An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1205) has been filed. However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary. In this case, the examiner may reopen prosecution and issue another Office action or may prepare a notice of allowability if appropriate. See MPEP § 1207.04. In circumstances where a notice of allowability is prepared, it may be appropriate to include reasons for allowance. See MPEP § 1302.14.
The participants of the appeal conference should include (1) the examiner charged with preparation of the examiner’s answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as a conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal. During the appeal conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.
The examiner responsible for preparing the examiner’s answer should weigh the arguments of the other examiners presented during the appeal conference. If it is determined that the rejection(s) should be maintained, the examiner responsible for preparing the examiner’s answer will prepare the examiner’s answer.
On the examiner’s answer, below the primary examiner’s signature, the word “Conferees:” should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. If the examiner’s answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the Director – i.e., Director of the USPTO. This authority has been delegated to the Technology Center (TC) Directors or their designee(s). The answer must also include the signature of a Technology Center (TC) Director or designee to indicate that they approve the new ground of rejection. See MPEP § 1207.03 and form paragraph 12.279.01
The Patent Appeal Center will review the examiner’s answer to determine whether there is an indication that an appeal conference has been held. If the examiner’s answer does not contain the appropriate indication that an appeal conference has been held (i.e., including the names of the conferees and identifying themselves as the conferees along with their initials), the Patent Appeal Center may return the application to the examiner for corrective action.