1205.02 Appeal Brief Content [R-07.2022]
Only one copy of the appeal brief is required. Any brief for which the notice of appeal was filed on or after January 23, 2012 must comply with the requirements set forth in current 37 CFR 41.37. For information pertaining to the Office’s ex parte appeal practice and procedure that is applicable if the notice of appeal was filed before January 23, 2012 (or if proceedings were commenced before September 16, 2012), see Chapter 1200 in the MPEP 8th Edition, Rev. 9 (August 2012)(available on the USPTO website at www.uspto.gov/web/ offices/pac/mpep/old/mpep_E8R9.htm).
Appellant must file a brief under 37 CFR 41.37 within two months from the date of filing the notice of appeal under 37 CFR 41.31. The appeal brief fee in an application or ex parte reexamination proceeding is $0.00. For so long as the adjusted fee for filing an appeal brief remains at $0, the brief need not be accompanied by an attempt to pay the fee under 37 CFR 41.20(b)(2). A brief that is filed on or after January 23, 2012 that fails to comply with the requirements set forth in 37 CFR 41.37(c) shall be held to be non-compliant under 37 CFR 41.37(d). The brief, as well as every other document relating to an appeal, should indicate the number of the Technology Center (TC) to which the application or patent under reexamination is assigned and the application or reexamination control number. Oral argument at a hearing will not remedy deficiencies in a brief. The following discussion of the contents of an appeal brief pertains to briefs filed pursuant to the requirements set forth in 37 CFR 41.37.
An appellant’s brief must present arguments responsive to every ground of rejection stated by the examiner in the Office action from which the appeal has been taken (as modified by any advisory action and/or pre-appeal brief conference decision). See 37 CFR 41.31(c) and 37 CFR 41.37(c)(1)(iv). If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer. See 37 CFR 41.39(a)(1). The fact that appellant may consider a ground to be clearly improper does not justify failure to point out to the Board the reasons for that belief, including an explanation of why the examiner erred as to the ground of rejection. Similarly, requesting that a rejection, such as a non-statutory double patenting rejection, be held in abeyance does not meet the requirements of 37 CFR 41.37(c)(1)(iv). Such response will be treated as a waiver of any challenge to the double-patenting rejection and such rejections may be summarily affirmed by the Board. The presence of such rejections may result in the dismissal of a request for judicial review should the appellant seek judicial review either by an appeal to the U.S. Court of Appeals for the Federal Circuit (35 U.S.C. 141) or by a civil action in the U.S. District Court for the Eastern District of Virginia ( 35 U.S.C. 145 ).
The mere filing of a document titled as a brief will not necessarily be considered to be in compliance with 37 CFR 41.37(c). The rule requires that the brief must set forth arguments and the basis therefor, with citations of the statutes, regulations, authorities and parts of the record relied upon. It is essential that the Board be provided with a brief fully stating the position of the appellant with respect to each ground of rejection presented for review in the appeal so that no search of the Record is required in order to determine that position. Thus, the brief should not incorporate or reference previous responses. 37 CFR 41.37(c)(1) requires that the brief contain specific items, as discussed below. The brief must have all of the required items under appropriate headings in the order indicated in 37 CFR 41.37(c)(1). 37 CFR 41.37(c)(1) provides that in certain circumstances, the items listed in paragraphs (c)(1)(i) and (c)(1)(ii) may be omitted from an appeal brief and further provides that the Office may assume certain information about the appeal should these items be omitted from the appeal brief. As such, the headings are not required to be included in the appeal brief in the event that an item is not applicable (i.e., the real party in interest is the inventor(s), or there are no related appeals). To assist appellants in complying with 37 CFR 41.37, the Board has posted checklists for notices of appeal and appeal briefs on the USPTO website at www.uspto.gov/ patents-application-process/appealing-patent-decisions/ procedures/guidance-reduce-non-compliant .
