Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 41472-41490 [E7-14645]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 72, Number 145 (Monday, July 30, 2007)]
[Proposed Rules]
[Pages 41472-41490]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E7-14645]



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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 41

[Docket No.: PTO-P-2007-0006]
RIN 0651-AC12


Rules of Practice Before the Board of Patent Appeals and 
Interferences in Ex Parte Appeals

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

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SUMMARY: The Under Secretary of Commerce for Intellectual Property and 
Director of the United States Patent and Trademark Office proposes 
changes to the rules governing practice before the Board of Patent 
Appeals and Interferences in ex parte patent appeals. The changes are 
needed to permit the Board to handle an increasing number of ex parte 
appeals in a timely manner.
    The proposed rules seek to provide examiners and Office reviewers 
with a clear and complete statement of an appellant's position at the 
time of filing an appeal brief so as to enhance the likelihood that 
appealed claims will be allowed without the necessity of further 
proceeding with the appeal, minimize the pendency of appeals before the 
Office, minimize the need for lengthy patent term adjustments in cases 
where claims become allowable as a result of an action by the Board in 
an appeal, provide uniform treatment of requests for an extension of 
time filed after an appeal brief is filed, and make the decision-making 
process more efficient.

DATES: Comments are solicited from interested individuals or entities. 
Written comments must be received on or before September 28, 2007. No 
public hearing will be held.

ADDRESSES: Submit comments:
    1. By electronic mail to BPAI.Rules@uspto.gov.
    2. By mail to Mail Stop Interference, Director of the United States 
Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
    3. By facsimile to 571-273-0042.
    To the extent reasonably possible, the Office will make the 
comments available at https://www.uspto.gov/web/offices/dcom/bpai/. To 
facilitate this goal, the Office strongly encourages the submission of 
comments electronically, in either ASCII format or ADOBE[supreg] 
portable document format (pdf). Regardless of which submission mode is 
used to make a submission, the submitter should write only ``Ex parte 
Appeal Rules'' in the subject line to ensure prompt consideration of 
any comments.
    Because the comments will be made available to the public, the 
comments should not include information that the submitter does not 
wish to have published. Comments that include confidentiality notices 
will not be entered into the record.

FOR FURTHER INFORMATION CONTACT: Fred E. McKelvey or Allen R. MacDonald 
at 571-272-9797.

SUPPLEMENTARY INFORMATION:

Explanation of Proposed Changes

    Existing rules in Part 1 are denominated as ``Rule x'' in this 
supplementary information. A reference to Rule 136(a) is a reference to 
37 CFR 1.136(a) (2006).
    Existing rules in Part 41 are denominated as ``Bd.R. x'' in this 
supplementary information. A reference to Bd.R. 41.3 is a reference to 
37 CFR 41.3 (2006).
    Proposed rules are denominated as ``Proposed Bd.R.'' in this 
supplementary information.
    The Board has jurisdiction to consider and decide ex parte appeals 
in patent applications (including reissue, design and plant patent 
applications) and ex parte reexamination proceedings.
    The Board is currently experiencing a large increase in the number 
of ex parte appeals. In FY 2006, the Board received 3,349 ex parte 
appeals. In FY 2007, the Board expects to receive more than 4,000 ex 
parte appeals. In FY 2008, the Board expects to receive over 5,000 ex 
parte appeals. These rules are proposed to change procedures in such a 
way as to allow the Board to continue to resolve ex parte appeals in a 
timely manner.
    The proposed rules do not propose to change any of the rules 
relating to inter partes reexamination appeals. Nor do the proposed 
rules propose to change any of the rules relating to contested cases.
    In some instances, the rules propose to adopt practices similar to 
those of the Court of Appeals for the Federal Circuit. For example, an 
appendix would be required, page limits would be set, and a table of 
contents and a table of authorities would be required in briefs.

Discussion of Specific Rules

Definitions

    Proposed Bd.R. 41.2 would revise Bd.R. 41.2 to eliminate from the 
definition of ``Board'' any reference to a proceeding under Bd.R. 41.3 
relating to petitions to the Chief Administrative Patent Judge. The 
Director has delegated authority to the Chief Administrative Patent 
Judge to decide petitions under Bd.R. 41.3. See Manual of Patent 
Examining Procedure, Sec.  1002.02(f) (8th ed., Aug., 2006).
    Proposed Bd. R. 41.2 would also revise Bd.R. 41.2 to eliminate a 
petition under Proposed Bd.R. 41.3 from the definition of contested 
case. At the present time, there are no petitions authorized in a 
contested case.

Petitions

    Bd.R. 41.3 would be revised to include a delegation of authority 
from the Director to the Chief Administrative Patent Judge to decide 
certain petitions authorized by Part 41 as proposed to be revised. The 
delegation of authority would be in addition to that already set out in 
Manual of Patent Examining Procedure, Sec.  1002.02(f) (8th ed., Aug., 
2006). The petitions would include (1) seeking an extension of time to 
file certain papers after an appeal brief is filed in an ex parte 
appeal, and (2) to enlarge the page limit of an appeal brief, reply 
brief, supplemental reply brief or request for rehearing.
    Proposed Bd.R. 41.3(a) would require that a copy of any petition be 
forwarded to the Chief Administrative Patent Judge, so as to minimize 
any chance that a petition may be overlooked.
    Proposed Bd.R. 41.3(b) would define the scope of petitions which 
can be filed pursuant to the rules. Under Proposed Bd.R. 41.3(b), a 
petition could not be filed to seek review of issues committed by 
statute to a panel. See, e.g., In re Dickinson, 299 F.2d 954, 958, 133 
USPQ 39, 43 (CCPA 1962).

Timeliness of Petitions

    Proposed Bd.R. 41.4(c) would be revised to add the phrase ``Except 
to the extent provided in this part'' and to revise paragraph 2 to 
read: ``Filing of a notice of appeal and an appeal brief (see 
Sec. Sec.  41.31(c) and 41.37(c)).'' The revision would restrict 
Proposed Bd.R. 41.4(c)(2) to the notice of appeal and appeal brief. The 
Chief Administrative Patent Judge would determine whether extensions 
are to be granted for the filing of most other papers during the 
pendency of the appeal.

Definitions

    Proposed Bd.R. 41.30 would be revised to add a definition of 
``record on appeal.'' The record on appeal would consist of (1) the 
specification, (2) drawings (if any), (3) U.S. patents cited by the 
examiner or appellant, (4) published U.S. applications cited by the 
examiner or appellant, (5) the appeal brief, including all appendices, 
(6) the examiner's answer, (7) any reply brief, including any 
supplemental appendix, (8) any supplemental examiner's

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answer, (9) any supplemental reply brief, (10) any request for 
rehearing, (11) any order or decision entered by the Board or the Chief 
Administrative Patent Judge, and (12) any other document or evidence 
which was considered by the Board as indicated in any opinion 
accompanying any order or decision. The definition would advise 
applicants of what documents the Board would consider in resolving the 
appeal. The definition would also make it clear to any reviewing court 
what record was considered by the Board.

