Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals; Request for Comments on Potential Modifications to Final Rule and Notice of Roundtable During Comment Period, 67987-68004 [E9-30402]

Agencies

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

[Federal Register Volume 74, Number 244 (Tuesday, December 22, 2009)]
[Proposed Rules]
[Pages 67987-68004]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E9-30402]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 41

[Docket No.: PTO-P-2009-0021]
RIN 0651-AC37


Rules of Practice Before the Board of Patent Appeals and 
Interferences in Ex Parte Appeals; Request for Comments on Potential 
Modifications to Final Rule and Notice of Roundtable During Comment 
Period

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Advance notice of proposed rule making; request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) is considering modifications to rules governing practice before 
the Board of Patent Appeals and Interferences (BPAI) in ex parte patent 
appeals. Previously submitted comments with regard to an earlier 
published final rule, particularly those submitted in response to a 
proposed collection of information, raised some public concerns which 
have been reconsidered by the Office. After further consideration of 
these concerns, the Office is issuing this notice seeking further 
public comment on possible revisions to portions of the final rule. In 
order to facilitate a full exchange of views, the United States Patent 
and Trademark Office is also conducting a public session and roundtable 
in connection with this request for comments. Following the public 
comment period, if the Office

[[Page 67988]]

determines further action is necessary, a subsequent notice of proposed 
rule making would be issued to solicit additional comments on specific 
proposals before any modified final rule would be issued.

DATES: The roundtable is scheduled to be held on January 20, 2010, 
beginning at 9:30 a.m. and ending at 12:30 p.m. In the event of 
inclement weather or other reason for cancellation or delay, the public 
is advised to check the USPTO, Board of Patent Appeals and 
Interferences Web site for the latest roundtable scheduling information 
(https://www.uspto.gov/patents/process/appeal/).
    The deadline for receipt of requests to participate in the 
roundtable is 5 p.m. Eastern Standard Time on January 8, 2010.
    The deadline for receipt of written comments on potential 
modifications to the final rule is 5 p.m. Eastern Standard Time on 
February 12, 2010.
    Additionally, the USPTO will accept written comments on other 
matters discussed at the roundtable until 5 p.m. Eastern Standard Time 
on February 25, 2010.
    Because the USPTO is now considering the final rule anew, and in 
light of potential modifications to the final rule, appeal briefs filed 
on or after January 21, 2010 must comply with the current rules in 
effect.

ADDRESSES: The roundtable will be held at the USPTO, in the Madison 
Auditorium on the concourse level of the Madison Building, which is 
located at 600 Dulany Street, Alexandria, Virginia.
    Requests to participate at the roundtable are required and must be 
submitted by electronic mail message through the Internet to 
linda.horner@uspto.gov. Requests to participate at the roundtable 
should indicate the following information: (1) The name of the person 
desiring to participate and his or her contact information (telephone 
number and electronic mail address); and (2) the organization(s) he or 
she represents.
    Written comments on potential modifications to the final rule 
should be sent by electronic mail message over the Internet addressed 
to BPAI.Rules@uspto.gov. Comments on potential modifications to the 
final rule may also be submitted by mail addressed to: Mail Stop 
Interference, Director of the United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the 
attention of ``Linda Horner, BPAI Rules.'' Although comments may be 
submitted by mail, the USPTO prefers to receive comments via the 
Internet.
    Written comments on general topics discussed at the roundtable 
should be sent by electronic mail message over the Internet addressed 
to BPAI.Roundtable@uspto.gov. Comments on general topics discussed at 
the roundtable may also be submitted by mail addressed to: Mail Stop 
Interference, Director of the United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the 
attention of ``Linda Horner, BPAI Gen. Topics.'' Although comments may 
be submitted by mail, the USPTO prefers to receive comments via the 
Internet.
    The written comments and list of the roundtable participants and 
their associations will be available for public inspection at the Board 
of Patent Appeals and Interferences, located in Madison East, Ninth 
Floor, 600 Dulany Street, Alexandria, Virginia, and will be available 
via the USPTO Internet Web site (address: https://www.uspto.gov/web/offices/dcom/bpai/). Because comments will be made available for public 
inspection, information that is not desired to be made public, such as 
an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Linda Horner, Administrative Patent 
Judge, Board of Patent Appeals and Interferences, by telephone at (571) 
272-9797, or by mail addressed to: Mail Stop Interference, Director of 
the United States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, VA 22313-1450, marked to the attention of Linda Horner.

