The notice can be found here:
http://www.uspto.gov/web/offices/com/sol/notices/73fr32938.pdf
The effective date of these rules was to be December 10, 2008, however:
The effective date for the final rule published at 73 FR 32938, June 10, 2008, is delayed, pending completion of OMB review of the proposed information collection under the PRA. The Office will issue a subsequent notice identifying a revised effective date on which the final rule shall apply.
The final rules recognize that the Board is experiencing a rapid increase in ex parte appeals. This is no surprise considering that allowance rates are at record lows.
Assuming that the new rules eventually do go into effect, practitioners contemplating filing appeals under the new rules should consider the increased estoppel risk, which will become apparent after reviewing the summary below.
The amended rules make clear that the Board is not a tribunal for de novo examination. A stated objective of the amended rules is to avoid unnecessary returns to examiners by the Appeals Center and the Board.
A 30 page limit to appeal briefs is being imposed. The amended rules also require a `statement of facts' section where the appellant is required to set out the material facts relevant to the rejections on appeal.
The amended rules require an `argument' section where an appellant shall explain why the examiner is believed to have erred as to each rejection to be reviewed. Any explanation must address all points made by the examiner with which the appellant disagrees and must identify where the argument was made in the first instance to the examiner or state that the argument has not previously been made to the examiner.
The rules also allow for sanctions which may be imposed against an appellant for failure to comply with an applicable rule.
A detailed discussion follows. Skip to the discussion of 41.37, below, if you are only interested in how to prepare an appeal brief.
Bd.R 41.31(a) provides that the following language would be acceptable to take an appeal: 'An appeal is taken from the decision of the examiner mailed [specify date appealed rejection was mailed].' Papers filed in connection with an appeal, including the notice of appeal, need to be signed.
An applicant or patent owner dissatisfied with a decision of an examiner on a non-appealable issue is required to seek review by petition before an appeal is considered on the merits.
Bd.R. 41.31(e) defines a `non-appealable issue' as an issue that is not subject to an appeal under 35 U.S.C. 134. Non-appealable issues are issues (1) over which the Board does not exercise authority in appeal proceedings and (2) which are handled by a petition. Non-appealable issues include such matters as an examiner's refusal to (1) enter a response to a final rejection, (2) enter evidence presented after a final rejection, (3) enter an appeal brief or a reply brief, or (4) withdraw a restriction requirement. The rules contemplate that some petitions relating to non-appealable issues are to be decided by the Chief Administrative Patent Judge. Some of those non-appealable issues include: (1) A petition to exceed the page limit and (2) a petition to extend the time for filing a paper in the appeal after the filing of the appeal brief. Failure to timely file a petition seeking review of a decision of the examiner related to a non-appealable issue would generally constitute a waiver to have those issues considered. For example, Rule 1.181(f) provides that any petition under Rule 181 not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely. The Office intends to strictly enforce the waiver provisions of Bd.R. 41.31(e). While the Office will retain discretion to excuse a failure to timely settle non-appealable issues, it is expected that exercise of that discretion will be reserved for truly unusual circumstances.
Bd.R. 41.33(d) provides that evidence filed after a notice of appeal is filed and before an appeal brief is filed may be admitted if (1) the examiner determines that the evidence overcomes at least one rejection under appeal and (2) appellant shows good cause why the evidence was not earlier presented.
Bd.R. 41.35(a) provides that the Board acquires jurisdiction when the Board mails a docket notice. By delaying the transfer of jurisdiction until the appeal is fully briefed and the position of the appellant is fully presented for consideration by the examiner and the Office reviewers (appeal conferees), the possibility exists that the examiner will find some or all of the appealed claims patentable without the necessity of proceeding with the appeal and invoking the jurisdiction of the Board. For this reason, jurisdiction transfers to the Board only after (1) the appellant has filed an appeal brief, (2) the examiner's answer has been mailed, and (3) the appellant has filed a reply brief or the time for filing a reply brief has expired.
