued or reexamined. 
The Office further notes that all references listed on an Information 
Disclosure Statement (i.e., PTO-Form PTO/SB/08a or 08b), which have 
been indicated as having been considered by the examiner, or listed on 
a PTO-Form 892 are included in the definition of Record even if each of 
the so listed references does not separately appear in the content 
listing of the Image File Wrapper.
    Final Bd.R. 41.30 adopts the definition of ``Evidence'' from 
Black's Law Dictionary to provide clarity regarding the use of that 
term in Subpart B. Toward that end, final Bd.R. 41.30

[[Page 72273]]

makes clear that for the purposes of Subpart B, ``Evidence'' does not 
encompass dictionaries. Excluding dictionaries from the definition of 
``Evidence'' thus allows appellants to refer to dictionaries in their 
briefs, which would otherwise be precluded under final Bd.R. 
41.33(d)(2) (absent existence of one of the enumerated exceptions). It 
further allows examiners to refer to dictionaries in the examiner's 
answers without automatically rendering a rejection a new ground under 
final Bd.R. 41.39(a)(2). Treating dictionaries in this manner is 
consistent with Supreme Court and Federal Circuit precedent, which 
contemplate that such materials may be consulted by tribunals ``at any 
time.'' See, e.g., Nix v. Hedden, 149 U.S. 304, 307 (1893) (citations 
omitted) (admitting dictionaries to understand the ordinary meaning of 
terms ``not as evidence, but only as aids to the memory and 
understanding of the court''); Phillips v. AWH Corp., 415 F.3d 1303, 
1322-23 (Fed. Cir. 2005) (en banc) (``[J]udges are free to consult 
dictionaries and technical treatises at any time in order to better 
understand the underlying technology and may also rely on dictionary 
definitions when construing claim terms, so long as the dictionary 
definition does not contradict any definition found in or ascertained 
by a reading of the patent documents.'') (citation omitted); In re 
Boon, 439 F.2d 724, 727-28 (CCPA 1971) (holding citation to dictionary 
was not tantamount to the assertion of a new ground of rejection 
``where such a reference is a standard work, cited only to support a 
fact judicially noticed and, as here, the fact so noticed plays a minor 
role, serving only to fill in the gaps which might exist in the 
evidentiary showing made by the Examiner to support a particular ground 
for rejection.'' (emphasis and internal quotations omitted)). Thus, the 
Office feels it is logical to permit the applicant and examiner to 
submit them to the Board during the briefing stage.

Appeal to the Board

    Bd.R. 41.31(a) is amended to add preamble language to make clear 
that an appeal to the Board is taken by filing a notice of appeal. This 
change is not intended to change the current practice of the Office. 
The Office continues to require appellants to file a notice of appeal 
in order to appeal an adverse decision of the examiner to the Board.
    Bd.R. 41.31(b) is amended to make clear that the signature 
requirements of Rules 1.33 and 11.18(a) do not apply to the notice of 
appeal. This change adds 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.
    Bd.R. 41.31(c) is amended so that an appeal, when taken, is 
presumed to seek review of all of the claims under rejection unless 
claims are cancelled by an amendment filed by the applicant and entered 
by the Office. This 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 final Bd.R. 41.31(c), the Board presumes that an appellant 
intends to appeal all claims under rejection except for those that have 
been cancelled. This 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 
previous practice, if an appellant incorrectly listed the claims on 
appeal, or was silent in the brief as to any of the claims under 
rejection, then the Office often assumed that such claims were not on 
appeal, and noted 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, 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 final rule 
avoids potential unintended cancellation of claims due to oversight or 
mistake by appellants in listing the claims on appeal. This final rule 
replaces the Office's procedure under Ghuman and simplifies practice 
for examiners by no 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 
has discretion to simply affirm any rejections against such claims. 
See, e.g., Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) 
(appellant waives any argument about a ground of rejection that he or 
she does not contest on appeal to the Board, and the Board may simply 
affirm the rejection).

Amendments and Affidavits or Other Evidence After Appeal

    The title of Bd.R. 41.33 is revised by replacing ``evidence'' with 
``Evidence'' to refer to the definition added in final Bd.R. 41.30.
    Bd.R. 41.33(c) is revised to delete the cross-reference to Bd.R. 
41.50(c). As noted infra, Bd.R. 41.50(c) is amended so that it is no 
longer applicable to final Bd.R. 41.33(c).
    Bd.R. 41.33(d)(1) is revised to replace ``evidence'' with 
``Evidence'' to refer to the definition added in final Bd.R. 41.30.
    Bd.R. 41.33(d)(2) is revised to replace ``evidence'' with 
``Evidence'' to refer to the definition added in final Bd.R. 41.30.
    Bd.R. 41.33 is not substantively changed except as to submission of 
dictionaries after the date of filing an appeal. Both Bd.R. 41.33 and 
final Bd.R. 41.33 otherwise restrict the types of amendments and 
evidence that can be filed after the date of filing an appeal. 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.

Jurisdiction Over Appeal

    Bd.R. 41.35(a) is amended to add a heading and 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 change is necessary because Bd.R. 
41.35(a) provides that the Board acquires jurisdiction upon transmittal 
of the file to the Board. The large majority of patent application 
files are electronic files (Image File Wrapper files), not paper files. 
Accordingly, in most cases 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, the Board must take no affirmative steps 
prior to assuming jurisdiction and no gap in time will exist from the 
end of the briefing to the commencement of jurisdiction by the Board.
    Bd.R. 41.35(b) is amended by moving some text to final Bd.R. 
41.35(e), adding a new paragraph, and by adding new text to make clear 
when the Board's

[[Page 72274]]

jurisdiction ends so that no gaps in time exist between the end of the 
Board's jurisdiction and further action by the examiner.
    Bd.R. 41.35(c) is amended to add a heading and a cross-reference to 
a relevant section of the rule.
    Final Bd.R. 41.35(d) is added to provide that, except for petitions 
authorized by part 41 of this title, the Board will 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 will 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 Bd.R. 41.33(d)(2) and final Bd.R. 
41.33(d)(2), the filing of an information disclosure statement during 
the Board's jurisdiction constitutes the introduction of untimely 
Evidence before the Board. 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. Final 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 to the Chief 
Administrative Patent Judge.
    Final Bd.R. 41.35(e) is added with a new heading and it contains 
the text previously in Bd.R. 41.35(b). This provision gives the Board 
the authority to return an appeal to the examiner if the Board deems 
that a file is not complete or is not in compliance with the 
requirements of Subpart B.

Appeal Brief--Timing and Fee; and Failure to File a Brief

    Bd.R. 41.37(a) and (b) are amended by adding new headings.

Appeal Brief--Content of Appeal Brief--Preamble

    Bd.R. 41.37(c)(1) is amended to add a heading, and to add the 
introductory phrase ``Except as otherwise provided in this paragraph'' 
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). Bd.R. 41.37(c)(1) is 
further amended 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

    Bd.R. 41.37(c)(1)(i) is amended to provide that the statement 
identifying the real party in interest should be accurate as of the 
date of filing of the appeal brief. Bd.R. 41.37(c)(1)(i) is also 
amended to allow the Board to assume that, if the statement of real 
party in interest is omitted from the appeal brief, then the named 
inventors are the real party in interest. This final rule 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. These changes are intended 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 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 final Bd.R. 41.37(c)(1)(i) is the minimum 
information needed by the Board to effectively make this determination.

Appeal Brief--Content of Appeal Brief--Related Appeals and 
Interferences

    Bd.R. 41.37(c)(1)(ii) is amended 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, the appellant's legal representative, or assignee, and 
(3) may be related to, directly affect or be directly affected by, or 
have a bearing on the Board's decision. Bd.R. 41.37(c)(1)(ii) is also 
amended to allow 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, 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 final rule 
also no longer requires filing of copies of decisions in related cases.

Appeal Brief--Content of Appeal Brief--Status of Claims [Deleted]

    Bd.R. 41.37(c)(1)(iii) is amended to delete the requirement for the 
appeal brief to contain an indication of the status of claims.

Appeal Brief--Content of Appeal Brief--Status of Amendments [Deleted]

    Bd.R. 41.37(c)(1)(iv) is amended to delete the requirement for the 
appeal brief to contain an indication of the status of amendments filed 
subsequent to final rejection.

Appeal Brief--Content of Appeal Brief--Summary of Claimed Subject 
Matter

    Bd.R. 41.37(c)(1)(v) is renumbered as final Bd.R. 41.37(c)(1)(iii) 
and is further amended to require that appellants provide a concise 
explanation of the subject matter defined in each of ``the rejected 
independent claims'' rather than ``each of the independent claims 
involved in the appeal.'' Similarly, final Bd.R. 41.37(c)(1)(iii) is 
amended to further require that the concise explanation identify the 
corresponding structure, material, or acts for each ``rejected 
independent claim'' when the claim contains a means or step plus 
function recitation as permitted by 35 U.S.C. 112, sixth paragraph. 
Under final Bd.R. 41.31(c), discussed supra, the Board will 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. Final Bd.R. 41.37(c)(1)(iii) also 
maintains the requirement that the concise explanation identify the 
corresponding structure, material, or acts for each dependent claim 
argued separately when the claim contains a means or step plus function 
recitation as permitted by 35 U.S.C. 112, sixth paragraph.
    Final Bd.R. 41.37(c)(1)(iii) is further amended to require that the 
concise explanation refer to the specification ``in the Record'' by 
page and line number ``or by paragraph number.'' The change 
incorporates the definition of Record from final Bd.R. 41.30 and makes 
clear that reference to the specification by paragraph number in lieu 
of page and line number is permissible.
    Additionally, final Bd.R. 41.37(c)(1)(iii) is amended to clarify 
that reference to the pre-grant patent application publication is not 
sufficient to satisfy the requirements of the summary of claimed 
subject matter.

Appeal Brief--Content of Appeal Brief--Grounds of Rejection to be 
Reviewed on Appeal [Removed]

    Bd.R. 41.37(c)(1)(vi) which required appellants to provide a 
statement of the grounds of rejection from the brief is removed. Under 
final Bd.R. 41.31(c), discussed supra, the Board will

[[Page 72275]]

presume that all claims under rejection are before it on appeal, unless 
applicant cancels the claim(s) subject to a particular rejection. Under 
final Bd.R. 41.39(a)(1), discussed infra, the 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 
answer expressly withdraws a ground of rejection. Moreover, under final 
Bd.R. 41.37(c)(1)(iv), 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.

Appeal Brief--Content of Appeal Brief--Argument

    Bd.R. 41.37(c)(1)(vii) is renumbered as final Bd.R. 
41.37(c)(1)(iv). Subparagraph (vii) is deleted. Final Bd.R. 
41.37(c)(1)(iv) is amended to clarify that the argument section should 
specifically explain why the examiner erred as to each ground of 
rejection contested by appellants. The final rule also provides that, 
except as provided for in final 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, final 
Bd.R. 41.37(c)(1)(iv) further requires 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 
final rule requires that any claim(s) argued separately or as a 
subgroup be placed under a separate subheading that identifies the 
claim(s) by number.
    The Board will 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 final rule permits the Board to refuse to consider arguments 
not raised in the appeal brief, except as provided in final Bd.R. 
41.41, 41.47, and 41.52. This language in the final rule is 
substantially the same as in 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.'' Final Bd.R. 41.41, 41.47, and 
41.52 have provisions allowing certain new arguments 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 final 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)).
    Final Bd.R. 41.37(c)(1)(iv) is also amended 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 content requirements of this paragraph will not be 
interpreted as requiring verbatim recitation of the ground being 
contested and briefs will not be held non-compliant for minor 
formatting issues.

Appeal Brief--Content of Appeal Brief--Claims Appendix

    Bd.R. 41.37(c)(1)(viii) is renumbered as final Bd.R. 
41.37(c)(1)(v). Subparagraph (viii) is deleted. Final Bd.R. 
41.37(c)(1)(v) is identical to Bd.R. 41.37(c)(1)(viii) and requires 
appellants to include a claims appendix with the appeal brief 
containing ``a copy of the claims involved in the appeal.'' Because 
final Bd.R. 41.31(c) requires the Board to 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, the claims appendix must include all claims under rejection 
in the Office action from which the appeal is taken unless cancelled by 
an amendment filed by the applicant and entered by the Office.

Appeal Brief--Content of Appeal Brief--Evidence Appendix

    Bd.R. 41.37(c)(1)(ix), which required appellants to include an 
evidence appendix with the brief, is deleted.
    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 (e.g., copies of declarations and 
affidavits, evidence of secondary considerations, etc.). This ensures 
that the Board is considering the proper evidence and avoids any 
confusion as to 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

    Bd.R. 41.37(c)(1)(x), which required appellants to include a 
related proceedings appendix with the brief, is deleted.
    While it is no longer a requirement to include a related 
proceedings appendix, the Office appreciates receiving copies of 
decisions or relevant papers from related proceedings. This ensures 
that the Board can efficiently consider the related proceedings 
information. In the alternative, the Board recommends that appellants 
clearly identify in the appeal brief any decisions or relevant 
documents from related proceedings using a clear description of the 
related proceeding, so that the Board can quickly and efficiently 
obtain copies of any such relevant documents.

Appeal Brief--New or Non-Admitted Amendments or Evidence

    Bd.R. 41.37(c)(2) is amended to add a sentence to make clear in the 
rule the current Office procedure for review of an examiner's refusal 
to admit an amendment or Evidence by petition to the Director under 
Rule 1.181. Final Bd.R. 41.37(c)(2) further replaces instances of 
``evidence'' with ``Evidence'' where appropriate to incorporate the 
definition of ``Evidence'' provided in final Bd.R. 41.30.

Appeal Brief--Notice of Non-Compliance

    Bd.R. 41.37(d) is amended to add a heading and to provide that 
under the Office's new streamlined procedure for review of ex parte 
appeal briefs for

[[Page 72276]]

compliance with the rule, review of a determination of non-compliant 
appeal brief should be requested via a petition to the Chief 
Administrative Patent Judge under Bd.R. 41.3.

Appeal Brief--Extensions of Time

    Bd.R. 41.37(e) is amended to add a heading.

Examiner's Answer

    Bd.R. 41.39(a) is amended to add a heading and preamble.
    Bd.R. 41.39(a)(1) is amended 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. Bd.R. 41.39(a)(1) is also amended to delete 
the requirement that the answer include an explanation of the invention 
claimed and of the grounds of rejection, since the Board will rely on 
appellant's specification and summary of claimed subject matter for an 
explanation of the invention claimed and will rely on the statement of 
the rejection(s) in the Office action from which the appeal is taken, 
as modified by advisory action or pre-appeal brief conference decision. 
In light of the streamlined review of appeal briefs for compliance with 
the rules, Bd.R. 41.39(a)(1) is further amended to delete the 
requirement for the primary examiner to make any determination that an 
appeal does not comply with the provisions of final Bd.R. 41.31 and 
41.37.
    Bd.R. 41.39(a)(2) is amended to provide that if a rejection set 
forth in the answer relies on any 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 
Director may choose to delegate this authority as appropriate. Bd.R. 
41.39(a)(2), as amended, refers to ``Evidence'' as defined in final 
Bd.R. 41.30.
    Bd.R. 41.39(b) is amended to add a heading.
    Bd.R. 41.39(b)(1) is amended to replace instances of ``evidence'' 
with ``Evidence'' where appropriate to refer to ``Evidence'' as defined 
in final Bd.R. 41.30.
    Bd.R. 41.39(b)(2) is amended to move the phrase ``each new ground 
of rejection'' to a different location in the sentence to increase the 
clarity of the sentence. Bd.R. 41.39(b)(2) is also amended to replace 
instances of ``evidence'' with ``Evidence'' where appropriate to refer 
to ``Evidence'' as defined in final Bd.R. 41.30. Bd.R. 41.39(b)(2) is 
further amended to replace the cross-reference to Bd.R. 
41.37(c)(1)(vii) with a reference to final Bd.R. 41.37(c)(1)(iv) in 
light of the renumbering of paragraphs within final Bd.R. 41.37(c)(1).
    Final Bd.R. 41.39(b)(1) and (b)(2) 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.
    Bd.R. 41.39(c) is amended to add a heading.
    Content requirements for the examiner's answer are not included in 
the rule, because the Office needs to retain flexibility to add content 
requirements as needed by revision of the MPEP. 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 the 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 being maintained. 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 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 for the limited ``purposes of the 
examiner's answer,'' as per final 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 final 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 Evidence (such as a new prior art reference) is applied or cited 
for the first time in an examiner's answer, then final 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 that changes the ``basic thrust of the rejection'' will give 
rise to a new ground of rejection. In re Kronig, 539 F.2d 1300, 1303 
(CCPA 1976). However, the examiner need not use identical language in 
both the examiner's answer and the Office action from which the appeal 
is taken to avoid triggering a new ground of rejection. 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 ``basic 
thrust of the rejection'' is the same. In re Kronig, 539 F.2d at 1303; 
see also In re Jung, 637 F.3d 1356, 1364-65 (Fed. Cir. 2001) 
(additional explanation responding to arguments offered for the first 
time ``did not change the rejection'' and appellant had fair 
opportunity to respond); 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.'' (citations 
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 declining to find other 
cases controlling given ``the 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).

