1211.01 Remand by Board for Further Consideration of Rejection [R-11.2013]

Created On
byChhabra Law Firm

A substitute examiner’s answer written in response to a remand by the Board for consideration of a rejection pursuant to 37 CFR 41.50(a)(1) may set forth a new ground of rejection. See MPEP § 1207.03.

If a substitute examiner’s answer is written in response to a remand by the Board for consideration of a rejection pursuant to 37 CFR 41.50(a)(1) (even when there is no new ground of rejection made in the substitute examiner’s answer), the appellant must 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:

  • (A) Reopen prosecution.Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment or submission of affidavits (37 CFR 1.131(a), 37 CFR 1.131(c) or 1.132) 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 37 CFR 41.50(a)(2)(i) will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of 37 CFR 1.112. Any request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) will be treated as a request to withdraw the appeal.
  • (B) Maintain appeal.Request that the appeal be maintained by filing a reply brief as provided in 37 CFR 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 37 CFR 41.50(a)(2)(i).

See MPEP § 1207.03 for information on new grounds of rejection.

See MPEP § 1207.05 for information on substitute examiner’s answer and appellant’s response to a substitute examiner’s answer.

See MPEP § 1208 for information on reply briefs.

The following are two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection:

  • (A) A remand to consider an Information Disclosure Statement; and
  • (B) A remand for the examiner to consider a reply brief.

37 CFR 41.50(a)(2) does not apply when the remand by the Board is not for further consideration of a rejection. The Board will normally indicate in the remand whether 37 CFR 41.50(a)(2)(i) applies. Appellant cannot request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) and is not required to reply to a substitute examiner’s answer that is written in response to a remand that is not for further consideration of a rejection.

The following form paragraph may be used in preparing the substitute examiner’s answer after a remand from the Board:

¶ 12.285 Substitute Examiner’s Answer – On Remand FOR FURTHER CONSIDERATION OF A REJECTION

Pursuant to the remand under 37 CFR 41.50(a)(1) by the Patent Trial and Appeal Board on [1]for further consideration of a rejection, a substitute Examiner’s Answer under 37 CFR 41.50(a)(2) is set forth below: [2].

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:

(1) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit, or other evidence. Any amendment, affidavit, or other evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner’s answer. Any request that prosecution be reopened will be treated as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i).

(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 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 under 37 CFR 41.50(a)(2)(i). See 37 CFR 41.50(a)(2)(ii) .

Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.

A Technology Center Director or designee has approved this substitute examiner’s answer by signing below:

[3]

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the date of the remand.
  • 3. In bracket 2, provide reasons supporting the rejections set forth in the substitute Examiner’s Answer.
  • 4. In bracket 3, insert the TC Director’s or designee’s signature. A TC Director or designee must approve every substitute examiner’s answer.

The supervisory patent examiner must approve any action in which a remanded application is withdrawn from appeal. See MPEP §§ 706.07(e) and  1002.02(d). If the examiner decides to withdraw the final rejection and reopen prosecution to enter a new ground of rejection, approval from the supervisory patent examiner is required. See MPEP § 1207.04.