Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 32938-32977 [E8-12451]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office
• Patent and Trademark Office

[Federal Register Volume 73, Number 112 (Tuesday, June 10, 2008)]
[Rules and Regulations]
[Pages 32938-32977]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E8-12451]



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Part IV





Department of Commerce





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Patent and Trademark Office



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37 CFR Part 41



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

Federal Register / Vol. 73, No. 112 / Tuesday, June 10, 2008 / Rules 
and Regulations

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DEPARTMENT OF COMMERCE

United States 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: Final rule.

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SUMMARY: The Under Secretary of Commerce for Intellectual Property and 
Director of the United States Patent and Trademark Office amends the 
rules governing practice before the Board of Patent Appeals and 
Interferences in ex parte patent appeals. Amendments to the rules 
governing practice before the Board in ex parte appeals are needed to 
permit the Board to handle an increasing number of ex parte appeals in 
a timely manner.

DATES: Effective Date: December 10, 2008.
    Applicability Date: The final rule shall apply to all appeals in 
which an appeal brief is filed on or after the effective date.

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

SUPPLEMENTARY INFORMATION: 

Background

    A notice of proposed rulemaking was published in the Federal 
Register (72 FR 41,472-41,490 (Jul. 30, 2007)). The notice was also 
published in the Official Gazette. 1321 Off. Gaz. Pat. Office 95 (Aug. 
21, 2007). The public was invited to submit written comments. Comments 
were to be received on or before September 30, 2007. Comments received 
on or before October 15, 2007, were considered. Comments received after 
October 15, 2007, were not considered.
    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) (2007).
    Existing rules in Part 41 are denominated as ``Rule 41.x'' in this 
supplementary information. A reference to Rule 41.3 is a reference to 
37 CFR 41.3 (2007).
    Proposed rules in the notice of proposed rulemaking and this final 
rule are denominated as ``Bd.R. x'' in this supplementary information. 
A reference to Bd.R. 41.3 is a reference to Bd.R. 41.3, as proposed to 
be amended in the notice of proposed rulemaking, or Bd.R. 41.3 as 
amended by this final rule.
    A portion of the Board's jurisdiction is to consider and decide ex 
parte appeals in patent applications (including reissue, design and 
plant patent applications) and ex parte reexamination proceedings.
    Presently, the Board is experiencing a rapid increase in ex parte 
appeals. In FY 2007, the Board received 4639 ex parte appeals. The 
number of appeals received in FY 2007 exceeded the appeals received in 
FY 2006 by more than 1000 appeals. In FY 2008, the Board expects to 
receive more than 6000 ex parte appeals. The amendments to the rules 
governing ex parte appeals are one item of a five point plan to ensure 
that the Board will be able to handle an increasing number of ex parte 
appeals in a timely manner. Some of the changes are modeled after the 
Federal Circuit rules.
    The amended rules make clear that the Board is not a tribunal for 
de novo examination. The rules establish procedures to determine 
whether an appellant has established that the examiner erred. For 
example, the rules require the appellant's argument shall explain why 
the examiner is believed to have erred as to each rejection to be 
reviewed. Arguments not made are waived.
    A major objective of the amended rules is to avoid unnecessary 
returns to examiners by the Appeals Center and the Board, along with 
the resulting delays in application and appeal pendency. The 
requirements of the amended rules are believed to be more objective 
and, therefore, both appellants and examiners will have a better 
understanding of what is required, thereby minimizing, if not 
eliminating, a need to hold appeal briefs defective. If a rule does not 
require an action to be taken in connection with an appeal brief, then 
a brief will not be held defective for failure to take that action. 
Some former rules have turned out in practice to be too subjective. For 
example, the former rules require a summary of the invention. 
Appellants, as well as examiners, have given different interpretations 
to the requirement for a summary of the invention. The amended rules 
replace the requirement for a summary of the invention with a claims 
and drawing analysis and a means or step plus function analysis. 
Appellants have also had difficulty complying with the evidence 
appendix requirement. Compliance with the amended rules is expected to 
ensure that the Appeals Center and the Board, working together, can 
minimize, possibly eliminate, unwarranted returns to examiners based on 
non-compliant appeal brief requirements.
    The amended rules are directed to improving appellant briefing. A 
30-page limit for the brief will promote concise and precise writing. 
Any statement of the real party in interest, statement of related 
cases, table of contents, table of authorities, status of amendments, 
jurisdictional statement, signature block, and appendix are excluded 
from the 30-page limit. The amended rules also require a ``statement of 
facts'' section where the appellant is required to set out the material 
facts relevant to the rejections on appeal.
    The amended rules require an ``argument'' section where an 
appellant shall explain why the examiner is believed to have erred as 
to each rejection to be reviewed. Any explanation must address all 
points made by the examiner with which the appellant disagrees and must 
identify where the argument was made in the first instance to the 
examiner or state that the argument has not previously been made to the 
examiner. By having a clear focus on the dispute and making clear what 
arguments have been and have not been presented to the examiner, the 
USPTO reviewers as well as the examiner can make a well-informed 
decision on (1) whether to proceed with the appeal or (2) whether to 
withdraw the rejection.
    Finally, the amended rules improve uniform enforcement of the 
rules. Petitions are decided by the Chief Administrative Patent Judge 
of the Board. Under former rules, petitions are decided by the Director 
of each Technology Center. The rules also allow for sanctions which may 
be imposed against an appellant for failure to comply with an 
applicable rule.
    The rules do not amend any of the rules relating to inter partes 
reexamination appeals. Except for citation of authorities, the rules do 
not amend any of the rules relating to contested cases.