[[Page 72277]]

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.
    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 (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 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 
(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 to elaborate upon that 
which has been cited previously. 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

[[Page 72278]]

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. 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.

Tolling of Time Period To File a Reply Brief

    Final Bd.R. 41.40 sets forth the exclusive procedure for an 
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.
    Final Bd.R. 41.40(a) provides that any such petition under Rule 
1.181 must be filed within two months from the entry of the examiner's 
answer and prior to the filing of a reply brief.
    Final Bd.R. 41.40(b) provides that a decision granting such a Rule 
1.181 petition requires appellants to file a reply under Rule 1.111 
within two months from the date of the decision to reopen prosecution. 
If appellant fails to timely file a reply, then the appeal will be 
dismissed.
    Final Bd.R. 41.40(c) provides that a decision refusing to grant 
such a Rule 1.181 petition allows appellants a two-month time period in 
which to file a single reply brief under final Bd.R. 41.41.
    Final Bd.R. 41.40(d) provides that if a reply brief is filed prior 
to a decision on the Rule 1.181 petition, then the filing of the reply 
brief acts to withdraw the petition and maintain the appeal. 
Jurisdiction passes to the Board upon the filing of the reply brief, 
and the petition under Rule 1.181 will not be decided on the merits.
    Final Bd.R. 41.40(e) provides that the time periods described in 
this section are not extendable under Rule 1.136(a) and appellant must 
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.
    Final Bd.R. 41.40 provides 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 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 final rule merely lays out the process to better 
enable appellants to address such concerns. The final 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 
will 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.

[[Page 72279]]

Reply Brief

    Bd.R. 41.41(a) is amended to add a heading and to clarify that 
appellants may file only one reply brief and that such a reply brief 
must be filed within the later of 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.
    Bd.R. 41.41(b) is amended to add a heading and subsections, and to 
delete the provision that a reply brief which is not in compliance with 
the provisions of the remainder of final Bd.R. 41.41 will not be 
considered by the Board. Specifically, final Bd.R. 41.41(b)(1) is 
added, which prohibits a reply brief from including new or non-admitted 
amendments or Evidence, which is the same language as in Bd.R. 
41.41(a)(2). Final Bd.R. 41.41(b) refers to ``Evidence'' as defined in 
final Bd.R. 41.30. Final Bd.R. 41.41(b)(2) is also added, which 
provides that any arguments which were not raised in the appeal brief 
or are not made in response to arguments raised in the answer will not 
be considered by the Board, absent a showing of good cause. The final 
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.
    Bd.R. 41.41(c) is amended to add a heading.

Examiner's Response to Reply Brief

    Bd.R. 41.43 is deleted.

Oral Hearing

    Bd.R. 41.47 is amended by removing references to the supplemental 
examiner's answer in paragraphs (b) and (e)(1), as the final rule does 
not allow for supplemental examiner's answers. Bd.R. 41.47(b) is 
further amended 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 final Bd.R. 41.40. Bd.R. 
41.47(e)(1) is further amended to replace instances of ``evidence'' 
with ``Evidence'' to incorporate the definition provided in final Bd.R. 
41.30.

Decisions and Other Actions by the Board

    Bd.R. 41.50(a)(1) is amended by adding a heading.
    Bd.R. 41.50(a)(2) is amended by allowing the examiner to write a 
``substitute'' examiner's answer in response to a remand by the Board 
for further consideration of a rejection.
    Bd.R. 41.50(a)(2)(i) and 41.50(a)(2)(ii) are amended by replacing 
instances of ``evidence'' with ``Evidence'' to incorporate the 
definition provided in final Bd.R. 41.30. Bd.R. 41.50(a)(2)(i) is 
further amended by replacing ``supplemental'' with ``substitute'' 
examiner's answer.
    Bd.R. 41.50(b) is amended by adding a heading and is further 
amended to clarify the Board's authority to enter a new ground of 
rejection. Bd.R. 41.50(b)(1) is amended by incorporating the 
definitions of ``Record'' and ``Evidence'' provided in final Bd.R. 
41.30, and by clarifying the language of the rule. Bd.R. 41.50(b)(2) is 
amended to incorporate the definition of ``Record'' as provided for in 
final Bd.R. 41.30.
    Bd.R. 41.50(c) is amended by removing the Board's power to suggest 
in a decision how a claim may be amended to overcome a rejection and by 
adding 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 final 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 final Bd.R. 41.52.
    Bd.R. 41.50(d) is amended to add a heading, and to delete the 
``non-extendable'' limitation on the response time period.
    Bd.R. 41.50(e) is amended to add a heading.
    Bd.R. 41.50(f) is amended to add a heading.

Rehearing

    Bd.R. 41.52(a)(1) is amended to add cross-references to relevant 
sections of the rule and to clarify that arguments which are not raised 
and Evidence which was not previously relied upon are not permitted in 
the request for rehearing, except as provided in the remainder of final 
Bd.R. 41.52(a). Bd.R. 41.52(a)(1) is further amended to incorporate the 
definition of ``Evidence'' provided in final Bd.R. 41.30.
    Bd.R. 41.52(a)(2) is amended to delete the requirement for 
appellants to make a showing of good cause to present new arguments 
based on a recent relevant decision of the Board or the Federal 
Circuit. It is the Office's position that a new argument based on a 
recent relevant decision would inherently make a showing of good cause.
    Bd.R. 41.52(a)(3) is amended 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.
    Final Bd.R. 41.52(a)(4) is added 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.
    Thus, the final rule provides appellants with a mechanism to 
address Board decisions containing new grounds of rejection through a 
request for rehearing, whether or not designated as such in a Board 
decision. Final Bd.R. 41.52(a)(3) allows for new arguments in a request 
for rehearing responding to the merits of a new ground of rejection 
designated as such, and final 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 final 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 final Bd.R. 41.50(b) and 
provide appellants with the option to either reopen prosecution under 
final Bd.R. 41.50(b)(1) or request rehearing on the merits of the 
designated new ground of rejection under final Bd.R. 41.50(b)(2).
    The final Bd.R. 41.52(b) does not modify Bd.R. 41.52(b).

Action following decision

    Bd.R. 41.54 is amended 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 
revision to the language incorporates the language of Rule 1.197(a), 
which is deleted from the final rule. By incorporating the language of 
Rule 1.197(a) into final Bd.R. 41.54, the rule for passing jurisdiction 
back to the examiner after decision by the Board is not substantively 
changed from the previous practice.

Differences Between the Final Rule and the Proposed Rule

    Several changes have been made to the rule as proposed in the NPRM. 
Because some of these changes add briefing requirements to the appeal 
brief that the Office had proposed to remove in the NPRM, the estimate 
of the burden on applicants to produce the appeal brief has also 
changed. The Office previously estimated that the rules proposed in the 
NPRM would reduce an applicant's paperwork burden from 34 hours to 31 
hours. The Office estimates that the Final Rule will reduce the 
paperwork burden from 34 hours to 32 hours.

[[Page 72280]]

Response to Comments

    The Office published a notice of proposed rulemaking proposing 
changes to the rules of practice before the Board of Patent Appeals and 
Interferences in ex parte appeals. See Rules of Practice Before the 
Board of Patent Appeals and Interferences in Ex Parte Appeals; Notice 
of proposed rulemaking, 75 FR 69828 (Nov. 15, 2010) (NPRM). The Office 
received comments from six intellectual property organizations, four 
corporations and foundations, three law firms, and 21 individuals in 
response to this notice. The Office's responses to the comments follow.
    Eight entities submitted written comments solely to express the 
view that they are wholeheartedly in favor of the changes to the rules 
as proposed in the NPRM. In light of all of the comments received, the 
USPTO has decided not to adopt a few of the changes proposed in the 
NPRM and to adopt a few other proposed changes with slight 
clarification to the language used to make the rule clearer. On 
balance, however, the rule changes proposed in the NPRM are being 
adopted substantially as proposed.

Bd.R. 41.12

    Comment 1: Two comments favored extending the list of preferred 
citations to include other sources, such as United States Patent 
Quarterly, LEXIS, and Pacer. Two other comments favored the proposed 
rule changes.
    Response: The USPTO declines to adopt the suggestion to extend the 
list of preferred citations to other sources. This rule merely 
indicates to the public which citation sources are ``preferred'' by the 
Board but it does not require appellants to cite to any one particular 
source.
    Comment 2: One comment suggested that paragraph (d) should be 
amended to make clear that appellants are not required to provide 
copies of the BPAI's own precedential decisions.
    Response: A BPAI precedential decision is binding on the Board and 
is considered an ``authority of the Office'' and thus does not fall 
within the ambit of paragraph (d). As such, the rule does not require 
appellants to submit a copy of a BPAI precedential decision.

Bd.R. 41.20

    Comment 3: While no change was proposed to this section of the 
rule, one comment was submitted suggesting that the USPTO should not 
charge fees for appeals that do not reach the BPAI for decision.
    Response: The suggestion is beyond the scope of the NPRM and will 
not be adopted. The USPTO takes this opportunity to note that 35 U.S.C. 
42(d) authorizes the USPTO to refund ``any fee paid by mistake or any 
amount paid in excess of that required.'' If an applicant chooses to 
file a notice of appeal and an appeal brief with the accompanying fees, 
and the case does not reach the Board for a decision, either through 
actions taken by the examiner or applicant, then the appeal fees have 
not been paid by mistake or in excess of that required, and the USPTO 
lacks statutory authority to refund these appeal fees.

Bd.R. 41.30

    Comment 4: Two comments opposed the proposed definition of 
``Record'' because it did not address file wrappers of older cases that 
are still maintained in paper format.
    Response: The USPTO creates an Image File Wrapper for any appeal to 
the Board that does not yet have one. Further, the definition of 
``Record'' in final Bd.R. 41.30 addresses a situation where the 
official file of the Office is other than an Image File Wrapper.

Bd.R. 41.31

    Comment 5: One comment requested clarification of the term ``twice 
rejected'' as used in paragraph (a) of this section because MPEP Sec.  
1204 is allegedly narrower than the majority Board decision in Ex Parte 
Lemoine, 46 USPQ2d 1420 (BPAI 1994).
    Response: This comment is beyond the scope of the NPRM. Bd.R. 41.31 
rule uses the same ``twice rejected'' language. No change will be made 
to paragraph (a) as a result of this comment.
    Comment 6: One comment was in favor of the proposed retention of 
the provision in paragraph (b) allowing a notice of appeal to be filed 
without a signature. Another comment suggested that paragraph (b) be 
revised to cite more specifically to Rule 1.33(b).
    Response: The USPTO declines to make this change to the rule. Final 
Bd.R. 41.31(b) applies to ex parte appeals in both applications and 
reexamination proceedings. Rule 1.33(b) applies only to amendments and 
other papers filed in an application, while Rule 1.33(c) applies to 
amendments and other papers filed in a reexamination proceeding on 
behalf of the patent owner. As such, the USPTO will retain the rule as 
proposed with the more general reference to Rule 1.33 to encompass both 
types of appeals.
    Comment 7: Three comments were in favor of the proposal in Bd.R. 
41.31(c) that an appeal, when taken, is presumed to be taken from the 
rejection of all claims under rejection unless cancelled by applicant's 
amendment, and two comments were opposed. One comment opposed to 
proposed Bd.R. 41.31(c) suggested that claims declared cancelled for 
purposes of the appeal be automatically reinstated if prosecution is 
reopened by the examiner.
    Response: The USPTO declines to adopt the suggested change to the 
proposed rule. If an applicant chooses to cancel a claim to avoid 
appeal of that claim rejection, the claim remains cancelled. Nothing in 
this rule prohibits applicants from adding back these cancelled claims 
by amendment should prosecution be reopened.
    Comment 8: Another comment opposed to Bd.R. 41.31(c) proposed that 
the USPTO allow appellants to appeal less than all of the claims, and 
that allowing the USPTO to cancel or deem claims cancelled or requiring 
cancellation as a quid pro quo for appeal is ultra vires.
    Response: It has long been USPTO practice that an appellant must 
either appeal from the rejection of all the rejected claims or cancel 
those claims not being appealed. See In re Benjamin, 1903 Dec. Comm. 
Pat. 132, 134 (1903). Final Bd. R. 41.31(c) merely states that an 
appeal is presumed to be taken from the rejection of all rejected 
claims that have not been cancelled. Nothing in the rule would require 
applicants, as a quid pro quo for appeal, to cancel claims. Should an 
applicant desire to appeal less than all the rejected claims without 
actually cancelling the claims, applicant may simply say nothing as to 
the claims applicant does not wish to appeal and the Board may simply 
affirm the rejection of those claims.
    Comment 9: One comment suggested that the proposed revision to 
Bd.R. 41.31(c) violates the Paperwork Reduction Act because the 
commenter claimed the Office had not stated the utility to be gained by 
presuming applicants are appealing all rejected claims. Additionally, 
the commenter suggested that a better solution would be to allow the 
appellant to appeal some claims and leave some claims rejected and 
pending.
    Response: The NPRM explains that the change to Bd.R. 41.31(c) will 
save time and paperwork for the ``majority of appellants who seek 
review of all claims under rejection'' by eliminating the requirement 
that each claim on appeal be listed in the notice of appeal. See 75 FR 
69828-01, 2010 WL 4568003, at *69831 (Dep't of Commerce Nov. 15, 2010). 
The NPRM further explains that the utility of this change is in 
``avoid[ing] the unintended cancellation of claims by the Office due to 
an

[[Page 72281]]

appellant's mistake in the listing of the claims in either the notice 
of the appeal or in the appeal brief.'' Id. Furthermore, the Office 
rejects the commenter's suggestion of allowing some claims to remain 
pending. Allowing such a piecemeal approach to appeals would greatly 
decrease the efficiency of the patent prosecution process.
    Comment 10: One comment requested clarification on the portion of 
Bd.R. 41.31(c) that states, ``Questions relating to matters not 
affecting the merits of the invention may be required to be settled 
before an appeal can be considered'' because it is not clear whether 
this sentence would apply to questions created by the examiner, the 
appellant or the Board, or by all three.
    Response: This comment is beyond the scope of the NPRM. This 
language is in the 2004 version of Bd.R. 41.31(c), and the proposed 
rule making did not propose any changes to this portion of the rule.
    Comment 11: One comment suggested adding a provision to Bd.R. 
41.31(c) to address appeals filed while petitions under Rule 1.181 are 
pending, specifically that the Chief Judge be able to decide if the 
appeal can proceed without the petition being decided or a procedure 
for expediting the petition decisions where that decision is necessary 
prior to decision on appeal.
    Response: This comment is beyond the scope of the NPRM. The 
language in the last sentence of paragraph (c) is in the 2004 version 
of Bd.R. 41.31(c), and the proposed rulemaking did not propose any 
changes to this portion of the rule.

