Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 69828-69849 [2010-28493]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 75, Number 219 (Monday, November 15, 2010)]
[Proposed Rules]
[Pages 69828-69849]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2010-28493]



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Part IV





Department of Commerce





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Patent and Trademark Office



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37 CFR Parts 1 and 41



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

Federal Register / Vol. 75 , No. 219 / Monday, November 15, 2010 / 
Proposed Rules

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 41

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


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

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking; request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) proposes changes to rules governing practice before the Board 
of Patent Appeals and Interferences (Board or BPAI) in ex parte patent 
appeals. After considering public comments raised in response to an 
Advanced Notice of Proposed Rulemaking, which proposed potential 
modifications to the stayed final rule, the Office is proposing to 
rescind the stayed final rule and is issuing this notice seeking public 
comment on proposed new revisions to the current rule. The goal of this 
proposed rulemaking is to simplify the appellate process in a manner 
that effects an overall lessening of the burden on appellants and 
examiners to present an appeal to the Board.

DATES: The deadline for receipt of written comments on the proposed 
rulemaking is 5 p.m. Eastern Standard Time on January 14, 2011.

ADDRESSES: Written comments on the proposed rulemaking should be sent 
by electronic mail message over the Internet addressed to 
BPAI.Rules@uspto.gov. Comments on the proposed rulemaking 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.

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

    On July 30, 2007, the Office published a notice of proposed 
rulemaking governing practice before the Board in ex parte patent 
appeals (72 FR 41,472 (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 28, 2007.
    On June 10, 2008, a final rulemaking was then published in the 
Federal Register (73 FR 32,938 (Jun. 10, 2008)). This final rule stated 
that the effective and applicability dates were December 10, 2008. On 
June 9, 2008, the Office published a 60-day Federal Register notice (73 
FR 32,559 (Jun. 9, 2008)) requesting the Office of Management and 
Budget (OMB) 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 (73 FR 58,943 (Oct. 8, 2008)) 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 (Dec. 10, 2008)) notifying the public that 
the effective and applicability dates of the final rule was not 
December 10, 2008, and that the effective and applicability dates would 
be delayed until a subsequent notice.
    On January 20, 2009, the Assistant to the President and Chief of 
Staff instructed agencies via a memorandum entitled, ``Regulatory 
Review,'' (74 FR 4435 (Jan. 20, 2009)) 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 entitled, ``Implementation of Memorandum Concerning 
Regulatory Review,'' (available at https://www.whitehouse.gov/sites/default/files/omb/assets/agencyinformation_memoranda_2009_pdf/m09-08.pdf) which provided agencies further guidance on such rules that had 
not yet taken effect. For such rules, both memoranda stated that 
agencies should consider reopening the rulemaking process to review any 
significant concerns involving law or policy that have been raised.
    On December 22, 2009, the Office published an Advance Notice of 
Proposed Rulemaking (ANPRM) proposing further modifications to the 
stayed final rule and seeking public comment via a public roundtable 
and written comment (74 FR 67,987 (Dec. 22, 2009)).

Request for Comments

    In light of the comments received to these notices, the Office is 
now proposing to rescind the stayed final rule and is proposing new 
changes to the current rules of practice before the Board in ex parte 
appeals, and is publishing this Notice of Proposed Rulemaking (NPRM) to 
solicit input from interested members of the public on the proposed new 
changes to the current rule.

Purposes for Proposed Changes to the Current Rule

    The USPTO proposes to amend the rules of practice in ex parte 
patent appeals to avoid undue burden on appellants or examiners to 
provide information from the record to the Board, to eliminate any gap 
in time from the end of briefing to the commencement of the Board's 
jurisdiction, to clarify and simplify petitions practice in appeals, 
and to reduce confusion as to which claims are on appeal. For example, 
the Office proposes to amend the rules to: (1) Remove several of the 
current briefing requirements for an appeal brief, (2) provide for the 
Board to take jurisdiction over the appeal earlier in the appeal 
process, (3) eliminate the Board's authority, absent the Director's 
approval, to remand an application to the examiner, (4) no longer 
require examiners to acknowledge receipt of reply briefs, (5) create 
specified procedures under which an appellant can seek review of an 
undesignated new ground of rejection in either an examiner's answer or 
in a Board decision, (6) provide that the Board will presume that the 
appeal is taken from the rejection of all claims under rejection unless 
cancelled by an applicant's amendment, and (7) clarify that, for 
purposes of the examiner's answer, any rejection that relies upon new 
evidence shall be designated as a new ground of rejection.
    For clarity, this notice refers in places to the ``current'' Board 
rules. The current rules in effect are the current Board rules as 
published in 37 CFR 41.1 through 41.81 (2010).
    One purpose of this proposed rulemaking is to ensure that the Board

[[Page 69829]]