Explanation of New Rules

    What follows is a discussion of the new appeal rules. Further 
information relevant to particular rules appears in the analysis of 
comments portion of this final rule.

Definitions

    Bd.R. 41.2 amends Rule 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. Action by the Chief 
Administrative

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Patent Judge is action on behalf of the Director by delegation to the 
Chief Administrative Patent Judge. See MPEP Sec.  1002.02(f) (8th ed., 
Aug., 2006).
    Bd.R. 41.2 also amends Rule 41.2 to eliminate a petition under 
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 is amended to include a delegation of authority from the 
Director to the Chief Administrative Patent Judge to decide certain 
petitions authorized by Part 41. The delegation of authority would be 
in addition to that already set out in the MPEP 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) enlarging the page limit of an appeal brief, reply 
brief, or request for rehearing.
    Bd.R. 41.3(b) is amended to define the scope of petitions which can 
be filed pursuant to the rules. Under 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 (CCPA 1962).

Timeliness

    Bd.R. 41.4(c) is amended 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 amendment restricts 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.

Citation of Authority

    The notice of proposed rulemaking did not propose a change to Bd.R. 
41.12 which concerns citation of authority. Rule 41.12 currently 
requires the public to cite to specific reporters, including some 
parallel citations. The Board, however, no longer follows the practice 
specified in Rule 41.12, and does not use parallel citations. 
Accordingly, Bd.R. 41.12 is being amended to make the rule consistent 
with Board practice and minimize the citation burden on the public. 
Under Bd.R. 41.12, as amended, a citation to a single source, in the 
priority order set out in the rule, will be sufficient.

Definitions

    Bd.R. 41.30 is amended to add a definition of ``Record.'' The 
Record on appeal would be the official content of the file of an 
application or reexamination proceeding on appeal. In the rules, a 
reference to ``Record'' with a capital R is a reference to the Record 
as defined in Bd.R. 41.30. The definition advises applicants of what 
documents the Board will consider in resolving the appeal. The 
definition also makes it clear to any reviewing court what record was 
considered by the Board.

 Appeal to Board

    Bd.R. 41.31(a) provides 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: ``An appeal is taken from 
the decision of the examiner mailed [specify date appealed rejection 
was mailed].'' An appeal can be taken when authorized by the statute 35 
U.S.C. 134. The provision of Rule 41.31(b) that a notice of appeal need 
not be signed has been removed. Papers filed in connection with an 
appeal, including the notice of appeal, would need to be signed in 
accordance with Sec.  1.33 of this title.
    Bd.R. 41.31(b) requires that the notice of appeal be accompanied by 
the fee required by law and would refer to the rule that specifies the 
required fee.
    Bd.R. 41.31(c) specifies 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.
    Bd.R. 41.31(d) provides that a request for an extension of time to 
file a notice of appeal in an application is governed by Rule 136(a). 
Bd.R. 41.31(d) also provides 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).
    Bd.R. 41.31(e) defines 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 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 the page limit and (2) a petition to 
extend the 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. For example, Rule 1.181(f) provides that any 
petition under Rule 181 not filed within two months of the mailing date 
of the action or notice from which relief is requested may be dismissed 
as untimely. The object of the amendment to the rule is 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 intends to 
strictly enforce the waiver provisions of Bd.R. 41.31(e) 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

    Bd.R. 41.33(a) provides 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.
    Bd.R. 41.33(b), under two circumstances, gives the examiner 
discretion to enter an amendment filed with or after an appeal brief is 
filed. 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.
    Bd.R. 41.33(c) provides that all other amendments filed after the 
date an appeal brief is filed will not be admitted, except as permitted 
by (1) Bd.R. 41.50(b)(1) (request for amendment after remand), (2) 
Bd.R.