An exception to the requirement that all the items specified in 37 CFR 41.37(c)(1) be included in the brief is made if the application or reexamination proceeding is being prosecuted by the appellant pro se, i.e., there is no attorney or agent of record, and the brief was neither prepared nor signed by a registered attorney or agent. The brief of a pro se appellant which does not contain all of the items specified in 37 CFR 41.37(c)(1) will be accepted as long as it substantially complies with the requirements of subparagraphs (i), (ii), (iv) and (v).
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.
An amendment or other evidence submitted under 37 CFR 1.116 or 37 CFR 41.33 will not be entered as part of the record for the appeal unless entered by the examiner.
The specific items required by 37 CFR 41.37(c)(1) are:
(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.
The identification of the real party in interest allows members of the Board to comply with ethics regulations associated with working in matters in which the member has a financial interest to avoid any potential conflict of interest. When an application is assigned to a subsidiary corporation, the real party in interest is both the assignee and either the parent corporation or corporations, in the case of joint ventures. One example of a statement identifying the real party in interest is: The real party in interest is XXXX corporation, the assignee of record, which is a subsidiary of a joint venture between YYYY corporation and ZZZZ corporation.
(ii) Related appeals, interferences, and trials. A statement identifying by application, patent, appeal, interference, or trial number all other prior and pending appeals, interferences, trials before the Board, 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. If there are no such related cases, the appellant is not required to include the statement, and if the appellant has not included the statement, then the Office may assume that there are no such related cases.
The rule does not require Appellant to provide copies of decisions in 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(f), 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, including citations of statutes, regulations, authorities and parts of the Record relied on, should be presented in this section. The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (per curiam) (precedential) and In re Jung, 637 F.3d 1356, 98 USPQ2d 1174 (Fed. Cir. 2011). A statement which merely points out what a claim recites will not be considered an argument for patentability of the claim.
37 CFR 41.37(c)(1)(iv) contains the following sentence:
Except as provided for in §§ 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.
This sentence emphasizes that all arguments and authorities which an appellant wishes the Board to consider for purposes of the present appeal should be included in the appeal brief. It should be noted that arguments not presented in the briefs and made for the first time at the oral hearing are not normally entitled to consideration except as provided for in 37 CFR 41.47. In re Chiddix, 209 USPQ 78 (Comm’r Pat. 1980); Rosenblum v. Hiroshima, 220 USPQ 383 (Comm’r Pat. 1983).
This sentence is not intended to preclude the filing of a supplemental brief or document if new authority should become available or relevant after the brief or reply brief was filed. An example of such circumstances would be where a pertinent decision of a court or other tribunal was not published until after the brief or reply brief was filed.
This sentence is also limited to “the present appeal” and is not intended to extend the Board’s refusal to consider other arguments or authorities to subsequent appeals in the same application or to appeals in other applications.
Each ground of rejection must be argued under a separate heading, which clearly identifies the ground of rejection being contested. For each ground of rejection applying to two or more claims, the claims may be argued separately (claims are considered by appellants as separately patentable), as a group (all claims subject to the ground of rejection stand or fall together), or as a subgroup (a subset of the claims subject to the ground of rejection stand or fall together). When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group of claims and may decide the appeal as to the ground of rejection with respect to the group or subgroup of claims as to the ground of rejection on the basis of the selected claim alone. The failure of appellant to separately argue claims which appellant has grouped together constitutes a waiver of any argument that the Board must consider the patentability of any grouped claim separately. See In re McDaniel, 293 F.3d 1379, 1384, 63 USPQ2d 1462, 1465-66 (Fed. Cir. 2002). Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be placed under a separate subheading that identifies the claim(s) by number.