 Appeal to Board

    Proposed Bd.R. 41.31(a) would provide that an appeal is taken from 
a decision of the examiner to the Board by filing a notice of appeal. 
The following language would be acceptable under the rule as proposed: 
``An appeal is taken from the decision of the examiner entered [specify 
date appealed rejection was entered].'' An appeal can be taken when 
authorized by the statute. 35 U.S.C. 134. The provision of Bd.R. 
41.31(b) that a notice of appeal need not be signed has been removed. 
Accordingly, if promulgated, Proposed Bd.R. 41.31 would no longer 
provide that a notice of appeal need not be signed. Instead, papers 
filed in connection with an appeal, including the notice of appeal, 
would need to be signed.
    Proposed Bd.R. 41.31(b) would require that the notice of appeal be 
accompanied by the fee required by law and would refer to the rule that 
specifies the required fee.
    Proposed Bd.R. 41.31(c) would specify the time within which a 
notice of appeal would have to be filed in order to be considered 
timely. The time for filing a notice of appeal appears in Rule 134.
    Proposed Bd.R. 41.31(d) would provide that a request for an 
extension of time to file a notice of appeal in an application is 
governed by Rule 136(a). Proposed Bd.R. 41.31(d) would also provide 
that a request for an extension of time to file a notice of appeal in 
an ex parte reexamination proceeding is governed by Rule 550(c).
    Proposed Bd.R. 41.31(e) would define a ``non-appealable issue'' as 
an issue that is not subject to an appeal under 35 U.S.C. 134. Non-
appealable issues are issues (1) over which the Board does not exercise 
authority in appeal proceedings and (2) which are handled by a 
petition. Non-appealable issues include such matters as an examiner's 
refusal to (1) enter a response to a final rejection, (2) enter 
evidence presented after a final rejection, (3) enter an appeal brief 
or a reply brief, or (4) withdraw a restriction requirement. The 
proposed rules contemplate that some petitions relating to non-
appealable issues are to be decided by the Chief Administrative Patent 
Judge. Some of those non-appealable issues include: (1) A petition to 
exceed page limit and (2) a petition to extend time for filing a paper 
in the appeal after the filing of the appeal brief. An applicant or 
patent owner dissatisfied with a decision of an examiner on a non-
appealable issue would be required to seek review by petition before an 
appeal is considered on the merits. Failure to timely file a petition 
seeking review of a decision of the examiner related to a non-
appealable issue would generally constitute a waiver to have those 
issues considered. The language ``[f]ailure to timely file'' would be 
interpreted to mean not filed within the time set out in the rules. The 
object of the rule, as proposed, would be to maximize resolution of 
non-appealable issues before an appeal is considered on the merits. 
Under current practice, an applicant or a patent owner often does not 
timely seek to have non-appealable issues resolved thereby 
necessitating a remand by the Board to the examiner to have a non-
appealable issue resolved. The remand adds to the pendency of an 
application or reexamination proceeding and, in some instances, may 
unnecessarily enlarge patent term adjustment. The Office would intend 
to strictly enforce the waiver provisions of Proposed Bd.R. 41.31(e), 
if promulgated, with the view of making the appeal process 
administratively efficient. While the Office will retain discretion to 
excuse a failure to timely settle non-appealable issues, it is expected 
that exercise of that discretion will be reserved for truly unusual 
circumstances.

Amendments and Evidence Filed After Appeal and Before Brief

    Proposed Bd.R. 41.33(a) would provide that an amendment filed after 
the date a notice of appeal is filed and before an appeal brief is 
filed may be admitted as provided in Rule 116.
    Proposed Bd.R. 41.33(b) would give the examiner discretion to 
permit entry of an amendment filed with or after an appeal brief is 
filed under two circumstances. A first circumstance would be to cancel 
claims, provided cancellation of claims does not affect the scope of 
any other pending claim in the proceedings. A second circumstance would 
be to rewrite dependent claims into independent form.
    Proposed Bd.R. 41.33(c) would provide that all other amendments 
filed after the date of an appeal brief is filed will not be admitted, 
except as permitted by (1) Proposed Bd.R. 41.39(b)(1) (request to 
reopen prosecution after new rejection in an examiner's answer), (2) 
Proposed Bd.R. 41.50(b)(1) (request to reopen prosecution after entry 
of a supplemental examiner's answer following a remand by the Board), 
(3) Proposed Bd.R. 41.50(d)(1) (request to reopen prosecution after 
entry of new rejection by the Board), and (4) Proposed Bd.R. 41.50(e) 
(amendment after recommendation by the Board).
    Proposed Bd.R. 41.33(d) would provide that evidence filed after a 
notice of appeal is filed and before an appeal brief is filed may be 
admitted (1) if the examiner determines that the evidence overcomes 
some or all rejections under appeal and (2) appellant shows good cause 
why the evidence was not earlier presented. The first step in an 
analysis of whether evidence may be admitted is a showing of good cause 
why the evidence was not earlier presented. The Office has found that 
too often an applicant or a patent owner belatedly presents evidence as 
an afterthought and that the evidence was, or should have been, readily 
available. Late presentation of evidence is not consistent with 
efficient administration of the appeal process. Under the rule, as 
proposed, the Office would strictly apply the good cause standard. Cf. 
Hahn v. Wong, 892 F.2d 1028, 13 USPQ2d 1313 (Fed. Cir. 1989). For 
example, a change of attorneys at the appeal stage or an unawareness of 
the requirement of a rule would not constitute a showing of good cause. 
If good cause is not shown, the analysis ends and the evidence would 
not be admitted. In those cases where good cause is shown, a second 
analysis will be made to determine if the evidence would overcome all 
rejections. Even where good cause is shown, if the evidence does not 
overcome all rejections, the evidence would not be admitted. 
Alternatively, the examiner could determine that the evidence does not 
overcome all the rejections and on that basis alone could refuse to 
admit the evidence.
    Proposed Bd.R. 41.33(e) would provide that evidence filed after an 
appeal brief is filed will not be admitted except as permitted by (1) 
Proposed Bd.R. 41.39(b)(1) (request to reopen prosecution after new 
rejection in examiner's answer), (2) Proposed Bd.R. 41.50(b)(1) 
(request to reopen prosecution after entry of a supplemental examiner's 
answer following a remand by the Board), and (3) Proposed Bd.R. 
41.50(d)(1) (request

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to reopen prosecution after new rejection entered by the Board).