Bd.R. 41.33

    Comment 12: One comment requested clarification stating that the 
limitations in Bd.R. 41.37(c)(2) and Bd.R. 41.41(b)(1) to preclude 
entry of a ``new'' or ``non-admitted'' amendments would potentially bar 
submission of items otherwise permitted under Bd.R. 41.33.
    Response: Final Bd.R. 41.37(c)(2) and final Bd.R. 41.41(b)(1) are 
intended to preclude reliance on new or non-admitted amendments that 
are not otherwise admitted by the examiner under final Bd.R. 41.33. If 
the examiner enters an amendment under final Bd.R. 41.33, appellant may 
rely on that amendment in the briefs. If the amendment is filed 
concurrently with a brief, and if it complies with final Bd.R. 41.33, 
then appellant may refer to the amendment in the brief even prior to 
the examiner rendering a decision on whether to admit the amendment. 
Should the examiner subsequently refuse to enter the amendment, then 
the Board will require appellant to file a substitute brief.
    Comment 13: Four comments opposed the rule in Bd.R. 41.33(d) 
restricting affidavits or other evidence filed after the date of filing 
an appeal. One comment suggested allowing appellants, with the payment 
of an additional fee, to file rebuttal evidence with an appeal brief.
    Response: In response to the comments opposed to any restrictions 
on the amendments and evidence that appellants can file after final 
and/or on or after the filing of a brief, the USPTO declines to make 
any additional changes to the rule. Final Bd.R. 41.33(d) is virtually 
identical to Bd.R. 41.33(d), the only changes being to incorporate the 
definition of Evidence from final Bd.R. 41.30. The USPTO rules provide 
appellants with mechanisms for introduction of new evidence and 
amendments through petitions to challenge the finality of a rejection, 
petitions to challenge whether an answer contains an undesignated new 
ground of rejection, and/or through request for continued examination 
(RCE) practice. The available mechanisms provide appellants with a full 
and fair opportunity to present amendments and/or evidence so that the 
examiner can first consider them prior to the case reaching the Board 
for review. The Board's main purpose is to review adverse decisions of 
examiners. The Board's review is not a continuation of the initial 
examination of a case. To ensure that the Board reviews a complete 
record that has been fully considered first by the examiner, the USPTO 
will maintain this rule as proposed, except to add back in a cross-
reference to final Bd.R. 41.50(a)(2)(i) and to replace instances of 
``evidence'' with ``Evidence'' so as to incorporate the definition 
provided in final Bd.R. 41.30.
    Comment 14: One comment proposed that Bd.R. 41.33(d) be amended to 
allow appellants to reference encyclopedia or dictionary definitions in 
the brief because these are materials that may be judicially or 
officially noticed without being formally admitted into evidence.
    Response: The USPTO agrees that dictionaries can be judicially 
noticed without being formally admitted into evidence and thus adopts a 
definition of ``Evidence'' in final Bd.R. 41.30 for this subpart that 
excludes dictionaries from this definition. This exclusion allows 
appellants to submit dictionaries for the first time in an appeal 
brief, or for the first time in a reply brief if the arguments 
pertaining thereto are responsive to an argument raised in the 
examiner's answer or if good cause is shown. This exclusion will 
likewise allow examiners to cite to a dictionary for the first time in 
the examiner's answer without such citation automatically resulting in 
a new ground of rejection under final Bd.R. 41.39(a)(2). The USPTO will 
determine based on controlling case law and the facts of each case 
whether citation to a dictionary in the examiner's answer or a Board 
decision constitutes a new ground of rejection. The USPTO notes that 
its rules are designed so that the scope of admissible evidence that 
can be submitted by the applicant narrows as the application progresses 
toward appeal. In particular, the scope of admissible evidence narrows 
after mailing of a final rejection, and then narrows further after 
applicant files a notice of appeal, and then narrows even further after 
appellant files an appeal brief. Compare 37 CFR 1.116(e), 41.33(d)(1), 
and 41.33(d)(2). To ensure that the USPTO is consistent in its 
treatment of dictionaries and is not more restrictive regarding 
admission of dictionaries in after-final practice than on appeal under 
final Bd.R. 41.33(d), the USPTO will not treat dictionaries as 
``evidence'' for purposes of Rule 1.116(e). However, the Office 
encourages applicants and examiners to cite dictionaries early in the 
prosecution to aid in narrowing, and possibly resolving, issues before 
the appeal stage.

Bd.R. 41.35

    Comment 15: One comment suggested that the Board take jurisdiction 
earlier than proposed in Bd.R. 41.35(a), i.e., at the time of filing of 
the notice of appeal.
    Response: The USPTO declines to adopt this suggestion. Since 
examiners may choose to reopen prosecution or allow applications after 
the filing of a notice of appeal, changing the Board's jurisdiction to 
the point at which a notice of appeal is filed would foreclose the 
examiner's options and could result in applicants unnecessarily going 
through a costly and lengthy appeal process.
    Comment 16: Two comments suggested that the Board take jurisdiction 
later, i.e., after the examiner has had an opportunity to consider the 
reply brief, to allow for the instance where the examiner would find 
some or all of the claims patentable in light of the reply brief.
    Response: USPTO data for the past ten years (FY 2001-FY 2010) shows 
that examiners allow applications in approximately 1% of all appeals 
and reopen prosecution in approximately 1% of all appeals after the 
filing of a reply brief. It is most often the case that once the 
examiner has held an appeal conference on the case and prepared an

[[Page 72282]]

examiner's answer, the examiner simply acknowledges and enters the 
reply brief and the appeal proceeds to the Board for review and 
decision. Meanwhile, USPTO data shows over the same time period that in 
those cases where the examiner simply acknowledged and entered the 
reply brief, the average pendency from the filing of a reply brief to 
the time the examiner acknowledged and entered the reply brief was 55 
days. As such, the advantage in shorter pendency received by all 
appellants from the Board taking jurisdiction upon filing a reply 
brief--at which point, the examiner has held an appeal conference on 
the case and prepared an examiner's answer--outweighs, in the view of 
the USPTO, the advantage gained in those rare instances where an appeal 
may become unnecessary after filing of the reply brief. For these 
reasons, the USPTO will maintain the language of Bd.R. 41.35(a) as 
proposed.
    Comment 17: Three comments were in favor of Bd.R. 41.35(a) as 
proposed.
    Response: The USPTO adopts the proposed changes to Bd.R. 41.35(a).
    Comment 18: One comment suggested that the USPTO adopt a default 
assumption for Bd.R. 41.35(b)(5) that appellant wants to proceed on 
appeal for other appealed claims and abandon claims subject to an 
action under Bd.R. 41.39 or 41.50 requiring response, akin to the 
approach taken when some claims are not dealt with in the appeal brief 
context.
    Response: Under final Bd.R. 41.39(b), 41.50(a)(2) and 41.50(b), if 
appellant does not file a paper in response to a new ground of 
rejection or in response to a substitute examiner's answer prepared in 
response to a remand, the Board will dismiss the appeal ``as to the 
claims subject to the new ground of rejection'' or ``as to the claims 
subject to the rejection for which the Board has remanded the 
proceeding.'' If there are remaining claims not subject to the new 
ground of rejection or remand, then the appeal will proceed as to those 
remaining claims. The Board's jurisdiction under final Bd.R. 
41.35(b)(5) would end only if all of the claims on appeal require 
action under final Bd.R. 41.39(b), 41.50(a)(2), or 41.50(b) and the 
appellant fails to take such required action, in which case the Board 
would enter an order of dismissal for the entire appeal. As to final 
Bd.R. 41.50(d), if an appellant fails to respond to the Board's request 
for briefing and information, the Board is entitled, at its discretion, 
to construe appellant's failure to respond as an indication that 
appellant no longer wishes to pursue the appeal, in which case the 
Board may enter an order dismissing the appeal.
    Comment 19: One comment opposed Bd.R. 41.35(c) because, though the 
proposed rule removed the ability of the Board to remand appeals, as 
the Director can delegate the authority to remand, this rule would not 
remedy the problem created by remands, i.e., that examiners can unduly 
draw out prosecution and not do a complete examination the first time 
around. The comment proposed that remands take place only at the 
appellant's request.
    Response: The rule provides for the Director to sua sponte order a 
proceeding remanded to the examiner prior to entry of a decision on the 
appeal by the Board. The USPTO declines to adopt the suggestion to 
change the rule to strip this power from the Director.
    Comment 20: One comment opposed the proposed changes to Bd.R. 
41.35(d) because it would prevent consideration by the examiner of 
newly discovered evidence that is more pertinent than the art used in 
the rejection on appeal.
    Response: If an appeal needs to be remanded for consideration of 
Information Disclosure Statements, the remand may result in lengthy 
delays in the appeal process and ultimately result in no change to the 
rejections that eventually reach the Board on appeal. As such, the 
USPTO will maintain the language of proposed Bd.R. 41.35(d) in this 
final rule.
    Comment 21: One comment stated, with respect to proposed Bd.R. 
41.35(d), that petitions filed while the Board possesses jurisdiction 
are likely to be untimely. The comment requested reconsideration of the 
two-month deadline for filing petitions.
    Response: This suggestion is outside the scope of the NPRM, and the 
USPTO declines to adopt any rule changes regarding the deadline for 
filing petitions.
    Comment 22: One comment suggested that the USPTO adopt a 
``restatement'' clarifying what constitutes appealable subject matter 
to better enable the examining corps to address procedural issues.
    Response: The USPTO will take this restatement into account when 
revising the MPEP in accordance with the final rule.
    Comment 23: Another comment was in favor of the proposed changes to 
Bd.R. 41.35(d).
    Response: The USPTO adopts proposed Bd.R. 41.35(d) as part of this 
final rule.

Bd.R. 41.37

    Comment 24: Two comments opposed exempting pro se appellants from 
providing a statement of the last entered amendment under proposed 
Bd.R. 41.37(c)(1)(iv).
    Response: The USPTO agrees with the comments suggesting requiring 
pro se appellants to provide the same information as other appellants 
regarding the claims on appeal. For reasons discussed below, the USPTO 
has decided to maintain the requirement for a claims appendix in lieu 
of the statement of last entered amendment. As such, the final rule 
requires all appellants, including pro se appellants, to provide a 
claims appendix.
    Comment 25: One comment requested clarification as to whether pro 
se appellants must comply with all the requirements, but only 
substantially as to some, or whether the pro se appellant does not need 
to comply with all the requirements and only substantially as to the 
identified paragraphs.
    Response: Final Bd.R. 41.37(c) requires pro se appellants to 
substantially comply with only the requirements in the identified 
subparagraphs, and pro se appellants are not required to comply with 
the requirements in the remaining subparagraphs of final Bd.R. 
41.37(c).
    Comment 26: Two comments favored the default assumption provided 
for in Bd.R. 41.37(c)(1)(i), and one comment suggested that absent a 
statement to the contrary, the Board should assume that the real party 
in interest consists of one or more of the inventors of the application 
and/or the assignee of the application as recorded at the USPTO.
    Response: The USPTO declines to adopt this suggested change. The 
default provision is to address the situation in which the inventor(s) 
is the real party in interest. In such an instance, the Board will not 
hold a brief non-compliant if the statement of real party in interest 
is omitted. In the past, appellants mistakenly thought they could omit 
this portion of the brief if the named inventor(s) was the real party 
in interest. This led to briefs being held to be non-compliant based on 
a technicality. The default provision gives the USPTO the flexibility 
to assume that the inventor(s) are the real party in interest and avoid 
having to hold a brief non-compliant.
    Comment 27: One comment was in favor of Bd.R. 41.37(c)(1)(ii) as 
proposed and another comment suggested we employ the phrase 
``controlled by'' instead of ``owned'' and ``real party in interest'' 
instead of ``appellant or assignee'' as the real party in interest may 
be in a better position to know of related appealed cases.
    Response: While under certain circumstances, an entity other than 
the appellant, appellant's legal representative, or assignee may be in 
a

[[Page 72283]]

better position to know of related cases, the USPTO declines to adopt 
the suggested change, which would expand the obligations to report 
related cases beyond this enumerated group.
    Comment 28: Five comments were in favor of deleting the statement 
of the status of claims from the 2004 version of Bd.R. 41.37(c)(1)(iii) 
and no comments were received opposed to this proposed change. One 
comment in favor of the proposed change suggested that appellants 
should be allowed to cancel a claim in the brief itself, thereby saving 
the cost of filing a separate document formally cancelling the claim.
    Response: The USPTO declines to adopt this suggested change. The 
USPTO requires that claim amendments be filed in a separate Amendment 
under final Bd.R. 41.33, so that they are separately considered and 
separately entered or refused entry as appropriate by the examiner. 
Under the new streamlined procedure for review of appeal briefs, the 
Board now reviews the appeal brief for entry into the Record, but the 
examiner continues to review Amendments under final Bd.R. 41.33 for 
entry into the Record.
    Comment 29: One comment opposed proposed Bd.R. 41.37(c)(1)(iv), 
another comment suggested a change to the proposed rule to make clear 
that the statement should include the date of filing of the last 
entered amendment of the claims, as opposed to amendments to the 
specification, and another comment requested reconsideration of the 
proposed rule because in reissue and reexamination proceedings the full 
set of claims is not reproduced in amendments and thus in these 
instances the latest entered amendments may not reflect all the pending 
claims on appeal.
    Response: The USPTO agrees with the last comment, and has decided 
to delete the requirement in proposed Bd.R. 41.37(c)(1)(iv) requiring a 
statement of last entered amendment and to delete the requirement in 
Bd.R. 41.37(c)(1)(iv) for a statement of the status of amendments. 
Compare 37 CFR 1.121 (requiring all claims ever presented), with 37 CFR 
1.173 (reissues) and 37 CFR 1.530 (ex parte reexaminations) (requiring 
only claims being changed/added). As discussed in further detail below, 
the USPTO will maintain the requirement in Bd.R. 41.37(c)(1)(viii) 
(renumbered as final Bd.R. 41.37(c)(1)(v)) to provide a claims 
appendix.
    Comment 30: Five comments were opposed to the proposed changes in 
Bd.R. 41.37(c)(1)(v), which required a summary of the claimed subject 
matter to include annotations for each claim limitation ``in dispute.'' 
The comments were concerned that the phrase ``in dispute'' was vague 
and unclear. Some of the comments suggested eliminating the summary of 
the claimed subject matter requirement entirely, other comments 
suggested limiting the requirement to only those appeals where the 
examiner raised a rejection under 35 U.S.C. 112, while other comments 
suggested amending the proposed rule to require annotations for each 
claim limitation. Another comment was concerned that annotating only 
those claim elements deemed to be ``in dispute'' would amount to an 
implied waiver or admission regarding those claim limitations not 
annotated. Another comment requested clarification of the goal of this 
briefing requirement.
    Response: In light of the many comments received that expressed 
concern with determining which claim limitations are ``in dispute'' and 
expressed further concern with implied waiver for those limitations not 
annotated, the USPTO has decided not to amend this portion of the rule 
relating to the summary of claim subject matter to limit the summary to 
only those claims ``in dispute.'' Rather, the USPTO maintains the 
language of the 2004 rule, which requires a concise explanation of the 
subject matter defined in each of the independent claims. In light of 
the change to Bd.R. 41.35, the USPTO retains the proposed change 
requiring the summary for ``each of the rejected independent claims'', 
whereas the 2004 rule requires the summary for each of the independent 
claims ``involved in the appeal.'' The USPTO further retains the 
proposed changes that clarify that citation to the specification should 
be to the specification ``in the Record'' and not to the patent 
application publication. The USPTO further retains the proposed changes 
that permit appellant to refer to the specification by page and line 
number or ``by paragraph number.'' As to the comment requesting 
clarification about the goal of this section of the brief, the goal is 
to familiarize the judges with the claimed subject matter. This summary 
is helpful to the Board to work through cases as efficiently and 
expeditiously as possible. It helps to orient the judges so as to 
quickly and efficiently focus on the determinative aspects of the 
claims and the corresponding disclosure in the specification.
    Comment 31: One comment suggested amending the language of proposed 
Bd.R. 41.37(c)(1)(v) to clarify whether annotation of separately argued 
dependent claims is required, as the language in the 2004 rule could be 
read as requiring annotation of dependent claims only if they are both 
argued separately and contain means plus function language.
    Response: The final rule requires a concise explanation of the 
subject matter of separately argued dependent claims only if such 
claims include a means plus function or step plus function recitation 
as permitted by 35 U.S.C. 112, sixth paragraph. However, the rule does 
not prohibit an appellant from providing a summary of claimed subject 
matter for all dependent claims argued separately, and the USPTO 
considers it a best practice for appellants to provide a summary of 
claimed subject matter for all dependent claims argued separately.
    Comment 32: One comment opposed adoption of a single format of the 
summary in proposed Bd.R. 41.37(c)(1)(v) as being too rigid and 
suggested that the drafter of the appeal brief should be allowed to use 
whatever format they deem to be the most informative. The comment also 
requested the BPAI to provide examples of confusing and uninformative 
formats, rather than a single compliant format.
    Response: The USPTO has decided to maintain the 2004 rule in 
substantial part, which does not require a single format for 
compliance. The rule does require, however, that regardless of the 
format provided by appellants, the summary of claimed subject matter 
must ``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.'' The Board will find briefs to be non-compliant if the 
summary of the claimed subject matter does not include references to 
the specification by page and line number or by paragraph number, and 
references to drawings, if any, by reference characters. The Board will 
post examples on its Web page of both compliant and non-compliant 
summaries.
    Comment 33: One comment stated that the language in proposed Bd.R. 
41.37(c)(1)(v) requiring the summary to be ``sufficient to allow the 
Board to understand the claim'' is vague.
    Response: The USPTO has decided to maintain the 2004 rule in 
substantial part. As such, this language is not incorporated in the 
final rule (renumbered as final Bd.R. 41.37(c)(1)(iii)).
    Comment 34: One comment opposed the proposed Bd.R. 41.37(c)(1)(v) 
because it removed the requirement for appellants to identify the 
structure for all means plus function elements of the independent 
claims and separately argued dependent claims.