SUPPLEMENTARY INFORMATION:

Background

    The United States Patent and Trademark Office (USPTO or Office) 
published a notice of proposed rule making governing practice before 
the Board of Patent Appeals and Interferences (BPAI) in ex parte patent 
appeals (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.
    A final rule making was then published in the Federal Register (73 
FR 32937-32977 (Jun. 10, 2008)). The final rule that was published on 
June 10, 2008, may be viewed at https://www.uspto.gov/web/offices/com/sol/notices/73fr32938.pdf. The final rule stated that the effective 
date was December 10, 2008, and that the final rule would apply to all 
appeals in which an appeal brief was filed on or after the effective 
date. On June 9, 2008, the Office published a 60-Day Federal Register 
notice requesting the Office of Management and Budget (OMB) to 
establish a new information collection for BPAI items in the final rule 
and requesting public comment on the burden impact of the final rule 
under the provisions of the Paperwork Reduction Act (PRA). On October 
8, 2008, the Office published a 30-Day Federal Register notice stating 
that the proposal for the collection of information under the final 
rule was being submitted to OMB and requesting that comments on the 
proposed information collection be submitted to OMB. Because the 
information collection process had not been completed by the original 
effective and applicability date of the final rule, the Office 
published a Federal Register notice (73 FR 74972 (December 10, 2008)) 
notifying the public that the effective and applicability date of the 
final rule was not December 10, 2008, and that the effective and 
applicability dates would be identified in a subsequent notice.
    Additionally, on January 20, 2009, the Assistant to the President 
and Chief of Staff instructed agencies via a memorandum entitled, 
``Regulatory Review,'' to consider seeking comments for an additional 
30 days on rules that were published in the Federal Register and had 
not yet become effective by January 20, 2009. On January 21, 2009, the 
Office of Management and Budget issued a memorandum, ``Implementation 
of Memorandum Concerning Regulatory Review,'' which provided agencies 
further guidance on such rules that had not yet taken effect. For such 
rules, both memorandums stated that agencies should consider reopening 
the rule making process to review any significant concerns involving 
law or policy that have been raised.
    The USPTO is now considering further modifications to the rules of 
practice before the Board of Patent Appeals and Interferences in ex 
parte appeals and is conducting a roundtable and publishing this 
request for comments to solicit input from interested members of the 
public on potential modifications to the final rule. The Office seeks 
comment both on potential modifications to the final rule and issues of 
law and policy raised by the final rule.
    The Office has further considered the comments thus far submitted 
and is considering changes to the final rule to significantly reduce 
any additional burden introduced by the final rule. The

[[Page 67989]]

continued delay of the effective and applicability dates and a new 
comment period are necessary to give the public additional time to 
comment on potential modifications to the final rule and to permit the 
Director to evaluate any additional comments to determine if the rules 
are consistent with administration policy.
    On November 20, 2008 [73 FR 70282], the Office published a 
clarification notice on the effective date provision. See Clarification 
of the Effective Date Provision in the Final Rule for Ex Parte Appeals, 
73 FR 70282 (November 20, 2008). The clarification notice states that 
the Office will not hold an appeal brief as non-compliant solely for 
following the new format set forth in the notice published on June 10, 
2008, in the Federal Register (Rules of Practice Before the Board of 
Patent Appeals and Interferences in Ex Parte Appeals; Final Rule, 73 FR 
32938 (June 10, 2008), 1332 Off. Gaz. Pat. Office 47 (July 1, 2008)). 
Because the USPTO is now considering the final rule anew, and in light 
of the potential modifications to the final rule, for purposes of 
consistency, the Office will now no longer accept appeal briefs in the 
new format. Therefore, appeal briefs filed on or after 30 days from the 
publication of this notice must comply with the current 37 CFR 41.37. 
For clarity, this notice refers to three sets of Board Rules: (1) The 
``current board rules'' published in 37 CFR 41.1 et seq. (2007); (2) 
the ``final rule'' published on June 10, 2008 [73 FR 32938], the 
effective date of which is delayed; and (3) potential modifications to 
the board rules published in this notice for the purpose of soliciting 
comments from the public. The current rules in effect are the current 
board rules as published in 37 CFR 41.1 et seq. (2007).
    Furthermore, the Office has posted a list of questions and answers 
on the USPTO Web site (at https://www.uspto.gov/web/offices/dcom/bpai/rule/faq_121008.html) regarding the implementation of the Board final 
rule. These questions and answers will be updated after the Office 
issues notice of the revised effective and applicability dates for the 
final rule. Previously submitted comments, particularly those submitted 
in response to the PRA notice [73 FR 32559], raised some public 
concerns which have been reconsidered by the Office. After further 
consideration of these concerns the Office is considering modifications 
to the final rule as follows below.