Jurisdiction Over Appeal

    Proposed Bd.R. 41.35(a) would provide that the Board acquires 
jurisdiction upon entry of a docket notice by the Board. At an 
appropriate time after proceedings are completed before the examiner, a 
docket notice would be entered in the application or reexamination 
proceeding file and sent to the appellant. By delaying the transfer of 
jurisdiction until the appeal is fully briefed and the position of the 
appellant is fully presented for consideration by the examiner and the 
Office reviewers (appeal conferees), the possibility exists that the 
examiner will find some or all of the appealed claims patentable 
without the necessity of proceeding with the appeal and invoking the 
jurisdiction of the Board. For this reason, jurisdiction should 
transfer to the Board only after (1) the appellant has filed an appeal 
brief, (2) the examiner has entered an answer, and (3) the appellant 
has filed a reply brief or the time for filing a reply brief has 
expired. The current rule (Bd.R. 41.35(a)) provides that the Board 
acquires jurisdiction upon transmittal of the file, including all 
briefs and examiner's answers, to the Board. However, under the current 
practice, an appellant may or may not know the date when a file is 
transmitted to the Board. Most files are now electronic files (Image 
File Wrapper or IFW file) as opposed to paper files. Accordingly, a 
paper file is no longer transmitted to the Board. Under current 
practice, the Board prepares a docket notice which is (1) entered in 
the IFW file and (2) sent to appellant. Upon receipt of the docket 
notice, appellant knows that the Board has acquired jurisdiction over 
the appeal. Proposed Bd.R. 41.35(a) essentially would codify current 
practice and establish a precise date, known to all involved, as to 
when jurisdiction is transferred to the Board.
    Proposed Bd.R. 41.35(b) would provide that the jurisdiction of the 
Board ends when the Board (1) orders a remand, or (2) enters a final 
decision and judicial review is timely sought, or (3) enters a final 
decision and the time for seeking judicial review has expired. There 
are two occasions when a remand is entered. First, a remand is entered 
when the Board is of the opinion that clarification on a point of fact 
or law is needed. See Proposed Bd.R. 41.50(b). Second, a remand is 
entered when an appellant elects further prosecution before the 
examiner following entry of a new rejection by the Board. See Proposed 
Bd.R. 41.50(d)(1). Upon entry of a remand the Board's jurisdiction 
ends. The Board also loses jurisdiction as a matter of law when an 
appeal to the Federal Circuit is filed in the USPTO. See In re Allen, 
115 F.2d 936, 47 USPQ 471 (CCPA 1940) and In re Graves, 69 F.3d 1147, 
1149, 36 USPQ2d 1697, 1698 (Fed. Cir. 1995). A final decision is a 
panel decision which disposes of all issues with regard to a party 
eligible to seek judicial review and does not indicate that further 
action is needed. See Bd.R. 41.2 (definition of ``final''). When a 
party requests rehearing, a decision becomes final when the Board 
decides the request for rehearing. A decision including a new rejection 
is an interlocutory, not a final, order. If an appellant elects to ask 
for rehearing to contest a new rejection, the decision on rehearing is 
a final decision for the purpose of judicial review.
    Bd.R. 41.35(c) would continue current practice and provide that the 
Director could sua sponte order an appeal to be remanded to an examiner 
before entry of a Board decision. The Director has inherent authority 
to order a sua sponte remand to the examiner. Ordinarily, a rule is not 
necessary for the Director to exercise inherent authority. However, in 
this particular instance, it is believed that a statement in the rule 
of the Director's inherent authority serves an appropriate public 
notice function.

Appeal Brief

    Proposed Bd.R. 41.37 would provide for filing an appeal brief to 
perfect an appeal and would set out the requirements for appeal briefs. 
The appeal brief is a highly significant document in an ex parte 
appeal. Appeal brief experience under current Bd.R. 41.37 has been 
mixed. Proposed Bd.R. 41.37 seeks (1) to take advantage of provisions 
of Bd.R. 41.37 which have proved useful, (2) clarify provisions which 
have been subject to varying interpretations by counsel, and (3) add 
provisions which are expected to make the decision-making process more 
focused and efficient.
    Proposed Bd.R. 41.37(a) would provide that an appeal brief shall be 
filed to perfect an appeal. Upon a failure to timely file an appeal 
brief, proceedings on the appeal process would be considered 
terminated. The language ``without further action on the part of the 
Office'' would provide notice that no action, including entry of a 
paper by the Office, would be necessary for the appeal to be considered 
terminated. Proposed Bd.R. 41.37(a) would not preclude the Office from 
entering a paper notifying an applicant or patent owner that the appeal 
has been terminated. Any failure of the Office to enter a paper 
notifying an applicant or patent owner that an appeal stands terminated 
would not affect the terminated status of the appeal. The language 
``proceedings are considered terminated'' would provide notice that 
when no appeal brief is filed, the time for filing a continuing 
application under 35 U.S.C. 120 would be before the time expires for 
filing an appeal brief.
    Proposed Bd.R. 41.37(b) would provide the appeal brief shall be 
accompanied by the fee required by Bd.R. 41.20(b)(2).
    Proposed Bd.R. 41.37(c) would provide that an appellant must file 
an appeal brief within two months from the filing of the notice of 
appeal.
    Proposed Bd.R. 41.37(d) would provide the time for filing an appeal 
brief is extendable under the provisions of Rule 136(a) for 
applications and Rule 550(c) for ex parte reexamination proceedings. 
Consideration was given to proposing a requirement for a petition to 
extend the time for filing an appeal brief. However, in view of the 
pre-appeal conference pilot program (see Official Gazette of July 12, 
2005; https://www.uspto.gov/web/offices/com/sol/og/2005/week28/
patbref.htm), and in an effort to encourage continued participation in 
that pilot program, further consideration on whether to require a 
petition will be deferred pending further experience by the Office in 
the pre-appeal conference pilot program.
    Proposed Bd.R. 41.37(e) would provide that an appeal brief must 
contain, under appropriate headings and in the order indicated, the 
following items: (1) Statement of the real party in interest, (2) 
statement of related cases, (3) jurisdictional statement, (4) table of 
contents, (5) table of authorities, (6) status of claims, (7) status of 
amendments, (8) rejections to be reviewed, (9) statement of facts, (10) 
argument, and (11) an appendix containing (a) claims section, (b) claim 
support section, (c) drawing analysis section, (d) means or step plus 
function analysis section, (e) evidence section, and (f) related cases 
section. The items are otherwise defined in other subsections of 
Proposed Bd.R. 41.37 and, where applicable, would apply to appeal 
briefs, reply briefs (Proposed Bd.R. 41.41), and supplemental reply 
briefs (Proposed Bd.R. 41.44).
    Proposed Bd.R. 41.37(f) would require a ``statement of real party 
in interest'' which would include an identification of the name of the 
real party in interest. The principal purpose of an identification of 
the name of the real party in interest is to permit members of the 
Board to assess whether recusal is

