Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte, 72270-72299 [2011-29446]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 76, Number 225 (Tuesday, November 22, 2011)]
[Rules and Regulations]
[Pages 72270-72299]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2011-29446]



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Vol. 76

Tuesday,

No. 225

November 22, 2011

Part III





United States 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; Final Rule

Federal Register / Vol. 76 , No. 225 / Tuesday, November 22, 2011 / 
Rules and Regulations

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DEPARTMENT OF COMMERCE

United States 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: Final rule.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) amends the rules governing practice before the Board of Patent 
Appeals and Interferences (Board or BPAI) in ex parte patent appeals. 
The Office amends the rules to: Remove several of the briefing 
requirements for an appeal brief, provide for the Board to take 
jurisdiction over the appeal earlier in the appeal process, no longer 
require examiners to acknowledge receipt of reply briefs, 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, 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 clarify that, for purposes 
of the examiner's answer, any rejection that relies upon Evidence not 
relied upon in the Office action from which the appeal is taken shall 
be designated as a new ground of rejection. The Office also withdraws a 
previously published final rule that never went into effect.

DATES: Effective Date: This rule is effective on January 23, 2012 
except withdrawal of the final rule published June 10, 2008 (73 FR 
32938) and delayed indefinitely on December 10, 2008 (73 FR 74972) is 
effective November 22, 2011.
    Applicability Date: This rule is applicable to all appeals in which 
a notice of appeal is filed on or after January 23, 2012.

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 41472 (July 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 32938 (June 10, 2008)). This final rule stated 
that the effective and applicability date was December 10, 2008. On 
June 9, 2008, the Office published a 60-day Federal Register notice (73 
FR 32559 (June 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 58943 (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 date of the final rule was not December 10, 2008, and 
that the effective and applicability date 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. 26, 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 
indefinitely delayed 2008 final rule and seeking public comment via a 
public roundtable and written comment (74 FR 67987 (Dec. 22, 2009)).
    In light of the comments received to these notices, the Office then 
published a notice of proposed rulemaking (NPRM) in the Federal 
Register (75 FR 69828 (Nov. 15, 2010)), which proposed to rescind the 
indefinitely delayed 2008 final rule and proposed new changes to the 
rules of practice before the Board in ex parte appeals. The public was 
invited to submit written comments. Comments were to be received on or 
before January 14, 2011. Comments received on or before January 14, 
2011, were considered.
    The Office also considered three comments received after January 
14, 2011. The Office now publishes this final rule taking into 
consideration the comments received to the NPRM.
    The Office received a comment offering an alternative rendition of 
the procedural history of these rules and claiming that OMB rejected 
the Office's original Information Collection Request. The Preamble of 
the NPRM accurately reflects the history of this rule. Accordingly, no 
changes have been made to the description of the procedural history in 
the Preamble of the final rule. Furthermore, OMB approved the Office's 
original Information Collection Request. See Notice of Office of 
Management and Budget Action, ICR Ref. No. 200809-0651-003 (Dec. 22, 
2009), https://www.reginfo.gov/public/do/PRAMain hyperlink; then search 
0651-0063; then follow ``Approved with change'' hyperlink. OMB has also 
pre-approved the Information Collection Request associated with these 
final rules. See Notice of Office of Management and Budget Action, ICR 
Ref. No. 201010-0651-001 (Jan. 4, 2011), https://www.reginfo.gov/public/do/PRAMain hyperlink; then search 0651-0063; then follow 
``Preapproved'' hyperlink.
    The Office received two comments suggesting that the Board already 
implemented the delayed 2008 final rule (73 FR 32938 (June 10, 2008), 
implementation of which was indefinitely delayed by 73 FR 74972 (Dec. 
10, 2008)). This is not true. The Office has not implemented the 
indefinitely delayed 2008 final rule.
    One commenter suggested that the fact that the Board sometimes has 
stated

[[Page 72271]]

that an appellant must ``map claims'' indicates the delayed 2008 final 
rule is already in effect. Since 2004, the Office has used this 
language to indicate that the appellant had not explained the subject 
matter defined in each independent claim by reference to the 
specification by page and line number, and to the drawing, if any, by 
reference characters, as required by the 2004 regulations. The delayed 
2008 regulations required annotation in addition to mapping. Those 
regulations have not been implemented or enforced with respect to any 
applicant. Another commenter suggested that the indefinitely delayed 
2008 regulations must be in effect because the 2004 regulations 
permitted applicants to raise arguments in either the appeal brief or 
reply brief. This is an incorrect reading of the 2004 regulations. The 
inability to raise new arguments in a reply brief is inherent in the 
nature of a reply brief; it must reply to either an argument or 
response in an answer or the failure to include a response in an 
answer. The indefinitely delayed 2008 regulations made this requirement 
clearer, but it has always been a requirement.
    The Board rules as published in 37 CFR 41.1-41.81 (2010) will 
remain in effect until the changes set forth in the instant final rule 
take effect on the effective date. The Office also withdraws the 
indefinitely delayed 2008 final rule (73 FR 32938 (June 10, 2008)) that 
never went into effect. Therefore, any appeal brief filed in an 
application or ex parte reexamination proceeding in which a notice of 
appeal is filed on or after the instant effective date must be filed in 
compliance with final Bd.R. 41.37 set forth in this final rule.