Public Participation

    In addition to these considerations to modify the final rule, the 
Office is also seeking comment on those portions of the final rule that 
are not being specifically considered for modification in this notice. 
After receiving comments from the public as a result of this notice, 
the Office would issue a notice of proposed rulemaking seeking 
additional feedback on proposed rule changes before any modifications 
to the final rule would take effect.
    The date for the roundtable has been set to occur during the 
comment period so that participants will have time to familiarize 
themselves with modifications to the final rule that are under 
consideration in advance of the roundtable so as to provide meaningful 
input to the USPTO and so that those submitting written comments will 
have the benefit of the discussion from the roundtable and adequate 
time after the roundtable to prepare and submit written comments. The 
public session will also include a presentation by the USPTO of the 
challenges, including an increased appeal workload, facing the Board of 
Patents Appeals and Interferences. It will discuss the results it hopes 
to achieve from any potential modifications to the final rule and will 
solicit input from the roundtable participants on how, beyond the 
procedural changes that are under consideration, to meet these 
challenges.
    The number of participants in the roundtable is limited to ensure 
that all who are speaking will have a meaningful chance to do so. The 
roundtable is open to the public, but participation in the roundtable 
is by request, as the number of participants in the roundtable is 
limited. The USPTO plans to invite a number of participants from patent 
user, practitioner, industry, and independent inventor organizations, 
academia, industry, and government. The USPTO also plans to have a few 
``at-large'' participants based upon requests received in response to 
this notice to ensure that the USPTO is receiving a balanced array of 
views on the potential modifications to the final rule. The USPTO will 
attempt to provide selected participants with notice at least seven 
days prior to the roundtable. While members of the public who wish to 
participate in the roundtable must do so by request, members of the 
public who wish solely to observe need not submit a request. Any member 
of the public, however, may submit written comments on issues raised at 
the roundtable or on potential modifications to the final rule under 
consideration by the USPTO.
    The USPTO plans to make the roundtable available via Web cast. Web 
cast information will be available on the USPTO's Internet Web site 
before the roundtable. The written comments and list of the roundtable 
participants and their associations will be posted on the USPTO's 
Internet Web site.
    This notice is not a publication of a final rule. After the public 
comment period, if the Office determines further action is necessary, a 
subsequent notice of proposed rule making will be issued to solicit 
additional comments on specific proposals before any modified final 
rule would be issued. The Office is publishing these possible 
modifications to the final rule for the purpose of soliciting comments 
from the public on these topics. The Office will also be accepting 
comments on other matters raised at the public session and roundtable.

Purpose for Potential Modifications to the Final Rule Under 
Consideration

    The Office is considering modifications to the final rule in an 
effort to efficiently frame any dispute between the appellant and the 
examiner for the benefit of the Board and the appeal conferees to 
provide the best opportunity for resolution of the dispute without the 
necessity of proceeding with the appeal, and in an effort to reduce the 
number of returns based on defective briefs. The Office is also 
considering further modifications to the final rule that would reserve 
(delete) certain sections of the final rule that place a burden on 
appellants appearing before the BPAI in ex parte appeals. The 
Supplementary Information in this notice provides: (1) An explanation 
of the possible modifications to the final rule (referred to herein as 
the ``potential modifications to the final rule'') under consideration, 
(2) a discussion of the differences between the potential modified 
final rule and the existing rule, and (3) a copy of potential 
modifications to the final rule under consideration.