has adequate information to decide ex parte appeals on the merits, 
while not unduly burdening appellants or examiners with unnecessary 
briefing requirements. In particular, the goal of this proposed 
rulemaking is to effect an overall lessening of the burden on 
appellants and examiners to present an appeal to the Board. For 
example, statements of the status of claims, the status of amendments, 
the grounds of rejection to be reviewed on appeal, and the claims 
appendix would no longer be required in the appeal brief (Proposed 
Bd.R. 41.37) or in the examiner's answer. Because this information is 
already available in the Image File Wrapper, it is unnecessary for 
appellants or examiners to provide this information to the Board. 
Moreover, by eliminating these briefing requirements, the Office 
expects to reduce the number of non-compliant appeal briefs and the 
number of examiners' answers returned to the examiner due to non-
compliance, which are a significant cause of delays on appeal. See 
USPTO, Top Eight Reasons Appeal Briefs are Non-Compliant, https://www.uspto.gov/ip/boards/bpai/procedures/top_8_reasons_appeal_brf_dec09.pdf.
    Another purpose of this proposed rulemaking is to eliminate any gap 
in time from the end of briefing to the commencement of the Board's 
jurisdiction, and to minimize the number of appeals that transfer back-
and-forth between the Board and the examiner. For example, under the 
proposed rules, the Board would take jurisdiction upon the earlier of 
the filing of a reply brief or the expiration of the time in which to 
file a reply brief (Proposed Bd.R. 41.35(a)). Examiners would no longer 
be required to acknowledge receipt of the reply brief (Proposed Bd.R. 
41.43 [removed]). The proposed rules also eliminate the Board's 
independent authority to remand an application to an examiner (Proposed 
Bd.R. 41.50(a)). Therefore, the Board would be required to decide the 
appeal on the merits, and only with the Director's approval may the 
Board remand an application back to the examiner (Proposed Bd.R. 
41.35(c)).
    The proposed rulemaking is also intended to clarify and simplify 
petitions practice on appeal. For example, except under limited 
circumstances, any information disclosure statement or petition filed 
while the Board possesses jurisdiction over the proceeding would be 
held in abeyance until the Board's jurisdiction ends (Proposed Bd.R. 
41.35(d)). Also, in response to public comments, and based on a 
comprehensive survey of case law from the United States Court of 
Appeals for the Federal Circuit (Federal Circuit) and United States 
Court of Customs and Patent Appeals (CCPA), the Office will provide 
improved guidance in the Manual of Patent Examination Procedure (MPEP), 
discussed infra, as to what constitutes a new ground of rejection in an 
examiner's answer. The proposed rulemaking explicitly sets forth the 
procedure under which an appellant can seek review of the Office's 
failure to designate a new ground of rejection in either an examiner's 
answer (Proposed Bd.R. 41.40) or in a Board decision (Proposed Bd.R. 
41.50(c)).
    Another purpose of this proposed rulemaking is to reduce confusion 
as to which claims are on appeal. For example, under the proposed 
rules, the Board would presume that the appeal is taken from the 
rejection of all claims under rejection unless cancelled by an 
applicant's amendment (Proposed Bd.R. 41.31(c)). This change would 
simplify practice for the majority of appellants who seek review of all 
claims under rejection by obviating the need to enumerate the rejected 
claims that are being appealed. This proposed rule would avoid the 
unintended cancellation of claims by the Office due to appellant's 
mistake in the listing of the claims in either the notice of appeal or 
in the appeal brief. Under current practice, if an appellant 
incorrectly lists the claims on appeal, or is silent in the brief as to 
some of the claims under rejection, then the Office assumes that such 
claims are not on appeal, and notes that those non-appealed claims 
should be cancelled by the examiner. Ex parte Ghuman, 88 USPQ2d 1478, 
2008 WL 2109842 (BPAI 2008) (precedential) (holding that when appellant 
does not appeal some of the claims under rejection and does not 
challenge the Examiner's rejection of these claims, then the Board will 
treat these claims as withdrawn from the appeal, which operates as an 
authorization for the Examiner to cancel those claims from the 
application). The Office is proposing to change this practice in order 
to avoid the unintended cancellation of claims due to oversight or 
mistake by appellants in listing the claims on appeal. This proposed 
change would replace the Office's procedure under Ghuman and simplify 
practice for examiners by no longer requiring examiners to cancel non-
appealed claims.
    The SUPPLEMENTARY INFORMATION in this notice provides: (1) A brief 
explanation of the proposed changes to the current rule, (2) a 
discussion of the differences between the proposed rule and the current 
rule, and (3) a copy of the proposed amendments to the regulatory text.

Brief Explanation of Proposed Changes to the Current Rule

    The notable changes in the proposed rule, as compared to the 
current Board rule, are: (1) The Board would presume that an appeal is 
taken from the rejection of all claims under rejection unless cancelled 
by an amendment filed by appellant (Proposed Bd.R. 41.31(c)); (2) the 
Board would take jurisdiction upon the filing of a reply brief or the 
expiration of time in which to file such a reply brief, whichever is 
earlier (Proposed Bd.R. 41.35(a)); (3) the requirements to include 
statements of the status of claims and grounds of rejection to be 
reviewed on appeal and the requirements to include a claims appendix, 
an evidence appendix and a related proceedings appendix would be 
eliminated from the appeal brief (Proposed Bd.R. 41.37(c)); (4) the 
Board may apply default assumptions if a brief omits a statement of the 
real party-in-interest or a statement of related cases (Proposed Bd.R. 
41.37(c)(1)(i) and (ii)); (5) for purposes of the examiner's answer, 
any rejection that relies upon new evidence shall be designated as a 
new ground of rejection (Proposed Bd.R. 41.39(a)(2)); (6) the appellant 
can await a decision on a petition seeking review of an examiner's 
failure to designate a rejection in the answer as a new ground of 
rejection prior to filing a reply brief (Proposed Bd.R. 41.40) and 
thereby avoid having to file a request for extension of time in which 
to file the reply brief; and (7) the examiner's response to a reply 
brief would be eliminated (Proposed Bd.R. 41.43 [removed]). A more 
detailed discussion of all of the proposed changes follows.

Discussion of Proposed Changes to the Current Rule

Explanation of Proposed Changes

    Existing rules in Part 1 are denominated as ``Rule x'' in this 
supplementary information. A reference to Rule 1.136(a) is a reference 
to 37 CFR 1.136(a) (2010).
    Existing rules in Part 11 are denominated as ``Rule x'' in this 
supplementary information. A reference to Rule 11.18(a) is a reference 
to 37 CFR 11.18(a) (2010).
    Existing rules in Part 41 are denominated as ``Bd.R. x'' in this 
supplementary information. A reference to Bd.R. 41.3 is a reference to 
37 CFR 41.3 (2010).
    Proposed rules are denominated as ``Proposed Bd.R. x'' in this 
supplementary information.

[[Page 69830]]

    The Board has jurisdiction to consider and decide ex parte appeals 
in patent applications (including reissue, design and plant patent 
applications) and ex parte reexamination proceedings.
    The proposed rules do not propose to change any of the rules 
relating to inter partes reexamination appeals. Nor do the proposed 
rules propose to change any of the rules relating to contested cases.
    For purposes of this notice of proposed rulemaking, some paragraphs 
that are proposed to be deleted are shown as ``reserved.'' These 
``reserved'' paragraphs will be deleted entirely in the final rule, and 
the remaining paragraphs in each section will be renumbered, as 
appropriate.

Discussion of Proposed Changes to Specific Rules

Part 1

Termination of Proceedings
    Proposed Rule 1.197 proposes to revise the title of this section 
and to delete paragraph (a), the provision that sets forth when 
jurisdiction passes from the Board to the examiner after a decision has 
been issued by the Board. The operative language of this paragraph has 
been incorporated into Proposed Bd.R. 41.54, except that ``transmittal 
of the file'' has been omitted. Most patent application files are 
electronic files (Image File Wrapper files), not paper files. 
Accordingly, a paper file is no longer ``transmitted'' to the examiner. 
The changes to Proposed Rule 1.197 and Proposed Bd.R. 41.54 are 
intended to more accurately reflect the fact that files are handled 
electronically within the Office, and do not imply that there would be 
a change in the practice for passing jurisdiction back to the examiner 
after decision by the Board--the process would remain the same under 
the proposed rule.
    The ANPRM did not propose any changes to this section. As such, no 
comments were received in connection with this section.