Purposes for the Rule Changes

    One purpose of this final rule is to ensure that the Board 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 final rule 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, and the grounds of rejection to be 
reviewed on appeal are no longer required in the appeal brief (final 
Bd.R. 41.37) or in the examiner's answer. Similarly, the final rule no 
longer requires appellants to file an evidence appendix or a related 
proceedings appendix (final Bd.R. 41.37). Because much of 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 examiner's 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 final rule is to eliminate any gap in time 
from the end of briefing to the commencement of the Board's 
jurisdiction. For example, under the final rule, the Board takes 
jurisdiction upon the earlier of the filing of a reply brief or the 
expiration of the time in which to file a reply brief (final Bd.R. 
41.35(a)). Examiners are no longer required to acknowledge receipt of 
the reply brief (Bd.R. 41.43 [removed]).
    The final rule 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 will be held in abeyance 
until the Board's jurisdiction ends (final 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 Examining Procedure (MPEP), discussed infra, as to what 
constitutes a new ground of rejection in an examiner's answer. The 
final rule 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 (final Bd.R. 41.40) or in a 
Board decision (final Bd.R. 41.50(c)).
    Another purpose of this final rule is to reduce confusion as to 
which claims are on appeal. For example, under the final rule, the 
Board will presume that the appeal is taken from the rejection of all 
claims under rejection unless cancelled by an applicant's amendment 
(final Bd.R. 41.31(c)). This rule simplifies practice for appellants 
who seek review of all claims under rejection--the majority of 
appellants--by obviating the need to enumerate the rejected claims that 
are being appealed. Under the previous practice, if an appellant 
incorrectly listed the claims on appeal, or was silent in the brief as 
to some of the claims under rejection, then the Office assumed that 
such claims were not on appeal, and noted 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, 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). This final rule avoids 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. This 
final rule replaces the Office's procedure under Ghuman and also 
simplifies practice for examiners by no longer requiring examiners to 
cancel non-appealed claims.
    The Supplementary Information in this notice provides: (1) An 
explanation of the final rule, (2) a discussion of the differences 
between the final rule and the proposed rule, (3) a discussion of the 
comments received to the NPRM, (4) a discussion of rule making 
considerations and comments received regarding the discussion of rule 
making considerations in the NPRM and (5) a copy of the amended 
regulatory text.
    Rules in 37 CFR 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).
    Rules in 37 CFR 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).
    Rules in 37 CFR part 41 are denominated as ``Bd.R. x'' in this 
supplementary information. For example, a reference to Bd.R. 41.3 is a 
reference to 37 CFR 41.3 (2010) (as first published in 69 FR 50003 
(August 12, 2004)).
    Changes proposed in the NPRM are denominated as ``proposed Bd.R. 
x'' in this supplementary information. A reference to ``proposed Bd.R. 
41.30'' is a reference to the proposed rule as set forth in 75 FR 
69828, 69846 (Nov. 15, 2010).
    Final rules are denominated as ``final Bd.R. x'' in this 
supplementary information. A reference to final Bd.R. x is a reference 
to the rule that will take effect on the effective date of this final 
rule.
    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.

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    The final rule does not change any of the rules relating to inter 
partes reexamination appeals. Nor does the final rule change any of the 
rules relating to contested cases.
    For purposes of the NPRM, some paragraphs that were proposed to be 
deleted were shown as ``reserved.'' These ``reserved'' paragraphs have 
been deleted entirely in the final rule, and the remaining paragraphs 
in each section have been renumbered, as appropriate.

Explanation of the Final Rule

    The notable changes to the rules are: (1) The Board will presume 
that an appeal is taken from the rejection of all claims under 
rejection unless cancelled by an amendment filed by appellant (final 
Bd.R. 41.31(c)); (2) the Board will 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 (final Bd.R. 41.35(a)); (3) the 
requirements to include statements of the status of claims, status of 
amendments, and grounds of rejection to be reviewed on appeal and the 
requirements to include an evidence appendix and a related proceedings 
appendix are eliminated from the appeal brief (final 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 
(final Bd.R. 41.37(c)(1)(i) and (ii)); (5) for purposes of the 
examiner's answer, any rejection that relies upon Evidence not relied 
upon in the Office action from which the appeal is taken (as modified 
by any advisory action) shall be designated as a new ground of 
rejection (final Bd.R. 41.39(a)(2)); (6) an 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 (final 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 is eliminated (final 
Bd.R. 41.43 [removed]). A more detailed discussion of the final rule 
follows.
    Further information relevant to particular rules appears in the 
analysis of comments portion of this final rule.

Part 1

Termination of Proceedings

    Final Rule 1.197 revises the title of this section and deletes 
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 final 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 final Rule 1.197 
and final 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 remains the same under the final rule.

Part 41

Authority

    The listing of authority for Part 41 is revised to add references 
to 35 U.S.C. 132, 133, 306, and 315. Section 132 states that the 
Director shall prescribe regulations to provide for the continued 
examination of applications for patent at the request of the applicant. 
Section 133 provides 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

    Bd.R. 41.12 is amended by deleting the following requirements: (1) 
To cite to particular case law reporters, and (2) to include parallel 
citations to multiple reporter systems. Because members of the Board 
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 rule indicates a Board preference, not a requirement, 
for citations to certain reporters and for limited use of non-binding 
authority. The requirement to include pinpoint citations, whenever a 
specific holding or portion of an authority is invoked, is retained.
    The final 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 
judges to allow an efficient and timely decision to be made on the 
merits of the case. A BPAI precedential decision is binding on the 
Board and is considered an ``authority of the Office'' and thus does 
not fall within the ambit of final Bd.R. 41.12(d).

