The Manual of Patent Examiner Procedure

1201-Introduction

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Manual of Patent Examining Procedure

Chapter 1200

Section 1201

1201-Introduction

1201 Introduction [R-08.2017]

1202-Composition of Board

The United States Patent and Trademark Office (Office) in administering the Patent Laws makes many decisions of a
substantive nature which the applicant may feel deny them the patent protection to which they are entitled. The differences
of opinion on such matters can be justly resolved only by prescribing and following judicial procedures. Where the
differences of opinion concern the denial of patent claims because of prior art or other patentability issues, the questions
thereby raised are said to relate to the merits, and appeal procedure within the Office and to the courts has long been
provided by statute (35 U.S.C. 134).

1203-Administrative Handling
1204-Notice of Appeal
1204.01-Reinstatement of Appeal
1204.02-Pre-Appeal Brief Review Request
and Conference Pilot Program
1204.03-Interviews After Notice of Appeal
1204.04-Official Record on Appeal
1205-Appeal Brief
1205.01-Time for Filing Appeal Brief
1205.02-Appeal Brief Content
1205.03-Non-Compliant Appeal Brief and
Amended Brief
1206-Amendments and Affidavits or Other
Evidence Filed With or After Appeal
1207-Examiner’s Answer
1207.01-Appeal Conference
1207.02-Contents of Examiner’s Answer
1207.03-New Ground of Rejection in
Examiner’s Answer
1207.03(a)-Determining Whether a
Ground of Rejection is New
1207.03(b)-Petition to Designate a New
Ground of Rejection and to Reopen
Prosecution
1207.03(c)-Appellant's Reply to New
Grounds of Rejection
1207.04-Reopening of Prosecution After
Appeal
1207.05-Substitute Examiner’s Answer

Throughout this chapter, "Board" is used to refer the Patent Trial and Appeal Board and its predecessor organizations, the
Board of Patent Appeals and Interferences and the separate Board of Appeals and Board of Interferences.
Unless otherwise noted, the discussion of the ex parte appeal practice before the Board in this chapter is primarily directed
to appeals wherein the notice of appeal was filed on or after January 23, 2012, or to proceedings commenced on or after
September 16, 2012. See Pub. L. 112-29 (September 16, 2011)(known as the Leahy-Smith America Invents Act or the AIA)
and final rule “Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals, 76 Fed. Reg.
72270 (November 22, 2011).
For information pertaining to the Board’s ex parte appeal practice and procedure in effect prior to September 16, 2012, see
Chapter 1200 in the MPEP 8th Edition, Rev. 9 (August 2012)(available on the USPTO web site at
www.uspto.gov/web/offices/ pac/mpep/old/mpep_E8R9.htm.
The line of demarcation between appealable matters for the Board and petitionable matters for the Director of the U.S.
Patent and Trademark Office (Director) should be carefully observed. The Board will not ordinarily hear a question that
should be decided by the Director on petition, and the Director will not ordinarily entertain a petition where the question
presented is a matter appealable to the Board. Ordinarily, an objection is petitionable, and a rejection is appealable, but
when the objection is "determinative of the rejection" the matter may be addressed by the Board. See In re Hengehold, 440
F.2d 1395, 1403, 169 USPQ 473, 479 (CCPA 1971) and Ex parte Frye, 94 USPQ2d 1072, 1078 (Bd. Pat. App. & Int. 2010)
(precedential). Some matters which have been determined to be petitionable and not appealable include: a requirement for
restriction or election of species, finality, non-entry of amendments, and holdings of abandonment. As 37 CFR 1.181(f)
states that any petition not filed within 2 months from the action complained of may be dismissed as untimely and since
37 CFR 1.144 states that petitions from restriction requirements must be filed no later than appeal, petitionable matters
will rarely be present in a case by the time it is before the Board for a decision. In re Watkinson, 900 F.2d 230, 14 USPQ2d
1407 (Fed. Cir. 1990).
This chapter is primarily directed to ex parte appeals. For appeals in inter partes reexamination proceedings, see 37 CFR
41.60 to 41.81 and MPEP §§ 2674 to 2683.
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1208-Reply Briefs and Fee for Forwarding
Appeal
1208.01-Fee for Forwarding an Appeal to
the Board
1209-Oral Hearing
1210-Actions Subsequent to Examiner’s
Answer but Before Board’s Decision
1211-Remand by Director or Board
1211.01-Remand by Board for Further
Consideration of Rejection
1211.02-Remand To Consider Amendment
1211.03-Remand To Consider Affidavits or
Declarations
1211.04-Remand by Board for Further
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https://www.uspto.gov/web/offices/pac/mpep/s1201.html[6/23/2020 3:27:25 PM]

1201-Introduction
1212-Board Requires Appellant to Address
Matter
1213-Decision by Board
1213.01-[Reserved]
1213.02-New Grounds of Rejection by Board
1213.03-Publication of and Public Access to
Board Decision
1214-Procedure Following Decision by Board
1214.01-Procedure Following New Ground
of Rejection by Board
1214.02-[Reserved]
1214.03-Rehearing
1214.04-Examiner Reversed in Whole
1214.05-Cancellation of Claims Not
Appealed
1214.06-Examiner Sustained in Whole or in
Part; Claims Require Action
1214.07-Reopening of Prosecution
1215-Withdrawal or Dismissal of Appeal
1215.01-Withdrawal of Appeal
1215.02-Claims Standing Allowed
1215.03-Partial Withdrawal
1215.04-Dismissal of Appeal
1216-Judicial Review
1216.01-Appeals to the U.S. Court of
Appeals for the Federal Circuit
1216.02-Civil Suits Under 35 U.S.C. 145 and
146

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https://www.uspto.gov/web/offices/pac/mpep/s1201.html[6/23/2020 3:27:25 PM]

Last Modified: 01/24/2018 17:18:48