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41.50(d)(1) (request to reopen prosecution after entry of new ground of 
rejection by the Board), and (3) Bd.R. 41.50(e) (amendment after 
recommendation by the Board).
    Bd.R. 41.33(d) provides that evidence filed after a notice of 
appeal is filed and before an appeal brief is filed may be admitted if 
(1) the examiner determines that the evidence overcomes at least one 
rejection 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, the 
Office would strictly apply the good cause standard. Cf. Hahn v. Wong, 
892 F.2d 1028 (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 at least one rejection. Even where good 
cause is shown, if the evidence does not overcome at least one 
rejection, the evidence would not be admitted. Alternatively, the 
examiner could determine that the evidence does not overcome at least 
one rejection under appeal and does not necessitate any new ground of 
rejection and on that basis alone could refuse to admit the evidence.
    Bd.R. 41.33(e) provides that evidence filed after an appeal brief 
is filed will not be admitted except as permitted by (1) Bd.R. 
41.50(b)(1) (request to reopen prosecution after entry of a remand by 
the Board), and (2) Bd.R. 41.50(d)(1) (request to reopen prosecution 
after new ground of rejection entered by the Board).

Jurisdiction Over Appeal

    Bd.R. 41.35(a) provides that the Board acquires jurisdiction when 
the Board mails a docket notice. At an appropriate time after 
proceedings are completed before the examiner, a docket notice 
identifying the appeal number would be entered in the application or 
reexamination proceeding file and mailed to the appellant. A new docket 
notice identifying a new appeal number would be mailed upon return of 
the case to the Board following remand. 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 transfers to 
the Board only after (1) the appellant has filed an appeal brief, (2) 
the examiner's answer has been mailed, and (3) the appellant has filed 
a reply brief or the time for filing a reply brief has expired. Rule 
41.35(a) provides that the Board acquires jurisdiction upon transmittal 
of the file, including all briefs and examiner's answers, to the Board. 
Under that practice, however, 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 a paper file 
wrapper. Accordingly, a paper file wrapper 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) mailed to appellant. Upon 
receipt of the docket notice, appellant knows that the Board has 
acquired jurisdiction over the appeal. Bd.R. 41.35(a) codifies current 
practice and establishes a precise date, known to all involved, as to 
when jurisdiction is transferred to the Board.
    Bd.R. 41.35(b) provides that the jurisdiction of the Board ends 
when (1) the Board mails a remand order (see Sec.  41.50(b) or Sec.  
41.50(d)(1)), (2) the Board mails a final decision (see Sec.  41.50(a) 
and judicial review is sought or the time for seeking judicial review 
has expired, (3) an express abandonment is filed which complies with 
Sec.  1.138 of this title, or (4) a request for continued examination 
is filed which complies with Sec.  1.114 of this title. The Board knows 
when it mails a remand order and when it mails a final decision. The 
Board does not know if an express abandonment or a request for 
continued examination is filed. One problem the Board has had in the 
past is that an appellant does not notify the Board that it has filed 
an express abandonment or a request for continued examination and the 
Board continues to work on the appeal. Often failure to notify occurs 
after oral hearing. Accordingly, an appellant should notify the Board 
immediately if an express abandonment or a request for continued 
examination is filed. If any notification reaches the Board after a 
remand order or a final decision is mailed, the remand order or final 
decision will not be removed from the file.
    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 Bd.R. 41.50(b). Second, a remand is 
entered when an appellant elects further prosecution before the 
examiner following entry of a new ground of rejection by the Board. See 
Bd.R. 41.50(d)(1). Upon entry of a remand, the Board's jurisdiction 
ends.
    The Board also no longer has 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, 939 (CCPA 1940) and In re Graves, 69 F.3d 1147, 
1149 (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 Rule 
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 remand or a new ground of rejection 
is an interlocutory order and is not a final decision. If an appellant 
elects to ask for rehearing to contest a new ground of 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 has been mailed. 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

    Bd.R. 41.37 provides for filing an appeal brief to perfect an 
appeal and sets out the requirements for appeal briefs. The appeal 
brief is a highly significant document in an ex parte appeal. Appeal 
brief experience under Rule 41.37 has been mixed. Bd.R. 41.37 seeks to 
(1) take advantage of provisions of Rule 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.