[[Page 72284]]

    Response: The USPTO has decided to maintain the 2004 rule in 
substantial part. The final rule requires: ``For each rejected 
independent claim, and for each dependent claim argued separately under 
the provisions of paragraph (c)(1)(iv) 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 concise 
explanation must identify 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.''
    Comment 35: Four comments were in favor of the proposed change that 
eliminates the statement of the grounds of rejection in Bd.R. 
41.37(c)(1)(vi), and the USPTO received no comments opposed to this 
proposed change.
    Response: The USPTO adopts the elimination of the requirement as 
set forth in Bd.R. 41.37(c)(1)(vi) as proposed.
    Comment 36: Two comments suggested that proposed Bd.R. 
41.37(c)(1)(vii) be amended to prohibit appellants from raising 
arguments in the appeal brief that have not been raised previously in 
prosecution.
    Response: The USPTO declines to adopt a rule prohibiting appellants 
from raising arguments in the appeal brief for the first time. In the 
indefinitely delayed 2008 final rule, the USPTO would have limited 
appellant's ability to raise new arguments in the appeal brief based on 
whether the argument had been raised before the examiner. See 73 FR 
32943 (Jun. 10, 2008). Numerous comments were received in opposition to 
this proposed change. Keeping in mind the comments received in the 
prior rule making activity, the USPTO declines to set out a rule that 
limits appellants from raising arguments in the appeal brief for the 
first time.
    Comment 37: One comment requested further clarification of the 
proposed Bd.R. 41.37(c)(1)(vii) as it relates to waiver. Specifically, 
the comment requested the USPTO clarify on what basis the Board will 
review the examiner's determination of patentability and explain the 
basis for that standard of review based on statutory authority and 
judicial precedent. The comment suggested that the Board should act as 
a fact finder, independently judge the examiner's findings, and conduct 
an independent review of the entire record, without presuming any part 
of the examiner's position to be correct. The comment suggested that 
the Board should review the statement of rejection in the office action 
from which the appeal is taken and determine whether that establishes a 
prima facie case of unpatentability, and, only in the instance where 
the Board determines that a prima facie case has been established would 
the Board proceed to review the appeal brief and the answer. Another 
comment suggested amending proposed subparagraph (c)(1)(vii) to provide 
parity so that any arguments presented by an appellant and not 
addressed by the examiner in the answer will be treated as waived by 
the Board.
    Response: The USPTO reiterates its statements on waiver provided in 
the NPRM. The Board may 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); 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). See also Ex parte Frye, 
94 USPQ2d 1072 (BPAI 2010). Final Bd.R. 41.37(c)(1)(iv) permits the 
Board to refuse to consider arguments not raised in the appeal brief, 
except as provided in final Bd.R. 41.41, 41.47, and 41.52. This 
language in the final rule is substantially the same as the language of 
the 2004 version of 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.'' Any additional discussion of 
``waiver'' as well as ``clarification'' of how the Board will review 
appeals is outside the scope of this rule making. Issues of waiver and 
how the Board will review appeals is uniquely case-specific and thus 
best left to discussion in future Board decisions as warranted. See Ex 
parte Frye, 94 USPQ2d 1072 (BPAI 2010) and In re Jung, 637 F.3d 1356 
(Fed. Cir. 2011) for a general discussion of how the Board conducts its 
review. As to the comment suggesting that the Board review the 
statement of the rejection in the Office action from which the appeal 
is taken and determine whether that establishes a prima facie case of 
unpatentability, and only in the instance where the Board determines 
that a prima facie case has been established would the Board proceed to 
review the appeal brief and the answer, the USPTO declines to adopt 
this suggestion. The Board is a tribunal of appeal, where the appellant 
is responsible for pointing out the alleged error in the examiner's 
decision on appeal. See Ex parte Frye, 94 USPQ2d at 1075 (``If an 
appellant fails to present arguments on a particular issue--or, more 
broadly, on a particular rejection--the Board will not, as a general 
matter, unilaterally review those uncontested aspects of the 
rejection'' (citations omitted)); Jung, 637 F.3d at 1365-66. The 
Board's role is not to reexamine the application. At the time of filing 
the notice of appeal, an appellant can request a panel review by 
experienced examiners using the pre-appeal brief conference program. 
The appellant can also challenge specific aspects of the prima facie 
case and merits of the rejection by argument and evidence in the appeal 
brief. See generally In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) 
(discussing nature of challenging rejections during Board appeals).
    Comment 38: One comment questioned whether the Office was shifting 
the burden of proof of patentability to the applicants by requiring an 
applicant to plead all grounds for appeal in the appeal brief and 
considering any grounds that were not pled to be waived, and whether 
such a rule was substantive and thus outside the Office's rule making 
authority.
    Response: The Office is not shifting any burden of proof. The 
burden of proof of unpatentability remains on the Office. The Office is 
merely clarifying an appellant's responsibility to point out what it is 
that the appellant wants the Board to review and what the examiner's 
error is believed to be. See In re Jung, 637 F.3d 1356, 1356-66 (Fed. 
Cir. 2011). This requirement merely governs the manner in which 
appellants present their viewpoints to the agency; it does not 
foreclose effective opportunity to make one's case on the merits. See 
JEM Broad. Co. v. F.C.C., 22 F.3d 320, 326 (DC Cir. 1994) (stating that 
a ``critical feature'' of a procedural rule ``is that it covers agency 
actions that do not themselves alter the rights or interests of 
parties, although it may alter the manner in which the parties present 
themselves or their viewpoints to the agency.'').
    Comment 39: Four comments were in favor of elimination of the 
claims appendix from Bd.R. 41.37(c)(1)(viii) because it would decrease 
the burden on appellants in drafting briefs. Three comments opposed 
elimination of the

[[Page 72285]]

claims appendix because it adds a burden to the public and the Board to 
search through the Image File Wrapper for the last entered amendment, 
because Briefs should be reasonably self-contained, and because in 
reissues and reexaminations the last entered amendment may not include 
a complete listing of the claims on appeal.
    Response: In order to ensure that the examiner and appellants are 
presenting arguments as to the same set of claims on appeal, and in 
light of the comments raised regarding reissues and reexaminations, the 
USPTO has reconsidered the proposed deletion of the claims appendix and 
will instead maintain the requirement for appellants to include a 
claims appendix in the appeal brief (renumbered as final Bd.R. 
41.37(c)(1)(v)).
    Comment 40: Three comments were in favor of elimination of the 
evidence and related proceeding appendices from Bd.R. 41.37(c)(1). One 
comment proposed that the rule regarding the evidence appendix should 
clarify that it is appropriate to include materials that are not 
readily available to the Board including dictionary definitions, 
encyclopedias, unreported decisions, and administrative materials.
    Response: The USPTO declines to add back the requirement for an 
evidence appendix simply to clarify what evidence is appropriate to 
include in such an appendix. The USPTO notes that elimination of this 
briefing requirement does not prohibit appellants from including an 
evidence appendix, and that the USPTO views inclusion of an evidence 
appendix, where warranted, as a best practice. However, the USPTO will 
determine on a case-by-case basis whether evidence referred to in and/
or submitted with a brief should be considered under final Bd.R. 41.33. 
As discussed previously, the USPTO has adopted a definition of 
``Evidence'' that excludes dictionaries, thus allowing appellants to 
refer to dictionary definitions in the appeal brief.
    Comment 41: One comment requested clarification as to the 
prohibition in Bd.R. 41.37(c)(2) against including ``new'' or ``non-
admitted'' amendments, affidavits or other evidence in briefs, because 
as written it could be construed to bar the submission of items 
otherwise permitted under Bd.R. 41.33.
    Response: This comment is addressed above in the response to 
Comment 12.
    Comment 42: One comment questioned why the proposed rules did not 
incorporate in Bd.R. 41.37(d) the current streamlined review of briefs 
for compliance with the rules by the Chief Judge or his designee.
    Response: The USPTO chose not to codify the new streamlined 
procedure since this procedure relates to an internal management 
practice. Such practices are not typically codified in rules so as to 
provide the Office with the flexibility to make changes to the 
streamlined procedures should the need arise.
    Comment 43: One comment suggested that the penalty for a non-
compliant appeal brief in Bd.R. 41.37(d) should be that the non-
compliant portion of the brief not be considered for purposes of the 
appeal. The comment suggested that the ``two strikes'' rule is harsh 
and capricious for something that may be a de minimus error, and that 
this type of response is not a default under the Federal Rules of 
Appellate Procedure.
    Response: The USPTO declines to adopt the suggested change. The 
penalty for failure to overcome the reasons for non-compliance, as set 
forth in final Bd.R. 41.37(d), is the same penalty provided for in the 
2004 version of Bd.R. 41.37(d). Further, the rule as proposed clarifies 
that appellants can petition the Chief Administrative Patent Judge if 
they feel their brief has been found to be non-compliant in error.

Bd.R. 41.39

    Comment 44: One comment suggested defining or deleting the use of 
``primary examiner'' in Bd.R. 41.39(a) and in Bd.R. 41.39(a)(2), 
(b)(1), and (b)(2), because this term is not defined in the CFR or the 
MPEP.
    Response: The suggestion is beyond the scope of the NPRM and will 
not be adopted. The term ``primary examiner'' is used in 35 U.S.C. 134, 
the 2004 version of Bd.R. 41.39 and previous versions of the rule 
(e.g., Rule 1.193 (1959)). The USPTO is using ``primary examiner'' in 
this paragraph to have the same meaning as used in 35 U.S.C. 134.
    Comment 45: One comment opposed the removal in Bd.R. 41.39(a)(1) of 
the requirement for the examiner to present an integrated statement of 
the grounds of rejection, because it would place an undue burden on 
appellant and would discourage the examiner from being consistent.
    Response: By not requiring examiners to restate the grounds of 
rejection in the answer, this rule will remove the possibility of any 
inconsistencies between the articulation of the grounds of rejection as 
stated in the Office action from which the appeal is taken and the 
articulation of the grounds of rejection in the answer, and will save 
appellants and the Board the time of having to compare the grounds of 
rejection in each document to ensure that they are the same. Under the 
final rule, the examiner will provide only a response to arguments 
raised in the appeal brief and/or a new ground of rejection, designated 
as such. The caveat in final Bd.R. 41.39(a)(1), which allows for 
modification of the grounds of rejection in an advisory action or pre-
appeal brief conference decision, was deemed necessary because often 
appellants raise new arguments after the Office action from which the 
appeal is taken, i.e., in a reply after final rejection or in a pre-
appeal brief conference request, and any modification to the rejections 
made by the examiner, such as the withdrawal of a ground of rejection, 
should be taken into account in the grounds of rejection on appeal. 
Therefore, the examiner cannot reinstate a withdrawn rejection in the 
examiner's answer without designating it as a new ground of rejection.
    Comment 46: One comment opposed the portion of the proposed Bd.R. 
41.39(a)(2) that allows modification of the grounds of rejection in an 
advisory action or pre-appeal brief conference decision.
    Response: The USPTO incorporates by reference its response to 
comment 45 provided supra.
    Comment 47: Two comments favored proposed Bd.R. 41.39(a)(2) because 
the proposed rule, along with the examples provided in the discussion 
portion of the notice of proposed rule making, clarify when a new 
ground of rejection is made in an examiner's answer. Another comment 
opposed this proposed rule because it would increase burdens to the 
USPTO and permit delays in prosecution by appellants. This comment 
suggested that it would be better to address the issue of new evidence 
by not allowing appellants to make arguments in the briefs that were 
not presented during prosecution, or, by allowing examiners ``by 
default'' to introduce new evidence in the answer.
    Response: The USPTO declines to adopt a rule prohibiting appellants 
from raising arguments in the appeal brief for the first time. In the 
indefinitely delayed 2008 final rule, the USPTO would have limited 
appellant's ability to raise new arguments in the appeal brief based on 
whether the argument had been raised before the examiner. See 73 FR 
32943 (Jun. 10, 2008). Numerous comments were received in opposition to 
this proposed change. Keeping in mind the comments received in the 
prior rule making activity, the USPTO declines to set out a rule that 
limits appellants from raising arguments in the appeal brief for the 
first time.
    Comment 48: One comment favored the requirement in Bd.R. 
41.39(a)(2) for Director approval of answers containing

