MPEP 1214.06
Examiner Sustained in Whole or in Part; Claims Require Action

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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1214.06    Examiner Sustained in Whole or in Part; Claims Require Action [R-08.2017]

37 C.F.R. 41.35  Jurisdiction over appeal.

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  • (b) End of jurisdiction. The jurisdiction of the Board ends when:
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    • (2) The Board enters a final decision (see § 41.2 ) and judicial review is sought or the time for seeking judicial review has expired,

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37 C.F.R. 1.197 Termination of proceedings.

  • (a) Proceedings on an application are considered terminated by the dismissal of an appeal or the failure to timely file an appeal to the court or a civil action except:
    • (1) Where claims stand allowed in an application; or
    • (2) Where the nature of the decision requires further action by the examiner.
  • (b) The date of termination of proceedings on an application is the date on which the appeal is dismissed or the date on which the time for appeal to the U.S. Court of Appeals for the Federal Circuit or review by civil action (§ 90.3 of this chapter) expires in the absence of further appeal or review. If an appeal to the U.S. Court of Appeals for the Federal Circuit or a civil action has been filed, proceedings on an application are considered terminated when the appeal or civil action is terminated. A civil action is terminated when the time to appeal the judgment expires. An appeal to the U.S. Court of Appeals for the Federal Circuit, whether from a decision of the Board or a judgment in a civil action, is terminated when the mandate is issued by the Court.

The practice under the situations identified in subsections I-III below is similar to the practice after a decision of the court outlined in MPEP § 1216.01. Examiners must be very careful that applications and ex parte reexamination proceedings that leave the jurisdiction of the Board are not overlooked because every case is up for action by the examiner in the event no court review has been sought. See MPEP §§ 1216.01 and 1216.02 for procedure where court review is sought.

As provided by 37 CFR 90.3, the time for seeking review of a decision of the Board by the Court of Appeals for the Federal Circuit or the U.S. District Court for the Eastern District of Virginia is the same for both tribunals, that is, 63 days plus any additional time requested and granted under 37 CFR 90.3(c). In the event a request for rehearing is timely filed before the Board, or as extended by the Director. See MPEP § 1216. When the time for seeking court review has passed without such review being sought, the examiner must take up the application or ex parte reexamination for consideration. The situations which can arise will involve one or more of the following circumstances:

I.    NO CLAIMS STAND ALLOWED

The proceedings in an application or ex parte reexamination proceeding are terminated as of the date of the expiration of the time for filing court action. The application is no longer considered as pending. In an application, a Notice of Abandonment should be prepared and mailed once the period for seeking review under 37 CFR 90.3 has expired. In an ex parte reexamination proceeding, a notice of intent to issue a reexamination certificate should be issued under 37 CFR 1.570 once the period for seeking review under 37 CFR 90.3 has expired.

If the application includes a non-statutory double patenting rejection which was affirmed by the Board or a provisional rejection that was not addressed by the Board, the applicant may file a proper terminal disclaimer prior to the expiration of the period for seeking review under 37 CFR 90.3 to overcome the rejection. If the terminal disclaimer is insufficient to overcome the rejection the applicant will not be granted additional time to correct the deficiency. See MPEP §§ 804.02 and 1490.

Claims indicated as allowable but objected to prior to appeal because of their dependency from rejected claims will be treated as if they were rejected, unless an amendment pursuant to 37 CFR 41.33(b)(2) rewriting such claims in independent form is filed within the period for seeking review under 37 CFR 90.3. See MPEP § 1206. The following examples illustrate the appropriate approach to be taken by the examiner in various situations in applications:

  • (A) If claims 1-2 are pending, the Board affirms a rejection of independent claim 1, dependent claim 2 was objected to prior to forwarding of the appeal as being allowable except for its dependency from claim 1 and claim 2 remains in dependent form, the examiner should hold the application abandoned.
  • (B) If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, after expiration of the period for further appeal, the examiner should proceed in one of two ways:
    • (1) Convert the dependent claim into independent form by examiner’s amendment, cancel all claims in which the rejection was affirmed, and issue the application; or
    • (2) Set a 2-month time limit in which appellant may rewrite the dependent claim(s) in independent form. Extensions of time under 37 CFR 1.136(a) are available. If no timely reply is received, the application is abandoned since no claims stand allowed.