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required or would otherwise be appropriate. Another purpose is to 
assist employees of the Board to comply with the Ethics in Government 
Act. Since a real party in interest can change during the pendency of 
an appeal, there would be a continuing obligation to update the real 
party in interest during the pendency of the appeal.
    Proposed Bd.R. 41.37(g) would require an appeal brief to include a 
``statement of related cases.'' The statement of related cases would 
identify related cases by (1) application number, patent number, appeal 
number or interference number or (2) court docket number. The statement 
would encompass all prior or pending appeals, interferences or judicial 
proceedings known to appellant (or appellant's legal representative or 
any assignee) that relate to, directly affect, or would be directly 
affected by or have a bearing on the Board's decision in the appeal. A 
copy of any final or significant interlocutory decision rendered by the 
Board or a court in any proceeding identified under this paragraph 
shall be included in the related cases section of the appendix. A 
significant interlocutory decision would include (1) a decision on a 
patentability motion in an interference, or (2) a decision interpreting 
a claim in an interference or by a court. Appellant would be under a 
continuing obligation to update this item during the pendency of the 
appeal.
    Proposed Bd.R. 41.37(h) would require an appeal brief to contain a 
``jurisdictional statement'' which would set out why appellant believes 
that the Board has jurisdiction to consider the appeal. The 
jurisdictional statement would include a statement of (1) the statute 
under which the appeal is taken, (2) the date of the decision from 
which the appeal is taken, (3) the date the notice of appeal was filed, 
and (4) the date the appeal brief is being filed. If a notice of appeal 
or an appeal brief is filed after the time specified in the rules, 
appellant would have to indicate (1) the date an extension of time was 
requested and (2) the date the request was granted. A jurisdictional 
statement would minimize the chance that the Board would consider an 
appeal when the application on appeal is abandoned or a reexamination 
proceeding on appeal has terminated. An example of a jurisdictional 
statement in an application under a heading styled ``Jurisdictional 
statement'' would be: ``The Board has jurisdiction under 35 U.S.C. 
134(a). The Examiner entered a final rejection on August 1, 2006, 
setting a three-month period for response. The time for responding to 
the final rejection expired on November 1, 2006. Rule 134. A notice of 
appeal and a request for a one-month extension of time under Rule 
136(a) was filed on November 15, 2006. The time for filing an appeal 
brief is two months after the filing of a notice of appeal. Bd.R. 
41.37(c). The time for filing an appeal brief expired on January 16, 
2007 (Monday, January 15, 2007, being a Federal holiday). The appeal 
brief is being filed on January 16, 2007.'' If during the preparation 
of a jurisdictional statement, an appellant becomes aware that its 
application is abandoned, appellant could then take steps to revive the 
application, if revival is appropriate. See Rule 137.
    Proposed Bd.R. 41.37(i) would require an appeal brief to contain a 
``table of contents'' identifying the items listed in Proposed Bd.R. 
41.37(e) along with a page reference where each item begins. In the 
case of a reply brief, the table of contents would identify the items 
required by the reply brief rule (Proposed Bd.R. 41.41(d)). In the case 
of a supplemental reply brief, the table of contents would identify the 
items required by the supplemental reply brief rule (Proposed Bd.R. 
41.44(d)).
    Proposed Bd.R. 41.37(j) would require an appeal brief to contain a 
``table of authorities.'' This item would list (1) court and 
administrative decisions (alphabetically arranged), (2) statutes, and 
(3) other authorities, along with a reference to the pages of the 
appeal brief where each authority is cited. A similar requirement 
applies to a reply brief and a supplemental reply brief.
    Proposed Bd.R. 41.37(k) would require an appeal brief to include a 
``status of pending claims'' (e.g., rejected--appealed, rejected--not 
appealed, cancelled, allowable, withdrawn from consideration, or 
objected to). An example of a status of pending claims might read as 
follows under a heading styled ``Status of pending claims:'' ``Claims 
1-7 are pending in the application on appeal: Claim 1 (rejected--not 
appealed), Claims 2-3 (rejected--appealed), Claim 4 (restricted and 
withdrawn from consideration), Claim 5 (objected to as depending from 
rejected claim), and Claims 6-7 (allowable).''
    Proposed Bd.R. 41.37(l) would require an appeal brief to indicate 
the ``status of amendments'' for all amendments filed after final 
rejection (e.g., entered or not entered). Examples of a status of 
amendments might read as follows under a heading styled ``Status of 
amendments'': (1) ``No amendment was filed after final rejection.'' (2) 
``An amendment filed October 31, 2006, was not entered by the 
examiner.'' (3) ``An amendment filed November 1, 2006, was entered by 
the examiner.'' (4) ``An amendment filed October 31, 2006, was not 
entered by the examiner, but an amendment filed November 1, 2006, was 
entered by the examiner.''
    Proposed Bd.R. 41.37(m) would require an appeal brief to set out 
the ``rejections to be reviewed,'' including the claims subject to each 
rejection. Examples might read as follows under a heading styled 
``Rejections to be reviewed'': (1) ``Rejection of claim 2 as being 
anticipated under 35 U.S.C. 102(b) over Johnson.'' (2) ``Rejection of 
claims 2-3 as being unpatentable under 35 U.S.C. 103(a) over Johnson 
and Young.'' (3) ``Rejection of claim 2 as failing to comply with the 
written description requirement of the first paragraph of 35 U.S.C. 
112.'' (4) ``Rejection of claim 2 as failing to comply with the 
enablement requirement of the first paragraph of 35 U.S.C. 112.'' (5) 
``Rejection of claim 3 under 35 U.S.C. 251 based on recapture.''
    Proposed Bd.R. 41.37(n) would require a ``statement of facts.'' 
Appellant would set out in an objective and non-argumentative manner 
the material facts relevant to the rejections on appeal, preferably in 
numbered paragraphs. A clear, concise and complete statement of 
relevant facts will clarify the position of an appellant on dispositive 
issues and assist the examiner in reconsidering the patentability of 
the rejected claims. A fact would be required to be supported by a 
reference to the page number of the record on appeal. Where 
appropriate, the citation should also be to a specific line and to a 
drawing figure and element number of the record on appeal (see Proposed 
Bd.R. 41.37(t)). Statements of facts should be set out in short 
declarative sentences, and each sentence should address a single fact. 
For example, ``In rejecting claims 1-5, the examiner cites Jones (App. 
[App. meaning appendix], page 8, lines x-y).'' ``Jones describes a 
widget (App., page 19, col. 8, lines 3-4 and App., page 16, Figure 1, 
elements 12 and 13).'' A compound statement of fact is not proper, 
e.g., ``Jones describes a widget (App., page 19, col. 8, lines 3-4) and 
Smith does not describe a device.'' A statement of facts would have to 
be non-argumentative, meaning that an appellant would not be able to 
argue its appeal in the statement of facts. Rather, the statement of 
facts is designed to require an appellant to set out the facts which 
the appellant considers material for resolution of the appeal, thereby 
assisting the examiner initially and, if necessary, the Board 
thereafter to focus on the dispositive portions of the record. For 
example, in the case of a rejection for obviousness under Sec.  103, 
the facts should address at least the