Bd.R. 41.35(b) provides that the jurisdiction of the Board ends when (1)the Board mails a remand order, (2) the Board mails a final decision (see § 41.50(a) and judicial review is sought or the time for seeking judicial review has expired, (3) an express abandonment is filed, or (4)a request for continued examination is filed. The Board knows when it mails a remand order and when it mails a final decision. The Board does not know if an express abandonment or a request for continued examination is filed. One problem the Board has had in the past is that an appellant does not notify the Board that it has filed an express abandonment or a request for continued examination and the Board continues to work on the appeal. Accordingly, an appellant should notify the Board immediately if an express abandonment or a request for continued examination is filed.
Bd.R. 41.35(c) continues current practice and provides that the Director could sua sponte order an appeal to be remanded to an examiner before entry of a Board decision has been mailed.
Bd.R. 41.37 provides for filing an appeal brief to perfect an appeal and sets out the requirements for appeal briefs.
Bd.R. 41.37(e) provides that an appeal brief must contain, under appropriate headings and in the order indicated, the following items: (1) Statement of the real party in interest, (2) statement of related cases, (3) jurisdictional statement, (4) table of contents, (5) table of authorities, (6) [reserved], (7) status of amendments, (8) grounds of rejection to be reviewed, (9) statement of facts, (10) argument, and (11) an appendix containing (a) claims section, (b) claim support and drawing analysis section, (c) means or step plus function analysis section, (d) evidence section, and (e) related cases section. The items are otherwise defined in other subsections of Bd.R. 41.37 and, where applicable, would apply to appeal briefs and reply briefs (Bd.R. 41.41).
Bd.R. 41.37(f) requires a `statement of real party in interest' which would include an identification of the name of the real party in interest. Since a real party in interest can change during the pendency of an appeal, there is a continuing obligation to update the real party in interest during the pendency of the appeal. If an appeal brief does not contain a statement of real party in interest, the Office will assume that the named inventors are the real party in interest.
Bd.R. 41.37(g) requires an appeal brief to include a `statement of related cases.' The statement of related cases identifies related cases by (1) application number, patent number, appeal number or interference number or (2) court docket number. The statement encompasses all prior or pending appeals, interferences or judicial proceedings known to any inventors, any attorneys or agents who prepared or prosecuted the application on appeal and any other person who was substantively involved in the preparation or prosecution of the application on appeal. A related case is one which would directly affect, or would be directly affected by or have a
bearing on the Board's decision in the appeal. A copy of any final or significant interlocutory decision rendered by the Board or a court in any proceeding identified under this paragraph shall be included in the related cases section in the appendix. A related case includes any continuing application of the application on appeal. If an appellant fails to advise the Board that it has filed a continuing application or a request for continued examination, or that it has filed an express abandonment of the application on appeal and the Board mails a decision on appeal in the application on appeal, the appellant should expect that the decision will not be removed from the file. The time to update a statement of related cases, or notify the Board that an application on appeal has been abandoned, is when the continuing application, request for continued examination, or express abandonment is filed. Appellant would be under a continuing obligation to update a statement of related cases during the pendency of the appeal. If an appeal brief does not contain a statement of related cases, the Office will assume that there are no related cases.
Bd.R. 41.37(h) requires an appeal brief to contain a `jurisdictional statement'. The jurisdictional statement is to include a statement of (1) the statute under which the appeal is taken, (2) the date of the decision from which the appeal is taken, (3) the date the notice of appeal was filed, and (4) the date the appeal brief is being filed. If a notice of appeal or an appeal brief is filed after the time specified in the rules, the appellant also would have to indicate (1) the date an extension of time was requested, and (2) if known, the date the request was granted. A jurisdictional statement will minimize the chance that the Board will consider an appeal when the application on appeal is abandoned or a reexamination proceeding on appeal has terminated.