For example, if Claims 1 to 5 stand rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent No. Y and appellant is arguing only the limitations of independent claim 1, and thereby grouping dependent claims 2 to 5 to stand or fall with independent claim 1, then one possible heading as required by this subsection could be “Rejection under 35 U.S.C. 102(a)(2) over U.S. Patent No. Y” and an optional subheading would be “Claims 1 to 5.” Another example is where claims 1 to 3 stand rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent No. Z and appellant wishes to argue separately the patentability of each claim, a possible heading as required by this subsection could be “Rejection under 35 U.S.C. 102 (a)(2) over U.S. Patent No. Z,” and the required subheadings would be “Claim 1,” “Claim 2” and “Claim 3.” Under each subheading the appellant would present the argument for patentability of that claim. Another example is where claims 1-10 stand rejected under 35 U.S.C. 102(a)(2) as being anticipated over U.S. Patent No. X and appellant wishes to argue claims 1-3 as a first subgroup, claim 4 separately, and claims 5-10 as another subgroup. A possible heading as required by this subsection could be “Rejection under 35 U.S.C. 102(a)(2) over U.S. Patent No. X,” and the required subheadings would be “Claims 1-3,” “Claim 4,” and “Claims 5-10.” To make certain that an argument for separate consideration of a claim or subgroup of claims is not overlooked by the examiner or by the Board, the rule requires appellant to use a subheading for each claim for which separate consideration by the Board is desired.
(v) Claims appendix. An appendix containing a copy of the claims involved in the appeal.
The copy of the claims should be a clean copy and should not include any markings such as brackets or underlining except for claims in a reissue application and a reexamination proceeding. See MPEP § 1454 for the presentation of the copy of the claims in a reissue application. See 37 CFR 1.530(d) and (f) for reexamination proceedings, see also MPEP § 2274 for ex parte reexamination and MPEP § 2675 for inter partes reexamination.
The copy of the claims should be double-spaced and the appendix should start on a new page. 37 CFR 41.37(c)(1) merely specifies the minimum requirements for a brief. An appellant may include in the brief a list of references, table of contents, table of cases, copies of evidence entered by the examiner and relied upon in the brief, etc. A brief is in compliance with 37 CFR 41.37(c)(1) as long as it includes items (i) to (v) in the order set forth and does not include prohibited material.
37 CFR 41.37(c)(2) prohibits the inclusion in a brief of any new or non-admitted amendment, affidavit or other evidence. If an appellant wishes to seek review of an examiner’s refusal to admit an amendment, affidavit or evidence, such review is by petition to the Director under 37 CFR 1.181. The time for filing this petition, described in 37 CFR 1.181(f), is based on the date the examiner refused to enter the amendment, affidavit or evidence and not the date the brief is filed.
An example of a format and content for an appeal brief for a patent application is a brief containing the following items, with each item starting on a separate page:
- (A) Identification page setting forth the applicant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (i.e., Appeal Brief);
- (B) Table of Contents page(s);
- (C) Real party in interest page(s);
- (D) Related appeals, interferences, and trials page(s);
- (E) Summary of claimed subject matter page(s);
- (F) Argument page(s);
- (G) Claims appendix page(s);
In accordance with the above, the brief must be directed to the claims and to the record of the case as they appeared at the time of the appeal. If an appellant wishes to remove claims from consideration on appeal, the appellant must submit an amendment to cancel the claims from the application. See 37 CFR 41.31(c) and 37 CFR 41.33. An appellant may, of course, choose not to present arguments or rely upon particular evidence as to certain claim rejections; however, such arguments and evidence are waived for purposes of the appeal and the Board may summarily sustain any grounds of rejections not argued. Examiners should no longer follow the practice described in Ex parte Ghuman, 88 USPQ2d 1478, 2008 WL 2109842 (BPAI 2008) (precedential, but superseded by rule). 37 CFR 41.31(c) supersedes the Office’s procedure under Ghuman and also simplifies practice for examiners by no longer requiring examiners to cancel non-appealed claims.
A timely filed brief will be referred to the Patent Appeal Center for consideration of its compliance with the applicable rules. If the brief is proper it will be forwarded to the examiner for preparation of an examiner’s answer if the application is not allowable. The examiner’s answer may withdraw the rejection of claims, if appropriate. The examiner, with supervisory approval, may also determine that it is necessary to reopen prosecution to enter a new ground of rejection. See MPEP § 1207.04.