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    Bd.R. 41.37(a) provides that an appeal brief shall be filed to 
perfect an appeal. Upon a failure to timely file an appeal brief, 
proceedings on the appeal would be considered terminated. The language 
``without further action on the part of the Office'' gives notice that 
no action, including entry of a paper by the Office, would be necessary 
for the appeal to be considered terminated. Bd.R. 41.37(a) does 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'' provides 
notice that when (1) no appeal brief is filed and (2) no claims are 
allowed, the time for filing a continuing application under 35 U.S.C. 
120 would be before the time expires for filing an appeal brief. The 
language ``terminated'' is used because proceedings on appeal are over 
prior to mailing of a docket notice pursuant to Bd.R. 41.35(a). 
Dismissal of an appeal takes place after a docket notice is mailed 
since only the Board dismisses an appeal (Bd.R. 41.35(b)(2)).
    Bd.R. 41.37(b) provides that the appeal brief shall be accompanied 
by the fee required by Bd.R. 41.20(b)(2).
    Bd.R. 41.37(c) provides that an appellant must file an appeal brief 
within two months from the filing of the notice of appeal.
    Bd.R. 41.37(d) provides that 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.
    Bd.R. 41.37(e) provides 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) [reserved], (7) status of amendments, (8) grounds 
of rejection to be reviewed, (9) statement of facts, (10) argument, and 
(11) an appendix containing (a) claims section, (b) claim support and 
drawing analysis section, (c) means or step plus function analysis 
section, (d) evidence section, and (e) related cases section. The items 
are otherwise defined in other subsections of Bd.R. 41.37 and, where 
applicable, would apply to appeal briefs and reply briefs (Bd.R. 
41.41).
    Bd.R. 41.37(f) requires 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 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. If an 
appeal brief does not contain a statement of real party in interest, 
the Office will assume that the named inventors are the real party in 
interest.
    Bd.R. 41.37(g) requires 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 any inventors, any attorneys or agents who 
prepared or prosecuted the application on appeal and any other person 
who was substantively involved in the preparation or prosecution of the 
application on appeal. A related case is one which would 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 in the appendix (Bd.R. 41.37(u)). A significant 
interlocutory decision would include (1) a decision on a patentability 
motion in an interference or (2) a decision in an interference or a 
court interpreting a claim. A related case includes any continuing 
application of the application on appeal. If an appellant fails to 
advise the Board that it has filed a continuing application or a 
request for continued examination, or that it has filed an express 
abandonment of the application on appeal and the Board mails a decision 
on appeal in the application on appeal, the appellant should expect 
that the decision will not be removed from the file. The time to update 
a statement of related cases, or notify the Board that an application 
on appeal has been abandoned, is when the continuing application, 
request for continued examination, or express abandonment is filed. 
Appellant would be under a continuing obligation to update a statement 
of related cases during the pendency of the appeal. If an appeal brief 
does not contain a statement of related cases, the Office will assume 
that there are no related cases.
    Bd.R. 41.37(h) requires an appeal brief to contain a 
``jurisdictional statement'' which would set out why an 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, the 
appellant also would have to indicate (1) the date an extension of time 
was requested, and (2) if known, the date the request was granted. A 
jurisdictional statement will minimize the chance that the Board will 
consider an appeal when the application on appeal is abandoned or a 
reexamination proceeding on appeal has terminated. An example of a 
jurisdictional statement is: ``The Board has jurisdiction under 35 
U.S.C. 134(a). The Examiner mailed a final rejection on August 1, 2006, 
setting a three-month shortened statutory 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, the appellant could then take steps 
to revive the application, if revival is appropriate. See Rule 137.
    Bd.R. 41.37(i) requires an appeal brief to contain a ``table of 
contents'' identifying the items listed in 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