An example of a jurisdictional statement is: `The Board has jurisdiction under 35 U.S.C. 134(a). The Examiner mailed a final rejection on August 1, 2006, setting a three-month shortened statutory period for response. The time for responding to the final rejection expired on November 1, 2006. Rule 134. A notice of appeal and a request for a one-month extension of time under Rule 136(a) was filed on November 15, 2006. The time for filing an appeal brief is two months after the filing of a notice of appeal. Bd.R. 41.37(c). The time for filing an appeal brief expired on January 16, 2007 (Monday, January 15, 2007, being a Federal holiday). The appeal brief is being filed on January 16, 2007.'
Bd.R. 41.37(i) requires an appeal brief to contain a `table of contents' identifying the items listed in Bd.R. 41.37(e) along with a page reference where each item begins. In the case of a reply brief, the table of contents will identify the items required by the reply brief rule (Bd.R. 41.41(d)).
Bd.R. 41.37(j) requires an appeal brief to contain a `table of authorities.' This item would list (1) court and administrative decisions (alphabetically arranged), (2) statutes, and (3) other authorities, along with a reference to the pages of the appeal brief where each authority is cited. A similar requirement applies to a reply brief.
Bd.R. 41.37(l) requires an appeal brief to indicate the `status of amendments' for all amendments filed after final rejection (e.g., entered or not entered). Examples of a status of amendments might read as follows: (1) `No amendment was filed after final rejection.' (2) `An amendment filed October 31, 2006, was not entered by the examiner.' (3) `An amendment filed November 1, 2006, was entered by the examiner.' (4) `An amendment filed October 31, 2006, was not entered by the examiner, but an amendment filed November 1, 2006, was entered by the examiner.'
Bd.R. 41.37(m) requires an appeal brief to set out the grounds of rejection to be reviewed, including the claims subject to each rejection. Examples might read as follows: (1) `Rejection of claim 2 as being anticipated under 35 U.S.C. 102(b) over Johnson.' (2) `Rejection of claims 23 as being unpatentable under 35 U.S.C. 103(a) over Johnson and Young.' (3) `Rejection of claim 2 as failing to comply with the written description requirement of the first paragraph of 35 U.S.C. 112.' (4) `Rejection of claim 2 as failing to comply with the enablement requirement of the first paragraph of 35 U.S.C. 112.' (5) `Rejection of claim 3 under 35 U.S.C. 251 based on recapture.'
Bd.R. 41.37(n) requires a `statement of facts.' Appellant will set out in an objective and non-argumentative manner the material facts relevant to the rejections on appeal, preferably in numbered paragraphs. A clear, concise and complete statement of relevant facts will clarify the position of an appellant on dispositive issues and assist the examiner in reconsidering the patentability of the rejected claims. A significant requirement of Bd.R. 41.37(n) is that a fact is to be supported by a reference to the page number of the Record. Where appropriate, the citation should also be to a specific line or paragraph and to a drawing figure and element number of the Record (see Bd.R. 41.37(t)). Statements of facts should be set out in short declarative sentences, and each sentence should address a single fact.
For example, `In rejecting claims 15, the examiner cites Jones (col. 4, lines 1-4).' `Jones describes a widget (col. 5,lines 56-61 and Figure 1, elements 12 and 13).' A compound statement of fact is not proper, e.g., `Jones describes a widget (col. 8, lines 3-4) and Smith does not describe a widget.'
A statement of facts has to be non-argumentative. In the case of a rejection for obviousness under section 103, the facts should address at least the scope and content of the prior art, any differences between the claim on appeal and the prior art, and the level of skill in the art.
A statement of fact based on the specification would be proper if supported by a reference to page and line or paragraph (and where appropriate also to drawing figure and element number). A statement of fact based on a patent would be proper if it is supported by a reference to a column and line (and where appropriate also to a drawing figure and element number). A statement of fact based on an affidavit would be proper if supported by a reference to a page and line number or to a page and paragraph number of the affidavit and the affidavit would appear in the evidence section (Bd.R. 41.37(t)) in the appendix.