Subpart B

Definitions

    Bd.R. 41.30 is amended to add a definition of ``Record'' so that, 
when subsequent sections of Subpart B refer to the ``Record'', it is 
clear what constitutes the official record on appeal. The final rule 
states that the official record contains the items listed in the 
content listing of the Image File Wrapper or the official file of the 
Office if other than the Image File Wrapper, excluding any amendments, 
Evidence, or other documents that were not entered. Because an 
examiner's refusal to enter an amendment, Evidence, or other documents 
is a petitionable matter that is not subject to review by the Board, 
the exclusion of such un-entered documents from the 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. An information disclosure statement or petition that is 
held in abeyance while the Board possesses jurisdiction over the 
proceeding is not an entered document and therefore is excluded from 
the definition of ``Record'' until such time as it is entered. The 
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 content listing that 
points to this artifact file. The final rule further clarifies that in 
the case of an issued patent being reissued or reexamined, the Record 
further includes the Record of the patent being reissued or reexamined. 
The Office further notes that all references listed on an Information 
Disclosure Statement (i.e., PTO-Form PTO/SB/08a or 08b), which have 
been indicated as having been considered by the examiner, or listed on 
a PTO-Form 892 are included in the definition of Record even if each of 
the so listed references does not separately appear in the content 
listing of the Image File Wrapper.
    Final Bd.R. 41.30 adopts the definition of ``Evidence'' from 
Black's Law Dictionary to provide clarity regarding the use of that 
term in Subpart B. Toward that end, final Bd.R. 41.30

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makes clear that for the purposes of Subpart B, ``Evidence'' does not 
encompass dictionaries. Excluding dictionaries from the definition of 
``Evidence'' thus allows appellants to refer to dictionaries in their 
briefs, which would otherwise be precluded under final Bd.R. 
41.33(d)(2) (absent existence of one of the enumerated exceptions). It 
further allows examiners to refer to dictionaries in the examiner's 
answers without automatically rendering a rejection a new ground under 
final Bd.R. 41.39(a)(2). Treating dictionaries in this manner is 
consistent with Supreme Court and Federal Circuit precedent, which 
contemplate that such materials may be consulted by tribunals ``at any 
time.'' See, e.g., Nix v. Hedden, 149 U.S. 304, 307 (1893) (citations 
omitted) (admitting dictionaries to understand the ordinary meaning of 
terms ``not as evidence, but only as aids to the memory and 
understanding of the court''); Phillips v. AWH Corp., 415 F.3d 1303, 
1322-23 (Fed. Cir. 2005) (en banc) (``[J]udges are free to consult 
dictionaries and technical treatises at any time in order to better 
understand the underlying technology and may also rely on dictionary 
definitions when construing claim terms, so long as the dictionary 
definition does not contradict any definition found in or ascertained 
by a reading of the patent documents.'') (citation omitted); In re 
Boon, 439 F.2d 724, 727-28 (CCPA 1971) (holding citation to dictionary 
was not tantamount to the assertion of a new ground of rejection 
``where such a reference is a standard work, cited only to support a 
fact judicially noticed and, as here, the fact so noticed plays a minor 
role, serving only to fill in the gaps which might exist in the 
evidentiary showing made by the Examiner to support a particular ground 
for rejection.'' (emphasis and internal quotations omitted)). Thus, the 
Office feels it is logical to permit the applicant and examiner to 
submit them to the Board during the briefing stage.

Appeal to the Board

    Bd.R. 41.31(a) is amended to add preamble language to make clear 
that an appeal to the Board is taken by filing a notice of appeal. This 
change is not intended to change the current practice of the Office. 
The Office continues to require appellants to file a notice of appeal 
in order to appeal an adverse decision of the examiner to the Board.
    Bd.R. 41.31(b) is amended to make clear that the signature 
requirements of Rules 1.33 and 11.18(a) do not apply to the notice of 
appeal. This change adds 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.
    Bd.R. 41.31(c) is amended so that an appeal, when taken, is 
presumed to seek review of all of the claims under rejection unless 
claims are cancelled by an amendment filed by the applicant and entered 
by the Office. This 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 final Bd.R. 41.31(c), the Board presumes that an appellant 
intends to appeal all claims under rejection except for those that have 
been cancelled. This 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 
previous practice, if an appellant incorrectly listed the claims on 
appeal, or was silent in the brief as to any of the claims under 
rejection, then the Office often assumed that such claims were not on 
appeal, and noted 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, 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 final rule 
avoids potential unintended cancellation of claims due to oversight or 
mistake by appellants in listing the claims on appeal. This final rule 
replaces the Office's procedure under Ghuman and simplifies practice 
for examiners by no 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 
has discretion to simply affirm any rejections against such claims. 
See, e.g., Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) 
(appellant waives any argument about a ground of rejection that he or 
she does not contest on appeal to the Board, and the Board may simply 
affirm the rejection).

Amendments and Affidavits or Other Evidence After Appeal

    The title of Bd.R. 41.33 is revised by replacing ``evidence'' with 
``Evidence'' to refer to the definition added in final Bd.R. 41.30.
    Bd.R. 41.33(c) is revised to delete the cross-reference to Bd.R. 
41.50(c). As noted infra, Bd.R. 41.50(c) is amended so that it is no 
longer applicable to final Bd.R. 41.33(c).
    Bd.R. 41.33(d)(1) is revised to replace ``evidence'' with 
``Evidence'' to refer to the definition added in final Bd.R. 41.30.
    Bd.R. 41.33(d)(2) is revised to replace ``evidence'' with 
``Evidence'' to refer to the definition added in final Bd.R. 41.30.
    Bd.R. 41.33 is not substantively changed except as to submission of 
dictionaries after the date of filing an appeal. Both Bd.R. 41.33 and 
final Bd.R. 41.33 otherwise restrict the types of amendments and 
evidence that can be filed after the date of filing an appeal. 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.