Part 41

Authority
    The listing of authority for Part 41 would be revised to add 
references to 35 U.S.C. 132, 133, 306, and 315. Section 132 provides 
that the Director shall prescribe by regulations to provide for the 
continued examination of applications for patent at the request of the 
applicant. Section 133 states that upon failure of the applicant to 
prosecute the application within six months after any action therein, 
the application shall be regarded as abandoned. Section 306 establishes 
the patent owner's right to appeal in an ex parte reexamination 
proceeding. Section 315 establishes the right to appeal in an inter 
partes reexamination proceeding.

Subpart A

Citation of Authority
    Proposed Bd.R. 41.12 proposes to delete from the current rule the 
requirements: (1) To cite to particular case law reporters, and (2) to 
include parallel citations to multiple reporter systems. The proposed 
rule indicates a Board preference for citations to certain reporters 
and for limited use of non-binding authority.
    The ANPRM proposed to delete the requirement in Bd.R. 41.12 to use 
parallel citations. The Office received one comment that the changes to 
this section proposed in the ANPRM were unclear. Specifically, the 
comment questioned whether the proposed changes made certain citations 
mandatory or if the citations were a preference of the Board. The 
Office also received one comment stating that requiring reporter cites 
is burdensome on parties and does not provide any efficiency to the 
Board. This comment further noted that requiring the filing of a copy 
of authorities relied upon would be unduly burdensome.
    This section of the proposed rule has been revised to eliminate the 
previously proposed requirement to cite to a particular case law 
reporter and the previous requirement to include parallel citations to 
multiple reporter systems. The requirement to include pinpoint 
citations, whenever a specific holding or portion of an authority is 
invoked, is maintained. Because Administrative Patent Judges have 
access to both the West Reporter System and the United States Patents 
Quarterly, it is unnecessary for appellants to cite to both reporters.
    The proposed rule, as well as the current rule, states that 
appellants should provide a copy of an authority if the authority is 
not an authority of the Office and is not reproduced in the United 
States Reports or the West Reporter System. This provision is designed 
to ensure that a full record is before the Administrative Patent Judge 
to allow an efficient and timely decision to be made on the merits of 
the case.

Subpart B

Definitions
    Proposed Bd.R. 41.30 proposes to add a definition of ``Record'' to 
the current rule so that, when subsequent sections of Subpart B refer 
to the ``Record'', it is clear what constitutes the official record on 
appeal. The proposed rule would state that the official record contains 
the items listed in the content listing of the image file wrapper, 
excluding papers that were denied entry. The proposed definition of 
``Record'' includes the items listed in the content listing of the 
image file wrapper because, in some cases, physical items that form 
part of the official file are not able to be scanned into the image 
file wrapper and are maintained elsewhere, such as in an artifact file. 
Some examples of such items include original drawings in design patent 
applications and sequence listings. In such cases, the image file 
wrapper will include an entry in the contents listing that points to 
this artifact file.
    The ANPRM proposed to amend Bd.R. 41.30 to add a definition of 
``Record'' to mean ``the official content of the file of an application 
or reexamination proceeding on appeal.'' The Office received only one 
comment to this proposed change in the ANPRM, which approved of the 
proposal.
    This section of the proposed rule includes a slightly different, 
but clearer, definition of ``Record'' than that which was proposed in 
the ANPRM. In particular, the definition in Proposed Bd.R. 41.30 
explicitly excludes any amendment, evidence, or other document that was 
denied entry. Because an examiner's refusal to enter an amendment, 
evidence, or other document is a petitionable matter that is not 
subject to review by the Board, the exclusion of such un-entered 
documents from the proposed definition of ``Record'' reflects the fact 
that the Board's review of patentability determinations is properly 
based on the record of all entered documents in the file.
Appeal to the Board
    Proposed Bd.R. 41.31(a) proposes to revise the current rule to make 
clear that an appeal to the Board is taken by filing a notice of 
appeal. This proposed change is not intended to change the current 
practice of the Office. The Office currently requires appellants to 
file a notice of appeal in order to appeal an adverse decision of the 
examiner to the Board.
    The ANPRM proposed to amend 41.31(a) to clarify that an appeal is 
taken to the Board by filing a notice of appeal. The Office received a 
comment that the changes proposed in the ANPRM, which would have 
deleted reference to the statutory conditions under which a right of 
appeal arises, lacked clarity. Specifically, the comment noted that it 
would promote efficiency to retain the specific statutory conditions 
for appeal

[[Page 69831]]

in the rules to provide clarity to appellants and practitioners who 
might read only the rules and not the underlying statutes. Proposed 
Bd.R. 41.31 proposes to keep the language of sections (a)(1), (a)(2), 
and (a)(3) found in the current rule, thus retaining the statutory 
conditions under which a right of appeal arises.
    The Office received another comment that proposed eliminating the 
notice of appeal requirement altogether because it causes unnecessary 
delay in the appellate process. This suggestion is not adopted. The 
filing of the notice of appeal is an important procedural step of the 
larger prosecution process at the Office. For example, the filing of a 
notice of appeal triggers the appellant's ability to file a pre-appeal 
brief conference request.
    The Office received a comment to the ANPRM requesting that the 
Office provide statistics on the Pre-Appeal Brief Conference program. 
For each full fiscal year (FY) since the Pre-Appeal Brief Conference 
program was launched, the following charts show: (1) The annual number 
of such requests, (2) the percent of notices of appeal that contain a 
request, (3) the outcomes of the conferences, and (4) a comparison of 
the outcomes of the Pre-Appeal Brief Conference to the Appeal 
Conference.