[[Page 32942]]

identify the items required by the reply brief rule (Bd.R. 41.41(d)).
    Bd.R. 41.37(j) requires 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.
    Bd.R. 41.37(k) is reserved.
    Bd.R. 41.37(l) requires 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: (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.''
    Bd.R. 41.37(m) requires an appeal brief to set out the grounds of 
rejection to be reviewed, including the claims subject to each 
rejection. Examples might read as follows: (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.''
    Bd.R. 41.37(n) requires a ``statement of facts.'' Appellant will 
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 significant requirement of Bd.R. 41.37(n) is that a fact would be 
required to be supported by a reference to the page number of the 
Record. Where appropriate, the citation should also be to a specific 
line or paragraph and to a drawing figure and element number of the 
Record (see 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 
(col. 4, lines 1-4).'' ``Jones describes a widget (col. 5, lines 56-61 
and Figure 1, elements 12 and 13).'' A compound statement of fact is 
not proper, e.g., ``Jones describes a widget (col. 8, lines 3-4) and 
Smith does not describe a widget.'' 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 section 103, 
the facts should address at least the 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 or paragraph (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 (Bd.R. 41.37(t)) in the appendix.
    A specific citation is required 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. Bd.R. 
41.37(n) 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 
(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 (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 Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1351 (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).
    Bd.R. 41.37(o) requires that an appeal brief contain an argument 
comprising an analysis explaining, as to each rejection to be reviewed, 
why the appellant believes the examiner erred. 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 (1) 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 (2) 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 have been previously made to an examiner might occur under the 
following fact scenario. A first Office action rejects claims over 
Reference A. Applicant amends the

[[Page 32943]]

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 as a condition to taking an appeal to the 
Board. Whether such a requirement should be made in the future will be 
held in abeyance pending experience under the rules. 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, Bd.R. 
41.37(o) also requires that each rejection for which review is sought 
shall be separately argued under a separate heading. Also, Bd.R. 
41.37(o) provides that any finding made or conclusion reached by the 
examiner that is not challenged would be presumed to be correct.
    Bd.R. 41.37(o)(1) provides that when a ground of rejection applies 
to two or more claims, the claims may be argued separately (claims are 
considered by appellant as separately patentable) or as a group (claims 
stand or fall together). When two or more claims subject to the same 
ground of rejection are argued as a group, the Board may select a 
single claim from the group of claims that are argued together and 
decide the appeal on the basis of the selected claim alone with respect 
to the group of claims as to the ground of rejection. Any doubt as to 
whether an election has been made would be resolved against the 
appellant and the claims would be deemed to have been argued as a 
group.
    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 will 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 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 should 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'' (Bd.R. 41.37(p)). In an 
application containing claims 1-3 where the examiner has made (1) a 
Sec.  102 rejection or (2) a Sec.  103 rejection or (3) both a Sec.  
102 and Sec.  103 rejection, examples of a proper statement of ``claims 
standing or falling together'' would be as follows: (1) ``With respect 
to the rejection under Sec.  102, claims 1-3 stand or fall together.'' 
(2) ``With respect to the rejection under Sec.  103, claims 1-2 stand 
or fall together; claim 3 is believed to be separately patentable.'' 
(3) ``With respect to the rejection under Sec.  102, claims 1-2 stand 
or fall together; claim 3 is believed to be separately patentable. With 
respect to the rejection under Sec.  103, the claims stand or fall 
together.''
    Bd.R. 41.37(o)(2) provides 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 and drawing 
analysis section in 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 rely on the affidavit in the argument section of 
the appeal brief. The Board would not consider the affidavit in 
deciding the appeal.
    Bd.R. 41.37(o)(3) requires 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 or state 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 or 
paragraph, of the Record. Examples of argument formats that are 
acceptable under 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 is acceptable under 
Bd.R. 41.37(o)(3). ``The examiner states that Reference A teaches 
element B. Final Rejection mailed [insert date], page x, lines y-z. 
In response, appellant previously pointed out to the examiner why 
the examiner is believed to have erred. Amendment filed [enter 
date], 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 Bd.R. 41.37(o)(3). ``In response to the examiner's 
reliance on Reference C for the first time in the final rejection 
(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.

    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 in the appendix 
would include all pending claims, not just those under rejection. The 
status of each claim would have to be indicated, (e.g., 1 (rejected), 2 
(withdrawn), 3 (objected to), 4 (cancelled), and 5 (allowed)).
    Bd.R. 41.37(q) is reserved.
    Bd.R. 41.37(r) requires an appeal brief to contain a ``claim 
support and drawing analysis section.''
    The claim support portion of Bd.R. 41.37(r) replaces Rule 
41.37(c)(1)(v) which required a concise explanation of the subject 
matter defined in each of the independent claims on appeal. The claim 
support section, for each independent claim involved in the appeal and 
each dependent claim argued separately (see Bd.R. 41.37(o)(1)), would 
consist of an annotated copy of the claim indicating in bold face 
between braces ({ {time} ) after each limitation where, by page and 
line or paragraph 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 Bd.R. 41.37(p)), only those independent claims 
and dependent claims being argued separately, would need to appear in 
the ``claim support and drawing analysis section.'' A significant 
objective of the claim support requirement is 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 requirement will help the Board