Jurisdiction Over Appeal

    Bd.R. 41.35(a) is amended to add a heading and 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 change is necessary because Bd.R. 
41.35(a) provides that the Board acquires jurisdiction upon transmittal 
of the file to the Board. The large majority of patent application 
files are electronic files (Image File Wrapper files), not paper files. 
Accordingly, in most cases 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, the Board must take no affirmative steps 
prior to assuming jurisdiction and no gap in time will exist from the 
end of the briefing to the commencement of jurisdiction by the Board.
    Bd.R. 41.35(b) is amended by moving some text to final Bd.R. 
41.35(e), adding a new paragraph, and by adding new text to make clear 
when the Board's

[[Page 72274]]

jurisdiction ends so that no gaps in time exist between the end of the 
Board's jurisdiction and further action by the examiner.
    Bd.R. 41.35(c) is amended to add a heading and a cross-reference to 
a relevant section of the rule.
    Final Bd.R. 41.35(d) is added to provide that, except for petitions 
authorized by part 41 of this title, the Board will 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 will 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 Bd.R. 41.33(d)(2) and final Bd.R. 
41.33(d)(2), the filing of an information disclosure statement during 
the Board's jurisdiction constitutes the introduction of untimely 
Evidence before the Board. 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. Final 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 to the Chief 
Administrative Patent Judge.
    Final Bd.R. 41.35(e) is added with a new heading and it contains 
the text previously in Bd.R. 41.35(b). This provision gives the Board 
the authority to return an appeal to the examiner if the Board deems 
that a file is not complete or is not in compliance with the 
requirements of Subpart B.

Appeal Brief--Timing and Fee; and Failure to File a Brief

    Bd.R. 41.37(a) and (b) are amended by adding new headings.

Appeal Brief--Content of Appeal Brief--Preamble

    Bd.R. 41.37(c)(1) is amended to add a heading, and to add the 
introductory phrase ``Except as otherwise provided in this paragraph'' 
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). Bd.R. 41.37(c)(1) is 
further amended 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

    Bd.R. 41.37(c)(1)(i) is amended to provide that the statement 
identifying the real party in interest should be accurate as of the 
date of filing of the appeal brief. Bd.R. 41.37(c)(1)(i) is also 
amended to allow the Board to assume that, if the statement of real 
party in interest is omitted from the appeal brief, then the named 
inventors are the real party in interest. This final rule 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. These changes are intended 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 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 final Bd.R. 41.37(c)(1)(i) is the minimum 
information needed by the Board to effectively make this determination.

Appeal Brief--Content of Appeal Brief--Related Appeals and 
Interferences

    Bd.R. 41.37(c)(1)(ii) is amended 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, the appellant's legal representative, or assignee, and 
(3) may be related to, directly affect or be directly affected by, or 
have a bearing on the Board's decision. Bd.R. 41.37(c)(1)(ii) is also 
amended to allow 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, 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 final rule 
also no longer requires filing of copies of decisions in related cases.

Appeal Brief--Content of Appeal Brief--Status of Claims [Deleted]

    Bd.R. 41.37(c)(1)(iii) is amended to delete the requirement for the 
appeal brief to contain an indication of the status of claims.

Appeal Brief--Content of Appeal Brief--Status of Amendments [Deleted]

    Bd.R. 41.37(c)(1)(iv) is amended to delete the requirement for the 
appeal brief to contain an indication of the status of amendments filed 
subsequent to final rejection.

Appeal Brief--Content of Appeal Brief--Summary of Claimed Subject 
Matter

    Bd.R. 41.37(c)(1)(v) is renumbered as final Bd.R. 41.37(c)(1)(iii) 
and is further amended to require that appellants provide a concise 
explanation of the subject matter defined in each of ``the rejected 
independent claims'' rather than ``each of the independent claims 
involved in the appeal.'' Similarly, final Bd.R. 41.37(c)(1)(iii) is 
amended to further require that the concise explanation identify the 
corresponding structure, material, or acts for each ``rejected 
independent claim'' when the claim contains a means or step plus 
function recitation as permitted by 35 U.S.C. 112, sixth paragraph. 
Under final Bd.R. 41.31(c), discussed supra, the Board will 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. Final Bd.R. 41.37(c)(1)(iii) also 
maintains the requirement that the concise explanation identify the 
corresponding structure, material, or acts for each dependent claim 
argued separately when the claim contains a means or step plus function 
recitation as permitted by 35 U.S.C. 112, sixth paragraph.
    Final Bd.R. 41.37(c)(1)(iii) is further amended to require that the 
concise explanation refer to the specification ``in the Record'' by 
page and line number ``or by paragraph number.'' The change 
incorporates the definition of Record from final Bd.R. 41.30 and makes 
clear that reference to the specification by paragraph number in lieu 
of page and line number is permissible.
    Additionally, final Bd.R. 41.37(c)(1)(iii) is amended to clarify 
that reference to the pre-grant patent application publication is not 
sufficient to satisfy the requirements of the summary of claimed 
subject matter.

