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2675 Appellant Brief [Added R-2] - 2600 Optional Inter Partes Reexamination
2675 Appellant Brief [Added R-2]
37 CFR 1.963 Time for filing briefs in inter partes reexamination.
(a) An appellant's brief in an inter partes reexamination must be filed no later than two months from the latest filing date of the last-filed notice of appeal or cross appeal or, if any party to the inter partes reexamination is entitled to file an appeal or cross appeal but fails to timely do so, the expiration of time for filing (by the last party entitled to do so) such notice of appeal or cross appeal. The time for filing an appellant's brief may not be extended.
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37 CFR 1.965 Appellant's brief in inter partes reexamination.
(a) Appellant(s) may once, within time limits for filing set forth in § 1.963, file a brief in triplicate and serve the brief on all other parties to the inter partes reexamination proceeding in accordance with § 1.903. The brief must be signed by the appellant, or the appellant's duly authorized attorney or agent and must be accompanied by the requisite fee set forth in § 1.17(c). The brief must set forth the authorities and arguments on which appellant will rely to maintain the appeal. Any arguments or authorities not included in the brief will be refused consideration by the Board of Patent Appeals and Interferences, unless good cause is shown.
(b) A party's appeal shall stand dismissed upon failure of that party to file an appellant's brief, accompanied by the requisite fee, within the time allowed.
(c) The appellant's brief shall contain the following items under appropriate headings and in the order indicated below, unless the brief is filed by a party who is not represented by a registered practitioner. The brief may include an appendix containing only those portions of the record on which reliance has been made.
(1) Real Party in Interest. A statement identifying the real party in interest.
(2) Related Appeals and Interferences. A statement identifying by number and filing date all other appeals or interferences known to the appellant, the appellant's legal representative, or assignee which will directly affect or be directly affected by or have a bearing on the decision of the Board of Patent Appeals and Interferences in the pending appeal.
(3) Status of Claims. A statement of the status of all the claims, pending or canceled. If the appellant is the patent owner, the appellant must also identify the rejected claims whose rejection is being appealed. If the appellant is a third party requester, the appellant must identify the claims that the examiner has made a determination favorable to patentability, which determination is being appealed.
(4) Status of Amendments. A statement of the status of any amendment filed subsequent to the close of prosecution.
(5) Summary of Invention. A concise explanation of the invention or subject matter defined in the claims involved in the appeal, which shall refer to the specification by column and line number, and to the drawing(s), if any, by reference characters.
(6) Issues. A concise statement of the issues presented for review. No new ground of rejection can be proposed by a third party requester appellant.
(7) Grouping of Claims. If the appellant is the patent owner, for each ground of rejection in the Right of Appeal Notice which appellant contests and which applies to a group of two or more claims, the Board of Patent Appeals and Interferences shall select a single claim from the group and shall decide the appeal as to the ground of rejection on the basis of that claim alone unless a statement is included that the claims of the group do not stand or fall together; and, in the argument under paragraph (c)(8) of this section, appellant explains why the claims of this group are believed to be separately patentable. Merely pointing out differences in what the claims cover is not an argument as to why the claims are separately patentable.
(8) Argument. The contentions of appellant with respect to each of the issues presented for review in paragraph (c)(6) of this section, and the bases therefor, with citations of the authorities, statutes, and parts of the record relied on. Each issue should be treated under a separate, numbered heading.
(i) For each rejection under 35 U.S.C. 112, first paragraph, or for each determination favorable to patentability, including a determination not to make a proposed rejection under 35 U.S.C. 112, first paragraph, which appellant contests, the argument shall specify the errors in the rejection or the determination and how the first paragraph of 35 U.S.C. 112 is complied with, if the appellant is the patent owner, or is not complied with, if the appellant is a third party requester, including, as appropriate, how the specification and drawing(s), if any,
(A) Describe, if the appellant is the patent owner, or fail to describe, if the appellant is a third party requester, the subject matter defined by each of the appealed claims; and
(B) Enable, if the appellant is the patent owner, or fail to enable, if the appellant is a third party requester, any person skilled in the art to make and use the subject matter defined by each of the appealed claims.
