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2681 Board of Patent Appeals and Interferences Decision [Added R-2] - 2600 Optional Inter Partes Reexamination
2681 Board of Patent Appeals and Interferences Decision [Added R-2]
37 CFR 1.977 Decision by the Board of Patent Appeals and Interferences; remand to examiner in inter partes reexamination.
(a) The Board of Patent Appeals and Interferences, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner's determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Board of Patent Appeals and Interferences as a new ground of rejection under paragraph (b) of this section. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.
(b) Should the Board of Patent Appeals and Interferences have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in the decision a statement to that effect with its reasons for so holding, which statement shall constitute a new ground of rejection of the claim. A decision which includes a new ground of rejection shall not be considered final for purposes of judicial review. When the Board of Patent Appeals and Interferences makes a new ground of rejection, the patent owner, within one month from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal proceeding as to the rejected claim:
(1) The patent owner may submit an appropriate amendment of the claim so rejected or a showing of facts relating to the claim, or both.
(2) The patent owner may file a request for rehearing of the decision of the Board of Patent Appeals and Interferences under § 1.979(a).
(c) Where the patent owner has responded under paragraph (b)(1) of this section, any third party requester, within one month of the date of service of the patent owner response, may once file comments on the response. Such written comments must be limited to the issues raised by the decision of the Board of Patent Appeals and Interferences and the patent owner's response. Any third party requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 1.17(b) and (c), respectively, which must accompany the comments or reply.
(d) Following any response by the patent owner under paragraph (b)(1) of this section and any written comments from a third party requester under paragraph (c) of this section, the reexamination proceeding will be remanded to the examiner. The statement of the Board of Patent Appeals and Interferences shall be binding upon the examiner unless an amendment or showing of facts not previously of record be made which, in the opinion of the examiner, overcomes the new ground of rejection. The examiner will consider any response under paragraph (b)(1) of this section and any written comments by a third party requester under paragraph (c) of this section and issue a determination that the rejection should be maintained or has been overcome.
(e) Within one month of the examiner's determination pursuant to paragraph (d) of this section, the patent owner or any third party requester may once submit comments in response to the examiner's determination. Within one month of the date of service of comments in response to the examiner's determination, any party may file a reply to the comments. No third party requester reply may address the comments of any other third party requester reply. Any third party requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 1.17(b) and (c), respectively, which must accompany the comments or reply.
(f) After submission of any comments and any reply pursuant to paragraph (e) of this section, or after time has expired, the reexamination proceeding will be returned to the Board of Patent Appeals and Interferences which shall reconsider the matter and issue a new decision. The new decision will incorporate the earlier decision, except for those portions specifically withdrawn.
(g) The time period set forth in paragraph (b) of this section is subject to the extension of time provisions of § 1.956, when the patent owner is responding under paragraph (b)(1) of this section. The time period set forth in paragraph (b) of this section may not be extended when the patent owner is responding under paragraph (b)(2) of this section. The time periods set forth in paragraphs (c) and (e) of this section may not be extended.
After consideration of the record of the inter partes reexamination proceeding, including all briefs and the examiner's answer, the Board of Patent Appeals and Interferences (Board) issues its decision, affirming the examiner in whole or in part, or reversing the examiner's decision, sometimes also setting forth a new ground of rejection. Where there is reason to do so, the Board will sometimes remand the reexamination proceeding to the examiner for further consideration, prior to rendering a decision.
On occasion, the Board has refused to consider an appeal until after the conclusion of a pending civil action or appeal to the United States Court of Appeals for the Federal Circuit involving issues identical with, or similar to, those presented in the later appeal. Such suspension of action, postponing consideration of the appeal until the Board has the benefit of a court decision which may be determinative of the issues involved, has been recognized as sound practice.
I. BOARD DECISION MAY CONTAIN NEW GROUND OF REJECTION
37 CFR 1.977(b) provides express authority for the Board to include, in its decision, a recommendation for rejecting any claim found patentable by the examiner that the Board believes should be again considered by the examiner. 37 CFR 1.977(b) is not intended as an instruction to the Board to revisit every patentable claim in every appealed proceeding. It is, rather, intended to give the Board express authority to act when it becomes apparent, during the consideration of the claims, that one or more patentable claims may be subject to rejection on either the same grounds or on different grounds from those applied against the rejected claims.
It should be noted that, pursuant to 37 CFR 1.977(a), the reversal of the examiner's determination not to make a rejection proposed by the requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection. Accordingly, such reversal will be set forth in the Board's decision as a new ground of rejection under 37 CFR 1.977(b).
II. NON-FINAL BOARD DECISIONS
A decision of the Board which includes a new ground of rejection or a remand will not be considered as a final decision in the case. The Board, following conclusion of the proceedings before the examiner, will either adopt its earlier decision as final or will render a new decision based on all appealed claims, as it considers appropriate. In either case, final action by the Board will give rise to the alternatives available to a party to the appeal following a decision by the Board.
III. NO BOARD RECOMMENDATION OF AMENDMENT TO MAKE CLAIM PATENTABLE
It should be noted that, unlike the practice for applications and ex parte reexaminations, the decision of the Board of Patent Appeals and Interferences cannot include an explicit statement that a claim may be allowed in amended form, whereby the patent owner would have the right to amend in conformity with that statement and it would be binding on the examiner in the absence of new references or grounds of rejection. The reason that the Board decision cannot make such a recommendation is that to permit the patent owner and the third party comment on a Board determination of the patentability of a hypothetical amended claim would be unduly complicated so late in the proceedings.
Additionally, in the absence of an express recommendation, a remark by the Board that a certain feature does not appear in a claim is not to be taken as a recommendation that the claim be allowed if the feature is supplied by amendment. Ex parte Norlund, 1913 C.D. 161, 192 O.G. 989 (Comm'r Pat. 1913).
IV. REVIEW OF BOARD DECISION BY PETITION
Since review of the decisions of the Board is committed by statute to the Court of Appeals for the Federal Circuit, the Board's decisions are properly reviewable on petition only to the extent of determining whether they involve a convincing showing of error, abuse of discretion, or policy issue appropriate for higher level determination. Reasonable rulings made by the Board on matters resting in its discretion will not be disturbed upon petition. Thus, for example, the Board's opinion as to whether it has employed a new ground of rejection will not be set aside on petition unless said opinion is found to be clearly unwarranted.
V. PUBLICATION OF BOARD DECISIONS
Decisions of the Board may be published at the discretion of the Director of the Office. Requests by members of the public or parties to the reexamination proceeding to publish a decision of the Board should be referred to the Office of the Solicitor.
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