Bd.R. 41.37(o) requires that an appeal brief contain an argument comprising an analysis explaining, as to each rejection to be reviewed, why the appellant believes the examiner erred. The analysis has to address all points made by the examiner with which the appellant disagrees. Where an argument has previously been presented to the examiner, the analysis has to identify where any argument being made to the Board was made in the first instance to the examiner. Where an argument has not previously been made to the examiner, an appellant would be required to say so in the appeal brief so that the examiner would know that the argument is new. Bd.R. 41.37(o) also requires that each rejection for which review is sought shall be separately argued under a separate heading. Also, Bd.R. 41.37(o) provides that any finding made or conclusion reached by the examiner that is not challenged would be presumed to be correct.
Bd.R. 41.37(o)(1) provides that when a ground of rejection applies to two or more claims, the claims may be argued separately (claims are considered by appellant as separately patentable) or as a group (claims stand or fall together). When two or more claims subject to the same ground of rejection are argued as a group, the Board may select a single claim from the group of claims that are argued together and decide the appeal on the basis of the selected claim alone with respect to the group of claims as to the ground of rejection. Any doubt as to whether an election has been made would be resolved against the appellant and the claims would be deemed to have been argued as a group. For each claim argued separately, a subheading identifying the claim by number is required. In the past, appellants have been confused about whether a statement of what a claim covers is sufficient to constitute an argument that the claim is separately patentable. It is not. A statement that a claim contains a limitation not present in another claim would not in and of itself be sufficient to satisfy the requirement of Bd.R. 41.37(o)(1) that a separate argument be made.
Unless an appellant plans to argue the separate patentability of a claim, the appellant should not discuss or refer to the claim in the argument section.
Bd.R. 41.37(o)(2) provides that the Board will only consider arguments that (1) are presented in the argument section of the appeal brief and (2) address claims set out in the claim support and drawing analysis section in the appendix. Appellant waives all arguments which could have been, but were not, addressed in the argument section of the appeal brief. A first example would be where Argument 1 and Argument 2 are presented in response to a final rejection, but only Argument 1 is presented in the appeal brief. Only Argument 1 would be considered. Argument 2 would be waived.
Bd.R. 41.37(o)(3) requires that when responding to points made in the final rejection, the appeal brief shall specifically (1) identify each point made by the examiner and (2) indicate where appellant previously responded to each point or state that appellant has not previously responded to the point. In supporting any argument, the appellant shall refer to a page and, where appropriate, a line or paragraph, of the Record.
Examples of argument formats that are acceptable under Bd.R. 41.37(o)(3) follow.
Example 1, where an argument had been previously presented to the examiner:
`The examiner states that Reference A teaches element B. Final Rejection mailed [insert date], page x, lines y-z. In response, appellant previously pointed out to the examiner why the examiner is believed to have erred. Amendment filed [enter date], pages 89. The response is [concisely state the response].'
Example 2, where an argument has not been previously made to the examiner:
`In response to the examiner's reliance on Reference C for the first time in the final rejection (page 4), appellant's response includes a new argument which has not been previously presented to the examiner. The response is [concisely state the response].'
Bd.R. 41.37(p) requires an appeal brief to contain a `claims section' in the appendix which consists of an accurate clean copy in numerical order of all claims pending in the application or reexamination proceeding on appeal. The claims section in the appendix would include all pending claims, not just those under rejection. The status of each claim would have to be indicated, (e.g., 1 (rejected), 2 (withdrawn), 3 (objected to), 4 (cancelled), and 5 (allowed)).