                             Pre-Appeal Brief Conference Effects: Actions in Response to Request for Pre-Appeal Brief Review
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                                                                           Frequency of     Proceed to      Prosecution   All rejections     Defective
                           FY                                Number of       requests          board         reopened        withdrawn        request
                                                             requests        (percent)       (percent)       (percent)       (percent)       (percent)
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06......................................................           6,525              24              55              37               5               3
07......................................................           7,240              25              56              38               4               2
08......................................................           8,255              27              59              37               2               2
09......................................................           9,967              30              56              39               3               2
10......................................................          12,019              34              56              38               5               1
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                         Appeal Conference Effects: Actions in Response to Appeal Brief
----------------------------------------------------------------------------------------------------------------
                                                               Prosecution     All rejections
                   FY                        Examiner's         reopened          withdrawn       Other action
                                          answer (percent)      (percent)         (percent)         (percent)
----------------------------------------------------------------------------------------------------------------
98......................................                58                12                29                 1
99......................................                52                15                32                 1
00......................................                46                21                32                 1
01......................................                40                25                34                 1
02......................................                38                26                34                 1
03......................................                38                29                31                 1
04......................................                39                32                27                 2
05......................................                39                35                24                 2
06......................................                49                30                19                 2
07......................................                56                28                14                 2
08......................................                59                28                12                 1
09......................................                56                27                16                 1
10......................................                59                23                17                 1
----------------------------------------------------------------------------------------------------------------

    Proposed Bd.R. 41.31(b) proposes to revise the current rule to make 
clear that the signature requirements of Rules 1.33 and 11.18(a) do not 
apply to the notice of appeal. This proposed change updates paragraph 
(b) to add a reference to Rule 11.18(a) to avoid any conflict between 
the rules of practice in ex parte appeals and the rules governing 
practice by registered practitioners before the Office.
    The ANPRM proposed to remove the provision that a notice of appeal 
need not be signed. One comment requested clarification as to why the 
ANPRM proposed to delete paragraph (b) of the current rule. The comment 
suggested removing this flexibility might lead to mistakes and more 
work for both the Office and appellants to correct such mistakes. In 
light of this comment, Proposed Bd.R. 41.31(b) would retain the 
provision that a notice of appeal need not be signed and would further 
clarify that Rule 11.18(a) does not apply to a notice of appeal, so as 
to avoid any conflict in the requirements for practitioners under this 
title.
    Proposed Bd.R. 41.31(c) proposes to revise the current rule so that 
an appeal, when taken, would be presumed to seek review of all of the 
claims under rejection unless canceled by an amendment filed by the 
appellant. This proposed change, obviates the need for the majority of 
appellants who seek review of all claims under rejection to 
affirmatively state (in the notice of appeal and/or in the status of 
claims section of the appeal brief) which claims are on appeal. Rather, 
under Proposed Bd.R. 41.31(c), the Board would presume that an 
appellant intends to appeal all claims under rejection except for those 
that the appellant has canceled. This proposed change avoids the 
unintended cancellation of claims by the Office due to an appellant's 
mistake in the listing of the claims in either the notice of appeal or 
in the appeal brief. Under current practice, if an appellant 
incorrectly lists the claims on appeal, or is silent in the brief as to 
any of the claims under rejection, then the Office assumes that such 
claims are not on appeal, and notes that those non-appealed claims 
should be cancelled by the examiner. Ex parte Ghuman, 88 USPQ2d 1478, 
2008 WL 2109842 (BPAI 2008) (precedential) (holding that when appellant 
does not appeal some of the claims under rejection and does not 
challenge the Examiner's rejection of these claims, then the Board will 
treat these claims as withdrawn from the appeal, which operates as an 
authorization for the Examiner to cancel those claims from the 
application). The proposed rule would avoid potential unintended 
cancellation of claims due to oversight or mistake by appellants in 
listing the claims on appeal. This proposed change would replace the 
Office's procedure under Ghuman and simplify practice for examiners by 
no

[[Page 69832]]

