37 CFR 41.52 Rehearing.
- (1) Appellant may file a single request for rehearing within two months of the date of the original decision of the Board. No request for rehearing from a decision on rehearing will be permitted, unless the rehearing decision so modified the original decision as to become, in effect, a new decision, and the Board states that a second request for rehearing would be permitted. The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 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. When a request for rehearing is made, the Board shall render a decision on the request for rehearing. The decision on the request for rehearing is deemed to incorporate the earlier opinion reflecting its decision for appeal, except for those portions specifically withdrawn on rehearing, and is final for the purpose of judicial review, except when noted otherwise in the decision on rehearing.
- (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 § 41.50(b) are permitted.
- (4) New arguments that the Board’s decision contains an undesignated new ground of rejection are permitted.
- (b) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
The term “rehearing” is used in 37 CFR 41.52 for consistency with the language of 35 U.S.C. 6(b). It should not be interpreted as meaning that an appellant is entitled to an oral hearing on the request for rehearing, but only to a rehearing on the written record. It is not the normal practice of the Board to grant rehearings in the sense of another oral hearing. Ex parte Argoudelis, 157 USPQ 437, 441 (Bd. App. 1967), rev’d. on other grounds, 434 F.2d 1390, 168 USPQ 99 (CCPA 1970).
37 CFR 41.52 provides that any request for rehearing must specifically state the points believed to have been misapprehended or overlooked in the Board’s decision. Experience has shown that many requests for rehearing are nothing more than reargument of appellant’s position on appeal. In response, the rule was revised to limit requests to the points of law or fact which appellant feels were overlooked or misapprehended by the Board. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing except appellant may present (A) new argument(s) based upon a recent relevant decision of either the Board or a Federal Court, (B) new argument(s) responding to a new ground of rejection made pursuant to 37 CFR 41.50(b), and (C) new argument(s) that the Board’s decision contains an undesignated new ground of rejection. If appellant relies upon a recent relevant decision of either the Board or a Federal Court, a remand by the Board to the examiner to respond to that new argument may be appropriate.
The 2-month period provided by 37 CFR 41.52(a) for filing a request for rehearing can only be extended under the provisions of 37 CFR 1.136(b) or under 37 CFR 1.550(c) if the appeal involves an ex parte reexamination proceeding.
If a timely request for rehearing of the Board’s decision is filed, the time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action expires 63 days after a decision on a request for rehearing or reconsideration (37 CFR 90.3(b)(1)). An applicant may file a RCE during the 63 day period available to appeal after decision on the rehearing request. See MPEP § 706.07(h), subsection XI.
For requests for reconsideration by the examiner, see MPEP § 1214.04.
Should an Administrative Patent Judge (APJ) retire or otherwise become unavailable to reconsider a decision, normally another APJ will be designated as a substitute for the unavailable APJ.