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1212 Board Requires Appellant to Address Matter - 1200 Appeal
1212 Board Requires Appellant to Address Matter
37 CFR 1.196 Decision by the Board of Patent Appeals and Interferences.
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(d) The Board of Patent Appeals and Interferences may require appellant to address any matter that is deemed appropriate for a reasoned decision on the pending appeal. Appellant will be given a non-extendable time period within which to respond to such a requirement.
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37 CFR 1.196(d) authorizes the Board to require an appellant to clarify the record by addressing any matter deemed appropriate for a reasoned decision on the appeal. This may include, for example: (A) the applicability of particular case law that has not been previously identified as relevant to an issue in the appeal; or (B) the applicability of prior art that has not been made of record.
The rule further provides that the appellant will be given a non-extendable time period within which to respond to the requirement. Failure to respond within the time period set by the Board will result in dismissal of the appeal.
The making of a requirement under 37 CFR 1.196(d) is discretionary with the Board. The authority granted in 37 CFR 1.196(d) does not affect the Board's authority to remand a case to the examiner in a situation where the Board considers action by the examiner in the first instance to be necessary or desirable. See MPEP § 1211. Also, after an appellant has replied to a requirement under 37 CFR 1.196(d), a remand to the examiner may be deemed to be appropriate.
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