(ii) For each rejection under 35 U.S.C. 112, second paragraph, or for each determination favorable to patentability including a determination not to make a proposed rejection under 35 U.S.C. 112, second paragraph, which appellant contests, the argument shall specify the errors in the rejection, if the appellant is the patent owner, or the determination, if the appellant is a third party requester, and how the claims do, if the appellant is the patent owner, or do not, if the appellant is a third party requester, particularly point out and distinctly claim the subject matter which the inventor regards as the invention.
(iii) For each rejection under 35 U.S.C. 102 or for each determination favorable to patentability including a determination not to make a proposed rejection under 35 U.S.C. 102 which appellant contests, the argument shall specify the errors in the rejection, if the appellant is the patent owner, or determination, if the appellant is a third party requester, and why the appealed claims are, if the appellant is the patent owner, or are not, if the appellant is a third party requester, patentable under 35 U.S.C. 102, including any specific limitations in the appealed claims which are or are not described in the prior art.
(iv) For each rejection under 35 U.S.C. 103 or for each determination favorable to patentability, including a determination not to make a proposed rejection under 35 U.S.C. 103 which appellant contests, the argument shall specify the errors in the rejection, if the appellant is the patent owner, or determination, if the appellant is a third party requester. If appropriate, also state the specific limitations in the appealed claims which are or are not described in the prior art and explain how such limitations render the claimed subject matter obvious, if the appellant is a third party requester, or unobvious, if the appellant is the patent owner, over the prior art. If the rejection or determination is based upon a combination of references, the argument shall explain why the references, taken as a whole, do or do not suggest the claimed subject matter. The argument should include, as may be appropriate, an explanation of why features disclosed in one reference may or may not properly be combined with features disclosed in another reference. A general argument that all the limitations are or are not described in a single reference does not satisfy the requirements of this paragraph.
(v) For any rejection other than those referred to in paragraphs (c)(8)(i) to (iv) of this section or for each determination favorable to patentability, including any determination not to make a proposed rejection other than those referred to in paragraphs (c)(8)(i) to (iv) of this section which appellant contests, the argument shall specify the errors in the rejection, if the appellant is the patent owner, or determination, if the appellant is a third party requester, and the specific limitations in the appealed claims, if appropriate, or other reasons, which cause the rejection or determination to be in error.
(9) Appendix. An appendix containing a copy of the claims appealed by the appellant.
(10) Certificate of Service. A certification that a copy of the brief has been served in its entirety on all other parties to the reexamination proceeding. The names and addresses of the parties served must be indicated.
(d) If a brief is filed which does not comply with all the requirements of paragraphs (a) and (c) of this section, appellant will be notified of the reasons for non-compliance and provided with a non-extendable period of one month within which to file an amended brief. If the appellant does not file an amended brief during the one-month period, or files an amended brief which does not overcome all the reasons for non-compliance stated in the notification, that appellant's appeal will stand dismissed.
In order to file an appellant brief, it is necessary to have first filed a timely and proper notice of appeal or notice of cross appeal; see MPEP § 2674 and § 2674.01. Each party that filed a timely and proper notice of appeal or notice of cross appeal must then file its appellant brief with fee (set forth in 37 CFR 1.17(c)) by the later of:
(A) within two months from the date of the last-filed notice of appeal or cross appeal; or
(B) if a patent owner or third party requester is entitled to file an appeal or cross appeal but fails to timely do so, until the expiration of time for filing (by the last party entitled to do so) such notice of appeal or cross appeal.
The time for filing an appellant brief may not be extended. 37 CFR 1.963(a).
Pursuant to 37 CFR 1.965(d), if a brief is filed which does not comply with all the requirements of 37 CFR 1.965(a) and (c), appellant will be notified and given a nonextendable period of one month within which to file an amended brief to correct the defect(s). Failure to timely file the appellant brief and fee within the time allowed will result in dismissal of the appeal of the party that failed to take the timely action. Note that if an appellant brief is late, or if an amended appellant brief is not submitted after a requirement to correct the defect(s), the respondent brief will be placed in the file and given a paper number; however, it will be marked as "not entered" since it is not formally received into the record, and it will not be considered. The same is true for an amended appellant brief which is late.
Where all parties who filed an appeal or cross appeal fail to timely file an appellant brief and fee within the time allowed, the reexamination proceeding is terminated by a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC), and a certificate is issued indicating the status of the claims at the time of appeal.