[[Page 32944]]

interpret the scope of claims, or the meaning of words in a claim, 
before applying the prior art. Practice under Rule 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 rule.
    One significant problem faced by the Board under Rule 
41.37(c)(1)(v) 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 requirement will give the 
examiner and the Board the appellant's view on where the claim is 
supported by the application, as filed. The requirement is expected to 
significantly improve the efficiency of the Board's handling of 
appeals.
    The ``claims support and drawing analysis section'' also requires 
for each independent claim on appeal and each dependent claim argued 
separately (see Bd.R. 41.37(o)(1)), that a drawing analysis consist of 
an annotated copy of the claim in numerical sequence, indicating in 
bold face between braces ({ {time} ) (the same braces used to identify 
references to the specification) 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 requirement is 
expected to be equally useful in ex parte appeals.
    Bd.R. 41.37(s) requires an appeal brief to contain a ``means or 
step plus function analysis section.'' The means or step plus function 
analysis section replaces the requirement of Rule 41.37(c)(1)(v) 
relating to identification of structure, material or acts for means or 
step plus function claim limitations contained in appealed claims. 
Under Bd.R. 41.37(s), the means or step plus function analysis section 
would include each independent claim and each dependent claim argued 
separately (see 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.
    The Office is requiring 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 Rule 41.37(c)(1)(v). A 
means or step plus function analysis essentially tracking Bd.R. 
41.37(s) has been used in interference cases since 1998 and has been 
helpful in determining the scope of claims involved.
    Bd.R. 41.37(t) would require an appeal brief to contain an 
``evidence section'' in the appendix. The evidence section essentially 
continues the practice under Rule 41.37(c)(1)(ix). The evidence section 
would include (1) table of contents, (2) affidavits and declarations 
upon which the appellant relied before the examiner, (3) other evidence 
upon which the appellant relied before the examiner, and (4) evidence 
relied upon by the appellant and admitted into the file pursuant to 
Bd.R. 41.33(d).
    Documents in the evidence appendix would not have to be reformatted 
to comply with format requirements of the appeal brief. However, the 
affidavits, declarations and evidence required by Bd.R 41.37(t) which 
is otherwise mentioned in the appeal brief, but which does not appear 
in the evidence section will not be considered. Rule 41.37(c)(1)(ix) 
has a similar provision, but appellants have not attached the evidence 
appendix required by that rule. Appellants will now be on notice of the 
consequence of failing to comply with Bd.R. 41.37(t).
    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 Bd.R. 41.37(v)(1), all 
pages of an appeal brief or a reply brief (including appendices to 
those briefs) will be consecutively numbered beginning with page 1.
    Bd.R. 41.37(u) requires an appeal brief to contain a ``related 
cases section'' in the appendix. The related cases section consists of 
copies of orders and opinions required to be cited pursuant to Bd.R. 
41.37(g).
    Bd.R. 41.37(v) requires 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 Bd.R. 
41.37(v)(1), (2) and (4) through (6).
    Bd.R. 41.37(v)(1) requires that the pages of an appeal brief, 
including all sections in the appendix, be consecutively numbered using 
Arabic numerals beginning with the first page of the appeal brief, 
which would be numbered page 1. This practice would prevent (1) re-
starting numbering with each section in 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. If an appellant 
chooses to number the lines, line numbering may be within the left 
margin. 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.
    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, but could be presented in double spaced 
or space and a half format. Footnotes, which are discouraged, would be 
double spaced.
    Bd.R. 41.37(v)(3) is reserved.
    Bd.R. 41.37(v)(4) requires that the font size be 14 point, 
including the font for block quotations and footnotes.
    Bd.R. 41.37(v)(5) provides that an appeal brief may not exceed 30 
pages, excluding any (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 amendments, (7) 
signature block and (8) appendix. To give meaning to the 30-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

[[Page 32945]]

minimized the chance that an argument is overlooked.
    A request to exceed the 30-page limit would be made by petition 
under Bd.R. 41.3 at least ten calendar days prior to the date an appeal 
brief is due.
    Bd.R. 41.37(v)(6) requires 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