longer requiring examiners to cancel non-appealed claims. Any appellant 
who wishes to appeal fewer than all rejected claims should file an 
amendment cancelling the non-appealed claims. If an appellant does not 
file an amendment cancelling claims that the appellant does not wish to 
appeal, but then also fails to provide any argument in the appeal brief 
directed to those claims, then the Board may simply affirm any 
rejections against such claims.
Amendments and Affidavits or Other Evidence After Appeal
    Proposed Bd.R. 41.33(c) proposes to delete cross-references to 
Bd.R. 41.50(a)(2)(i) and Bd.R. 41.50(c) from the current rule. As noted 
infra, Proposed Bd.R. 41.50 proposes to delete paragraph (a)(2)(i) from 
the current rule and to amend paragraph (c) so that it is no longer 
applicable to Proposed Bd.R. 41.33(c).
    Proposed Bd.R. 41.33(d)(2) proposes to delete the cross-reference 
to Bd.R. 41.50(a)(2)(i) from the current rule. As noted infra, Proposed 
Bd.R. 41.50 proposes to delete paragraph (a)(2)(i) from the current 
rule.
    The ANPRM proposed to limit the types of amendments and evidence 
that could be filed on or after an appeal brief. The restrictions set 
forth in the ANPRM were identical to the restrictions in current Bd.R. 
41.33.
    The Office received one comment that the restrictions set forth in 
the ANPRM would limit the examiner's ability to enter amendments or 
evidence after an appeal is filed, thus potentially preventing an 
examiner from entering an amendment suggested by the examiner that 
would possibly render the claims allowable. The comment suggested 
adding a third condition for allowance to section (b) for an examiner-
approved amendment and to add a new rule allowing appellants to submit 
examiner-requested evidence after an appeal is filed.
    Proposed Bd.R. 41.33 does not substantively change the current 
rule. Both the current rule and the rule proposed in this NPRM restrict 
the types of amendments and evidence that can be filed after filing a 
brief. This approach is designed to promote efficiency of the Board in 
its review by ensuring that the Board has the benefit of the examiner's 
final evaluation of the weight and sufficiency of any evidence relied 
upon by appellants prior to the Board rendering a decision on appeal.
    The Office received another comment that the restrictions set forth 
in the ANPRM would prevent appellants from submitting evidence to rebut 
an examiner's position raised for the first time after a notice of 
appeal is filed, specifically in an examiner's answer. Proposed Bd.R. 
41.40 has been added to respond to the comments desiring clarification 
of how appellants can file a petition to the Director under Rule 1.181 
seeking review of the examiner's failure to designate a rejection as a 
new ground of rejection if they feel that the examiner's answer 
contains a new ground of rejection that necessitates the filing of new 
amendments or new evidence. Thus, appellants are afforded due process 
by granting a fair opportunity to respond to all aspects of a rejection 
prior to appeal. Since the filing of such a Rule 1.181 petition tolls 
the period for filing a reply brief, appellants would not need to incur 
the expense of preparing and filing a reply brief if their petition is 
granted, and examiners would not be required to respond to appellants' 
requests under Rule 1.136(b) for extensions of time in which to file a 
reply brief while the petition is being decided.
    The Office received another comment that the rule proposed in the 
ANPRM seemed to conflict with Sec.  556(d) of the Administrative 
Procedure Act (APA) which guarantees the right to submit rebuttal 
evidence in agency proceedings and with case law from the Federal 
Circuit. As noted supra, the Proposed Bd.R. 41.40 in this NPRM provides 
appellants with procedures to file a petition to the Director under 
Rule 1.181 seeking review of the examiner's failure to designate a 
rejection as a new ground of rejection and, consequently, if granted, 
have an opportunity to reopen prosecution and submit rebuttal evidence, 
consistent with the APA.
Jurisdiction Over Appeal
    Proposed Bd.R. 41.35(a) proposes to revise the current rule to 
provide that jurisdiction over the appeal passes to the Board upon the 
filing of a reply brief or the expiration of the time in which to file 
such a reply brief, whichever is earlier. This proposed change is 
deemed necessary because current Bd.R. 41.35(a) provides that the Board 
acquires jurisdiction upon transmittal of the file to the Board. Most 
patent application files are electronic files (Image File Wrapper 
files), not paper files. Accordingly, a paper file is no longer 
``transmitted'' to the Board.
    The Board intends to continue sending a docket notice as a courtesy 
to appellants to indicate that the Board has assigned an appeal number 
to the appeal. By having the Board's jurisdiction commence immediately 
upon the filing of a reply brief or the expiration of the time in which 
to file such a reply brief, there would be no affirmative step required 
to be taken by the Board prior to assuming jurisdiction and no gap in 
time from the end of the briefing to the commencement of jurisdiction 
by the Board.
    The ANPRM proposed that jurisdiction of the Board would begin when 
a docketing notice was mailed by the Board. The Office received one 
comment suggesting that an appeal should be instantly docketed at the 
Board upon receipt of a reply brief. The Office has adopted this 
proposed change substantially as suggested, while taking into account 
that some appellants may choose not to file a reply brief. The Office 
received another comment suggesting that jurisdiction should pass to 
the Board upon the filing of the notice of appeal, and thus, the Board 
would be the only entity reviewing briefs for compliance with the rule. 
The Office chose not to adopt this proposed change, because if the 
Board acquired jurisdiction upon filing of a notice of appeal, this 
change would foreclose the opportunity for the examiner, upon reviewing 
the appeal brief, to find some or all of the appealed claims patentable 
prior to the Board taking jurisdiction, thus obviating the need to 
proceed with the appeal. To address the concern raised by the public 
comment, the Office chose instead to implement a streamlined procedure 
for review of briefs in ex parte appeals in which the Chief Judge of 
the Board is the sole reviewer of briefs for compliance with the rules. 
A streamlined procedure for review of briefs in appeals involving both 
patent applications (75 FR 15,689 (March 30, 2010)) and ex parte 
reexamination proceedings (75 FR 29,321 (May 25, 2010)) has already 
been implemented. As such, the Board is currently the only reviewing 
body for appeal brief compliance.
    Proposed Bd.R. 41.35(b) proposes to remove from the current rule 
the provision that gives the Board the power to return an appeal to the 
examiner if the Board deems that a file is not complete or not in 
compliance with the requirements of Subpart B. Rather, if a file is not 
in condition for the Board to render a decision on the appeal, the file 
may be remanded to the examiner by a Director-ordered remand pursuant 
to Bd.R. 41.35(c). Proposed Bd.R. 41.35(b) also proposes to revise the 
current rule to make clear when the Board's jurisdiction ends so that 
no gaps in time exist between the end of the Board's jurisdiction and 
further action by the examiner.
    The ANPRM similarly proposed revising Bd.R. 41.35(b) to set forth 
when the Board's jurisdiction ends. The Office

[[Page 69833]]