The following form paragraph may be used where appropriate:

¶ 12.291    Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (No Allowed Claim)

The Patent Trial Appeal Board affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. There are no allowed claims in the application. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06. Applicant is given a TWO MONTH TIME PERIOD from the mailing date of this letter in which to present the dependent claim(s) in independent form to avoid ABANDONMENT of the application. EXTENSIONS OF TIME UNDER 37 CFR 1.136(a) ARE AVAILABLE. Prosecution is otherwise closed.

Examiner Note:

1. For use if the notice of appeal was filed on or after January 23, 2012.

2. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).

3. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).

For procedures in reexamination proceedings, see MPEP § 2278, subsection I.

II.    CLAIMS STAND ALLOWED

The appellant is not required to file a reply. The examiner issues the application or ex parte reexamination certificate on the claims which stand allowed. It is not necessary for the applicant or patent owner to cancel the rejected claims, since they may be canceled by the examiner in an examiner’s amendment.

If the Board affirms a rejection of claim 1, claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1 and independent claim 3 is allowed, the examiner should cancel claims 1 and 2 and issue the application or ex parte reexamination certificate with claim 3 only.

If the Board affirms a rejection against independent claim 1, reverses all rejections against dependent claim 2 and claim 3 is allowed, after expiration of the period for further appeal, the examiner should either:

  • (A) Convert dependent claim 2 into independent form by examiner’s amendment, cancel claim 1 in which the rejection was affirmed, and issue the application or ex parte reexamination certificate with claims 2 and 3; or
  • (B) Set a time limit in which appellant may rewrite dependent claim 2 in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. If no timely reply is received, the examiner will cancel claims 1 and 2 and issue the application with allowed claim 3 only.

    The following form paragraphs may be used where appropriate:

¶ 12.292    Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (At Least One Allowed Claim)

The Patent Trial and Appeal Board affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06. Applicant is given a TWO MONTH TIME PERIOD from the mailing date of this letter in which to present the dependent claim(s) in independent form. EXTENSIONS OF TIME UNDER 37 CFR 1.136 ARE AVAILABLE. Failure to comply will result in cancellation of the dependent claims and the application will be allowed with claim(s) [3]. Prosecution is otherwise closed.

Examiner Note:

1 For use if the notice of appeal was filed on or after January 23, 2012.

2. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).

3. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).

4. In bracket 3, enter the claim number(s) of the allowed claims.

If uncorrected matters of form which cannot be handled without written correspondence remain in the application, the examiner should take appropriate action but prosecution is otherwise closed. A letter such as that set forth in form paragraph 12.297 is suggested:

¶ 12.297    Period For Seeking Court Review Has Lapsed

The period under 37 CFR 90.3 for seeking court review of the decision by the Patent Trial and Appeal Board rendered [1] has expired and no further action has been taken by appellant. The proceedings as to the rejected claims are considered terminated; see 37 CFR 1.197(b).

The application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed.

Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire TWO MONTHS from the mailing date of this letter to avoid ABANDONMENT of the application. Extensions of time may be granted under 37 CFR 1.136.

Examiner Note:

1. For use if the notice of appeal was filed on or after January 23, 2012.

2. In bracket 1, enter the mailing date of the decision (or notification date of the decision if electronic mail notification was sent to the appellant under the e-Office Action program).

3. In bracket 2, identify the allowed claims.

4. In bracket 3, identify the formal matters that need correction.

For procedures in reexamination proceedings, see MPEP § 2278, subsection II.

III.    CLAIMS REQUIRE ACTION

A decision of the Board may include a reversal of a rejection that brings certain claims up for action on the merits. These decisions include the reversal of the rejection of generic claims in an application containing claims to nonelected species not previously acted upon. The application may also contain a provisional rejection which was not reached in the Board's decision. The examiner will take up the application for appropriate action on the matters thus brought up. However, the application is not considered open to further prosecution except as to such matters.

A.   Application contains non-elected claims

If, upon review of the decision of the Board, the elected claims are in condition for allowance and the application contains claims directed to a non-elected invention, whether the election was made with or without traverse, the non-elected invention should be considered for rejoinder. See MPEP § 821.04.