Appeal Brief--Content of Appeal Brief--Grounds of Rejection to be 
Reviewed on Appeal [Removed]

    Bd.R. 41.37(c)(1)(vi) which required appellants to provide a 
statement of the grounds of rejection from the brief is removed. Under 
final Bd.R. 41.31(c), discussed supra, the Board will

[[Page 72275]]

presume that all claims under rejection are before it on appeal, unless 
applicant cancels the claim(s) subject to a particular rejection. Under 
final Bd.R. 41.39(a)(1), discussed infra, the examiner's answer is 
deemed to incorporate all of the grounds of rejection set forth in the 
Office action from which the appeal is taken (as modified by any 
advisory action and pre-appeal brief conference decision), unless the 
answer expressly withdraws a ground of rejection. Moreover, under final 
Bd.R. 41.37(c)(1)(iv), 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.

Appeal Brief--Content of Appeal Brief--Argument

    Bd.R. 41.37(c)(1)(vii) is renumbered as final Bd.R. 
41.37(c)(1)(iv). Subparagraph (vii) is deleted. Final Bd.R. 
41.37(c)(1)(iv) is amended to clarify that the argument section should 
specifically explain why the examiner erred as to each ground of 
rejection contested by appellants. The final rule also provides that, 
except as provided for in final 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, final 
Bd.R. 41.37(c)(1)(iv) further requires 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 
final rule requires that any claim(s) argued separately or as a 
subgroup be placed under a separate subheading that identifies the 
claim(s) by number.
    The Board will 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 final rule permits the Board to refuse to consider arguments 
not raised in the appeal brief, except as provided in final Bd.R. 
41.41, 41.47, and 41.52. This language in the final rule is 
substantially the same as in 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.'' Final Bd.R. 41.41, 41.47, and 
41.52 have provisions allowing certain new arguments 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 final 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)).
    Final Bd.R. 41.37(c)(1)(iv) is also amended 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 content requirements of this paragraph will not be 
interpreted as requiring verbatim recitation of the ground being 
contested and briefs will not be held non-compliant for minor 
formatting issues.

Appeal Brief--Content of Appeal Brief--Claims Appendix

    Bd.R. 41.37(c)(1)(viii) is renumbered as final Bd.R. 
41.37(c)(1)(v). Subparagraph (viii) is deleted. Final Bd.R. 
41.37(c)(1)(v) is identical to Bd.R. 41.37(c)(1)(viii) and requires 
appellants to include a claims appendix with the appeal brief 
containing ``a copy of the claims involved in the appeal.'' Because 
final Bd.R. 41.31(c) requires the Board to 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, the claims appendix must include all claims under rejection 
in the Office action from which the appeal is taken unless cancelled by 
an amendment filed by the applicant and entered by the Office.

Appeal Brief--Content of Appeal Brief--Evidence Appendix

    Bd.R. 41.37(c)(1)(ix), which required appellants to include an 
evidence appendix with the brief, is deleted.
    While it is no longer a requirement to include an evidence 
appendix, the Office strongly encourages and appreciates receiving 
copies of the evidence relied upon (e.g., copies of declarations and 
affidavits, evidence of secondary considerations, etc.). This ensures 
that the Board is considering the proper evidence and avoids any 
confusion as to the particular evidence referenced in the appeal brief. 
In the alternative, the Board recommends that appellants clearly 
identify in the appeal brief the evidence relied upon using a clear 
description of the evidence along with the date of entry of such 
evidence into the Image File Wrapper.

Appeal Brief--Content of Appeal Brief--Related Proceedings Appendix

    Bd.R. 41.37(c)(1)(x), which required appellants to include a 
related proceedings appendix with the brief, is deleted.
    While it is no longer a requirement to include a related 
proceedings appendix, the Office appreciates receiving copies of 
decisions or relevant papers from related proceedings. This ensures 
that the Board can efficiently consider the related proceedings 
information. In the alternative, the Board recommends that appellants 
clearly identify in the appeal brief any decisions or relevant 
documents from related proceedings using a clear description of the 
related proceeding, so that the Board can quickly and efficiently 
obtain copies of any such relevant documents.

Appeal Brief--New or Non-Admitted Amendments or Evidence

    Bd.R. 41.37(c)(2) is amended to add a sentence to make clear in the 
rule the current Office procedure for review of an examiner's refusal 
to admit an amendment or Evidence by petition to the Director under 
Rule 1.181. Final Bd.R. 41.37(c)(2) further replaces instances of 
``evidence'' with ``Evidence'' where appropriate to incorporate the 
definition of ``Evidence'' provided in final Bd.R. 41.30.

Appeal Brief--Notice of Non-Compliance

    Bd.R. 41.37(d) is amended to add a heading and to provide that 
under the Office's new streamlined procedure for review of ex parte 
appeal briefs for

[[Page 72276]]

compliance with the rule, review of a determination of non-compliant 
appeal brief should be requested via a petition to the Chief 
Administrative Patent Judge under Bd.R. 41.3.

Appeal Brief--Extensions of Time

    Bd.R. 41.37(e) is amended to add a heading.