received no comments in response to this proposed change.
    Proposed Bd.R. 41.35(c) proposes to add to the current rule a 
paragraph heading and a cross-reference to a relevant section of the 
rule.
    Proposed Bd.R. 41.35 proposes to add a new paragraph (d) to the 
current rule to provide that, except for petitions authorized by part 
41 of this title, the Board would not return or remand an application 
for consideration of an information disclosure statement or a petition 
filed while the Board possesses jurisdiction, and that consideration of 
such filings would be held in abeyance until the Board's jurisdiction 
ends. The Board's jurisdiction begins upon the filing of the reply 
brief or upon the expiration of the time for filing a reply brief. 
Therefore, under both current and Proposed Bd.R. 41.33(d)(2), the 
filing of an information disclosure statement during the Board's 
jurisdiction constitutes the introduction of untimely evidence. 
Similarly, because Rule 1.181 provides that petitions must be filed 
within two months of the mailing date of the action or notice from 
which relief is requested, and because the Board's jurisdiction begins 
up to two months after the mailing date of the examiner's answer 
(assuming no petition under Rule 1.181 is filed), it follows that all 
petitions relating to the examination phase of the application or 
reexamination proceeding ought to be filed prior to the time the Board 
takes jurisdiction. It is in the interest of compact prosecution that 
the Office not delay a decision on appeal for consideration of untimely 
evidence and petitions. Proposed Bd.R. 41.35(d) excludes ``petitions 
authorized by this part.'' For example, petitions authorized by part 41 
include petitions under Bd.R. 41.3.
    Proposed Bd.R. 41.35(d) was not part of the ANPRM, and thus no 
comments were received pertaining to it.
Appeal Brief--Timing and Fee; and Failure To File a Brief
    Proposed Bd.R. 41.37(a) and (b) propose to add paragraph headings 
to the current rule.
    The ANPRM proposed minor wording changes to paragraphs (a) and (b), 
but proposed no substantive amendments. No comments were received 
regarding these paragraphs. In order to avoid changes to the current 
rule that are not necessary for clarification or improved practice and 
procedure, these paragraphs of the proposed rule add only descriptive 
headings and the remainder of the text is the same as the current rule.
Appeal Brief--Content of Appeal Brief--Preamble
    Proposed Bd.R. 41.37(c)(1) proposes to add a paragraph heading to 
the current rule. Additionally, Proposed Bd.R. 41.37(c)(1) proposes to 
add the introductory phrase ``Except as otherwise provided in this 
paragraph'' to the current rule to clarify that several of the content 
requirements listed in paragraph (c)(1) contain exceptions that may 
result in an appeal brief containing fewer than all items listed in 
paragraph (c)(1). Proposed Bd.R. 41.37(c)(1) would also revise the 
current rule to correct the cross-references in light of further 
changes to this section, discussed infra.
Appeal Brief--Content of Appeal Brief--Real Party in Interest
    Proposed Bd.R. 41.37(c)(1)(i) proposes to revise the current rule 
to provide that the statement identifying the real party in interest 
should be accurate as of the date of filing of the appeal brief. 
Proposed Bd.R. 41.37(c)(1)(i) would revise the current rule to allow 
the Board to assume, if the statement of real party in interest is 
omitted from the appeal brief, that the named inventors are the real 
party in interest. These changes are proposed to decrease the burden on 
appellants by allowing appellants to omit this statement if the named 
inventors are the real party in interest. The purpose of this section 
is to enable Administrative Patent Judges to determine whether they 
have a conflict of interest with the real parties in the case and then 
to appropriately recuse themselves if such a conflict of interest is 
found. The information required in Proposed Bd.R. 41.37(c)(1)(i) is the 
minimum information needed by the Board to effectively make this 
determination.
    The ANPRM proposed a default rule that if the brief omits this 
statement, the Office would assume that the named inventors are the 
real party in interest. The Office received no comments in response to 
these proposed changes.
    The proposed rule includes substantially the same default provision 
as the ANPRM, but it states that the Office ``may'' make the 
assumption. Thus, the Office is not required to make the assumption if 
it is aware of information to the contrary.
Appeal Brief--Content of Appeal Brief--Related Appeals and 
Interferences
    Proposed Bd.R. 41.37(c)(1)(ii) would be revised to limit the 
required disclosure of related appeals, interferences and judicial 
proceedings (collectively ``related cases'') to only those which: (1) 
Involve an application or patent owned by the appellant or assignee, 
(2) are known to appellant, and (3) may have a bearing on the Board's 
decision. The section would also be revised to permit appellants to 
omit the statement entirely if there are no such related cases, and to 
provide a default assumption for the Office in the event the statement 
is omitted.
    The ANPRM proposed revising this requirement to make clear that 
appellants are under a continuing obligation to update the statement of 
related cases. The ANPRM also proposed a default rule that if the brief 
omits this statement; the Office would assume that there are no such 
related cases.
    The Office received several comments to the proposed changes to 
this section in the ANPRM (41.37(g) of the ANPRM). Specifically, one 
comment stated that the language of the ANPRM was overly broad, and 
suggested that the rule should be narrowed to require disclosure of 
only applications of the assignee, and that the continuing obligation 
to update this information was unduly burdensome to appellants. Another 
comment stated that the information that was required in the ANPRM was 
available to the Office and that requiring appellants to disclose this 
level of detail would be unduly burdensome. Another comment was 
concerned with charges of inequitable conduct for failure to include 
related appeals and proposed that the rules require appellants to 
identify only related U.S. court actions and decisions, and that the 
Office should bear the burden of searching the IFW system to identify 
related cases. Another comment stated that the rules should not impose 
a continuing obligation to update this information throughout the 
course of the appeal as that places a large burden on appellants. 
Another comment posited that the language in the ANPRM was overbroad 
and vague. Another comment stated that the term ``significant'' used in 
the ANPRM was indefinite. Another comment expressed concern that the 
term ``related case'' was used differently in the ANPRM than it is used 
for Information Disclosure Statements and suggested clarifying the term 
or adopting new terminology.
    In response to some of the concerns raised by these comments, the 
proposed rule has narrowed the information required to be included in 
the statement of related cases in the appeal brief, as compared to the 
current rule, to limit the statement to appeals in cases which are 
owned by the same appellant(s) or assignee. The proposed rule removes 
the language in the prior proposed Bd.R.

[[Page 69834]]