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scope and content of the prior art, any differences between the claim 
on appeal and the prior art, and the level of skill in the art. In the 
past, some appellants have provided minimal factual development in an 
appeal brief, apparently believing that the Board will scour the record 
to divine the facts. It should be remembered that when the appeal 
reaches the Board, the panel members do not know anything about the 
appellant's invention or the prosecution history of the application on 
appeal. Likewise, too often an appellant will not support a statement 
of fact in an appeal brief by an explicit reference to the evidence. A 
statement of fact based on the specification would be proper if 
supported by a reference to page and line (and where appropriate also 
to drawing figure and element number). A statement of fact based on a 
patent would be proper if it is supported by a reference to a column 
and line (and where appropriate also to a drawing figure and element 
number). A statement of fact based on an affidavit would be proper if 
supported by a reference to a page and line number or to a page and 
paragraph number of the affidavit; the affidavit would appear in the 
evidence section of the appendix. The Office is proposing requiring a 
reference to a specific citation because an appellant should not expect 
the examiner or the Board to search the record to determine whether a 
statement of fact is supported by the evidence. Proposed Bd.R. 
41.37(n), as well as other proposed rules, is consistent with the 
approaches taken by federal courts concerning appeal brief practice and 
other briefing practice: (1) Clintec Nutrition Co. v. Baxa Corp., 988 
F. Supp. 1109, 1114, n.16, 44 USPQ2d 1719, 1723, n.16 (N.D. Ill. 1997) 
(where a party points the court to a multi-page exhibit without citing 
a specific portion or page, the court will not pour over the documents 
to extract the relevant information); (2) Ernst Haas Studio, Inc. v. 
Palm Press, Inc., 164 F.3d 110, 112, 49 USPQ2d 1377, 1379 (2d Cir. 
1999) (``Appellant's Brief is at best an invitation to the court to 
scour the record, research any legal theory that comes to mind, and 
serve generally as an advocate for appellant. We decline the 
invitation.''); (3) Winner International Royalty Corp. v. Wang, 202 
F.3d 1340, 1351, 53 USPQ2d 1580, 1589 (Fed. Cir. 2000) (``[W]e will not 
search the record on the chance of discovering * * * whether the 
district court abused its discretion.''); (4) Gorence v. Eagle Food 
Centers, Inc., 242 F.3d 759, 762-63 (7th Cir. 2001) (``Little has been 
done * * * to make slogging through the record here either more 
efficient or more pleasant. And it is simply not true, we want to 
emphasize, that if a litigant presents an overload of irrelevant or 
non-probative facts, somehow the irrelevancies will add up to relevant 
evidence * * *''); and (5) DeSilva v. DiLeonardi, 181 F.3d 865, 867 
(7th Cir. 1999) (``[An appeal] brief must make all arguments accessible 
to the judges, rather than ask them to play archaeologist with the 
record.'' See also (1) Shiokawa v. Maienfisch, 56 USPQ2d 1970, 1975 
(Bd. Pat. App. & Int. 2000) and (2) LeVeen v. Edwards, 57 USPQ2d 1406, 
1413 (Bd. Pat. App. & Int. 2000).
    Proposed Bd.R. 41.37(o) would require an appeal brief to contain an 
argument comprising an analysis explaining, as to each rejection to be 
reviewed, why the appellant believes the examiner erred as to each 
rejection to be reviewed. The analysis would have to address all points 
made by the examiner with which the appellant disagrees. The 
presentation of a concise, but comprehensive, argument in response to 
the final rejection will efficiently frame any dispute between the 
appellant and the examiner not only for the benefit of the Board but 
also for consideration by the examiner and Office reviewers (appeal 
conferees) and provide the best opportunity for resolution of the 
dispute without the necessity of proceeding with the appeal. Where an 
argument has previously been presented to the examiner, the analysis 
would have to identify where any argument being made to the Board was 
made in the first instance to the examiner. Where an argument has not 
previously been made to the examiner, an appellant would be required to 
say so in the appeal brief so that the examiner would know that the 
argument is new. An example where an argument might not previously have 
been made to an examiner might occur under the following fact scenario. 
A first office action rejects claims over Reference A. Applicant amends 
the claims to avoid Reference A. The examiner enters a final rejection 
now relying on References A and B. Applicant elects to appeal without 
filing a response under Rule 116. While applicants are encouraged to 
file a response under Rule 116 to possibly avoid an appeal all 
together, at the present time there is no requirement for an applicant 
to file a Rule 116 response. Whether such a requirement should be made 
in the future will be held in abeyance pending experience under the 
rules as proposed, should they ultimately be promulgated. The Board has 
found that many arguments made in an appeal brief were never earlier 
presented to the examiner even though they could have been presented 
(without filing a Rule 116 response). To promote clarity, Proposed 
Bd.R. 41.37(o) would also require that each rejection for which review 
is sought shall be separately argued under a separate heading. Also, 
Proposed Bd.R. 41.37(o) would provide that any finding made or 
conclusion reached by the examiner that is not challenged would be 
presumed to be correct. Proposed Bd.R. 41.37(o) would also refer to 
paragraphs (4) through (8) of the rule where additional requirements 
for making arguments in response to statutory rejections would be 
found.
    Proposed Bd.R. 41.37(o)(1) would provide that when a rejection 
applies to two or more claims, the appellant could elect to (1) have 
all claims stand or fall together or (2) argue the separate 
patentability of individual claims. The choice would be up to the 
appellant. However, if the appeal brief fails to make an explicit or 
clear election, the Board would (1) treat all claims subject to the 
rejection as standing or falling together and (2) select a single claim 
to decide the appeal as to that rejection. Any doubt as to whether an 
election has been made would be resolved against the appellant. For 
each claim argued separately, a subheading identifying the claim by 
number would be required. The requirement for a separate subheading in 
the appeal brief is to minimize any chance the examiner or the Board 
would overlook an argument directed to the separate patentability of a 
particular claim. In the past, appellants have been confused about 
whether a statement of what a claim covers is sufficient to constitute 
an argument that the claim is separately patentable. It is not. A 
statement that a claim contains a limitation not present in another 
claim would not in and of itself be sufficient to satisfy the 
requirement of Proposed Bd.R. 41.37(o)(1) that a separate argument be 
made. Unless an appellant plans to argue the separate patentability of 
a claim, the appellant would not discuss or refer to the claim in the 
argument section of the appeal brief. A copy of the claims will be 
before the Board in the ``claims section'' (Proposed Bd.R. 41.37(p)). 
In an application containing claims 1-3 where the examiner has made (1) 
a Section 102 rejection or (2) a Section 103 rejection or (3) both a 
Section 102 and 103 rejection, examples of a proper statement of 
``claims standing or falling together'' would be as follows: (1) ``With 
respect to the rejection under Section 102, claims 1-

[[Page 41477]]

3 stand or fall together.'' (2) ``With respect to the rejection under 
Section 103, claims 1-2 stand or fall together; claim 3 is believed to 
be separately patentable.'' (3) ``With respect to the rejection under 
Section 102, claims 1-2 stand or fall together; claim 3 is believed to 
be separately patentable. With respect to the rejection under Section 
103, the claims stand or fall together.''
    Proposed Bd.R. 41.37(o)(2) would provide that the Board would only 
consider arguments that (1) are presented in the argument section of 
the appeal brief and (2) address claims set out in the claim support 
section of the appendix. Appellant would waive all arguments which 
could have been, but were not, addressed in the argument section of the 
appeal brief. A first example would be where Argument 1 and Argument 2 
are presented in response to a final rejection, but only Argument 1 is 
presented in the appeal brief. Only Argument 1 would be considered. 
Argument 2 would be waived. A second example would be where an 
applicant presents an affidavit under Rule 131 or Rule 132 to the 
examiner, but does not argue the relevance of the affidavit in the 
appeal brief. The Board would not consider the affidavit in deciding 
the appeal.
    Proposed Bd.R. 41.37(o)(3) would require that, when responding to 
points made in the final rejection, the appeal brief shall specifically 
(1) identify each point made by the examiner and (2) indicate where 
appellant previously responded to each point that appellant has not 
previously responded to the point. In supporting any argument, the 
appellant shall refer to a page and, where appropriate a line, in the 
evidence section of the appendix, specification, drawings (if any), 
U.S. patents, and published U.S. applications. Examples of argument 
formats that would be acceptable under Proposed Bd.R. 41.37(o)(3) 
follow.