Examiner's Answer

    Bd.R. 41.39(a) is amended to add a heading and preamble.
    Bd.R. 41.39(a)(1) is amended to provide that the examiner's answer, 
by default, incorporates all the grounds of rejection set forth in the 
Office action which is the basis for the appeal, including any 
modifications made via advisory action or pre-appeal brief conference 
decision, except for any grounds of rejection indicated by the examiner 
as withdrawn in the answer. Bd.R. 41.39(a)(1) is also amended to delete 
the requirement that the answer include an explanation of the invention 
claimed and of the grounds of rejection, since the Board will rely on 
appellant's specification and summary of claimed subject matter for an 
explanation of the invention claimed and will rely on the statement of 
the rejection(s) in the Office action from which the appeal is taken, 
as modified by advisory action or pre-appeal brief conference decision. 
In light of the streamlined review of appeal briefs for compliance with 
the rules, Bd.R. 41.39(a)(1) is further amended to delete the 
requirement for the primary examiner to make any determination that an 
appeal does not comply with the provisions of final Bd.R. 41.31 and 
41.37.
    Bd.R. 41.39(a)(2) is amended to provide that if a rejection set 
forth in the answer relies on any Evidence not relied on in the Office 
action from which the appeal is taken, then the rejection must be 
designated as a new ground of rejection, and any answer that contains 
such a new ground of rejection must be approved by the Director. The 
Director may choose to delegate this authority as appropriate. Bd.R. 
41.39(a)(2), as amended, refers to ``Evidence'' as defined in final 
Bd.R. 41.30.
    Bd.R. 41.39(b) is amended to add a heading.
    Bd.R. 41.39(b)(1) is amended to replace instances of ``evidence'' 
with ``Evidence'' where appropriate to refer to ``Evidence'' as defined 
in final Bd.R. 41.30.
    Bd.R. 41.39(b)(2) is amended to move the phrase ``each new ground 
of rejection'' to a different location in the sentence to increase the 
clarity of the sentence. Bd.R. 41.39(b)(2) is also amended to replace 
instances of ``evidence'' with ``Evidence'' where appropriate to refer 
to ``Evidence'' as defined in final Bd.R. 41.30. Bd.R. 41.39(b)(2) is 
further amended to replace the cross-reference to Bd.R. 
41.37(c)(1)(vii) with a reference to final Bd.R. 41.37(c)(1)(iv) in 
light of the renumbering of paragraphs within final Bd.R. 41.37(c)(1).
    Final Bd.R. 41.39(b)(1) and (b)(2) continue to provide appellants 
the option to reopen prosecution or maintain the appeal by filing a 
reply brief to respond to the new ground of rejection.
    Bd.R. 41.39(c) is amended to add a heading.
    Content requirements for the examiner's answer are not included in 
the rule, because the Office needs to retain flexibility to add content 
requirements as needed by revision of the MPEP. The Office plans to 
continue to require that the examiner's answer contain a grounds of 
rejection section that would set forth any rejections that have been 
withdrawn and any new grounds of rejection, and the answer would 
further be required to contain a response to the arguments section to 
include any response the examiner has to arguments raised in the appeal 
brief. See MPEP Sec.  1207.02. The answer would no longer be required 
to restate the grounds of rejection being maintained. The Board would 
instead rely on the statement of the grounds of rejection in the Office 
action from which the appeal was taken (as modified by any subsequent 
advisory action or pre-appeal brief conference decision).
    The following discussion provides guidance to appellants and 
examiners as to the Office's view of what constitutes a new ground of 
rejection. This discussion is for the limited ``purposes of the 
examiner's answer,'' as per final Bd.R. 41.39(a)(2). This discussion 
does not apply to final rejections under Rule 1.113. The reason for 
this distinction is that Rule 1.116 affords applicants the opportunity 
to submit rebuttal evidence after a final rejection but before or on 
the same date of filing a notice of appeal. An appellant's ability to 
introduce new evidence after the filing of an appeal is more limited 
under final Bd.R. 41.33(d) than it is prior to the appeal. Thus, 
applicants are able to present rebuttal evidence in response to a final 
rejection, while they are not permitted to do so in response to an 
examiner's answer on appeal, unless an answer is designated as 
containing a new ground of rejection.
    If Evidence (such as a new prior art reference) is applied or cited 
for the first time in an examiner's answer, then final Bd.R. 
41.39(a)(2) requires that the rejection be designated as a new ground 
of rejection. If the citation of a new prior art reference is necessary 
to support a rejection, it must be included in the statement of 
rejection, which would be considered to introduce a new ground of 
rejection. Even if the prior art reference is cited to support the 
rejection in a minor capacity, it should be positively included in the 
statement of rejection and be designated as a new ground of rejection. 
In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).
    Relying on new Evidence, however, is not the only way to trigger a 
new ground of rejection in an examiner's answer. A position or 
rationale that changes the ``basic thrust of the rejection'' will give 
rise to a new ground of rejection. In re Kronig, 539 F.2d 1300, 1303 
(CCPA 1976). However, the examiner need not use identical language in 
both the examiner's answer and the Office action from which the appeal 
is taken to avoid triggering a new ground of rejection. It is not a new 
ground of rejection, for example, if the examiner's answer responds to 
appellant's arguments using different language, or restates the 
reasoning of the rejection in a different way, so long as the ``basic 
thrust of the rejection'' is the same. In re Kronig, 539 F.2d at 1303; 
see also In re Jung, 637 F.3d 1356, 1364-65 (Fed. Cir. 2001) 
(additional explanation responding to arguments offered for the first 
time ``did not change the rejection'' and appellant had fair 
opportunity to respond); In re Noznick, 391 F.2d 946, 949 (CCPA 1968) 
(no new ground of rejection made when ``explaining to appellants why 
their arguments were ineffective to overcome the rejection made by the 
examiner''); In re Krammes, 314 F.2d 813, 817 (CCPA 1963) (``It is well 
established that mere difference in form of expression of the reasons 
for finding claims unpatentable or unobvious over the references does 
not amount to reliance on a different ground of rejection.'' (citations 
omitted)); In re Cowles, 156 F.2d 551, 1241 (CCPA 1946) (holding that 
the use of ``different language'' does not necessarily trigger a new 
ground of rejection).
    The following examples are intended to provide guidance as to what 
constitutes a new ground of rejection in an examiner's answer. What 
constitutes a ``new ground of rejection'' is a highly fact-specific 
question. See, e.g., Kronig, 539 F.2d at 1303 (finding new ground 
entered based upon ``facts of this case'' and declining to find other 
cases controlling given ``the distinctive facts at bar''); In re 
Ahlert, 424 F.2d 1088, 1092 (CCPA 1970) (``[l]ooking at the facts of 
this case, we are constrained to hold'' that a new ground was entered).