The appellant brief, as well as every other paper relating to an appeal, should indicate the number of the Technology Center (TC) and Art Unit to which the reexamination is assigned and the reexamination control number. When an appellant brief is received, it is scanned and then entered into the file by the Central Reexamination Unit (CRU) and then forwarded to the TC.
The submission of 3 copies of the appellant brief is required. A fee as set forth in 37 CFR 1.17(c) is required when the appellant brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a). 37 CFR 1.965 requires that the appellant shall provide, in the appellant brief, the authorities and arguments on which the appellant will rely to maintain the appeal, a concise explanation of the invention which must refer to the specification by column and line number (and to the drawing, if any, by reference characters), and a copy of the claims involved. The copy of the claims (involved in the appeal) required in the brief Appendix by 37 CFR 1.965(c)(9) should be a clean copy. The clean copy must include all brackets and underlining as required by 37 CFR 1.530(d) et seq. For the sake of convenience, the copy of the claims involved should start on a new page, and it should be double spaced.
The provisions of 37 CFR 1.965(c) should be carefully reviewed to ensure that a complete appellant brief is provided. Patent owners are reminded that their briefs in appeal cases must be responsive to every ground of rejection stated by the examiner which the patent owner-appellant contests. Third party requesters are reminded that their briefs in appeal cases must be responsive to each examiner determination of patentability (determination of inapplicability of a proposed rejection) which the third party requester-appellant contests. Oral argument at the hearing will not remedy such a deficiency in the appellant brief.
Where the appellant brief is not complete as to the provisions of 37 CFR 1.965(a) and (c), appellant will be notified (in accordance with 37 CFR 1.965(d)) by the examiner that he/she is given one (1) month to correct the defect(s) by filing a supplemental appellant brief. Where this procedure has not been followed, the Board of Patent Appeals and Interferences should remand the reexamination file to the examiner for appropriate action.
When the record clearly indicates an intentional failure to respond by appellant brief to any ground of rejection or determination of patentability, the examiner should so inform the Board of Patent Appeals and Interferences in his/her answer and specify the claim(s) affected. Where the failure to respond by appellant brief appears to be intentional, the Board of Patent Appeals and Interferences may dismiss the appeal (of the appropriate party) as to the claims involved. Oral argument at a hearing will not remedy such a deficiency in a brief.
It is essential that the Board of Patent Appeals and Interferences should be provided with a brief fully stating the position of the appellant with respect to each issue involved in the appeal so that no search of the record is required in order to determine that position. The fact that appellant may consider a ground or determination to be clearly improper does not justify a failure on the part of the appellant to point out to the Board the argument, i.e., reasons, for that view. A distinction must be made between the lack of any argument and the presentation of arguments which carry no conviction. In the former case, dismissal is in order, while in the latter case a decision on the merits is made, although it may well be merely an affirmance based on the grounds or determination relied upon by the examiner.
Ignoring or acquiescing in any rejection or determination, even one based upon formal matters which could be corrected by subsequent amendments, will invite a dismissal of the appeal as to the appropriate party. The reexamination proceedings will be considered terminated as of the date of the dismissal of the appeal of all parties who filed an appeal or cross appeal.
I. AMENDMENTS
An amendment filed during the appeal stage will not be entered, in the absence of a petition under 37 CFR 1.182, because the rules do not provide for an amendment during the appeal stage in reexamination. If the examiner wishes to have the patent owner provide an amendment during the appeal stage, the examiner must reopen prosecution, accept the amendment for entry, permit timely comment on the new amendment by the third party requester, and then issue a new Action Closing Prosecution (ACP). See MPEP § 2673.01.
II. AFFIDAVITS, DECLARATIONS, OR EXHIBITS
Affidavits, declarations, or exhibits submitted after the case has been appealed are provided for in the rules and will be admitted only with a showing of good and sufficient reasons why they were not earlier presented. 37 CFR 1.975. However, the affidavits, declarations, or exhibits will not be considered if they raise new issues requiring more than nominal consideration. Note also In re Affidavit Filed After Final Rejection, 152 USPQ 292, 1966 C.D. 53 (Comm'r Pat. 1966) which states that affidavits submitted after a final rejection in an application (i.e., after an ACP, in an inter partes reexamination) are treated in a manner analogous to the treatment of an amendment after a final rejection in an application.
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