    Bd.R. 41.39(a) provides 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.
    Bd.R. 41.39(b) provides that a new ground of rejection can no 
longer be made in the examiner's answer.
    Generally, a new ground of rejection in an Examiner's Answer occurs 
when an applicant has not had a fair opportunity in the appeal brief to 
react to the ``thrust of the rejection'' made in the final rejection. 
In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976). Stated in slightly 
different terms, a test for determining whether a rejection in the 
Examiner's Answer is ``new'' vis-[agrave]-vis the rejection made in the 
final rejection is whether the ``basic thrust'' of ``rejection'' in the 
Examiner's Answer and the rejection made in the final rejection ``are 
different.'' In re Ansel, 852 F.2d 1294 (Fed. Cir. 1988) (non-
precedential). In re DeBlauwe, 736 F.2d 699, 706 n.9 (Fed. Cir. 1984) 
notes that ``[w]here the board makes a decision advancing a position or 
rationale new to the proceedings, an applicant must be afforded an 
opportunity to respond to that position or rationale by submission of 
contradicting evidence [or argument].'' Whether a new ground of 
rejection has been made in an Examiner's Answer is evaluated on a case-
by-case basis. See Kronig, 539 F.2d at 1303 (CCPA did not find cited 
precedent ``controlling in view of the distinctive facts at bar''). An 
applicant met with a new ground of rejection in an Examiner's Answer is 
entitled to a response to meet the new ground, including an opportunity 
to present new evidence, an amendment to claims or both. In Kronig, 
there was no new ground of rejection where (1) the Examiner relied on 
Hoechst, Holzrichter, Yasui and Swift patents and (2) the Board used 
the same basis as the Examiner, and, without disagreeing with the 
Examiner's approach, limited its discussion to the evidence contained 
in Holzrichter, Yasui and Swift. 539 F.2d at 1303. On the other hand in 
Ansel, a new ground of rejection occurred when (1) the Examiner relied 
on Hodakowski and Bhatia, (2) the Board dismissed Bhatia as 
superfluous, and (3) for the first time relied on a general and brief 
description in Hodakowski as to what Hodakowski considered prior art. 
In re Bush, 296 F.2d 491 (CCPA 1961), states that where a ``rejection 
is stated to be on A in view of B instead of on B in view of A, or to 
term one reference primary and the other secondary'' is a matter of 
``no significance, but merely a matter of exposition'' where the 
relevant part of each can be found. 296 F.2d at 760. In re Kumar, 418 
F.3d 1361 (Fed. Cir. 2005), held that the Board erred in not treating 
as a new ground of rejection an affirmance based on calculations made 
by the Board in the first instance and where the Board declined to 
consider evidence in a petition for rehearing. In In re Gately, 69 Fed. 
Appx. 993 (Fed. Cir. 2003) (non-precedential), the Board designated as 
a new ground of rejection an affirmance based on calculations not 
previously made. In a request for rehearing to the Board, Gately 
elected to present only argument. On appeal to the Federal Circuit, 
Gately urged that he be given a further opportunity on remand to 
present contrary evidence. The Federal Circuit denied Gately's request, 
noting that the Board had given Gately the very opportunity he was then 
requesting, but that Gately had declined the opportunity before the 
Board. Under the rules, an applicant does not have to file a Rule 116 
response after a final rejection citing a new reference to meet a 
limitation in a claim amended by the applicant in response to the first 
Office action. If the response to the new reference is made for the 
first time in the appeal brief, it would not be a new ground of 
rejection in an Examiner's Answer if the Examiner relies on any part of 
the record, or yet another reference, to meet the new argument made for 
the first time in the appeal brief. Cf. In re Plockinger, 481 F.2d 
1327, 1330-1332 (CCPA 1973) (``the Solicitor should be allowed to point 
out to us the facts underlying Peras' concept of the index of basicity, 
all of which were before the board, in order to rebut appellants' 
contentions with regard thereto.''). Appellants can avoid the 
Plockinger scenario by filing a Rule 116 response after final 
rejection. By not filing a Rule 116 response after final rejection, an 
appellant runs a risk that it will be confronted for the first time in 
the Examiner's Answer with new rationale in support of the rejection or 
new evidence or both. The appellant would then have to elect whether to 
proceed with the appeal or refile the application.

