MPEP 1200 Appeal

Question 1

New ground of rejection, options to deal with

Answer 1

1. Designated the new ground, go back to prosecution: file petition R1.181 in 2M
   If denied, file Reply Brief within 2M…
   If granted, file amendment in 2M under R1.111 to reopen
2. stay appeal to the Board, without going back to prosecution: file Reply Brief
3. Rehearing, then if Board designate the new ground, then we could
   a. Reopen prosecution
   b. Request reconsideration of rejection from the Board

Question 2

type of new ground, some key words

Answer 2

102 103, different teaching
new calculations,
new structure,
different portion

Elaborating existing materials is not new ground.

Question 3

appeal related time

Answer 3

after final rejection, 3M+3M, notice of appeal, 2M+5M, Appeal Brief

Other actions are 2M, such as Reply Appeal, petition R1.181, rehearing.

Notice of Appeal → (amendment or affidavit) → Appeal Brief (2M+5M) → Examiner’s Answer → (reopen prosecution, request oral hearing 2M) → Reply Brief (2M) → Board Decision (affirm/reverse) → (request rehearing (2M))

Question 4

appeal content, what must be included?

Answer 4

claim appendix cannot be left out

Others like statement of involve parties, statement of involve patent/applications, if not submitted, the Board would make simplest assumption.

Can NOT appeal items that are rejected only by once!

Question 5

Materials considered by the Board:

Answer 5

Board only consider materials that are ‘entered’

Question 6

does the applicant need to submit all rejected claims to appeal?

Answer 6

Nope, the board assume all rejected claims are appealed.

Question 7

Filing amendment after final rejection before appeal, and the denied entry. What to do next?

Answer 7

file RCE and re-offer the amendment.

Question 8

When does the jurisdiction of the appeal passed to the Board?

Answer 8

After Reply Brief!!!

Not at Notice of Appeal and Appeal Brief, they are for PTO…

And keep in mind, in many questions, Reply Brief saves everything…

Question 9

After the Board make the decision, if the applicant not happy, (when) can further appeal to?

Answer 9

Two courts within 63 days:
Federal Circuit, NOT accept new evidence.
District Court of Virginia, will accept new evidence.

Question 10

Continuation during appeal,

Applicant can file continuation at any time during the appeal.

Answer 10

File RCE before Board’s Decision, resulting appeal withdrawn.

Merely withdraw the appeal, resulting in abandonment of the app.