[[Page 72286]]

new grounds of rejection, but suggested that the rule should include a 
standard for the approval to include a substantive review of the 
pertinence of the newly cited prior art.
    Response: The USPTO declines to codify a specific standard to be 
used by the Director to approve a new ground of rejection. The question 
of whether to approve an answer that contains a new ground of rejection 
is case-specific and, as such, is not amenable to a single standard. 
The USPTO notes that the text of Bd.R. 41.39(a)(2) as contained in this 
Final Rule reflects a minor modification from the version in the NPRM. 
The revision was made to clarify that the rule requires that the 
examiner obtain the Director's approval of an answer containing a new 
ground of rejection, and that the Director is not required to provide 
such approval.
    Comment 49: One comment requested clarification of ``the references 
in this rule to modification of a rejection by an advisory action'', 
the concern being that the ``continuation'' portion of the advisory 
action may be used to substantially modify the rejection, and could 
raise the issue of whether the examiner has entered a new ground of 
rejection in the advisory action even before the filing of a notice of 
appeal. The comment stated that it would be especially important to 
have this language clear because Bd.R. 41.39(a)(1) would not require 
the examiner to restate the grounds of rejection--which could lead to 
confusion. The comment suggested that the rule state that the reference 
to a modification of a rejection in an advisory action would be only 
with regard to the status of the pending rejections or which claims are 
subject to a pending rejection, and that modification beyond that 
should not be encompassed by this rule, but should be achieved through 
reopening prosecution.
    Response: The USPTO declines to modify the rule to specifically 
limit the content of an advisory action because it is impossible for 
the USPTO to foresee every situation that may arise during prosecution, 
and certain statements may be necessary in an advisory action to make 
the Record clear on appeal in light of actions, statements, or 
amendments made by appellants in an after-final amendment. To address 
the concern regarding new grounds of rejection, appellants who feel 
that an advisory action contains a new ground of rejection have the 
right to petition under Rule 1.181 for supervisory review of the 
examiner's action to seek to have prosecution reopened. See also the 
response to comment 45 provided supra.
    Comment 50: One comment requested clarification of the term ``new 
evidence'' as used in Bd.R. 41.39(a)(2) and asked whether new 
dictionary definitions first used in an answer are included in the term 
``new evidence.''
    Response: The USPTO has added a definition of ``Evidence'' in final 
Bd.R. 41.30 to clarify that ``Evidence'' in this subpart does not 
include dictionaries. As such, the issue of whether citation to a 
dictionary for the first time in an answer or in a Board decision 
constitutes a new ground of rejection will be determined based on 
controlling case law and the specific facts of each case.
    Comment 51: One comment opposed allowing new grounds of rejection 
in an answer because it creates a ``quagmire'' and allows the examiner 
not to be diligent in conducting prosecution. The comment suggested 
limiting new grounds of rejection to prior art references that first 
became publicly available after the date of the Office action from 
which the appeal is taken.
    Response: The USPTO declines to adopt this suggestion. There are 
many reasons why an examiner might make a new ground of rejection based 
on prior art that was available at the time of the initial prosecution, 
including: Amendments made to the claims by appellants, challenges to 
official notice, etc. Further, the integrity of the patent system 
depends upon the examiner having the ability to rely on the best prior 
art of which he/she is aware. See BlackLight Power, Inc. v. Rogan, 295 
F.3d 1269, 1273, 1274 (Fed. Cir. 2002) (``The PTO's responsibility for 
issuing sound and reliable patents is critical to the nation'' and 
``[t]he object and policy of the patent law require issuance of valid 
patents''); In re Alappat, 33 F.3d 1526, 1535 (Fed. Cir. 1994) (en 
banc) (``The Commissioner has an obligation to refuse to grant a patent 
if he believes that doing so would be contrary to law.''); see also In 
re Gould, 673 F.2d 1385, 1386 (CCPA 1982). For these reasons, the USPTO 
declines to limit the examiner's ability to enter new grounds of 
rejection as suggested. The final rule provides appellants with 
adequate safeguards by allowing appellants to choose either to proceed 
with the appeal or reopen prosecution in response to a new ground of 
rejection raised in the answer.
    Comment 52: One comment opposed Bd.R. 41.39(a)(2) to the extent it 
does not provide a mechanism for appellants to gain relief from new 
ground of rejection entered in an advisory action.
    Response: Just as in the case where a final Office action contains 
an undesignated new ground of rejection, appellants who feel that an 
advisory action contains a new ground of rejection have the right to 
petition under Rule 1.181 for supervisory review of the examiner's 
action to seek to have prosecution reopened.
    Comment 53: One comment suggested that examiners should not get a 
count for new grounds of rejection issued in an examiner's answer due 
to the examiner's own error. Additionally, the comment suggested that 
new grounds of rejection in an answer should trigger a reopening of 
prosecution by default.
    Response: The USPTO declines to adopt these suggested changes. As 
to the suggestion not to award an examiner a count for an answer 
containing a new ground of rejection, this is a matter of internal 
management within the agency and is outside the scope of the proposed 
rules. As to the suggestion that a new ground of rejection should 
trigger reopening of prosecution by default, the USPTO's view is that 
it is more advantageous to appellants to give them the flexibility to 
choose either to proceed with an appeal or to reopen prosecution, 
depending on the circumstances of their particular case. The USPTO 
declines to adopt a default rule that would limit appellants' options 
in this situation.
    Comment 54: One comment favored allowing new grounds of rejection 
as a ``necessary evil'' in advisory actions, decisions on pre-appeal 
conferences, answers and BPAI decisions. The comment suggested that 
appellants should always have the opportunity to respond to a new 
ground of rejection, regardless of when the new ground of rejection is 
entered in the prosecution history because the new grounds of rejection 
are most often a result of examiner error in prosecution; specifically 
violations of Chapter 2100 of the MPEP. The comment recommended that 
the USPTO enforce Chapter 2100 of the MPEP more thoroughly.
    Response: While the Office does not agree with the comment that new 
grounds of rejection are most often a result of examiner error in 
prosecution, the Office will take the comments into consideration when 
revising the MPEP in accordance with the final rule and in providing 
guidance to the examining corps in Chapter 1200 of the MPEP. The 
Supplementary Information section of the instant notice provides 
guidance to appellants and examiners as to what constitutes a new 
ground of rejection under final Bd.R. 41.39.
    Comment 55: One comment opposed the explanation of new ground of 
rejection contained in the NPRM as too narrow and as failing to give 
examiners

[[Page 72287]]

``good guidance'' because the examples listed in the NPRM of new 
grounds for rejection are not exhaustive. The comment suggested 
deletion of the second sentence of Bd.R. 41.39(a)(2) because it could 
be interpreted by examiners to imply that only a rejection that relies 
upon any new evidence is a new ground of rejection that must be 
designated and approved.
    Response: The USPTO intends the list to be exemplary. Whether new 
grounds of rejection have been raised is dependent on the unique 
factual circumstances of each application or proceeding and any attempt 
to provide an exhaustive list would be counterproductive.
    Comment 56: Another comment opposed the explanation of new ground 
of rejection in the notice of proposed rule making and commented that 
In re DeBlauwe, 736 F.2d 699, 706 n.9 (Fed. Cir. 1984), contains a 
stronger limitation than the NPRM with respect to what constitutes a 
new ground of rejection. This comment suggested that a ground of 
rejection should be considered ``new'' whenever it departs from a 
previous statement of a ground of rejection, be it by relying on a 
different portion of the same reference, a different reference or 
merely different examiner reasoning. The comment further stated that 
the ``fact specific'' approach proposed by the Office invites abuse by 
the examining corps.
    Response: The USPTO appreciates the comments submitted on the 
proposed guidance on new grounds of rejection. The USPTO will follow 
applicable law in determining on a case-by-case basis whether a new 
ground of rejection has been made. While the examples provided in the 
NPRM are intended to provide sample factual situations based on actual 
case law, as noted in the notice of proposed rule making, the inquiry 
of whether a new ground of rejection has been made in each case is 
highly fact specific. See, e.g., In re Kronig, 539 F.2d 1300, 1303 
(CCPA 1976). The general test that the USPTO will apply is to determine 
whether the appellant has had a fair opportunity to respond to the 
basic thrust of the rejection. Id.
    Comment 57: One comment suggested that whether something 
constitutes a new ground of rejection should be handled the same 
whether it appears in a final rejection, an answer, or in a Board 
decision.
    Response: For the reasons set forth in the notice of proposed rule 
making, the USPTO's view is that the question of whether an applicant 
has had a full and fair opportunity to respond to a rejection depends 
in part on the stage the application is in when the ground of rejection 
is first raised (e.g., after final rejection versus after filing an 
appeal brief, versus in a Board decision). Procedurally, an applicant's 
opportunity to fully and fairly respond to the rejection differs at 
different stages of the prosecution. For example, an applicant may be 
able to submit evidence after a final rejection to rebut a ground of 
rejection that would not be admissible at the time of filing an appeal 
brief. Compare Rule 1.116(e) and final Bd.R. 41.33(d).
    Comment 58: Two comments suggested that approval by a Technology 
Center Director be required for an examiner to reopen prosecution after 
filing of an appeal brief, and that the reasons for reopening should be 
delineated clearly for the Record. One comment further suggested that 
the rules or the MPEP include a requirement that Office actions 
reopening prosecution include an authorization to search after a 
reversal.
    Response: The USPTO declines to adopt these suggestions because 
they are outside the scope of the proposed rules. The proposed rules do 
not address reopening of prosecution by the examiner after filing of an 
appeal brief. Rather, subparagraph (a)(2) of proposed and final Bd.R. 
41.39 addresses only new grounds of rejection raised in an examiner's 
answer, and subparagraph (b)(1) of final Bd.R. 41.39 addresses the 
appellant's right to reopen prosecution in this instance. MPEP Sec.  
1207.04 already requires approval from the supervisory patent examiner 
to reopen prosecution after appellant's brief or reply brief has been 
filed. MPEP Sec.  1214.04 also states that the examiner should never 
regard a reversal as a challenge to make a new search and that if the 
examiner has specific knowledge of the existence of a particular 
reference(s) which indicate nonpatentability of any claims, he or she 
should submit the matter to the Technology Center Director for 
authorization to reopen prosecution. See also 37 CFR 1.198 (after a 
Board decision has become final, prosecution will not be reopened 
without the written authority of the Director, and then only for the 
consideration of matters not already adjudicated, sufficient cause 
being shown).
    Comment 59: One comment opposed proposed Bd.R. 41.39(b) to the 
extent that rights arising out of this paragraph are dependent on the 
USPTO's designation of a new ground of rejection. The comment suggested 
that these rights should arise whenever the action meets the definition 
of a new ground of rejection.
    Response: The USPTO declines to adopt this suggestion. The final 
rule provides appellants with a full and fair opportunity to respond to 
the rejections and to petition if appellants feel that such an 
opportunity has not been provided.

Bd.R. 41.40

    Comment 60: The majority of the comments favored the proposed rule 
to toll the time period to file a reply brief. Several of those 
comments in favor of the proposed rule expressed concern that the rule 
could be used by appellants in ex parte reexamination to delay 
prosecution. One comment proposed providing an expedited review of ex 
parte patent reexamination petitions by requiring these petitions be 
filed within a non-extendable period of time from the answer (less than 
the time for submitting a reply brief) and require that the USPTO make 
a decision within a set time frame (i.e., 30 days). Another comment 
suggested that petitions be decided by a party removed from the 
Technology Center that conducted the examination.
    Response: The USPTO appreciates the concern raised in these 
comments. The USPTO declines to adopt the suggestion to set special 
expedited time limits for ex parte reexamination proceedings because 
depending on workloads and budgetary issues facing the Office, the 
USPTO cannot guarantee that such petitions will be acted on within any 
specific time frame; however, the USPTO will take steps to ensure that 
such petitions are handled expeditiously to avoid the incentive to 
abuse the petition process simply as a delay tactic. As to the 
suggestion of how such petitions are decided, the USPTO declines to 
modify the rule, as this is a matter of internal agency management.
    Comment 61: One comment opposed the petition procedure under Rule 
1.181 because it ``adds unnecessary cost and delay to an already 
expensive and lengthy appeal process'' and creates delay and 
inefficiencies at USPTO.
    Response: Given the majority of comments received in favor of 
proposed Bd.R. 41.40, the USPTO has decided to include this tolling 
provision in the final rule. The USPTO's past practice has been for the 
BPAI to remand any docketed appeal back to the examiner if any 
undecided petition was pending which had been filed prior to the BPAI's 
taking jurisdiction. This back-and-forth will be eliminated under the 
current rule, because the filing of a petition will automatically toll 
the time for filing a reply brief (and thus the start of the BPAI's 
jurisdiction). The need to remand a docketed appeal due to a

[[Page 72288]]

pending petition will therefore be eliminated under the current rule.
    Comment 62: One comment suggested defining or deleting the use of 
``primary examiner'' in Bd.R. 41.40 because this term is not defined in 
the CFR or the MPEP.
    Response: The suggestion is not adopted. The term ``primary 
examiner'' is used in 35 U.S.C. 134, the 2004 version of Bd.R. 41.39 
and previous versions of the rule (e.g., Rule 1.193 (1959)). The USPTO 
is using ``primary examiner'' in this section to have the same meaning 
as used in 35 U.S.C. 134 and Bd.R. 41.39.
    Comment 63: One comment opposed Bd.R. 41.40(b) to the extent that 
it calls for dismissing the entire appeal if the petition is granted, 
and then appellant fails to file a reply under Rule 1.111 in the 
instance where the new ground of rejection does not cover all the 
appealed claims. The comment suggested in this situation allowing the 
appeal to proceed and allowing the appellant to treat the newly 
designated new ground of rejection in his reply brief. If appellant 
failed to address the new ground of rejection in the reply brief, then 
the appeal would be terminated as to those claims so rejected, but 
would continue as to any other appealed claims.
    Response: The USPTO declines to adopt this suggestion. If an 
appellant desires to simply respond to the rejection (whether 
designated as a new ground of rejection or not) in the reply brief, 
then the appellant should simply file the reply brief within the two-
month time period and not file a petition. The rule is written so that 
appellants will not use the petition process simply as a means to 
obtain an extension of time on filing a reply brief. There is no 
advantage to be gained by appellants from petitioning to have a 
rejection in the answer designated as a new ground of rejection and 
then simply filing a reply brief to respond to such rejection. Final 
Bd.R. 41.41 allows appellants to include in reply briefs arguments that 
are responsive to arguments raised in the examiner's answer.
    Comment 64: One comment requested clarification of the rule with 
respect to tolling of time when ``re-petitioning'' or requesting 
reconsideration of the decision. The comment specifically asked whether 
an appellant would still be required to file a reply brief within two 
months of the decision refusing to grant the original Rule 1.181 
petition.
    Response: The rule tolls the time period for filing a reply brief 
only until the initial petition is decided. Under this rule, the 
appellant would still be required to file a reply brief within two 
months of the decision on the initial petition, even if the appellant 
chooses to request reconsideration of the decision.
    Comment 65: One comment opposed the new petition procedure because 
it does not go far enough to allow for tolling of time periods when 
petitioning to have a new ground of rejection designated that appears 
in an advisory action or pre-appeal brief conference decision.
    Response: Appellants have a remedy under Rule 1.181 to file a 
petition for supervisory review of an examiner's final rejection, 
advisory action, or pre-appeal brief conference decision, should any of 
those actions include statements that appellants feel constitute a new 
ground of rejection to which appellants feel they have not had ``a fair 
opportunity to respond.''
    Comment 66: One comment stated that there appears to be no separate 
mechanism to ensure that examiners fulfill the prima facie case 
requirement. This comment suggested that the USPTO implement a separate 
mechanism to allow applicants to request review of whether an examiner 
has made a prima facie showing prior to appellate review by the Board.
    Response: This suggestion is outside the scope of the proposed 
rules. Applicants who believe the examiner has failed to satisfy the 
notice-function of 35 U.S.C. 132, and thus failed to satisfy the 
Office's burden of establishing a prima facie case, can raise that 
issue with the examiner in their response to the office action, and by 
conducting an interview with the examiner early in the prosecution 
(e.g., after the first office action). Alternatively, the applicant can 
challenge the merits of the rejection. But creating a mechanism by 
which the applicant can first challenge the procedural aspects of the 
rejection, and then the merits if unsuccessful, is ``both manifestly 
inefficient and entirely unnecessary.'' See generally In re Jung, 637 
F.3d 1356, 1363 (Fed. Cir. 2011) (permitting applicant to 
``procedurally challenge and appeal the prima facie procedural showing 
before having to substantively respond to the merits of the rejection * 
* * is both manifestly inefficient and entirely unnecessary.'').