Explanation of Potential Modifications to the Final Rule

    Several changes are being considered to the final rule as compared 
to the final rule as published in 73 FR 32937 (June 10, 2008). The 
possible changes under consideration include: (1) Deleting portions of 
the rule that require the filing of a petition to the Chief 
Administrative Patent Judge seeking extensions of time to file certain 
papers after an appeal brief is filed in an ex parte appeal or seeking 
to exceed a page limit; (2) deleting portions of the rule that require 
the filing of a jurisdictional statement, table of contents, table of 
authorities, and statement of facts in appeal briefs, a table of 
contents, table of authorities, and statement of additional facts in 
reply briefs, and a table of contents and table of authorities

[[Page 67990]]

in requests for rehearing filed in ex parte appeals; (3) deleting 
portions of the rule that require an appellant to specifically identify 
which arguments were previously presented to the Examiner and which 
arguments are new; (4) deleting portions of the rule that require 
specific formatting requirements and page limits for appeal briefs, 
reply briefs, and requests for rehearing; and (5) deleting portions of 
the rule that require appellants to provide a list of technical terms 
and other unusual words for an oral hearing. The Office is also 
considering a revision to the final rule so that an examiner may 
continue to enter a new ground of rejection in an examiner's answer (as 
is allowed under the current rules). The Office is also considering not 
allowing an examiner to file a supplemental examiner's answer in 
response to a reply brief. For reasons of administrative efficiency, 
the Office is also considering revising the final rule to make clear 
that the Chief Administrative Patent Judge, rather than the Board, may 
remand an application to the examiner.

Discussion of Potential Modifications to the Final Rule

    What follows is a discussion of the potential modifications to the 
final rule (text follows) compared to the existing rule, currently in 
effect, for discussion at the roundtable.
    Existing rules in Part 1 are denominated as ``Rule x'' in this 
supplementary information. For example, 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. For example, a reference to Rule 41.3 is a 
reference to 37 CFR 41.3 (2007).
    Potential modifications to the final rule in this request for 
comments and notice of roundtable are denominated as ``Bd.R. x'' in 
this supplementary information. For example, a reference to Bd.R. 41.3 
is a reference to the potential modification of 37 CFR 41.3 (2007), as 
considered for discussion in this request for comments and notice of 
roundtable.

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 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).
    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, a brief, or a request for oral hearing (see 
Sec. Sec.  41.31, 41.37, 41.41, 41.47, 41.61, 41.66, 41.67, 41.68, 
41.71 and 41.73).'' The amendment makes clear that the Chief 
Administrative Patent Judge would not determine whether extensions are 
to be granted for the filing of papers before the Board has 
jurisdiction.

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 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. 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

[[Page 67991]]

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. 41.39(b)(1) (request to reopen prosecution after entry of 
new ground of rejection by Examiner), (2) Bd.R. 41.50(b)(1) (request 
for amendment after remand), (3) Bd.R. 41.50(d)(1) (request to reopen 
prosecution after entry of new ground of rejection by the Board), and 
(4) 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. 
41.39(b)(1) (request to reopen prosecution after entry of new ground of 
rejection by Examiner), (2) Bd.R. 41.50(b)(1) (request to reopen 
prosecution after entry of a remand by the Board), and (3) 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 is not automatically notified when 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

[[Page 67992]]

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.
    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://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.html&log=linklog&to=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) [reserved], (4) [reserved], (5) [reserved], (6) [reserved], 
(7) status of amendments, (8) grounds of rejection to be reviewed, (9) 
[reserved], (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.
    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) is reserved.
    Bd.R. 41.37(i) is reserved.
    Bd.R. 41.37(j) is reserved.
    Bd.R. 41.37(k) is reserved.