    Example 1. In the case where an argument had been previously 
presented to the examiner, the following format would be acceptable 
under Proposed Bd.R. 41.37(o)(3). ``The examiner states that 
Reference A teaches element B. Final Rejection, App., page x, lines 
y-z. In response, appellant previously pointed out to the examiner 
why the examiner is believed to have erred. App., pages 8-9. The 
response is [concisely state the response].'' A similar format has 
been successfully used for some years in oppositions and replies 
filed in interference cases.
    Example 2. Alternatively, in the case where an argument has not 
been previously made to the examiner, the following format would be 
acceptable under Proposed Bd.R. 41.37(o)(3). ``In response to the 
examiner's reliance on Reference C for the first time in the final 
rejection (App., page 4), appellant's response includes a new 
argument which has not been previously presented to the examiner. 
The response is [concisely state the response].'' Use of this format 
will minimize any chance that the examiner will overlook an argument 
when preparing the examiner's answer.

    The recommended argument formats are intended to be efficient 
protocols for assisting the Board in focusing on any differences 
between the examiner's and appellant's positions.
    Paragraphs (4) through (8) of Proposed Bd.R. 41.37(o) would 
reinstitute specific requirements not found in Bd.R. 41.37, but that 
appeared in the prior rule (37 CFR 1.192(c)(8)(i) through (v)) (2004). 
Since promulgation of Bd.R. 41.37, suggestions from outside the Office 
have been made to have the Office reinsert the requirements of former 
Rule 192(c)(8)(i) through (v) into the rules. These paragraphs would 
require that appellants expressly address the statutory requirements 
for patentability. Paragraphs (4) through (7), as under the Office's 
prior rules, would address rejections under 35 U.S.C. 102, 103 and 112 
(first and second paragraphs). There are, of course, other rejections 
which are based on other sections of the Patent Law, e.g., 35 U.S.C. 
101 (non-statutory subject matter, same invention double patenting, and 
lack of utility), 35 U.S.C. 251 (recapture and presenting claims in 
reissue applications that are broader than original patent claims), and 
35 U.S.C. 305 (presenting claims in re-examination proceedings that are 
broader than original patent claims). Likewise, there are non-statutory 
rejections, such as obvious double patenting and interference estoppel. 
Since the vast majority of the rejections are based on sections 102, 
103 and 112, it is proposed to have requirements in the rules related 
only to those rejections. Setting out requirements for other rejections 
is presently viewed as counterproductive and complicated since it would 
be impossible to address all the various possibilities for those other 
rejections. Accordingly, a ``catch-all'' for other rejections is set 
out in Proposed Bd.R. 41.37(o)(8).
    Proposed Bd.R. 41.37(o)(4) would require, for each rejection under 
35 U.S.C. 112, first paragraph, that the argument shall also specify 
the errors in the rejection and how the rejected claims comply with the 
first paragraph of 35 U.S.C. 112, including, as appropriate, how the 
specification and drawings, if any, (1) describe the subject matter 
defined by the rejected claims, (2) enable any person skilled in the 
art to which the invention pertains to make and use the subject matter 
of the rejected claims, or (3) set forth the best mode contemplated by 
the inventor of carrying out the claimed invention.
    Proposed Bd.R. 41.37(o)(5) would require, for each rejection under 
35 U.S.C. 112, second paragraph, that the argument shall also specify 
how the rejected claims particularly point out and distinctly claim the 
subject matter which appellant regards as the invention.
    Proposed Bd.R. 41.37(o)(6) would require, for each rejection under 
35 U.S.C. 102 (anticipation), that the argument shall also identify any 
specific limitations in the rejected claims which are not described 
(explicitly or inherently) in the prior art relied upon in support of 
the rejection and, therefore, why the rejected claims are patentable 
under 35 U.S.C. 102.
    Proposed Bd.R. 41.37(o)(7) would require, for each rejection under 
35 U.S.C. 103, that the argument shall (1) specify the errors in the 
rejection, (2) if appropriate, specify the specific limitations in the 
rejected claims that are not described in the prior art relied upon in 
support of the rejection, and (3) explain how those limitations render 
the claimed subject matter unobvious over the prior art. A general 
argument that all limitations are not described in a single prior art 
reference would not satisfy the requirements of this paragraph.
    Proposed Bd.R. 41.37(o)(8) would require for any rejection other 
than those mentioned in Proposed Bd.R. 41.37(o)(4) through (7) that the 
argument shall specify the errors in the rejection, including where 
appropriate the specific limitations in the rejected claims upon which 
the appellant relies to establish error.
    Proposed Bd.R. 41.37(p) would require an appeal brief to contain a 
``claims section'' in the appendix which would consist of an accurate 
clean copy in numerical order of all claims pending in the application 
or reexamination proceeding on appeal. The claims section of the 
appendix would include all pending claims, not just those under 
rejection. The status of each claim would have to be indicated.
    Proposed Bd.R. 41.37(q) would require an appeal brief to contain a 
``claim support section'' of the appendix. The claim support section 
would replace Bd.R. 41.37(c)(1)(v) which requires a concise explanation 
of the subject matter defined in each of the independent claims on 
appeal. The claim support section, for each claim argued separately 
(see Proposed Bd.R. 41.37(o)(1)), would consist of an annotated copy of 
the claim indicating

[[Page 41478]]