[[Page 72277]]

If a situation arises that does not fall neatly within any of the 
following examples, it is recommended that the examiner identify the 
example below that is most analogous to the situation at hand, keeping 
in mind that ``the ultimate criterion of whether a rejection is 
considered `new' * * * is whether appellants have had fair opportunity 
to react to the thrust of the rejection.'' Kronig, 539 F.2d at 1302.

Factual Situations That Constitute a New Ground of Rejection

    1. Changing the statutory basis of rejection from Sec.  102 to 
Sec.  103. If the examiner's answer changes the statutory basis of the 
rejection from Sec.  102 to Sec.  103, then the rejection should be 
designated as a new ground of rejection. For example, in In re Hughes, 
345 F.2d 184 (CCPA 1965), the Board affirmed an examiner's rejection 
under Sec.  102 over a single reference. On appeal, the Solicitor 
argued that the Board's decision should be sustained under Sec.  103 
over that same reference. The court declined to sustain the rejection 
under Sec.  103, holding that a change in the statutory basis of 
rejection would constitute a new ground of rejection, and observed that 
``the issues arising under the two sections [Sec. Sec.  102 and 103] 
may be vastly different, and may call for the production and 
introduction of quite different types of evidence.'' Hughes, 345 F.2d 
at 186-87.
    2. Changing the statutory basis of rejection from Sec.  103 to 
Sec.  102, based on a different teaching. If the examiner's answer 
changes the statutory basis of the rejection from Sec.  103 to Sec.  
102, and relies on a different portion of a reference which goes beyond 
the scope of the portion that was previously relied upon, then the 
rejection should be designated as a new ground of rejection. For 
example, in In re Echerd, 471 F.2d 632 (CCPA 1973), the examiner 
rejected the claims under Sec.  103 over a combination of two 
references. The Board then changed the ground of rejection to Sec.  102 
over one of those references, relying on a different portion of that 
reference for some claim limitations, and asserted that the remaining 
claim limitations were inherently present in that reference. The court 
held that the Board's affirmance constituted a new ground of rejection. 
Echerd, 471 F.2d at 635 (``[A]ppellants should have been accorded an 
opportunity to present rebuttal evidence as to the new assumptions of 
inherent characteristics. * * *'' (citation omitted)).
    3. Citing new calculations in support of overlapping ranges. If a 
claim reciting a range is rejected as anticipated or obvious based on 
prior art that falls within or overlaps with the claimed range (see 
MPEP Sec. Sec.  2131.03 and 2144.05), and the rejection is based upon 
range values calculated for the first time in the examiner's answer, 
then the rejection should be designated as a new ground of rejection. 
For example, in In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005), the 
examiner rejected the claims under Sec.  103 based on overlapping 
ranges of particle sizes and size distributions. The Board affirmed the 
rejection, but included in its decision an appendix containing 
calculations to support the prima facie case of obviousness. The court 
held the Board's reliance upon those values to constitute a new ground 
of rejection, stating that ``the Board found facts not found by the 
examiner regarding the differences between the prior art and the 
claimed invention, which in fairness required an opportunity for 
response.'' Kumar, 418 F.3d at 1368 (citation omitted).
    4. Citing new structure in support of structural obviousness. If, 
in support of an obviousness rejection based on close structural 
similarity (see MPEP Sec.  2144.09), the examiner's answer relies on a 
different structure than the one on which the examiner previously 
relied, then the rejection should be designated as a new ground of 
rejection. For example, in In re Wiechert, 370 F.2d 927 (CCPA 1967), 
the examiner rejected claims to a chemical composition under Sec.  103 
based on the composition's structural similarity to a prior art 
compound disclosed in a reference. The Board affirmed the rejection 
under Sec.  103 over that same reference, but did so based on a 
different compound than the one the examiner cited. The court held that 
the Board's decision constituted a new ground of rejection, stating, 
``Under such circumstances, we conclude that when a rejection is 
factually based on an entirely different portion of an existing 
reference the appellant should be afforded an opportunity to make a 
showing of unobviousness vis-a-vis such portion of the reference.'' 
Wiechert, 370 F.2d at 933.
    5. Pointing to a different portion of the claim to maintain a ``new 
matter'' rejection. If, in support of a claim rejection under 35 U.S.C. 
112, first paragraph, based on new matter (see MPEP Sec.  2163.06), a 
different feature or aspect of the rejected claim is believed to 
constitute new matter, then the rejection should be designated as a new 
ground of rejection. For example, in In re Waymouth, 486 F.2d 1058 
(CCPA 1973), the claims included the limitation ``said sodium iodide * 
* * present in amount of at least 0.17 mg./cc. of said arc tube 
volume.'' The examiner's rejection stated that the claimed ``sodium 
iodide'' constituted new matter because the specification was alleged 
only to disclose ``sodium.'' The Board affirmed the rejection, but did 
so on a ``wholly different basis,'' namely, that the specification 
failed to disclose the claimed ``0.17 mg./cc.'' volume limitation. 
Waymouth, 486 F.2d at 1060. The court held that the Board's rationale 
constituted a new ground of rejection, ``necessitating different 
responses by appellants.'' Id. at 1061.