Bd.R. 41.41

    Comment 67: One comment suggested adding ``within the later of'' 
before ``two months'' in Bd.R. 41.41(a).
    Response: The USPTO appreciates the suggested clarification to the 
language of Bd.R. 41.41(a) and adopts this language in the final rule 
as it is in keeping with the intent of the proposed rule.
    Comment 68: One comment suggested that this section of the rule 
clearly state that there is no requirement to file a reply brief, and 
that the absence of a reply brief should not raise an inference or 
presumption that the appellant acquiesces to any new arguments made by 
the examiner in the answer. The comment stated that even with a 
designated new ground of rejection, the rule should not require 
appellants to respond.
    Response: The USPTO declines to adopt this suggested change. To the 
extent this comment suggests to make it purely optional for appellants 
to file a reply brief responding to new grounds of rejection, the Board 
must receive appellant's explanation as to ``why the examiner erred'' 
as to the new ground of rejection appellants are contesting in order to 
review the rejection. The rules, however, do not require appellants to 
respond to a new ground of rejection if they wish not to challenge that 
ground of rejection. If no arguments are raised by appellants in 
response to a new ground of rejection contained in the answer, then the 
Board appropriately will dispose of the appeal as to those claims 
subject to the new ground, and the appeal will proceed as to any 
remaining claims. The USPTO declines to amend the rule explicitly to 
provide that the absence of a reply brief should not raise an inference 
or presumption that the appellant acquiesces to any new arguments made 
by the examiner.
    Comment 69: One comment requested clarification on the prohibition 
against including ``new'' or ``non-admitted'' amendments, affidavits or 
other evidence in briefs, as set forth in Bd.R. 41.41(b)(1), would not 
bar the submission of items otherwise permitted under Bd.R. 41.33.
    Response: This comment is addressed above in the response to 
Comment 12.
    Comment 70: One comment favored proposed Bd.R. 41.41(b)(2) and 
suggested a similar rule be adopted with respect to appeal briefs, 
i.e., that appellants not be able to raise arguments in the appeal 
brief that have not been raised after a non-final or final action.
    Response: This comment is addressed above in the response to 
Comment 36. The USPTO declines to adopt the suggestion to limit the 
scope of arguments that can be raised by appellants in the appeal 
brief.
    Comment 71: One comment opposed proposed Bd.R. 41.41(b)(2) as being 
overly restrictive and creating a burden on appellants by applying a 
stricter standard on appellants than on examiners. The comment stated 
that this limitation will prevent the Board from having a full record 
on which to make its decision. The comment requested

[[Page 72289]]

clarification as to whether arguments in response to a reworded 
rejection in an examiner's answer would be permitted as falling within 
the ``good cause'' requirement of the proposed rule. The comment 
suggested that, to allow the Board to review a fully developed record, 
the rule should permit appellants to respond to all arguments appearing 
in the answer that do not appear in haec verbae in the rejection from 
which the appeal is taken.
    Response: The rule allows appellants the option to raise arguments 
in the reply brief which are ``responsive to an argument raised in the 
examiner's answer,'' including those that do not appear in haec verbae 
in the appealed rejection. Thus satisfying the good cause requirement 
would not be necessary.

Bd.R. 41.43

    Comment 72: The USPTO received three comments in favor of 
eliminating Bd.R. 41.43, which requires the primary examiner to 
acknowledge receipt and entry of the reply brief and allows examiners 
to enter a supplemental examiner's answer, and three comments opposed 
to this change because it would eliminate the examiner's opportunity to 
consider the reply brief and possibly allow the case or reopen 
prosecution. One comment requested clarification of whether the 
Examiner would still review the reply brief.
    Response: In response to the comments opposing elimination of this 
section of the rule, USPTO data for the past ten years (FY 2001--FY 
2010) shows that examiners allow applications in approximately 1% of 
all appeals and reopen prosecution in approximately 1% of appeals after 
the filing of a reply brief. It is most often the case that once the 
examiner has held an appeal conference on the case and prepared an 
examiner's answer, the examiner simply acknowledges and enters the 
reply brief and the appeal proceeds to the Board for review and 
decision. Meanwhile, USPTO data shows over the same time period that in 
those cases where the examiner simply acknowledged and entered the 
reply brief, the average pendency from the filing of a reply brief to 
the time the examiner acknowledged and entered the reply brief is 55 
days. As such, the advantage in shorter pendency received by all 
appellants from elimination of this section of the rule--at which 
point, the examiner has held an appeal conference on the case and 
prepared an examiner's answer--outweighs, in the view of the USPTO, the 
advantage gained in those rare instances where an appeal may become 
unnecessary after filing of the reply brief. For these reasons, the 
final rule eliminates Bd.R. 41.43.

Bd.R. 41.50

    Comment 73: One comment suggested extending the Board's role, as 
set forth in proposed Bd.R. 41.50(a), to ``allow'' claims in an effort 
to simplify the procedure after a reversal based on the current power 
of the Board to act as a ``de facto'' examiner in entering new grounds 
of rejection under Bd.R. 41.50(b).
    Response: The USPTO declines to adopt this suggestion, which 
effectively would turn the Board into an extension of the examining 
corps. The Board's principal role is to ``review adverse decisions of 
examiners.'' 35 U.S.C. 6(b). While Bd.R. 41.50 permits the Board to 
include a new ground of rejection of which it has knowledge in its 
decision, the Board is not charged with performing the tasks necessary 
to determine whether claims stand in condition for allowance (e.g., 
perform searches of prior art). Nor should it be required to do so, 
given its statutory charge to review adverse examiner decisions.
    Comment 74: One comment was in favor of eliminating the Board's 
independent authority to remand appeals in Bd.R. 41.50(a)(1). One 
comment was opposed to stripping the Board of its power to remand 
applications because remands are the best available remedy for 
inadequate fact finding and incomplete examination in some instances. 
Another comment was opposed to this proposed change to the extent that, 
even though this proposed modification would remove the independent 
ability of the Board to remand cases to the examiner, the Board would 
still be able to do so with approval of the Director and the Director 
would be reluctant to block the Board's request for a remand and thus 
the remand process would be complicated rather than simplified.
    Response: In light of comments received in response to this 
proposed change and in light of considerations of administrative 
efficiencies, the USPTO has decided to retain the last sentence of 
Bd.R. 41.50(a)(1) authorizing the Board to remand an application to the 
examiner. This change also necessitates retaining Bd.R. 41.50(a)(2), 
(a)(2)(i), and (a)(2)(ii) to address treatment of the case when a 
``substitute'' examiner's answer is written in response to a remand. 
The USPTO will rely on internal management controls to ensure that this 
remand authority is used only in situations where remand is proper.
    Comment 75: One comment suggested amending Bd.R. 41.50(a) to 
require the Board to decide all rejections on appeal--including, for 
instance, rejections under 35 U.S.C. 103 if there is also a rejection 
under 35 U.S.C. 101. The comment stated that if the Board decides only 
a Sec.  101 rejection that is easily remedied by a Request for 
Continued Examination, and does not address an art rejection, 
appellants would be required to file another appeal brief, thereby 
increasing the number of appeals the Board has to decide.
    Response: This comment is outside the scope of the NPRM. The USPTO 
declines to institute a rule dictating how individual panels of the 
Board must resolve issues in cases that come before them.
    Comment 76: One comment suggested revising Bd.R. 41.50(b) so that 
the Board is not allowed to issue decisions containing an affirmance 
with a new ground of rejection, because these types of decisions 
preclude applicants from gaining patent term protection that would 
otherwise be provided by 35 U.S.C. 154(b)(1)(C)(iii). The comment 
suggested that the Board should reverse the examiner's rejection and 
enter a new ground of rejection, rather than affirming. The comment 
also stated that the use of an affirmance and a new ground of rejection 
introduces confusion about how many times a claim has been rejected--
which causes difficulty in the case of RCEs.
    Response: This comment is outside the scope of the NPRM. The USPTO 
declines to institute a rule dictating how individual panels of the 
Board must resolve issues in cases that come before them.
    Comment 77: One comment suggested that Bd.R. 41.50(b)(1) be revised 
so that after a decision containing a new ground of rejection, 
prosecution could be reopened based on appellant argument alone--with 
no a requirement to submit new evidence. The comment further suggested 
that the examiner should not be bound by a new ground of rejection in a 
Board decision because examination should take place in front of the 
examining corps--not in front of the Board.
    Response: The USPTO declines to adopt these suggestions. The Board, 
having made the new ground of rejection and thus having the most 
complete understanding of the logic and analysis that led to the new 
ground, is in the best position to evaluate appellant's rebuttal 
arguments in a request for rehearing. It is only in the instance where 
appellant chooses to amend the claims or submit new evidence that 
prosecution must be reopened and the case returned to the examiner to 
consider the amendment

[[Page 72290]]

and/or new evidence in the first instance.
    Comment 78: Three comments opposed eliminating the Board's power to 
include a statement of how a claim can be amended to overcome a 
rejection. One comment stated that use of such a statement would foster 
cooperation between the Board and appellants. Another comment stated 
that the statement is merely a suggestion and does not obligate the 
examiner or the appellant in any way. The third comment stated that the 
Board should not forego opportunities to suggest how prosecution can be 
concluded.
    Response: To clarify, the 2004 version of Bd.R. 41.50(c) allows the 
Board to include a statement of how a claim on appeal may be amended to 
overcome a specific rejection. Under the 2004 version of Bd. R. 
41.50(c), if the Board includes such a statement, appellant has the 
right to amend the claim in conformity therewith, and such an amendment 
will overcome the specific rejection. Thus, the Board's statement is 
binding on the examiner, and the examiner may reject a claim so-amended 
only by instituting a new ground of rejection. As such, this power of 
the Board under the 2004 rule puts the Board squarely in the shoes of 
the examiner by allowing the Board to mandate how a claim can be 
amended to overcome a rejection. The USPTO declines to adopt the 
suggestion to add back the Board's power to include a statement as to 
how a claim on appeal may be amended to overcome a specific rejection. 
In the USPTO's experience, since the adoption of this rule in 2004, 
this power has been used rarely by the Board, and since the Board's 
principal function is to review adverse decisions of examiners, and in 
light of the backlog of appeals at the Board, the USPTO sees no need 
for the Board to spend judicial resources proposing amendments to the 
claims.
    Comment 79: One comment opposed proposed Bd.R. 41.50(c), which 
provides that failure of an appellant to timely file a request for 
rehearing seeking review of a panel's failure to designate a new ground 
of rejection in its decision will constitute a waiver of any arguments 
that a decision contain an undesignated new ground, stating that this 
waiver provision is ultra vires, inappropriate because the Board is not 
an Article III court, and incompatible with the new grounds provisions 
proposed in the NPRM.
    Response: This comment is addressed above in the response to 
Comment 37.

Bd.R. 41.52

    Comment 80: One comment favored the ``flexible approach'' reflected 
in Bd.R. 41.52(a)(4) that allows appellants to present new arguments 
when they believe the Board has made a new ground of rejection that has 
not been so designated.
    Response: The final rule adopts Bd.R. 41.52(a)(4) as proposed.

Bd.R. 41.54

    Comment 81: One comment opposed proposed Bd.R. 41.54, which 
requires the Board to return jurisdiction to the examiner after 
decision by the Board because it would not permit the Board to allow 
applications and pass them to issuance. The commenter would prefer that 
the Board be able to review applications and pass them to issuance 
rather than returning jurisdiction to the examiner.
    Response: To the extent this comment seeks to have the Board to 
allow applications and pass them to issuance, the USPTO declines to 
adopt the suggestion to make the Board into an extension of the 
examining corps. The Board's principal function is to review adverse 
decisions of examiners.

Other Comments Not Related to a Particular Proposed Rule Change

    Comment 82: One comment noted that some BPAI decisions have been so 
brief that it was not possible to determine what arguments the panel 
found persuasive or unpersuasive. The comment requested that the Board 
be required by rule to state with particularity their reasoning in 
reaching a decision and to state which arguments of which party were 
and were not persuasive.
    Response: The USPTO declines to adopt a rule that dictates to a 
particular panel of the Board a specific level of detail of analysis 
that must be included in each opinion. The level of specificity of the 
panel's reasons for affirming or reversing a decision of the examiner 
will vary depending on the particular facts and nature of each appeal.
    Comment 83: One comment noted a disparity between the amount of 
time that appellants have to respond and the amount of time that the 
Board and examiners have to respond. Specifically, the comment 
suggested that ``however long it takes from the time a brief is filed 
till an answer is received shall be such length of time as appellant 
has to file a reply brief'' and that ``however long it takes from the 
time a reply brief is filed till a board decision is received shall be 
such length of time as appellant has to file a request for rehearing.''
    Response: The USPTO has considered the comment but the Office 
declines to adopt the suggested changes.
    Comment 84: One comment requested that the USPTO adopt a separate 
mechanism to rigorously enforce Rule 1.104 and the prima facie case 
requirement (i.e., a separate appellate body, below the Board, which 
reviews only whether the examiner made a prima facie case). They 
further suggest that examiners be required to use the rationales set 
forth in MPEP Sec.  2143 except if granted an exception from two 
Supervisory Patent Examiners or a Technology Center Director.
    Response: The USPTO notes that it has already adopted a separate 
mechanism for review prior to appeal in the Pre-Appeal Brief Conference 
pilot program. The USPTO is considering a different rule making 
initiative that pertains to the pre-appeal brief conference option. As 
such, the USPTO declines to adopt these suggestions at this time 
because they are outside the scope of the present proposed rule 
changes.
    Comment 85: One comment requested that Image File Wrappers be made 
text searchable and that applicants be allowed to submit .doc files to 
the USPTO to reduce the burden on applicants and examiners and to allow 
the patent bar to prepare statistics on success and failure rates for 
different prosecution strategies, and to allow the patent bar to 
identify outlier patent agents, attorneys, examiners, art units, and 
Board judges who receive or issue either inordinate numbers of 
rejections or allowances.
    Response: The USPTO declines to adopt this suggestion because it is 
outside the scope of the proposed rule changes.
    Comment 86: Two entities commented on the statistics presented in 
the NPRM concerning pre-appeal brief conferences and appeal 
conferences. Specifically, one comment noted that the statistics show 
that both procedures have been reasonably successful at preventing 
improper rejections from reaching the Board, but that it is surprising 
to see no significant change for either type of conference in the 
percent of cases proceeding to the Board. The comment suggested that 
USPTO should analyze what these statistics mean with respect to the 
rest of the examination process, including training efforts to improve 
quality of final rejections. The other comment noted that the 
percentage of cases that were reopened or allowed after filing a 
request for a pre-appeal conference or an appeal brief are 
``unacceptably high.'' The comment requested the USPTO

[[Page 72291]]

evaluate the entire appeal process, including the steps that lead to an 
appeal, i.e., final office actions and after final practice.
    Response: The USPTO thanks the public for their thoughtful comments 
on ways to improve the patent process. While these suggestions are 
outside the scope of the proposed rule making, the USPTO appreciates 
this input.
    Comment 87: One comment suggested that the pre-appeal brief 
conference option be included as part of the ex parte appeal rules to 
reflect that this option is an important and significant part of the 
appeal process.
    Response: The USPTO declines to adopt this suggestion at this time 
because it is outside the scope of the proposed rule changes. The USPTO 
is considering a different rule making initiative that pertains to the 
pre-appeal brief conference option.

