37 CFR 41.50 — Decisions and other actions by the Board
Ninth Edition, Revision 01.2024
- (a)
- (1) Affirmance and reversal. The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner. 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. The Board may also remand an application to the examiner.
- (2) If a substitute examiner’s answer is written in
response to a remand by the Board for further consideration of a
rejection pursuant to paragraph (a)(1) of this section, the
appellant must within two months from the date of the substitute
examiner’s answer exercise one of the following two options to
avoid sua sponte dismissal of the appeal as to the claims
subject to the rejection for which the Board has remanded the
proceeding:
- (i) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130 , 1.131 or 1.132 of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner’s answer. A request that complies with this paragraph (a) will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
- (ii) Maintain appeal. Request that the appeal be maintained by filing a reply brief as provided in § 41.41 . If such a reply brief is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the examiner under paragraph (a)(2)(i) of this section.
- (b)
New ground of rejection. Should the Board have
knowledge of any grounds not involved in the appeal for rejecting any
pending claim, it may include in its opinion a statement to that
effect with its reasons for so holding, and designate such a statement
as a new ground of rejection of the claim. A new ground of rejection
pursuant to this paragraph shall not be considered final for judicial
review. When the Board enters such a non-final decision, the
appellant, within two months 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 as to the
rejected claims:
- (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.
- (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
- (c) Review of undesignated new ground of rejection. Any request to seek review of a panel’s failure to designate a new ground of rejection in its decision must be raised by filing a request for rehearing as set forth in § 41.52 . Failure of appellant to timely file such a request for rehearing will constitute a waiver of any arguments that a decision contains an undesignated new ground of rejection.
- (d) Request for briefing and information. The Board may order appellant to additionally brief any matter that the Board considers to be of assistance in reaching a reasoned decision on the pending appeal. Appellant will be given a time period within which to respond to such an order. Failure to timely comply with the order may result in the sua sponte dismissal of the appeal.
- (e) Remand not final action. Whenever a decision of the Board includes a remand, that decision shall not be considered final for judicial review. When appropriate, upon conclusion of proceedings on remand before the examiner, the Board may enter an order otherwise making its decision final for judicial review.
- (f) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; revised, 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
Cited authority
- 37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action
- 37 CFR 1.130 Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act
- 37 CFR 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art
- 37 CFR 1.132 Affidavits or declarations traversing rejections or objections
- 37 CFR 1.112 Reconsideration before final action
- 37 CFR 41.41 Reply brief
- 37 CFR 41.52 Rehearing
- 37 CFR 1.136 Extensions of time
- 37 CFR 1.550 Conduct of ex parte reexamination proceedings
Cited by
- 1002.02(j) Petitions Decided by the Patent Trial and Appeal Board
- 1204.01 Reinstatement of Appeal
- 1205.01 Time for Filing Appeal Brief
- 1206 Amendments and Affidavits or Other Evidence Filed With or After Appeal
- 1207.03(c) Appellant's Reply to New Grounds of Rejection
- 1207.05 Substitute Examiner’s Answer
- 1208 Reply Briefs and Fee for Forwarding Appeal
- 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
- 1211.03 Remand To Consider Affidavits or Declarations
- 1212 Board Requires Appellant to Address Matter
- 1213 Decision by Board
- 1213.02 New Grounds of Rejection by Board
- 1214.01 Procedure Following New Ground of Rejection by Board
- 1214.03 Rehearing
- 1214.04 Examiner Reversed in Whole
- 1214.06 Examiner Sustained in Whole or in Part; Claims Require Action
- 1214.07 Reopening of Prosecution
- 1215.01 Withdrawal of Appeal
- 1215.03 Partial Withdrawal
- 1215.04 Dismissal of Appeal
- 2275 Examiner’s Answer
- 2287 Conclusion of Ex Parte Reexamination Proceeding
- 2730 Applications Filed on or After May 29, 2000; Grounds for Adjustment
- 2731 Period of Adjustment
- 2732 Reduction of Period of Adjustment of Patent Term
- 706.07(h) Request for Continued Examination (RCE) Practice
- 714.12 Amendments and Other Replies After Final Rejection or Action
- 37 CFR 1.116 Amendments and affidavits or other evidence after final action and prior to appeal
- 37 CFR 1.136 Extensions of time
- 37 CFR 1.198 Reopening after a final decision of the Patent Trial and Appeal Board
- 37 CFR 1.704 Reduction of period of adjustment of patent term
- 37 CFR 1.704 (2015-03-10 thru 2020-07-15) Reduction of period of adjustment of patent term
- 37 CFR 41.33 Amendments and affidavits or other Evidence after appeal
- 37 CFR 41.35 Jurisdiction over appeal
- 37 CFR 41.52 Rehearing