Factual Situations That Do Not Constitute a New Ground of Rejection

    1. Citing a different portion of a reference to elaborate upon that 
which has been cited previously. If the examiner's answer cites a 
different portion of an applied reference which goes no farther than, 
and merely elaborates upon, what is taught in the previously cited 
portion of that reference, then the rejection does not constitute a new 
ground of rejection. For example, in In re DBC, 545 F.3d 1373 (Fed. 
Cir. 2008), the examiner rejected the claims under Sec.  103 over a 
combination of references, including the English translation of the 
abstract for a Japanese patent. The examiner cited the English abstract 
for two claim limitations: (1) Mangosteen rind, and (2) fruit or 
vegetable juice. The Board affirmed the rejection under Sec.  103 over 
the same references, but instead of citing the abstract, the Board 
cited an Example on page 16 of the English translation of the Japanese 
reference, which was not before the examiner. DBC, 545 F.3d at 1381. 
Importantly, the Board cited the Example for the same two claim 
limitations taught in the abstract, and the Example merely elaborated 
upon the medicinal qualities of the mangosteen rind (which medicinal 
qualities were not claimed) and taught orange juice as the preferred 
fruit juice (while the claim merely recited fruit or vegetable juice). 
Hence, the Example merely provided a more specific disclosure of the 
same two generic limitations that were fully taught by the abstract. 
The court held that this did not constitute a new ground of rejection 
because ``the example in the translation goes no farther than, and 
merely elaborates upon, what is taught by the abstract.'' DBC, 545 F.3d 
at 1382 n.5.
    2. Changing the statutory basis of rejection from Sec.  103 to 
Sec.  102, but relying on the same teachings. If the examiner's answer 
changes the statutory basis of the rejection from Sec.  103 to Sec.  
102, and relies on the same teachings of the remaining reference to 
support the Sec.  102 rejection, then the rejection does not

[[Page 72278]]

constitute a new ground of rejection. For example, in In re May, 574 
F.2d 1082 (CCPA 1978), a claim directed to a genus of chemical 
compounds was rejected under Sec.  103 over a combination of 
references. The primary reference disclosed a species that fell within 
the claimed genus. Both the examiner and the Board cited the species to 
reject the claim under Sec.  103. The court affirmed the rejection, but 
did so under Sec.  102, stating that ``lack of novelty is the epitome 
of obviousness.'' May, 574 F.2d at 1089 (citing In re Pearson, 494 F.2d 
1399, 1402 (CCPA 1974)). Because the court relied on the same prior art 
species as both the examiner and Board, the court held that this did 
not constitute a new ground of rejection. May, 574 F.2d at 1089.
    3. Relying on fewer than all references in support of a Sec.  103 
rejection, but relying on the same teachings. If the examiner's answer 
removes one or more references from the statement of rejection under 
Sec.  103, and relies on the same teachings of the remaining references 
to support the Sec.  103 rejection, then the rejection does not 
constitute a new ground of rejection. For example, in In re Kronig, 539 
F.2d 1300, 1302 (CCPA 1976), the examiner rejected the claims under 
Sec.  103 over four references. The Board affirmed the rejection under 
Sec.  103, but limited its discussion to three of the references 
applied by the examiner. Id. The Board relied upon the references for 
the same teachings as did the examiner. The court held that this did 
not constitute a new ground of rejection. Kronig, 539 F.2d at 1303 
(``Having compared the rationale of the rejection advanced by the 
examiner and the board on this record, we are convinced that the basic 
thrust of the rejection at the examiner and board level was the 
same.''). See also In re Bush, 296 F.2d 491, 495-96 (CCPA 1961) 
(Examiner rejected claims 28 and 29 under Sec.  103 based upon 
``Whitney in view of Harth;'' Board did not enter new ground of 
rejection by relying only on Whitney).
    4. Changing the order of references in the statement of rejection, 
but relying on the same teachings of those references. If the 
examiner's answer changes the order of references in the statement of 
rejection under Sec.  103, and relies on the same teachings of those 
references to support the Sec.  103 rejection, then the rejection does 
not constitute a new ground of rejection. For example, in In re Cowles, 
156 F.2d 551, 552 (CCPA 1946), the examiner rejected the claims under 
Sec.  103 over ``Foret in view of either Preleuthner or Seyfried.'' The 
Board affirmed the rejection under Sec.  103, but styled the statement 
of rejection as to some of the rejected claims as ``Seyfried in view of 
Foret,'' but relied on the same teachings of Seyfried and Foret on 
which the examiner relied. The court held that this did not constitute 
a new ground of rejection. Cowles, 156 F.2d at 554. See also In re 
Krammes, 314 F.2d 813, 816-17 (CCPA 1963) (holding that a different 
``order of combining the references'' did not constitute a new ground 
of rejection because each reference was cited for the ``same teaching'' 
previously cited).
    5. Considering, in order to respond to applicant's arguments, other 
portions of a reference submitted by the applicant. If an applicant 
submits a new reference to argue, for example, that the prior art 
``teaches away'' from the claimed invention (see MPEP Sec.  2145), and 
the examiner's answer points to portions of that same reference to 
counter the argument, then the rejection does not constitute a new 
ground of rejection. In In re Hedges, 783 F.2d 1038 (Fed. Cir. 1986),