Rule Making Considerations

    Executive Order 12866: This rule making has been determined to be 
significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    The Office received one comment regarding Executive Order 12866.
    Comment 88: The comment suggested that the Office should designate 
all of its rules as having an economically significant effect under 
Executive Order 12866, either because ``innovation and invention is a 
substantial part of the American economy,'' or because the commenter 
alleges the paperwork burdens of the information collections associated 
with some patent rules cost more than the $100 million threshold for an 
economically significant action.
    Response: To the extent that this comment is directed to regulatory 
actions other than the BPAI rules, the comment is outside the scope of 
this rule making. To the extent that this comment is directed to the 
instant regulatory action, the Office notes that it fully complied with 
Executive Order 12866 in the promulgation of this rule. Moreover, the 
Office of Information and Regulatory Affairs (OIRA) determines whether 
the Office's rules are ``significant'' and/or ``economically 
significant'' under Executive Order 12866. See Exec. Order No. 12866, 
58 FR 51735, Sec.  6(b)(1) (Sept. 30, 1993). OIRA determined that these 
rules are ``significant,'' but not ``economically significant.'' 
Furthermore, there is nothing in Executive Order 12866 that requires 
that OIRA's analysis begin with the presumption that all rules are 
economically significant. The Office presents each proposed rule to 
OIRA, which considers the economic significance of each rule 
individually. The Office will continue this practice in future rule 
makings.
    Administrative Procedure Act: The changes in the final 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 rule is procedural, it is not required to be published 
for notice and comment. Nevertheless, the Office published a notice of 
proposed rule making in the Federal Register (75 FR 69828 (Nov. 15, 
2010)) in order to solicit public comment before implementing this 
final rule.
    The Office received the following comments regarding the 
Administrative Procedure Act.
    Comment 89: The Office received three comments suggesting that 
these rules are substantive rather than procedural, are required to be 
promulgated through notice and comment, and must be submitted to the 
Office of Management and Budget (OMB) for approval and analysis under 
Executive Order 12866 and to the Small Business Administration (SBA) 
for review under the Regulatory Flexibility Act.
    Response: These rules are procedural because they are ``rules of 
agency organization, procedure, or practice,'' see 5 U.S.C. 553(b)(A), 
and because they do not ``foreclose effective opportunity to make one's 
case on the merits,'' JEM Broad. Co. v. F.C.C., 22 F.3d 320, 328 (DC 
Cir. 1994). The Office declines to accept one commenter's suggestion 
that any rule that mentions any statute, regulation, or case 
automatically should be designated as substantive because the rule must 
automatically affect substantive rights. Such a designation would not 
comport with administrative law and would render the distinction 
between procedural and substantive rules meaningless. See id. at 327 
(``Of course, procedure impacts on outcomes and thus can virtually 
always be described as affecting substance, but to pursue that line of 
analysis results in the obliteration of the distinction that Congress 
demanded. The issue, therefore, is one of degree, and [a court's] task 
is to identify which substantive effects are sufficiently grave so that 
notice and comment are needed to safeguard the policies underlying the 
APA.'' (internal quotations and citations omitted)). Because these 
rules are procedural, notice and comment were not required under the 
Administrative Procedure Act (APA) or any other statute. Furthermore, 
to ensure maximum efficacy of the rules and to provide the public with 
an opportunity to comment, the Office published notice of the proposed 
rules in the Federal Register, sought comment on the proposed rules, 
and fully considered and responded to all comments received.
    The Office submitted the proposed and final rules to the Office of 
Management and Budget (OMB) for full review prior to issuance. OMB 
determined, and the Office agreed, that the final rules are not 
economically significant within the meaning of Executive Order 12866. 
Additionally, although analysis under the Regulatory Flexibility Act is 
not mandatory for procedural rules such as these, the Office fully 
complied with the Act. Under the Act, an agency need not complete an 
Initial Regulatory Flexibility Analysis ``if the head of the agency 
certifies that the rule will not, if promulgated, have a significant 
economic impact on a substantial number of small entities.'' See 5 
U.S.C. 605(b). For the reasons set forth at length in the NPRM (75 FR 
69828-01, 69843-44), the Deputy General Counsel has certified to the 
Chief Counsel for Advocacy of the Small Business Administration that 
this rule will not have a significant economic impact on a substantial 
number of small entities, in accordance with 5 U.S.C. 605(b). The SBA's 
Office of Advocacy did not disagree with this certification.
    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

[[Page 72292]]

certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is applicable to this final rule. 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 final rule for the 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 final 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 final rule eliminates the requirement for appellants to 
affirmatively state (by eliminating 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 final rule requires 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 change may result in two 
hours of attorney time toward the preparation of such an amendment. For 
purposes of comparison, the 2011 report of the Committee on Economics 
of Legal Practice of the American Intellectual Property Law Association 
(``the AIPLA 2011 Report'') notes that the median cost for the 
preparation and filing of a patent application amendment/argument of 
minimal complexity is $1,800. Using the AIPLA 2011 Report's median 
billing rate for attorneys in private firms of $340 per hour, this cost 
equates to approximately 5.3 hours of attorney time. The Office's 
estimate of two hours of attorney time ($680) for an amendment merely 
cancelling 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 cancelling 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 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. In FY 2011 (October 2010-September 2011), of the 
approximately 6,126 reported Board decisions and orders, only thirty-
five 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 cancelling such 
unappealed claims prior to appeal. Based on this data, the Office found 
that approximately 0.46% 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 rule change, the 
Office rounded up to 1% and used this as a conservative (high) estimate 
for the number of amendments expected. As this rule change will only 
impact 1% of all appellants, this final rule will not have a 
significant economic impact on a substantial number of small entities.
    Additionally, for the majority of appellants this final rule will 
likely result in cost savings. Because the rule had allowed appellants 
to appeal fewer than all of the claims under rejection, the rule also 
required appellants to affirmatively state (in the status of claims 
section of the appeal brief) all of the claims on appeal. Under this 
final rule, the Board will presume that appellants intend to appeal all 
claims under rejection unless those claims under rejection for which 
review is not sought are cancelled. This change to the rule allows the 
Office to eliminate the requirement for appellants to separately 
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 changes to the appeal brief requirements in the final 
rule. In particular, the Office estimates a savings due to the 
elimination of certain appeal brief requirements and 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 related to 
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. Applying this increase to the estimate of 
all appeal briefs filed still will not have a significant economic 
impact on a substantial number of small entities.
    Notably, the overall changes to the appeal brief requirements in 
the final rule will result in net savings to all appellants. By 
allowing more flexibility in how an appellant chooses to present an 
appeal to the Board and by eliminating many 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 final rule of two hours of attorney time as compared to 
the previous estimate

[[Page 72293]]

under the 2004 rules. 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 
final rule 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 final rule will be reduced from 34 
hours ($11,560) to 32 hours ($10,880). Using the median billing rate of 
$340 per hour, as published in the AIPLA 2011 Report, the Office 
estimates that the final rule will result in an average savings of $680 
per appeal brief. This savings will apply equally to large and small 
entities.
    Accordingly, any costs related to the filing of an amendment 
cancelling 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, this final rule as a whole will likely result 
in a net cost savings to appellants and, therefore, also will 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 rule making does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Executive Order 13563 (Improving Regulation and Regulatory Review): 
The Office has complied with Executive Order 13563 (Jan. 8, 2011). 
Specifically, the Office has: (1) Used the best available techniques to 
quantify costs and benefits, and has considered values such as equity, 
fairness and distributive impacts; (2) provided the public with a 
meaningful opportunity to participate in the regulatory process, 
including soliciting the views of those likely affected, by issuing a 
notice of proposed rule making and providing on-line access to the rule 
making docket; (3) attempted to promote coordination, simplification 
and harmonization across government agencies and identified goals 
designed to promote innovation; (4) considered approaches that reduce 
burdens and maintain flexibility and freedom of choice for the public; 
and (5) ensured the objectivity of scientific and technological 
information and processes, to the extent applicable.
    Paperwork Reduction Act: This final 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 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 changes that may, in certain circumstances, increase the 
burden to the public.
    Specifically, the Office has estimated that final Bd.R. 41.31(c) 
will impose an increased burden of two hours of added 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 
cancelling any unappealed claims, or otherwise have the Board treat all 
rejected claims as being on appeal. Additionally, the Office estimated 
that the change to the briefing requirements in final Bd.R. 
41.37(c)(1)(iv)(renumbered) (requiring appellants to place any claim(s) 
argued separately or as a subgroup under a separate subheading that 
identifies the claim(s) by number) would result in 0.2 hours of added 
time for those appellants who choose to separately argue their claims. 
These 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 nine 
changes in the final rule that will lessen the burden to the public as 
compared to the 2004 rule.
    1. Final Bd.R. 41.12(b) lessens the burden on appellant by removing 
the 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. Final 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 appellant is not required to include 
this section in the brief if the inventors are the real party in 
interest.
    3. Final 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 final rule lessens the burden on appellant by eliminating 
the requirement under the 2004 rule (specifically Bd.R. 
41.37(c)(1)(iii)) for appellant to identify the status of claims in the 
appeal brief.
    5. The final rule lessens the burden on appellant by eliminating 
the requirement under the 2004 rule (specifically Bd.R. 
41.37(c)(1)(iv)) for appellant to include a statement of the status of 
any amendments.
    6. Final Bd.R. 41.37(c)(1)(iii) (renumbered) lessens the burden on 
appellant by providing more flexibility than corresponding Bd.R. 
41.37(c)(1)(v) by allowing citation to paragraph number (instead of 
limiting citation to page and line number). The final rule 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 intended to 
reduce confusion and thereby reduce the number of defective briefs.
    7. The final rule lessens the burden on appellant by eliminating 
the requirement under the 2004 rule (specifically Bd.R. 
41.37(c)(1)(vi)) for appellant to 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.

[[Page 72294]]

    8. Final Bd.R. 41.37(c)(1)(iv) (renumbered) 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 corresponding Bd.R. 41.37(c)(1)(vii) 
(the 2004 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 final rule 
clarifies that this is not a verbatim requirement and allows more 
flexibility in the brief.
    9. The final rule lessens the burden on appellant by eliminating 
the requirement under the 2004 rule (specifically Bd.R. 41.37(c)(1)(x)) 
for appellants to file a related proceedings appendix containing copies 
of decisions in related proceedings. The Board will 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 changes in the final rule (final Bd.R. 41.37) 
as compared to the 2004 rule for briefing requirements for filing 
appeal briefs, and taking into account the nine changes that will 
lessen the burden and the one change (i.e., addition of subheadings) 
that will add a burden, the agency estimates that the changes in the 
final rule as compared to the 2004 rule will result in a net average 
decrease of approximately 2 hours per appeal brief from the prior 
estimate, thereby lowering the previous average estimate of 
approximately 34 hours to 32 hours to prepare an appeal brief. This 
estimate is based on the net impact of the changes and time saved in 
preparation of an appeal brief based on agency expertise in patent 
prosecution practice. Using the median billing rate of $340 per hour, 
as published in the AIPLA 2011 Report, the Office estimates that these 
rule changes will result in an average savings of $680 per appeal 
brief.
    The Office notes that the number and significance of these changes 
effecting a lessening of the burden to appellants substantially 
outweigh the changes that may result, in certain circumstances, in 
increased burden to appellants. The Office submitted an information 
collection package to OMB for its review and approval at the same time 
as publication of the NPRM and OMB pre-approved the information 
collection. The Office also submitted an updated information collection 
package to OMB concurrently with this final rule for its review and 
approval in light of the changes made in the final rule as compared to 
the rule as proposed in the NPRM, and OMB approved the updated 
information collection package.
    The USPTO received several comments regarding the information 
collection submitted to OMB along with the NPRM.
    Comment 90: The Office received a comment suggesting that it make 
clear where the supporting statement for the Information Collection 
Request for this rule may be obtained.
    Response: The supporting statement is available at http://www.reginfo.gov/public/do/PRAMain under OMB control number 0651-0063. 
See Proposed Modification Supporting NPRM RIN 0651-AC37 (Rules of 
Practice Before the Board of Patent Appeals and Interferences in Ex 
Parte Appeals), 2 (Nov. 4, 2010), http://www.reginfo.gov/public/do/PRAMain (OMB Control No. 0651-0063) (hereinafter ``Supporting 
Statement'').
    Comment 91: The Office received a comment claiming that the Office 
had not explained the practical utility of the information it sought to 
collect through amendments to appeal briefs, reply briefs, and requests 
for rehearing.
    Response: The Office fully explained the need for this information 
in the supporting statement accompanying this information collection 
request, under the section entitled ``Needs and Uses,'' which explained 
that the collections were necessary so the Board could identify the 
claims the appellant wanted to appeal, and that the burdens for 
collecting this information had changed because the new rules decreased 
the paperwork burden on appellants. See Supporting Statement at 2.
    Comment 92: The Office received two comments suggesting that the 
burden estimates in the Supporting Statement were not supported by 
objective data and allegedly based on opinion and belief.
    Response: In general, estimates of the number of responses expected 
per year for any particular item in the collection are derived from the 
internal data collected from PALM, and/or IFW and the data from 
previous iterations of the renewal process. If data from PALM or IFW is 
available for a particular item in the collection, the data is examined 
to determine whether a trend exists that can be used to provide annual 
estimates for the item for the next three years. If data from PALM or 
IFW is not available for an item, e.g., if the item is a new item, 
response estimates are arrived at from an analysis of PALM or IFW data 
for a closely analogous item(s) in the same or another collection. This 
data is then combined with the Office's corporate planning and budget 
estimations to forecast the estimates for data for the next three years 
to include considerations such as the Office's projections for the 
growth in the number of patent applications. Agency expertise in patent 
prosecution practice is relied upon to confirm a reasonable basis for 
any trend suggested by the data and to identify the most closely 
analogous item(s), and Agency expertise in corporate planning is relied 
upon to project estimates over the next three years. Estimates of the 
hours per response for items in the collection are derived from data 
from the biennial AIPLA economic survey report, data from previous 
iterations of the renewal process, and Agency expertise in patent 
prosecution practice. To the extent that the Office uses staff 
expertise in crafting estimates, the BPAI on its own has many years of 
combined USPTO and non-USPTO patent prosecution experience, and the 
BPAI is but one of the offices involved in providing information 
contained in the Supporting Statement. Other offices include the Office 
of Planning and Budget and the Office of the Chief Economist. This 
prosecution experience spans multiple technologies and provides views 
from various perspectives, including the perspectives of former patent 
agents, associate attorneys, and law firm partners, working with both 
small and non-small entity patent applicants. One commenter suggested 
that the informed expertise of the BPAI staff should be replaced with 
the opinions and beliefs of commenters of unverified expertise. This 
suggestion would result in less verifiable and less trustworthy data. 
Accordingly, the Office does not adopt this suggestion. The Supporting 
Statement is substantively objective in that it presents all 
information in an ``accurate, clear, complete, unbiased manner, and 
within the proper context.'' USPTO's Information Quality Guidelines, 
Sec.  IV, 6, a, http://www.uspto.gov/products/cis/infoqualityguidelines.jsp (hereinafter ``USPTO's IQG'').
    Comment 93: The Office received a comment suggesting that its 
reliance on third party data such as the AIPLA economic survey in 
determining the burden estimates for the proposed information 
collections associated with this rule violated the Information Quality 
Act (IQA).
    Response: In providing estimates of burden hours, the Office 
sometimes referenced the AIPLA economic survey report, as a benchmark 
for the estimates. Under the Office's Information Quality

[[Page 72295]]