41.37(c)(1)(ii) regarding a continuing obligation to update this 
information. The proposed rule in this NPRM retains a default 
provision, originally proposed in the ANPRM, so that a statement that 
there are ``no known related cases'' is not required and that fact 
``may'' be inferred from the absence of a statement. The proposed rule 
also no longer requires filing of copies of decisions in related cases. 
The narrowed scope of this proposed section, as compared to the current 
rule, lessens the burden on appellants from the statement that is 
currently required and addresses concerns raised in the comments 
received to the ANPRM.
Appeal Brief--Content of Appeal Brief--Status of Claims
    Proposed Bd.R. 41.37(c)(1)(iii) omits the current requirement for 
the appeal brief to contain an indication of the status of claims.
Appeal Brief--Content of Appeal Brief--Statement of Last Entered 
Amendment
    Proposed Bd.R. 41.37(c)(1)(iv) proposes to eliminate the current 
requirement to provide a statement of the status of any amendment filed 
subsequent to final rejection, and would require that appellants simply 
provide a statement identifying, by date of filing, the last entered 
amendment of the claims. The proposed rule also provides a default that 
the Office may assume no amendments to the claims exist if the appeal 
brief omits this statement.
    The ANPRM, like the current rule, required the appeal brief to 
include a statement of the status of all amendments filed after final 
rejection. The Office is proposing instead in this NPRM that the Office 
bear the burden of reviewing the IFW to identify the claims on appeal. 
The proposed rule requires appellants to provide the date of filing of 
the last entered amendment only so that the Board will know the set of 
claims to which the appellant's arguments apply.
Appeal Brief--Content of Appeal Brief--Summary of Claimed Subject 
Matter
    Proposed Bd.R. 41.37(c)(1)(v) proposes to revise the current rule 
to require that the summary of claimed subject matter include an 
annotated copy of each rejected independent claim wherein the 
annotations would appear after each limitation in dispute by appellant 
and include a reference to the specification in the Record showing 
support for the claim language sufficient to allow the Board to 
understand the claim. Proposed Bd.R. 41.37(c)(1)(v) would also apply to 
each means plus function or step plus function recitation in dispute by 
appellant. Additionally, Proposed Bd.R. 41.37(c)(1)(v) would clarify 
that reference to the pre-grant patent application publication is not 
sufficient to satisfy the requirements for the summary of claimed 
subject matter.
    The ANPRM proposed to revise the summary of claimed subject matter 
to require an annotated copy of each element of each independent claim. 
The ANPRM also proposed to revise this requirement to call for an 
annotated copy of every means plus function or step plus function 
recitation in any independent claim on appeal or in any dependent claim 
separately argued.
    The Office received a comment that it was not clear in the ANPRM 
whether this rule would have imposed a requirement to cite every 
instance of support, or simply to provide citations sufficient to 
understand the scope and meaning of the claim limitations. Another 
comment similarly requested the Office to clarify that this provision 
is only an aid to understanding the claimed subject matter, and that 
the Office will construe claims based upon the entire disclosure. 
Another comment suggested that the rule should not require appellants 
to cite to every instance of support in the Specification, but only the 
``best'' support in the Specification.
    These comments were well taken. The proposed rule makes clear that 
the reference to the specification and figures required under this 
section need only be ``sufficient to understand the claim,'' thus 
clarifying that every reference to the claim limitation in the 
specification need not be cited.
    The Office received numerous comments that the rule should not 
require appellants to map claim elements not in dispute. Some comments 
stated that it is against a practitioner's interest to say more than 
what is required for issues on appeal as it raises potential 
malpractice issues for practitioners. Other comments stated that 
requiring appellants to map all claim elements, including elements not 
in dispute, would be comparable to requiring the practitioner to 
evaluate claim support, which would potentially waive arguments or take 
positions that create estoppels or disclaimers, leading to potential 
malpractice claims.
    In response to these comments, the proposed rule limits the 
requirement to annotate the claims to only those limitations which are 
actually in dispute, thus significantly limiting any potential estoppel 
or malpractice issues.
    The Office received another comment suggesting that there should be 
no requirement to map claim support for independent claims which are 
not argued separately as they will be affirmed or rejected as a group.
    The Office declined to change this requirement of the current rule. 
Thus, the proposed rule still requires appellants to provide a summary 
of claimed subject matter for each rejected independent claim. The 
Office decided not to change this requirement because each independent 
claim in a group may be different in scope and no one claim may clearly 
be the ``broadest.'' The Board has the option to select a single claim 
from a group to decide the appeal as to the group of claims. The Board 
needs claim mapping for each independent claim so that it can select 
which claim is representative of the group. Otherwise, appellants might 
select one claim to map and the Board might decide to select a 
different claim as representative of the group, in which case the Board 
will not have the benefit of the claim summary for the selected 
representative claim.
    The proposed rule further clarifies the requirement for reference 
to the specification by noting that it should be by annotation of the 
actual claim language with reference to the page and line number or 
paragraph number of the specification. The proposed rule further 
clarifies that citation to the pre-grant publication of the application 
is not acceptable.
    The Office received one comment suggesting that the Board clarify 
the current rule by giving examples and guidance to practitioners 
rather than by adopting a new rule. The following are examples of 
acceptable claim summaries:
    In each example, the only claim limitation in dispute in the 
appeal, and thus the only claim limitation annotated, is the ``pivot 
axle'' limitation of the claim.
Example 1:
1. An apparatus, comprising:
    A first arm;
    a second arm; and
    a pivot axle (Spec. 6, ll. 1-10; Spec. 7, ll. 21-27; figs. 1, 2) 
disposed between said first arm and said second arm.
Example 2:
1. An apparatus, comprising:
    A first arm;
    a second arm; and
    a pivot axle (paras. 0032, 0033, 0040; figs. 1, 2) disposed between 
said first arm and said second arm.
    The Office received one comment requesting that the rule should 
allow various formats based on USPTO provided models, including a 
columnar chart, which would provide more

[[Page 69835]]

flexibility to appellants. This suggestion was not adopted because the 
formats received under the current rule vary widely, with some 
summaries containing little to no useful information. It is important 
to impose a specific format for this rule to ensure that the Board 
obtains the information that will be most useful. This requirement for 
a strict format has been offset with a lessening of the burden on 
appellants by requiring annotation only for those elements in dispute. 
Also, the proposed rule is more flexible than the current rule in that 
it allows citation to paragraph number, rather than limiting citations 
to page and line number of the specification.
    The Office received another comment that the current rule is 
sufficient to provide an ``easy reference guide * * * to the relevant 
sections of the specification'' and that a more detailed requirement 
(such as that proposed in the ANPRM) is unnecessary. In drafting the 
proposed rule, the current rule was used as the basis for the 
revisions, rather than the rule proposed in the ANPRM. Proposed Bd.R. 
41.37(c)(1)(v) would provide a less detailed requirement than Bd.R. 
41.37(c)(1)(v) because the proposed rule requires annotation only for 
those elements in dispute.
    The Office received another comment suggesting that if appellant 
does not identify structure for a Sec.  112, ] 6 analysis, then ``for 
purposes of the appeal'' such limitations should not be limited to 
their corresponding structure under Sec.  112, ] 6. In light of the 
Federal Circuit's decision in In re Donaldson Co., 16 F.3d 1189, 1195 
(Fed. Cir. 1994) (en banc), in which the court held that the Office 
``may not disregard the structure disclosed in the specification 
corresponding to [means-plus-function] language when rendering a 
patentability determination,'' the Board cannot ignore the structure 
corresponding to a means plus function limitation to decide an appeal. 
As a compromise, the proposed rule does not require appellant to 
provide claim mapping for a Sec.  112, ] 6 limitation if that 
limitation is not in dispute.
Appeal Brief--Content of Appeal Brief--Grounds of Rejection To Be 
Reviewed on Appeal
    Bd.R. 41.37(c)(1)(vi) requires that the appeal brief include a 
statement of the grounds of rejection. The proposed rule eliminates the 
requirement for a statement of the grounds of rejection from the brief. 
Under Proposed Bd.R. 41.31(c), discussed supra, the Board would presume 
that all rejections made in the Office Action from which the appeal was 
taken are before it on appeal, unless appellant cancels the claim(s) 
subject to a particular rejection. Moreover, under Proposed Bd.R. 
41.37(c)(1)(vii), discussed infra, the headings of the argument section 
of the brief shall reasonably identify the ground of rejection being 
contested. Therefore, it is unnecessary for the appeal brief to contain 
a separate statement of the grounds of rejection on appeal--a source of 
internal inconsistency in appeal briefs filed under the current rules.
Appeal Brief--Content of Appeal Brief--Argument
    Proposed Bd.R. 41.37(c)(1)(vii) proposes to revise the current rule 
to clarify that the argument section should specifically explain why 
the examiner erred as to each ground of rejection contested by 
appellants. The proposed revision would also provide that, except as 
provided for in Proposed Bd.R. 41.41, 41.47, and 41.52, any arguments 
not included in the appeal brief will not be considered by the Board 
``for purposes of the present appeal.'' Additionally, Proposed Bd.R. 
41.37(c)(1)(vii) would require that each ground of rejection argued be 
set forth in a separate section with a heading that reasonably 
identifies the ground being argued therein. Further, the proposed rule 
would require that any claim(s) argued separately or as a subgroup be 
placed under a separate subheading that identifies the claim(s) by 
number.
    The ANPRM proposed to amend the argument section of the brief to 
require an explanation as to why the examiner erred. The ANPRM also 
stated that any finding or conclusion of the examiner that is not 
challenged would be presumed to be correct and that appellant would 
waive all arguments that could have been, but were not, addressed in 
the argument section of the brief.
    The Office received a large number of comments regarding the 
presumption of examiner correctness language in the ANPRM. Several 
comments stated that the proposed presumption of examiner correctness 
language improperly placed the burden of persuasion on appellants to 
show error in the examiner's rejection, is inconsistent with the 
statutory requirements of the Board, and is inconsistent with case law. 
Other comments noted concern that the duration and scope of the 
presumption of examiner correctness was not made clear in the proposed 
language of the ANPRM. Another comment noted that it is difficult to 
respond to all ``points'' stated by the examiner when the examiner's 
positions are not clearly delineated in the Office action. Other 
comments expressed concern that such a presumption would force 
appellants to contest every point made by the examiner instead of 
allowing them to focus the issues for appeal. In response to these 
comments, the proposed rule in this NPRM omits the presumption of 
examiner correctness from the rule.
    One comment suggested that the argument section of this rule should 
be changed to read, ``The 'argument' shall explain why the examiner 
erred as to each ground of rejection to be reviewed. Each ground of 
rejection shall be separately argued under a separate heading.'' The 
proposed rule substantially adopts this suggested language.
    The Office received further comments regarding the waiver language 
of this portion of the ANPRM. Specifically, the Office received some 
comments that the waiver provision would limit the Board's ability to 
independently review the examiner's rejections and base the decision on 
the entire record on appeal. Other comments stated that the waiver 
provision would lead to piecemeal review of the examiner's rejection. 
One comment suggested that, if the Board adopted this waiver language, 
the Board should also limit the review of the examiner's answer to the 
facts and reasons set forth therein. One comment distinguished between 
Federal Circuit waiver cases and BPAI waiver cases, because at the 
Federal Circuit both sides are precluded from raising new issues on 
appeal, whereas at the Board the examiner may raise new issues.
    The proposed rule in this NPRM omits the waiver language from the 
rule. Nonetheless, the case law supports the Office's position on 
waiver, so despite the waiver language not being included in the rule, 
the Board will still treat as waived, for purposes of the present 
appeal, any arguments not raised by appellant. See Hyatt v. Dudas, 551 
F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments 
appellant failed to make for a given ground of rejection as waived); In 
re Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (declining to consider 
the appellant's new argument regarding the scope of a prior art patent 
when that argument was not raised before 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).
    The Office received another comment noting concern that the scope 
of the ``waiver'' is unclear, and noting that appellants should not be 
precluded from making arguments during