in bold face between braces ({{time} ) after each limitation where, by 
page and line numbers, the limitation is described in the specification 
as filed. Braces ({{time} ) are used instead of brackets [ ] because 
brackets are used in reissue claim practice. Unlike the ``claims 
section'' (see Proposed Bd.R. 41.37(p)), only those claims being argued 
separately would need to appear in the ``claim support section.'' A 
significant objective of the ``claim support section'' would be to 
provide the examiner and the Board with appellant's perspective on 
where language of the claims (including specific words used in the 
claims, but not in the specification) finds support in the 
specification. Finding support for language in the claims can help the 
examiner and the Board construe claimed terminology and limitations 
when applying the prior art. The claim support section of the appendix 
would help the Board to interpret the scope of claims, or the meaning 
of words in a claim, before applying the prior art. Practice under 
current Bd.R. 41.37(c)(1)(v) has not been efficient because of the 
diverse manners in which different appellants have attempted to comply 
with the current practice. One significant problem faced by the Board 
under the current practice occurs when the language of a claim does not 
have direct antecedent language in the specification. In order for the 
Board to understand the scope of a claim or the meaning of a term in 
the claim, the Board primarily relies on the specification. Moreover, 
in practice before the Office, a claim is given its broadest reasonable 
construction consistent with the specification. However, when the 
language of the claim does not find correspondence in the 
specification, as filed, often it is difficult to determine the meaning 
of a particular word in a claim or to give the claim its broadest 
reasonable interpretation. The claim support section of the appendix 
would give the examiner and the Board the appellant's view on where the 
claim is supported by the application, as filed. The proposed 
requirement, if promulgated, would significantly improve the efficiency 
of the Board's handling of appeals.
    Proposed Bd.R. 41.37(r) would require an appeal brief to contain a 
``drawing analysis section'' in the appendix. For each claim argued 
separately (see Proposed Bd.R. (o)(1)), the drawing analysis section 
would consist of an annotated copy of the claim in numerical sequence, 
indicating in bold face between braces ({{time} ) after each limitation 
where, by reference or sequence residue number, each limitation is 
shown in the drawing or sequence. A drawing analysis has been required 
in interference cases since 1998 and has proven useful to the Board in 
understanding claimed inventions described in applications and patents 
involved in an interference. The drawing analysis section is expected 
to be equally useful in ex parte appeals. If there is no drawing or 
amino acid or nucleotide material sequence, the drawing analysis 
section would state that there is no drawing or sequence. The purpose 
of requiring a statement is to be certain that a drawing analysis has 
not been overlooked.
    Proposed Bd.R. 41.37(s) would require an appeal brief to contain a 
``means or step plus function analysis section'' in the appendix. The 
means or step plus function analysis section would replace the 
requirement of current Bd.R. 41.37(c)(1)(v) relating to identification 
of structure, material or acts for means or step plus function claims 
limitations contained in appealed claims. Under Proposed Bd.R. 
41.37(s), the means or step plus function analysis section would 
include each claim argued separately (see Proposed Bd.R. 41.37(o)(1)) 
that contains a limitation that appellant regards as a means or step 
plus function limitation in the form permitted by the sixth paragraph 
of 35 U.S.C. 112. Further, for each such claim, a copy of the claim 
would be reproduced indicating in bold face between braces ({{time} ) 
the specific portions of the specification and drawing that describe 
the structure material or acts corresponding to each claimed function. 
If the appealed claims do not contain any means or step plus function 
limitations, the section would state that there is no means or step 
plus function limitation in any claim on appeal. The Office is 
proposing to require a particular format for the means or step plus 
function analysis section to avoid the confusion that arises from the 
variety of ways appellants employ under current practice in attempting 
to comply with the requirements of Bd.R. 41.37(c)(1)(v). A means or 
step plus function analysis essentially tracking Proposed Bd.R. 
41.37(s) has been used in interference cases since 1998 and has been 
helpful in determining the scope of claims involved.
    Proposed Bd.R. 41.37(t) would require an appeal brief to contain an 
``evidence section'' in the appendix. The evidence section continues, 
in part, the practice under Bd.R. 41.37(c)(1)(ix). The evidence section 
and any supplemental appendix filed pursuant to Proposed Bd.R. 
41.41(h), as well as the specification, any drawings, and any cited 
U.S. patents and published U.S. applications, would constitute the 
record upon which the appeal would be decided. The word ``evidence'' 
would be construed broadly and would include amendments, affidavits or 
declaration, non-patent literature, foreign patents and publications, 
published PCT documents, and any other material admitted into the 
record by the examiner. The evidence section would include (1) table of 
contents, (2) the Office action setting out the rejection on appeal 
(including any Office action that may be incorporated by reference), 
(3) all evidence (except the specification, any drawings, U.S. patents 
and published U.S. applications) upon which the examiner relied in 
support of the rejection on appeal, (4) the relevant portion of papers 
filed by the appellant during prosecution before the examiner which 
show that an argument being made on appeal was made in the first 
instance to the examiner, (5) affidavits or declarations upon which the 
appellant relied before the examiner, and (6) other evidence upon which 
the appellants relied before the examiner. If the examiner believes 
that other material should be included in the evidence section, the 
examiner would be able to attach that evidence to the examiner's 
answer. Pursuant to Proposed Bd.R. 41.37(v)(1), all pages of an appeal 
brief or a reply brief (including appendices to those briefs) would be 
consecutively numbered beginning with page 1. Appeal briefs, examiner's 
answers, reply briefs, supplemental examiner's answers, supplemental 
reply briefs, and opinions of the Board would be able to cite the 
``record'' by reference to a page of the evidence section or any 
supplemental appendix. If the appellant, the examiner, and the Board 
all cite to a well-defined record, confusion over what a reference to a 
piece of evidence means should be diminished.
    Proposed Bd.R. 41.37(u) would require an appeal brief to contain a 
``related cases section'' in the appendix. The related cases section 
would consist of copies of orders and opinions required to be cited 
pursuant to Proposed Bd.R. 41.37(g).
    Proposed Bd.R. 41.37(v) would require an appeal brief to be 
presented in a particular format. The appeal brief would have to comply 
with the format of Rule 52 as well as with other requirements set out 
in Proposed Bd.R. 41.37(v)(1) through (6).
    Proposed Bd.R. 41.37(v)(1) would require that the pages of an 
appeal brief, including all appendices, would be consecutively numbered 
using Arabic numerals beginning with the first page

[[Page 41479]]

of the appeal brief, which would be numbered page 1. This practice 
would prevent (1) re-starting numbering with each section of the 
appendix or (2) using Roman numeral page numbers, e.g., I, II, V, etc., 
or page numbers with letters, e.g., ``a'', ``b'', ``c'', ``i'', ``ii'', 
etc. The lines on each page of the appeal brief, and where practical, 
the appendices, would be consecutively line numbered beginning with 
line 1 at the top of each page. Line numbering has been used for some 
time in interference cases and has been found to be useful when making 
reference in oppositions, replies, and opinions of the Board.
    Proposed Bd.R. 41.37(v)(2) would require that text in an appeal 
brief would be double spaced except in headings, tables of contents, 
tables of authorities, signature blocks and certificates of service. 
Block quotations would be indented. Footnotes, which are discouraged, 
would have to be double spaced.
    Proposed Bd.R. 41.37(v)(3) would require that margins shall be at 
least one inch (2.5 centimeters) on all sides. Line numbering could 
appear within the left margin.
    Proposed Bd.R. 41.37(v)(4) would require that the font would be 
readable and clean and equivalent to 14 point Times New Roman, 
including the font for block quotations and footnotes.
    Proposed Bd.R. 41.37(v)(5) would provide that an appeal brief may 
not exceed 25 pages, excluding any (1) statement of the real party in 
interest, (2) statement of related cases, (3) table of contents, (4) 
table of authorities, (5) signature block and (6) appendix. To give 
meaning to the 25-page limitation, an appeal brief would not be 
permitted to incorporate by reference arguments from other papers in 
the evidence appendices or from any other source. The prohibition 
against incorporation by reference is necessary to prevent an appellant 
from adding to the length of an appeal brief. Cf. DeSilva v. 
DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999) (``[A]doption by 
reference amounts to a self-help increase in the length of the 
appellate brief. * * * [I]ncorporation by reference is a pointless 
imposition on the court's time. A brief must make all arguments 
accessible to the judges, rather than ask them to play archaeologist 
with the record.'') (citation omitted). A prohibition against 
incorporation by reference has been the practice in interference cases 
since 1998 and has minimized the chance that an argument is overlooked.
    Proposed Bd.R. 41.37(v)(6) would require a signature block which 
would identify the appellant or appellant's representative, as 
appropriate, and a mailing address, telephone number, fax number and e-
mail address.