[[Page 67993]]

    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) is reserved.
    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.
    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. In keeping with the well-established 
rules of waiver, Appellant would waive all arguments which could have 
been, but were not, addressed in the argument section of the appeal 
brief. See e.g., Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir. 
2008) (holding that when an appellant fails to contest a ground of 
rejection to the Board, the Board may treat any argument with respect 
to that ground of rejection as waived); In re Watts, 354 F.3d 1362, 
1367-68 (Fed. Cir. 2004) (declining to consider the appellant's new 
argument regarding the scope of a prior art patent raised for the first 
time on appeal because the court did not have the benefit of the 
Board's informed judgment on the issue for its review); In re Berger, 
279 F.3d 975, 984 (Fed. Cir. 2002) (in which the Board affirmed an 
uncontested rejection of claims under 35 U.S.C. 112, second paragraph, 
and on appeal the Federal Circuit affirmed the Board's decision and 
found that the appellant had waived his right to contest the 
indefiniteness rejection by not presenting arguments as to error in the 
rejection on appeal to the Board); and In re Schreiber, 128 F.3d 1473, 
1479 (Fed. Cir. 1997) (declining to consider whether prior art cited in 
an obviousness rejection was non-analogous art when that argument was 
not raised before the Board).
    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 (i.e., 1 (rejected), 2 
(withdrawn), 3 (objected to), 4 (cancelled), 5 (allowed), 6 
(confirmed), 7 (not subject to reexamination)).
    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

[[Page 67994]]

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 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, an annotated 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) [reserved], (2) [reserved], (3) [reserved], (4) 
[reserved], (5) affidavits and declarations upon which the appellant 
relied before the examiner, (6) other evidence upon which the appellant 
relied before the examiner, and (7) 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 for consideration by Board.
    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).

Examiner's Answer

    Bd.R. 41.39(a)(1) 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 may 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(a)(2) provides that an examiner may enter a new ground 
of rejection in an examiner's answer. As made clear in Bd.R. 
41.39(a)(1) and Bd.R. 41.39(d), the examiner may respond to appellant's 
brief by filing only one examiner's answer, except in the case of a 
return or remand of an application by the Chief Administrative Patent 
Judge to the examiner (see Bd.R. 41.50(b)). The examiner may no longer 
file a supplemental examiner's answer in response to a reply brief. The 
reply brief is the last word. Although the examiner may enter a new 
ground of rejection in the examiner's answer, this will rarely occur 
because the examiner will not be able to respond to any new argument 
raised in the reply brief in response to the new ground. As set forth 
below in Bd.R. 41.39(b) and its subparts, if the examiner does enter a 
new ground of rejection in the examiner's answer, the appellant will 
have a choice of either (a) requesting reopening of prosecution before 
the examiner with the opportunity to enter an amendment or file 
additional evidence, or (b) requesting docketing of the appeal by the 
Board and filing a reply brief with argument relevant to the new ground 
of rejection. Where a newly cited reference is added in the examiner's 
answer merely as evidence of the prior statement made by the examiner 
as to what is ``well-known'' in the art which was challenged for the 
first time in the appeal brief, the citation of the reference in the 
examiner's answer would not ordinarily constitute a new ground of 
rejection within the meaning of Bd.R. 41.39(a)(2) and 41.39(b). 
Similarly, it

[[Page 67995]]

