2681 Board Decision [R-07.2015]
37 C.F.R. 41.77 Decisions and other actions by the Board.
- (a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner’s determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent Trial and Appeal Board as a new ground of rejection under paragraph (b) of this section. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.
- (b) Should the Board reverse the examiner’s determination not to make a rejection proposed by a requester, the Board shall set forth in the opinion in support of its decision a new ground of rejection; or should the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement shall constitute a new ground of rejection of the claim. Any decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board makes a new ground of rejection, the owner, within one month from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal proceeding as to the rejected claim:
- (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both.
- (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
- (c) Where the owner has filed a response requesting reopening of prosecution under paragraph (b)(1) of this section, any requester, within one month of the date of service of the owner’s response, may once file comments on the response. Such written comments must be limited to the issues raised by the Board’s opinion reflecting its decision and the owner’s response. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply.
- (d) Following any response by the owner under paragraph (b)(1) of this section and any written comments from a requester under paragraph (c) of this section, the proceeding will be remanded to the examiner. The statement of the Board shall be binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. The examiner will consider any owner response under paragraph (b)(1) of this section and any written comments by a requester under paragraph (c) of this section and issue a determination that the rejection is maintained or has been overcome.
- (e) Within one month of the examiner’s determination pursuant to paragraph (d) of this section, the owner or any requester may once submit comments in response to the examiner’s determination. Within one month of the date of service of comments in response to the examiner’s determination, the owner and any requesters may file a reply to the comments. No requester reply may address the comments of any other requester reply. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply.
- (f) After submission of any comments and any reply pursuant to paragraph (e) of this section, or after time has expired, the proceeding will be returned to the Board which shall reconsider the matter and issue a new decision. The new decision is deemed to incorporate the earlier decision, except for those portions specifically withdrawn.
- (g) The time period set forth in paragraph (b) of this section is subject to the extension of time provisions of § 1.956 of this title when the owner is responding under paragraph (b)(1) of this section. The time period set forth in paragraph (b) of this section may not be extended when the owner is responding under paragraph (b)(2) of this section. The time periods set forth in paragraphs (c) and (e) of this section may not be extended.
After consideration of the record of the inter partes reexamination proceeding, including all briefs and the examiner’s answer, the Board issues its decision, affirming the examiner in whole or in part, or reversing the examiner’s decision, sometimes also setting forth a new ground of rejection. Where there is reason to do so, the Board will sometimes remand the reexamination proceeding to the examiner for further consideration, prior to rendering a decision.
I. BOARD DECISION MAY CONTAIN NEW GROUND OF REJECTION
37 CFR 41.77(b) provides express discretionary authority for the Board to include, in its decision, a new ground(s) of rejection for any pending claim on appeal. 37 CFR 41.77(b) is not intended as an instruction to the Board to revisit every claim in every appealed proceeding. It is, rather, intended to give the Board express discretionary authority to act when it becomes readily apparent, during the consideration of the claims, that one or more claims are clearly subject to rejection on the same grounds or on different grounds, or different reasoning from those applied against the rejected claims.
It should be noted that, pursuant to 37 CFR 41.77(a), the reversal of the examiner’s determination not to make a rejection proposed by the requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection. Accordingly, such reversal will be set forth in the Board’s decision as a new ground of rejection under 37 CFR 41.77(b).
II. BOARD DECISION CONTAINING NEW GROUND(S) OF REJECTION IS NON-FINAL
A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.
III. NO BOARD RECOMMENDATION OF AMENDMENT TO MAKE CLAIM PATENTABLE
Unlike the practice for applications and ex parte reexaminations, the rules do not provide for the Board in its decision to include a statement that a claim may be patentable in amended form, whereby the patent owner would have the right to amend in conformity with that statement and it would be binding on the examiner in the absence of new references or grounds of rejection. The reason behind the absence of a rule permitting the Board to make such a statement is that to permit the patent owner and the third party requester(s) to comment on a Board determination of the patentability of a hypothetical amended claim would unduly delay the proceedings.
A remark by the Board that a certain feature does not appear in a claim is not to be taken as a statement that the claim is patentable if the feature is supplied by amendment. Ex parte Norlund, 1913 C.D. 161, 192 O.G. 989 (Comm’r Pat. 1913).
IV. REVIEW OF BOARD DECISION BY PETITION
Because review of the decisions of the Board relating to patentability is within the exclusive jurisdiction of the U.S. Court of Appeals for the Federal Circuit, the Board’s decisions are properly reviewable on petition only for procedural matters and only to the extent of determining whether they involve a convincing showing of error, abuse of discretion, or policy issue appropriate for higher level determination. Reasonable rulings made by the Board on procedural matters resting in its discretion will not be disturbed upon petition. A party in disagreement with a decision of the Board on substantive merits should consider the appropriateness of filing a request for rehearing under 37 CFR 41.79 or an appeal to the U.S. Court of Appeals for the Federal Circuit.
V. PUBLICATION OF BOARD DECISIONS
Decisions of the Board are published at the discretion of the Office. See 37 CFR 41.6(a).