Where the appeal brief is not filed, but within the period allowed for filing the brief an amendment is presented which places the claims of the patent under reexamination in a patentable condition, the amendment may be entered. Amendments should not be included in the appeal brief.
As to separate amendments, i.e., amendments not included with the appeal brief, filed with or after the appeal, see MPEP § 1206.
II. TIME FOR FILING APPEAL BRIEF
The time for filing the appeal brief is two (2) months from the date of the appeal.
III. EXTENSION OF TIME FOR FILING APPEAL BRIEF
In the event that the patent owner finds that he or she is unable to file a brief within the time allowed by the rules, he or she may file a request with the appropriate extension of time fee, to the Central Reexamination Unit (CRU) or Technology Center (TC), requesting additional time. See MPEP § 2265 for specific guidance. The request should contain the address to which the response is to be sent. If the request and the required fee are filed prior to the expiration of the period sought to be extended (37 CFR 1.550(c)), the CRU SPRS or TC Director is authorized to grant the extension for up to one month in third party requested reexamination proceedings, and for up to two months (i.e., a “no cause” extension) in patent owner requested reexamination proceedings (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexamination proceedings. Requests for extensions of time for more than one month in third party requested reexaminations and for more than two months in patent owner requested reexaminations (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexaminations, will also be decided by the CRU SPRS or TC Director, but will not be granted unless extraordinary circumstances are involved; e.g., death or incapacitation of the patent owner. The time extended is added to the last calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or federal holiday.
IV. FAILURE TO TIMELY FILE APPEAL BRIEF
Failure to file the brief and/or the appeal brief fee within the permissible time will result in dismissal of the appeal. Form PTOL-468 may be used to notify the patent owner that the appeal is dismissed. The reexamination prosecution is then terminated, and a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) (see MPEP § 2287) will subsequently be issued indicating the status of the claims at the time of appeal.
V. REQUIREMENTS FOR THE APPEAL BRIEF
A fee as set forth in 37 CFR 41.20(b)(2) is required when the appeal brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a). 37 CFR 41.37 provides that the appellant shall file a brief of the authorities and arguments on which he or she will rely to maintain his or her appeal, including a summary of claimed subject matter which must refer to the specification by page and line number, and to the drawing, if any, by reference characters, and a copy of the claims involved. Only one copy of the appeal brief is required. Where the request for reexamination was filed by a third party requester, a copy of the brief must be served on that third party requester.
In the case of a merged proceeding (see MPEP § 2283 and § 2285), one original copy of the brief should be provided for each reexamination proceeding and reissue application in the merged proceeding. In addition, a copy of the brief must be served on any third party requesters who are part of the merged proceeding.
For the sake of convenience, the copy of the claims involved should be double spaced and should start on a new page. Note that the copy of the claims on appeal in reexamination proceedings must include all underlining and bracketing, as required by 37 CFR 1.530(f), to reflect the changes made to the original patent claims throughout the prosecution of the reexamination. In addition, any new claims added in the reexamination should be completely underlined. This represents a departure from the procedure set forth in MPEP § 1205.02 for applications.
The brief, as well as every other paper relating to an appeal, should indicate the number of the art unit to which the reexamination is assigned and the reexamination control number. When the brief is received, it is forwarded to the CRU or TC (depending which is examining the proceeding) where it is entered in the file and referred to the examiner.
Patent owners are reminded that their briefs in appeal cases must be responsive to every ground of rejection stated by the examiner. A reply brief, if filed, shall be entered, except that amendments or affidavits or other evidence are subject to 37 CFR 1.116 and 41.33. See 37 CFR 41.41(a)(2).
It is essential that the Board should be provided with a brief fully stating the position of the appellant with respect to each issue involved in the appeal so that no search of the record is required in order to determine that position. The fact that appellant may consider a ground to be clearly improper does not justify a failure on the part of the appellant to point out to the Board the reasons for that view in the brief.
See MPEP § 1205.02 for further discussion of the requirements for an appeal brief.
VI. SEEKING REVIEW OF A FINDING OF A SUBSTANTIAL NEW QUESTION OF PATENTABILITY
The patent owner may seek review on the examiner’s SNQ determination before the Board along with any appeal of the examiner’s rejections. To obtain review of the SNQ issue, patent owner must include the SNQ issue and the appropriate arguments in its appeal brief to the Board. In order to preserve the right to have the Board review of the SNQ issue, a patent owner must have first requested reconsideration of the SNQ issue by the examiner. Accordingly, for ex parte reexamination proceedings ordered on or after June 25, 2010, the patent owner may seek a final agency decision from the Board on the SNQ issue only if the patent owner has first requested reconsideration before the examiner (e.g., in a patent owner’s statement under 37 CFR 1.530 or in a patent owner’s response under 37 CFR 1.111) and then seeks review of the examiner’s SNQ determination before the Board. In its appeal brief, the patent owner is to clearly present the issue and arguments regarding the examiner’s SNQ determination under a separate heading and identify the communication in which the patent owner first requested reconsideration before the examiner. (For ex parte reexamination proceedings ordered prior to June 25, 2010, if the patent owner presents the SNQ issue in its appeal brief, the Board panel will review the procedural SNQ issue along with its review of any rejections in an appeal and will enter a final agency decision accordingly.)