Examiner's Answer

    Proposed Bd.R. 41.39(a) would provide that within such time and 
manner as may be directed by the Director and if the examiner 
determines that the appeal should go forward, the examiner shall enter 
an examiner's answer responding to the appeal brief. The specific 
requirements of what would be required in an examiner's answer would 
appear in the Manual of Patent Examining Procedure.
    Proposed Bd.R. 41.39(b) would provide that an examiner's answer may 
include a new rejection. In the past, the rules and the MPEP have used 
the phrase ``new ground of rejection.'' The phrase ``new rejection'' 
implies that the ground, or basis, for the rejection is new. 
Accordingly, in Proposed Bd.R. 41.39(b) and elsewhere in the proposed 
rules, the phrase ``new rejection'' rather than ``new ground of 
rejection'' is used. If an examiner's answer contains a rejection 
designated as a new rejection, appellant, within two months from the 
date of the examiner's answer, would be required to exercise one of two 
options or the application will be deemed to be abandoned or the 
reexamination proceeding will be deemed to be terminated.
    Proposed Bd.R. 41.39(b)(1) would provide that the first option 
would be to request that prosecution be reopened before the examiner by 
filing a reply under Sec.  1.111 of this title with or without 
amendment or submission of evidence. Any amendment or evidence would 
have to be relevant to the new rejection. A request that complies with 
this paragraph would be entered and the application or patent under 
reexamination would be reconsidered by the examiner under the 
provisions of Sec.  1.112 of this title. A request under this paragraph 
would be treated as a request to withdraw the appeal.
    Proposed Bd.R. 41.39(b)(2) would provide that the second option 
would be to request that the appeal be maintained by filing a reply 
brief as set forth in Proposed Bd.R. 41.41. A reply brief could not be 
accompanied by any amendment or evidence, except an amendment canceling 
one or more claims which are subject to the new rejection. A reply 
brief which is accompanied by evidence or any other amendment would be 
treated as a request to reopen prosecution pursuant to Proposed Bd.R. 
41.39(b)(1).
    Proposed Bd.R. 41.39(c) would provide that the time for filing a 
request under Proposed Bd.R. 41.39(b)(1) would be extendable under the 
provisions of Rule 136(a) as to applications and under the provisions 
of Rule 550(c) as to reexamination proceedings. However, a request for 
an extension of time for filing a request under Proposed Bd.R. 
41.39(b)(2) would have to be presented as a petition under Proposed 
Bd.R. 41.3(a) and (c). A decision on the petition would be made by the 
Chief Administrative Patent Judge or an employee to whom the Chief 
Administrative Patent Judge has delegated authority to make the 
decision. The decision would be governed by Rule 41.4(a). The reason 
for the requirement for a petition is to minimize the time an appeal is 
pending. In the past, appellants have taken advantage of the provisions 
of Rule 136(a) to file a reply to maintain the appeal. The length of 
possible patent term adjustment (35 U.S.C. 154(b)(2)(iii)) is based on 
the time an appeal is pending. The provisions of Rule 136(a) are not 
consistent with efficient handling of appeals after the time an appeal 
brief is filed. The Office does not believe that an applicant should be 
able to add to any patent term adjustment by the automatic extensions 
of time that are available through Rule 136(a). Appellants should 
expect strict application of the ``good cause'' standard of Bd.R. Rule 
41.4(a).

Reply Brief

    Proposed Bd.R. 41.41(a) would provide that an appellant may file a 
single reply brief responding to the examiner's answer.
    Proposed Bd.R. 41.41(b) would provide that the time for filing a 
reply brief would be within two months of the date the examiner's 
answer is entered.
    Proposed Bd.R. 41.41(c) would provide that a request for an 
extension of time shall be presented as a petition under Sec.  41.3(a) 
and (c) of this part. A decision on the petition shall be governed by 
Sec.  41.4(a) of this part. The provisions of Rule 136(a) would no 
longer apply to extensions of time to file a reply brief.
    Proposed Bd.R. 41.41(d) would provide that a reply brief shall be 
limited to responding to points made in the examiner's answer. Except 
as otherwise set out in these proposed rules, the form and content of a 
reply brief would be governed by the requirements for an appeal brief 
as set out in Proposed Bd.R. 41.37. A reply brief would not be able to 
exceed fifteen pages, excluding any (1) table of contents, (2) table of 
authorities, (3) statement of timeliness, (4) signature block and (5) 
supplemental appendix. A reply brief would be required to contain,

[[Page 41480]]

under appropriate headings and in the order indicated, the following 
items: (1) Table of contents, (2) table of authorities, (3) statement 
of timeliness, (4) statement of facts in response to any new rejection 
in examiner's answer, (5) argument, and, where appropriate, (6) 
supplemental appendix. If the examiner's answer contains a new 
rejection, designated as such, the page limit would be twenty-five 
pages and not fifteen pages.
    Proposed Bd.R. 41.41(e) would require a reply brief to contain a 
statement of timeliness. The statement of timeliness would have to 
establish that the reply brief is being timely filed by including a 
statement of the date the examiner's answer was entered and the date 
the reply brief is being filed. If the reply brief is filed after the 
time specified in this subpart, appellant must indicate the date an 
extension of time was requested and the date the request was granted. 
An example of a statement of timeliness would be: ``The examiner's 
answer was entered on October 14, 2006. The time for filing a reply 
brief expired on December 14, 2006. Bd.R. 41.41(b). A request for 
extension of time to file the reply brief on December 21, 2006, was 
filed on December 1, 2006, and was granted by the Chief Administrative 
Patent Judge on December 10, 2006. The reply brief is being timely 
filed on December 21, 2006.'' A reply brief which is not timely filed 
would not be considered by the examiner or the Board.
    Proposed Bd.R. 41.41(f) would require a statement of additional 
facts, but only when the appellant has elected to file a reply brief in 
response to a new rejection in an examiner's answer entered pursuant to 
Proposed Bd.R. 41.39(b)(2). When a statement of additional facts is 
required, it would have to meet the requirements of Proposed Bd.R. 
41.37(n), but would have to be limited to facts relevant to the new 
rejection. If there is no new rejection in the examiner's answer, there 
would be no statement of additional facts.
    Proposed Bd.R. 41.41(g) would require that an argument appear in 
the reply brief, which would be limited to responding to points made in 
the examiner's answer. No general restatement of the case would be 
permitted in a reply brief. An argument which could have been, but 
which was not, made in the appeal brief cannot be made in a reply 
brief. The Office has found a restatement of the case in a reply brief 
to be a serious distraction. Adding details or additional arguments, if 
not responsive to points made by the examiner, does not contribute to 
the efficient handling of appeals. As a result of appellants adding new 
details and arguments, an examiner often has to enter a supplemental 
examiner's answer to respond to details and arguments not previously 
considered by the examiner and that should have been presented in the 
appeal brief. An example of an acceptable format for presenting an 
argument in a reply brief (where there was no new rejection in the 
examiner's answer) might read as follows: First paragraph: ``This is a 
reply to the examiner's answer entered [insert the date the answer was 
entered].'' Last paragraph: ``For the reasons given in this reply brief 
and in the appeal brief, reversal of the examiner's rejection is 
requested.'' All paragraphs between the first and last paragraphs would 
read: ``On page x, lines y-z of the examiner's answer, th