[[Page 69836]]

continued prosecution based on a waiver set forth in a prior appeal. 
Several comments suggested that the waiver should be limited in 
applicability for ``purposes of appeal only.'' The proposed rule 
permits the Board to refuse to consider arguments not raised in the 
appeal brief, except as provided in Proposed Bd.R. 41.41, 41.47, and 
41.52. This proposed language is substantially the same as the current 
Bd.R. 41.37(c)(1)(vii), which states that ``[a]ny arguments or 
authorities not included in the brief or a reply brief filed pursuant 
to Sec.  41.41 will be refused consideration by the Board, unless good 
cause is shown.'' Proposed Bd.R. 41.41, 41.47, and 41.52 have 
provisions allowing certain new arguments for good cause in reply 
briefs, at oral hearing, or in requests for rehearing which ensure that 
appellants have a full and fair opportunity to be heard before the 
Board. The proposed rule clarifies that the Board's right to refuse 
consideration of arguments not raised is ``for purposes of the present 
appeal'' so as to clarify that such right of refusal does not extend to 
subsequent Board appeals in the same or related applications. See 
Abbott Labs. v. TorPharm, Inc., 300 F.3d 1367, 1379 (Fed. Cir. 2002) 
(``[P]recedent has long supported the right of an applicant to file a 
continuation application despite an unappealed adverse Board decision, 
and to have that application examined on the merits. Where the Patent 
Office has reconsidered its position on patentability in light of new 
arguments or evidence submitted by the applicant, the Office is not 
forbidden by principles of preclusion to allow previously rejected 
claims.'' (internal citation omitted)).
    Proposed Bd.R. 41.37(c)(1)(vii) also proposes to revise the current 
rule to clarify the proper use of headings and to require the use of 
subheadings in order to clearly set out the ground of rejection and the 
specific claims to which each argument presented applies. These 
headings and subheadings will make certain that arguments are not 
overlooked by the examiner or the Board. The Office received one 
comment suggesting that allowing ``substantial'' compliance with the 
heading requirement of the appeal brief would prevent unnecessary 
delays in the appellate process. The comment stated that the 
requirement for headings has sometimes been interpreted by the Office 
to require a verbatim correlation to the ground of rejection as 
articulated by the examiner. The comment suggested that to prevent this 
requirement from being interpreted as a verbatim requirement, the rule 
should contain the following language ``An appeal brief that 
substantially complies with the content requirements will not be deemed 
non-compliant for minor errors in form.'' While the Office declined to 
add this proposed language to the rule, now that the Office has a sole 
reviewer of appeal briefs for compliance with this rule, the content 
requirements of this paragraph will not be interpreted as verbatim 
requirements and briefs will not be held non-compliant for minor 
formatting issues. In particular, as to the heading requirement, 
Proposed Bd.R. 41.37(c)(1)(vii) requires, ``Each ground of rejection 
contested by appellant must be argued under a separate heading, each 
heading shall reasonably identify the ground of rejection being 
contested (e.g., by claim number, statutory basis, and applied 
reference, if any).'' This proposed language means that the heading 
should contain enough detail so that the Office knows which ground of 
rejection is being argued. As to the subheading requirement, Proposed 
Bd.R. 41.37(c)(1)(vii) requires, ``Under each heading identifying the 
ground of rejection being contested, any claim(s) argued separately or 
as a subgroup shall be argued under a separate subheading that 
identifies the claim(s) by number.'' The Office offers the following 
examples of appropriate headings and subheadings which can be used for 
claims argued as a group, subgroup, or separately.
    Example 1: Claims 1-20 are pending. Claims 1-10 are rejected under 
35 U.S.C. 102(b) as being anticipated by Smith, and claims