Reply Brief

    Bd.R. 41.41(a) provides that an appellant may file a single reply 
brief responding to the examiner's answer. On too many occasions, 
appellants have filed a first reply brief and thereafter a second reply 
brief. Only one reply brief is authorized under Bd.R. 41.41(a). A 
second reply brief will not be considered.
    Bd.R. 41.41(b) provides that the time for filing a reply brief 
would be within two months of the date the examiner's answer is mailed.
    Bd.R. 41.41(c) provides that a request for an extension of time 
shall be presented as a petition under Bd.R. 41.3(a) and (c). A 
decision on the petition shall be governed by Bd.R. 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.
    Bd.R. 41.41(d) provides that a reply brief shall be limited to 
responding to points made in the examiner's answer. Except as otherwise 
set out in the rules, the form and content of a reply brief would be 
governed by the requirements for an appeal brief as set out in Bd.R. 
41.37. A reply brief would not be able to exceed 20 pages, excluding 
any (1) table of contents, (2) table of authorities, and (3) signature 
block. A reply brief would be required to contain, under appropriate 
headings and in the order indicated, the following items: (1) Table of 
contents, (2) table of authorities, (3) statement of additional facts, 
and (4) argument.
    Bd.R. 41.41(e) is reserved.
    Bd.R. 41.41(f) would require a statement of additional facts that 
appellant believes are necessary to respond to points raised in the 
examiner's answer. When there is a statement of additional facts, and 
the appellant has elected to number the facts in the appeal brief, any 
numbering of facts in the reply brief should start with the number 
following the last number in the appeal brief. For example, if Facts 1-
10 are set out in the appeal brief and a statement of additional facts 
is required with a reply brief, the statement of additional facts in 
the reply brief should start with Fact 11.
    Bd.R. 41.41(g) requires that an argument made in the reply brief be 
limited to responding to points made in the examiner's answer. Any 
argument raised in a reply brief which is not

[[Page 32946]]

responsive to a point made in the examiner's answer will not be 
considered and will be treated as waived. An example of an acceptable 
format for presenting an argument in a reply brief (where there was no 
new ground of rejection in the examiner's answer) might read as 
follows: First paragraph: ``This is a reply to the examiner's answer 
mailed [insert the date the answer was mailed].'' 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 should read: ``On page x, lines y-z of the 
examiner's answer, the examiner states that [state what the examiner 
states]. The response is [concisely state the response].'' As part of 
each response, the appellant should refer to the page number and line 
or paragraph and drawing element number of any document relied upon to 
support the response. Frequently, new details and arguments surface in 
reply briefs. Bd.R. 41.41(g) seeks to confine reply briefs to what they 
ought to be--a response to points raised in the examiner's answer. If 
it turns out that too many resources of the Office are needed to 
enforce the reply brief rule and considerable time is wasted in 
resolving improper reply brief issues, consideration may be given to 
further limiting the nature of replies filed in ex parte appeals.
    Bd.R. 41.41(h) is reserved.
    Bd.R. 41.41(i) provides that an amendment or new evidence may not 
accompany a reply brief. The Office has found that appellants continue 
to attempt to file amendments and evidence with reply briefs. If an 
appellant, after reviewing the examiner's answer, believes that an 
amendment is appropriate, the appellant may file a continuing 
application or a request for continued examination or, in the case of a 
reexamination proceeding, ask that the proceeding be reopened.

Examiner's Response to Reply Brief

    Bd.R. 41.43 is reserved. An examiner will no longer be responding 
to a reply brief.

Supplemental Reply Brief

    Bd.R. 41.44 is reserved. A supplemental reply brief is no longer 
authorized because the examiner will no longer be filing a response to 
a reply brief.

Oral Hearing

    Bd.R. 41.47(a) provides that if the appellant desires an oral 
hearing, appellant must file, as a separate paper, a written request 
captioned: ``REQUEST FOR ORAL HEARING.''
    Bd.R. 41.47(b) provides that a request for oral hearing shall be 
accompanied by the fee required by Sec.  41.20(b)(3).
    Bd.R. 41.47(c) provides that the time for filing a request for an 
oral hearing would be within two months from the date the examiner's 
answer is mailed.
    Bd.R. 41.47(d) provides that a request for an extension of time to 
request an oral hearing would have to be presented as a petition as 
specified in Bd.R. 41.3(a) and (c). A decision on the petition shall be 
governed by Bd.R. 41.4(a).
    Bd.R. 41.47(e) provides that if an oral hearing is properly 
requested, a date for the oral hearing would be set.
    Bd.R. 41.47(f) provides that if an oral hearing is set, then within 
such time as the Board may order, appellant shall conf