would not ordinarily be a new ground of rejection for an examiner to 
cite an additional reference in an examiner's answer in the following 
situations: (1) To prove a previously applied reference contains an 
enabling disclosure; (2) to explain the meaning of a term used in a 
previously applied reference; or (3) to show that a characteristic not 
explicitly disclosed in a previously applied reference is inherent. The 
basic thrust of the rejection remains the same in these above-
referenced situations because the additional reference simply explains 
a previously applied reference or is evidence of what was taught in a 
previously applied reference in response to a new argument.
    Bd.R. 41.39(b) provides that if an examiner's answer contains a 
rejection designated as a new ground of rejection, appellant would be 
required to exercise one of two options to avoid dismissal of the 
appeal as to the claims subject to the new ground of rejection. Either 
option would have to be exercised within two months from the date of 
the examiner's answer.
    Bd.R. 41.39(b)(1) specifies a first option and provides that 
appellant could request that prosecution be reopened before the 
examiner by filing a reply under Rule 111, with or without amendment or 
submission of evidence. Any amendment or evidence would have to be 
relevant to the new ground of 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 Rule 112. A request under Bd.R. 41.39(b)(1) would be 
treated as a request to dismiss the appeal.
    Bd.R. 41.39(b)(2) specifies a second option and provides that 
appellant could request that the appeal be docketed. The request would 
have to be accompanied by a reply brief as set forth in Bd.R. 41.41. An 
amendment or evidence could not accompany the reply brief. A reply 
brief that is accompanied by an amendment or evidence would be treated 
as a request to reopen prosecution pursuant to Bd.R. 41.39(b)(1).
    Bd.R. 41.39(c) provides that extensions of time under Rule 136(a) 
do not apply and that a request for an extension of time would be 
governed by the provisions of Rule 136(b) for extensions of time to 
reply for patent applications and Rule 550(c) for extensions of time to 
reply for ex parte reexamination proceedings.
    Bd.R. 41.39(d) provides that the examiner shall not enter a 
supplemental examiner's answer in response to any reply brief filed 
under Bd.R. 41.39(b)(2) and/or Bd.R. 41.41.

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 extensions of time under Rule 136(a) 
do not apply and that a request for an extension of time would be 
governed by the provisions of Rule 136(b) for extensions of time to 
reply for patent applications and Rule 550(c) for extensions of time to 
reply for ex parte reexamination proceedings.
    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 be required to contain, under appropriate 
headings and in the order indicated, the following items: (1) 
[reserved], (2) [reserved], (3) [reserved], (4) [reserved], (5) 
argument.
    Bd.R. 41.41(e) is reserved.
    Bd.R. 41.41(f) is reserved.
    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 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 and Supplemental Reply Brief 
Bd.R. 41.43 is reserved. An examiner will no longer be responding to a 
reply brief. As such, a supplemental reply brief is also 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 extensions of time under Rule 136(a) 
do not apply and that a request for an extension of time would be 
governed by the provisions of Rule 136(b) for extensions of time to 
reply for patent applications and Rule 550(c) for extensions of time to 
reply for ex parte reexamination proceedings.
    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 confirm attendance at 
the oral hearing. Failure to timely confirm attendance would be taken 
as a waiver of any request for an oral hearing.

[[Page 67996]]

    Bd.R. 41.47(g) is reserved.
    Bd.R. 41.47(h) provides that unless otherwise ordered by the Board, 
argument on behalf of appellant at an oral hearing would be limited to 
20 minutes.
    Bd.R. 41.47(i) provides that at oral hearing only the Record will 
be considered. No additional evidence may be offered to the Board in 
support of the appeal. Any argument not presented in a brief cannot be 
made at the oral hearing.
    Bd.R. 41.47(j) provides that notwithstanding Bd.R. 41.47(i), an 
appellant could rely on and call the Board's attention to a recent 
court or Board opinion which could have an effect on the manner in 
which the appeal is decided.
    Bd.R. 41.47(k) provides that visual aids may be used at an oral 
hearing. However, visual aids must be limited to copies of documents or 
artifacts in the Record or a model or exhibit presented for 
demonstration purposes during an interview with the examiner. When an 
appellant seeks to use a visual aid, one copy of each visual aid 
(photograph in the case of an artifact, a model or an exhibit) should 
be provided for each judge and one copy to be added to the Record.
    Bd.R. 41.47(l) provides that failure of an appellant to attend an 
oral hearing would be treated as a waiver of the oral hearing. Over the 
years, the Board has become concerned with the large number of requests 
for postponements. In some cases, multiple requests in a single appeal 
are submitted for postponement of an oral hearing. Apart from the fact 
that a postponement can lead to large patent term adjustments, 
efficiency dictates that the Board is able to set an oral hearing 
schedule with an expectation that in a large majority of the cases the 
oral hearing will timely occur or the appellant will waive oral 
hearing. The Board will continue to handle requests for postponement of 
oral hearings on an ad hoc basis. However, postponements would no 
longer be granted on a routine basis. A request for a postponement made 
immediately after a notice of oral hearing is mailed is more likely to 
receive favorable treatment, particularly since it may be possible to 
set an oral hearing date prior to the originally scheduled o