Guidelines (IQG), the AIPLA economic survey report is not a 
``dissemination'' of information. The Guidelines state that 
``dissemination'' means an ``agency initiated or sponsored distribution 
of information to the public.'' USPTO's IQG, at Sec.  IV, A, 1. 
Subsection (a) further defines ``agency initiated distribution of 
information to the public'' to mean ``information that the agency 
distributes or releases which reflects, represents, or forms any part 
of the support of the policies of the agency.'' Id. at Sec.  IV, A, 1, 
a. The Office did not distribute or release the AIPLA economic survey 
report. Likewise, the AIPLA economic survey report does not qualify as 
an ``agency sponsored distribution of information'' under Subsection 
(b) of the Guidelines, which ``refers to situations where the agency 
has directed a third party to distribute or release information, or 
where the agency has the authority to review and approve the 
information before release.'' Id. at Sec.  IV, A, 1, b. The Office did 
not commission the report, had no input into the structure of the 
report and does not rely exclusively upon the results of the report to 
arrive at estimates. Thus, there is no violation under the IQA because 
the Office utilized the AIPLA economic survey report in formulating 
some burden estimations.
    Comment 94: The Office received a comment asking if these rules 
inappropriately shift the paperwork burden onto applicants and away 
from the USPTO.
    Response: As explained in the NPRM, the vast majority of the 
changes to this rule will either decrease the paperwork burden on 
applicants or have no effect on the paperwork burden. The only changes 
that the Office estimates would add to any applicant's paperwork burden 
are (1) The requirement that appellants cancel any unappealed claims 
and (2) the requirement that subheadings with claim numbers be used to 
identify the claims or groups of claims argued in that particular 
section. With regard to the first change, for 99% of appellants, this 
change will shift the paperwork burden away from appellants because 
they will no longer need to identify which claims they wish to appeal. 
For the 1% of appellants who do not pursue appeals of all of their 
claims, this rule will result in a slight increase in paperwork because 
they will be required to identify which claims they are not appealing. 
Both changes appropriately place the burden on the appellant because 
only the appellant is in a position to know which claims the appellant 
wants to appeal and the appellant is in the best position to know which 
claims the appellant intends to argue in each section of the appeal 
brief.
    Comment 95: One commenter noted a typographical error in the 
Supporting Statement.
    Response: The Office has corrected this error so that the 
Supporting Statement now reads, ``The Information Quality Guidelines * 
* * apply to this information collection and this information 
collection and its supporting statement comply with all applicable 
information quality guidelines * * *.'' See Supporting Statement at 3.
    Comment 96: The Office received two comments suggesting it should 
have used the mean rather than the median when calculating the average 
hourly rate and cost of the paperwork burden created by these rules.
    Response: OMB regulations do not require a particular arithmetic 
technique for calculating burden estimates. Nothing in the plain text 
of the regulation or the Office's IQG suggests that mean values are 
required or that an agency's use of median values is inappropriate. See 
San Luis & Delta-Mendota Water Auth. v. Salazar, 2010 WL 5422597, at 
*88-93 (E.D. Ca. 2010) (holding that nothing in the IQA or the agency's 
guidelines on the IQA mandated how the agency conducted its 
calculations). 5 CFR 1320.8(b)(3)(iii) simply requires an agency to 
provide ``an estimate, to the extent practicable, of the average burden 
of the collection.'' The Office considers the median figure to be an 
appropriate value upon which to base estimates because attorneys 
charging both above the median and below the median would be expected 
to participate in the process. Supporting Statement at 9. Accordingly, 
the burden calculations need no correction.
    Comment 97: The Office received one comment claiming that it must 
disclose the data, models, and analyses used to estimate the PRA 
burdens and requesting correction of the supporting statement to 
include that information.
    Response: The basis for providing various estimates is explained in 
the Supporting Statement and further detailed in the responses to these 
comments. Under the IQA, certain influential information must be 
reproducible under certain circumstances. The burden ``estimates'' of 
which the commenter complains do not qualify as ``information'' within 
the meaning of the IQA. ``Information'' is defined as ``any 
communication or representation of knowledge such as facts or data, in 
any medium or form, including textual, numerical, graphic, 
cartographic, narrative, or audiovisual forms.'' USPTO's IQG, Section 
IV, A, 4. By definition, estimates do not represent knowledge such as 
facts or data. ``Information,'' not estimation, is subject to certain 
reproducibility requirements. See USPTO's IQG, Section IV, 7 
(``reproducibility'' means the ``information is capable of being 
substantially reproduced, subject to an acceptable degree of 
imprecision.''). No correction is warranted for matters not involving 
``information.'' See USPTO's IQG, Section XI, A, 4, a.
    Comment 98: The Office also received a comment requesting the 
source of the data in the NPRM on the number of requests for pre-appeal 
brief conference and appeal conference review the Office receives each 
year.
    Response: The Office tracks this information in PALM.
    Comment 99: The Office received a comment suggesting it does not 
adequately consider public comments on Information Collection Requests 
(ICRs).
    Response: The Office greatly appreciates the time and effort the 
public expends commenting on ICRs and proposed rules. The Office fully 
considers all comments and strives to incorporate these comments to the 
greatest extent possible to improve the ICRs and rules it promulgates.
    Comment 100: The Office received a comment on Bd.R. 41.33(d)(1) 
suggesting that the rule precluding affidavits filed after the date of 
filing an appeal and prior to the date of filing a brief under some 
circumstances does not comply with the Paperwork Reduction Act's 
requirement to minimize the paperwork burden on the public because the 
precluded affidavit may have convinced the examiner to reconsider the 
rejection and obviated the need for the appeal.
    Response: First, no change has been proposed to this long-standing 
practice of the USPTO. Second, the Office is not requesting information 
in the form of late-submitted affidavits; in most cases it will not 
even accept such information. And finally, to the extent that the 
commenter suggests that the Paperwork Reduction Act issue comes not 
from the affidavit itself but from the appeal that may result from the 
inability to submit the affidavit, the Office disagrees that this 
affects the burden on the appellant. Appellant may still request 
continued examination under 37 CFR 1.114 rather than pursue an appeal.
    Comment 101: One commenter suggested that the Office is required by 
the Paperwork Reduction Act to submit an Information Collection Request 
for oral hearings before the BPAI.
    Response: The Paperwork Reduction Act does not apply to oral 
hearings.

[[Page 72296]]

First, under the Act, a ``collection of information'' is defined as 
collecting information ``by means of identical questions posed to, or 
identical reporting, recordkeeping, or disclosure requirements imposed 
on, ten or more persons * * *.'' See 5 CFR 1320.3(c). Oral hearings do 
not involve identical questions posed to 10 or more persons and thus 
are not ``collections of information.'' Furthermore, the facts and 
arguments recited at an oral hearing do not constitute ``information'' 
under the Paperwork Reduction Act because the Act specifies that `` 
`[i]nformation' does not generally include items in the following 
categories * * *: (6) A request for facts or opinions addressed to a 
single person.'' See 5 CFR 1320.3(h)(6). Accordingly, the Act does not 
require the Office to submit an Information Collection Request for oral 
hearings and the Office has not submitted such a request.
    Comment 102: One commenter suggested that the Office did not comply 
with the Paperwork Reduction Act because it allegedly did not seek 
public comment on the estimation of burden hours for the new rules 
before publishing the NPRM in the Federal Register.
    Response: The commenter misunderstands the Paperwork Reduction Act. 
The Paperwork Reduction Act clearly states that ``[t]he agency need not 
separately seek such public comment for any proposed collection of 
information contained in a proposed rule to be reviewed under Sec.  
1320.11, if the agency provides notice and comment through the notice 
of proposed rulemaking for the proposed rule * * *.'' 5 CFR 
1320.8(d)(3). Because this collection associated with these rules is a 
collection of information in a proposed rule under 5 CFR 1320.11, the 
Office was not required to seek public comment beyond notice and 
comment through the NPRM. Moreover, the Office did seek public 
participation prior to publishing the NPRM. The USPTO conducted a 
roundtable discussion with the public on the Board rules.
    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. The valid OMB control 
number assigned to these final regulations is OMB Control Number 0651-
0063.
    This final rule supersedes the rules governing practice before the 
Board in ex parte patent appeals (as published in 69 FR 50003 (August 
12, 2004)). See 37 CFR 41.1 et seq. (2010). The Office also withdraws 
the indefinitely delayed 2008 final rule (73 FR 32938 (June 10, 2008)) 
that never went into effect.

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.

Amendments to the Regulatory Text

    For the reasons discussed in the preamble, under the authority of 
35 U.S.C. 2(b)(2), the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent and Trademark Office 
withdraws the final rule published June 10, 2008 (73 FR 32938) and 
amends Parts 1 and 41 of title 37 of the Code of Federal Regulations as 
follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for part 1 continues to read as follows:

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


0
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

0
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

0
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

0
5. Amend Sec.  41.30 by adding definitions for ``evidence'' and 
``record'' in alphabetical order to read as follows:


Sec.  41.30  Definitions.

* * * * *
    Evidence means something (including testimony, documents and 
tangible objects) that tends to prove or disprove the existence of an 
alleged fact, except that for the purpose of this subpart Evidence does 
not include dictionaries, which may be cited before the Board.
* * * * *
    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 or the official file of the Office if other than 
the Image File Wrapper, excluding amendments, Evidence, and other 
documents that were not entered. In the case of an issued patent being 
reissued or reexamined, the Record further includes the Record of the 
patent being reissued or reexamined.

0
6. Amend Sec.  41.31 by revising paragraphs (a) introductory text, (b), 
and the first sentence of paragraph (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 by the applicant and entered by the Office. * * *
* * * * *

0
7. Amend Sec.  41.33 by revising the section heading, and revising 
paragraphs (c) and (d) 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

[[Page 72297]]

admitted except as permitted by Sec. Sec.  41.39(b)(1), 41.50(a)(2)(i), 
and 41.50(b)(1).
    (d)(1) An affidavit or other Evidence filed after the date of 
filing an appeal pursuant to Sec.  41.31(a)(1) through (a)(3) and prior 
to the date of filing a brief pursuant to Sec.  41.37 may be admitted 
if the examiner determines that the affidavit or other Evidence 
overcomes all rejections under appeal and that a showing of good and 
sufficient reasons why the affidavit or other Evidence is necessary and 
was not earlier presented has been made.
    (2) All other affidavits or other Evidence filed after the date of 
filing an appeal pursuant to Sec.  41.31(a)(1) through (a)(3) will not 
be admitted except as permitted by Sec. Sec.  41.39(b)(1), 
41.50(a)(2)(i), and 41.50(b)(1).

0
8. 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 or the Board enters a remand order (see Sec. Sec.  
41.35(c), 41.35(e), and 41.50(a)(1)),
    (2) The Board enters a final decision (see Sec.  41.2) 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(a)(2), 41.50(b), or 41.50(d), and the Board enters an 
order of dismissal, or
    (6) Appellant reopens prosecution pursuant to Sec.  41.40(b) or 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.
    (e) Administrative remands ordered by the Board. If, after receipt 
and review of the proceeding, the Board determines that the file is not 
complete or is not in compliance with the requirements of this subpart, 
the Board may relinquish jurisdiction to the examiner or take other 
appropriate action to permit completion of the file.

0
9. Amend Sec.  41.37 by:
0
a. Adding headings to paragraphs (a), (b), (c), (d) and (e);
0
b. Revising paragraph (c);
0
d. Revising the second sentence in paragraph (d); and
0
e. Adding new third and fourth sentences to 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 (v) 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), (c)(1)(ii), (c)(1)(iv), 
and (c)(1)(v) of this section:
    (i) Real party in interest. A statement identifying by name the 
real party in 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) Summary of claimed subject matter. A concise explanation of 
the subject matter defined in each of the rejected independent claims, 
which shall 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. For each rejected independent claim, and for each dependent 
claim argued separately under the provisions of paragraph (c)(1)(iv) 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 concise explanation must identify 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.
    (iv) 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 appellant 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

[[Page 72298]]

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.
    (v) Claims appendix. An appendix containing a copy of the claims 
involved in the appeal.
    (2) A 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 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 of this title.
    (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 Administrative Patent Judge. See Sec.  41.3.
    (e) Extensions of time. * * *

0
10. Amend Sec.  41.39 by revising paragraph (a); adding a heading to 
paragraph (b) introductory text; revising the first two sentences of 
paragraph (b)(1); revising the second, third, and fourth sentences 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 
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. The examiner must obtain 
the approval of the Director to furnish an answer that includes a new 
ground of rejection.
    (b) Appellant's response to new ground of rejection. * * *
    (1) * * * Request that prosecution be reopened before the primary 
examiner by filing a reply under Sec.  1.111 of this title with or 
without amendment or submission of affidavits (Sec. Sec.  1.130, 1.131 
or 1.132 of this of this title) or other Evidence. Any amendment or 
submission of affidavits or other Evidence must be relevant to the new 
ground of rejection. * * *
    (2) * * * Such a reply brief must address as set forth in Sec.  
41.37(c)(1)(iv) each new ground of rejection and should follow the 
other requirements of a brief as set forth in Sec.  41.37(c). A reply 
brief may not be accompanied by any amendment, affidavit (Sec. Sec.  
1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a 
reply brief filed pursuant to this section is accompanied by any 
amendment, affidavit or other Evidence, it shall be treated as a 
request that prosecution be reopened before the primary examiner under 
paragraph (b)(1) of this section.
    (c) Extensions of time. * * *

0
11. 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 of this title 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 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 of this title 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.

0
12. Amend Sec.  41.41 by revising paragraph (a) and paragraph (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 the later of two months from the date of 
either the examiner's answer, or a decision refusing to grant a 
petition under Sec.  1.181 of this title 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]

0
13. Remove Sec.  41.43.

0
14. Amend Sec.  41.47 by revising paragraph (b) and by revising the 
second and third sentences 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

[[Page 72299]]

filing of a reply brief, whichever is earlier.
* * * * *
    (e)(1) * * * At the oral hearing, appellant may only rely on 
Evidence that has been previously entered and considered by the primary 
examiner and present argument that has been relied upon in the brief or 
reply brief except as permitted by paragraph (e)(2) of this section. 
The primary examiner may only rely on argument and Evidence relied upon 
in an answer except as permitted by paragraph (e)(2) of this section.
* * * * *

0
15. Revise Sec.  41.50 to read as follows:


Sec.  41.50  Decisions and other actions by the Board.

    (a)(1) 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. The Board may also 
remand an application to the examiner.
    (2) If a substitute examiner's answer is written in response to a 
remand by the Board for further consideration of a rejection pursuant 
to paragraph (a)(1) of this section, the appellant must within two 
months from the date of the substitute examiner's answer exercise one 
of the following two options to avoid sua sponte dismissal of the 
appeal as to the claims subject to the rejection for which the Board 
has remanded the proceeding:
    (i) Reopen prosecution. Request that prosecution be reopened before 
the examiner by filing a reply under Sec.  1.111 of this title with or 
without amendment or submission of affidavits (Sec. Sec.  1.130, 1.131 
or 1.132 of this title) or other Evidence. Any amendment or submission 
of affidavits or other Evidence must be relevant to the issues set 
forth in the remand or raised in the substitute examiner's answer. A 
request that complies with this paragraph (a) will be entered and the 
application or the patent under ex parte reexamination will be 
reconsidered by the examiner under the provisions of Sec.  1.112 of 
this title. Any request that prosecution be reopened under this 
paragraph will be treated as a request to withdraw the appeal.
    (ii) Maintain appeal. Request that the appeal be maintained by 
filing a reply brief as provided in Sec.  41.41. If such a reply brief 
is accompanied by any amendment, affidavit or other Evidence, it shall 
be treated as a request that prosecution be reopened before the 
examiner under paragraph (a)(2)(i) of this section.
    (b) 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 remanded to the examiner. The new ground 
of rejection is binding upon the examiner unless an amendment or new 
Evidence not previously of Record is made which, in the opinion of the 
examiner, overcomes the new ground of rejection 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) Remand not final action. Whenever a decision of the Board 
includes a remand, that decision shall not be considered final for 
judicial review. When appropriate, upon conclusion of proceedings on 
remand before the examiner, the Board may enter an order otherwise 
making its decision final for judicial review.
    (f) Extensions of time. 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.

0
16. Amend Sec.  41.52 by revising the fourth sentence of paragraph 
(a)(1), revising paragraphs (a)(2) and (a)(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 (a)(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.
    (4) New arguments that the Board's decision contains an 
undesignated new ground of rejection are permitted.
* * * * *

0
17. 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: November 8, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-29446 Filed 11-21-11; 8:45 am]
BILLING CODE 3510-16-P