The final decision by the Board panel in the ex parte reexamination proceeding may include: (1) its review of the procedural SNQ issue in a separate section, and (2) its review of the merits of the rejections. See, e.g., In re Searles, 422 F.2d 431, 434-35 (C.C.P.A. 1970) (holding certain procedural matters that are “determinative of the rejection” are properly appealable to the Board); see also In re Hengehold, 440 F.2d 1395, 1404 (C.C.P.A. 1971) (“[T]he kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of the claims.”); cf.37 CFR 41.121 (providing both “substantive” motions and “miscellaneous,” i.e., procedural motions, which may be decided together in a single decision).
The patent owner may file a single request for rehearing under 37 CFR 11.52 for both the decision on the SNQ issue and the merits decision on the examiner’s rejections, resulting in a single final decision for purposes of judicial review. Judicial review of the Board’s final decision issued pursuant to 35 U.S.C. 134, which will incorporate the decision on the finding of a SNQ, is directly to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. 141. See In re Hiniker Co., 150 F.3d 1362, 1367 (Fed. Cir. 1998) (“With direct review by this court of the Board’s reexamination decisions, a patentee can be certain that it cannot be subjected to harassing duplicative examination.”); see also Heinl v. Godici, 143 F. Supp. 2d 593, 597-598 (E.D. Va. 2001).
VII. DEFECTIVE APPEAL BRIEF
Since May 25, 2010, the Patent Trial and Appeal Board, (Board), has the sole responsibility for determining whether appeal briefs filed in ex parte reexamination proceedings comply with 37 CFR 41.37, and will complete the determination before the appeal brief is forwarded to the examiner for consideration. If the appeal brief is determined to be compliant with the rules or it contains only minor informalities that do not affect the Board panel’s ability to render a decision, the Board will accept the appeal brief and forward it to the examiner for consideration. If the Board determines that the appeal brief is non-compliant with 37 CFR 41.37 and sends appellant a notice of non-compliant brief requiring a corrected brief, appellant will be required to file a corrected brief within the time period set forth in the notice to avoid the dismissal of the appeal. The Board also has the sole responsibility for determining whether corrected briefs comply with 37 CFR 41.37, and addresses any inquiries and petitions regarding notices of non-compliant briefs.
Once an appeal brief is accepted by the Board as in compliance with 37 CFR 41.37, the appeal brief will not later be held as defective by the CRU or the examiner. The Board will not return or remand the proceeding to the examiner for issues related to a non-compliant appeal brief. Furthermore, examiners are not required to review appeal briefs for the purposes of determining whether the appeal briefs comply with 37 CFR 41.37. Accordingly, the Notification of Non-Compliant Appeal Brief (PTOL-462R) and form paragraphs for holding an appeal brief defective are no longer be available for the CRU to use.
Examiners are no longer to hold any appeal briefs defective. Rather, the Board will correspond directly with the appellant on non-compliant brief issues. In a rare situation where an appeal brief contains serious defects that will prevent the examiner from drafting an examiner’s answer, the examiner should report the issue to the Director of CRU who will communicate with the Board regarding the issue if appropriate.
In addition, examiners are not required to make any determination whether fewer than all of the rejected claims are identified by the appellant as being appealed. If the notice of appeal or appeal brief identifies fewer than all of the rejected claims as being appealed, the issue will be addressed by the Board panel. Therefore, the examiner will treat all pending, rejected claims as being on appeal, and the examiner must maintain all of the rejections set forth in the Office action from which the appeal is taken, unless appellant has overcome the rejection (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or evidence). In situations where the appellant makes a request to hold a rejection in abeyance or did not present any argument on a rejection in the appeal brief, the examiner should maintain the rejection in the examiner’s answer.
The responsibility of the Board for determining whether appeal briefs comply with 37 CFR 41.37 is not considered a transfer of jurisdiction when an appeal brief is filed, but rather is only a transfer of the specific responsibility of notifying appellants under 37 CFR 41.37(d) of the reasons for non-compliance. The CRU retains the jurisdiction over the reexamination proceeding to consider the appeal brief, conduct a conference, draft an examiner’s answer, and decide the entry of amendments, evidence, and information disclosure statements filed after final or after the filing of a notice of appeal. Furthermore, petitions concerning the refusal to enter amendments and/or evidence remain delegated as per MPEP §§ 1002.02(b) and 1002.02(c). The jurisdiction of the ex parte reexamination proceeding is transferred to the Board when a docketing notice is entered after the time period for filing a reply brief expires or the examiner acknowledges the receipt and entry of the reply brief.
It is to be noted that the mere filing of any paper whatsoever entitled as a brief cannot necessarily be considered as compliance with 37 CFR 41.37. The rule requires that the brief must set forth the authorities and arguments relied on, and to the extent that it fails to do so with respect to any ground of rejection, that ground may be summarily sustained. A distinction must be made between the lack of any argument and the presentation of arguments that carry no conviction. In the former case summarily sustaining the rejection is in order, while in the latter case a decision on the merits is made, although it may well be merely an affirmance based on the grounds relied on by the examiner.
Appellant must traverse every ground of rejection set forth in the final rejection that appellant is presenting for review in the appeal. Oral argument at the hearing will not remedy a deficiency of failure to traverse a ground of rejection in the brief. Ignoring or acquiescing in any rejection, even one based upon formal matters which could be cured by subsequent amendment, will invite summarily affirmance of the rejection.
The reexamination prosecution is considered terminated as of the date of the dismissal of the appeal. After the appeal is dismissed, the examiner will proceed to issue a Notice of Intent to Issue Ex Parte Reexamination Certificate for the proceeding; see MPEP § 2287.