Bd.R. 41.37(r) requires an appeal brief to contain a `claim support and drawing analysis section.' The claim support section, for each independent claim involved in the appeal and each dependent claim argued separately would consist of an annotated copy of the claim indicating in bold face between braces ({ }) after each limitation where, by page and line or paragraph numbers, the limitation is described in the specification as filed. Braces ({ }) are used instead of brackets ([ ]) because brackets are used in reissue claim practice. Unlike the `claims section', only those independent claims and dependent claims being argued separately, need to appear in the `claim support and drawing analysis section.'
The `claims support and drawing analysis section' also requires for each independent claim on appeal and each dependent claim argued separately, that a drawing analysis consist of an annotated copy of the claim in numerical sequence, indicating in bold face between braces ({ }) after each limitation where, by reference or sequence residue number, each limitation is shown in the drawing or sequence.
Bd.R. 41.37(s) requires an appeal brief to contain a `means or step plus function analysis section.' The means or step plus function analysis section replaces the requirement of Rule 41.37(c)(1)(v) relating to identification of structure, material or acts for means or step plus function claim limitations contained in appealed claims. Under Bd.R. 41.37(s), the means or step plus function analysis section includes each independent claim and each dependent claim argued separately that contains a limitation that appellant regards as a means or step plus function limitation in the form permitted by the sixth paragraph of 35 U.S.C. 112. Further, for each such claim, a copy of the claim is to be reproduced indicating in bold face between braces ({ }) the specific portions of the specification and drawing that describe the structure material or acts corresponding to each claimed function.
Bd.R. 41.37(t) require an appeal brief to contain an `evidence section' in the appendix. The evidence section includes (1) table of contents, (2) affidavits and declarations upon which the appellant relied before the examiner, (3) other evidence upon which the appellant relied before the examiner, and (4) evidence relied upon by the appellant and admitted into the file pursuant to Bd.R. 41.33(d). Documents in the evidence appendix would not have to be reformatted to comply with format requirements of the appeal brief. However, the affidavits, declarations and evidence required by Bd.R 41.37(t) which is otherwise mentioned in the appeal brief, but which does not appear in the evidence section will not be considered.
Bd.R. 41.37(u) requires an appeal brief to contain a `related cases section' in the appendix. The related cases section consists of copies of orders and opinions required to be cited pursuant to Bd.R. 41.37(g).
Bd.R. 41.37(v) requires an appeal brief to be presented in a particular format. The appeal brief would have to comply with the format of Rule 52 as well as with other requirements set out in Bd.R. 41.37(v)(1), (2) and (4) through (6).
Bd.R. 41.37(v)(1) requires that the pages of an appeal brief, including all sections in the appendix, be consecutively numbered using Arabic numerals beginning with the first page of the appeal brief, which would be numbered page 1. If an appellant chooses to number the lines, line numbering may be within the left margin.
Bd.R. 41.37(v)(2) requires that text in an appeal brief be double spaced except in headings, tables of contents, tables of authorities, signature blocks and certificates of service. Block quotations would be indented, but could be presented in double spaced or space and a half format. Footnotes, which are discouraged, would be double spaced.
Bd.R. 41.37(v)(4) requires that the font size be 14 point, including the font for block quotations and footnotes.
Bd.R. 41.37(v)(5) provides that an appeal brief may not exceed 30 pages, excluding any (1) statement of the real party in interest, (2) statement of related cases, (3) jurisdictional statement, (4) table of contents, (5) table of authorities, (6) status of amendments, (7) signature block and (8) appendix. To give meaning to the 30-page limitation, an appeal brief would not be permitted to incorporate by reference arguments from other papers in the evidence appendices
or from any other source.
A request to exceed the 30-page limit would be made by petition under Bd.R. 41.3 at least ten calendar days prior to the date an appeal brief is due. Bd.R. 41.37(v)(6) requires a signature block which would identify the appellant or appellant's representative, as appropriate, and a mailing address, telephone number, fax number and e-mail address.
Other new rules relate to Examiner's Answers, Reply Briefs, Examiner's Responses to Reply Briefs, Oral Hearings, and Decisions and other actions by the Board.