If the decision of the Board includes a reversal of all rejections of a generic claim, pending claims drawn to a non-elected species must be acted upon. The only exception is when, the examiner reopens prosecution and enters a new ground of rejection of the generic claim and determines that the election of species continues to be appropriate; in such situations the generic claim and any claims drawn to the elected species are examined on the merits and claims drawn to non-elected species remain withdrawn from consideration. See MPEP § 809.

B.   Application contains a provisional nonstatutory double patenting rejection, which was not reached by the Board.

If a decision by the Board does not include an opinion on a provisional nonstatutory double patenting rejection, and includes a reversal of all other grounds as to a claim rejected based on provisional nonstatutory double patenting and the applicant has not filed a proper terminal disclaimer, the examiner must act upon the provisional nonstatutory double patenting rejection. The examiner must first determine if any reference application used in the provisional nonstatutory double patenting rejection has issued as a patent. If the reference application has issued, the provisional rejection should be re-issued as a non-provisional rejection and a terminal disclaimer should be required, for example, by using form paragraphs 8.33-8.39 as appropriate. See MPEP § 804, subsection II.B. If the reference application has been abandoned or has not matured to a patent and the provisional double patenting rejection is the only remaining rejection in the application the examiner should withdraw the provisional rejection.

IV.    37 CFR 41.50(b) REJECTION

Where the Board makes a new rejection under 37 CFR 41.50(b) and no action is taken with reference thereto by appellant within 2 months, the examiner should proceed in the manner indicated in paragraphs I-III of this section as appropriate. See MPEP § 1214.01.

If the Board affirms the examiner’s rejection, but also enters a new ground of rejection under 37 CFR 41.50(b), the subsequent procedure depends upon the action taken by the appellant with respect to the 37 CFR 41.50(b) rejection.

  • (A) If the appellant elects to proceed before the examiner with regard to the new rejection (see MPEP § 1214.01, subsection I., the Board’s affirmance will be treated as nonfinal, and no request for rehearing of the affirmance need be filed at that time. In order to proceed before the examiner, applicant must amend the newly rejected claims or submit new evidence, as defined in 37 CFR 41.33, or both. If applicant presents arguments against the new grounds of rejection without amendment or evidence, jurisdiction over the appeal should remain with the Board. The Board, having made the new ground of rejection and thus having the most complete understanding of the logic and analysis that led to the new ground, is in the best position to evaluate appellant’s rebuttal arguments in a request for rehearing. It is only in the instance where appellant chooses to amend the claims or submit new evidence that prosecution must be reopened and the case returned to the examiner to consider the amendment and/or new evidence in the first instance. Should an examiner discover that a reply containing only arguments against a new ground of rejection has been returned to the examining corps, the appeal should be returned to the Board for appropriate handling.

    Prosecution before the examiner of the 37 CFR 41.50(b) rejection can incidentally result in overcoming the affirmed rejection even though the affirmed rejection is not open to further prosecution. Therefore, it is possible for the application to be allowed as a result of the limited prosecution before the examiner of the 37 CFR 41.50(b) rejection. If an application becomes allowed, it should not be returned to the Board. Likewise, if an application is abandoned for any reason, it should not be returned to the Board. If the rejection under 37 CFR 41.50(b) is not overcome, the applicant (or patent owner in an ex parte reexamination proceeding) can file a second appeal (as discussed below). Such appeal must be limited to the 37 CFR 41.50(b) rejection and may not include the affirmed rejection. If an application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR 41.50(b) is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered. Similarly, the file of any ex parte reexamination proceeding including decisions including rejections affirmed by the Board but made non-final for purposes of judicial review must be returned to the Board so that the affirmance can be made final by the Board. The time for filing a request for rehearing on the affirmance or seeking court review runs from the date of the decision by the Board making the original affirmance final. See MPEP §§ 1214.03 and 1216.

  • (B) If the appellant elects to request rehearing of the new rejection (see MPEP § 1214.01, paragraph II), the request for rehearing of the new rejection and of the affirmance must be filed within 2 months from the date of the Board’s decision.