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1211.01 Remand by Board for Further Consideration of Rejection [R-3] - 1200 Appeal
1211.01 Remand by Board for Further Consideration of Rejection [R-3]
A supplemental examiner's answer written in response to a remand by the Board for further consideration of a rejection pursuant to 37 CFR 41.50(a)(1) may set forth a new ground of rejection. See MPEP § 1207.03.
If a supplemental examiner's answer is written in response to a remand by the Board for further consideration of a rejection pursuant to 37 CFR 41.50(a)(1) (even when there is no new ground of rejection made in the supplemental examiner's answer), the appellant must 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:
(A) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment or submission of affidavits (37 CFR 1.130, 1.131 or 1.132) 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 supplemental examiner's answer. A request that complies with 37 CFR 41.50(a)(2)(i) will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of 37 CFR 1.112. Any request that prosecution be reopened under 37 CFR 41.50(a)(2)(i)will be treated as a request to withdraw the appeal.
(B) Maintain appeal. Request that the appeal be maintained by filing a reply brief as provided in 37 CFR 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 37 CFR 41.50(a)(2)(i).
>See MPEP § 1207.03 for information on new ground of rejection.
See MPEP § 1207.05 for information on supplemental examiner's answer and appellant's response to a supplemental examiner's answer.
See MPEP § 1208 on reply briefs and examiner's responses to reply briefs.
The following are two examples of situations where there may be a remand by the Board for examiner action that is not for further consideration of a rejection:
(A) A remand to consider an Information Disclosure Statement; and
(B) A remand for the examiner to consider a reply brief.
37 CFR 41.50(a)(2) does not apply when the remand by the Board is not for further consideration of a rejection. The Board will normally indicate in the remand whether 37 CFR 41.50(a)(2)(i) applies. Appellant cannot request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) and is not required to reply to a supplemental examiner's answer that is written in response to a remand that is not for further consideration of a rejection.
The following form paragraphs may be used in preparing the supplemental examiner's answer after a remand from the Board:
¶ 12.184 Supplemental Examiner's Answer -No option to Reopen Prosecution
Responsive to [1] on [2], a supplemental Examiner's Answer is set forth below: [3].
Appellant may file another reply brief in compliance with 37 CFR 41.41 within two months of the date of mailing of this supplemental examiner's answer. Extensions of time under 37 CFR 1.136(a) are not applicable to this two month time period. See 37 CFR 41.43(b)-(c).
A Technology Center Director or designee has approved this supplemental examiner's answer by signing below:
[4]
Examiner Note
1. In bracket 1, insert the reason the supplemental examiner's answer is being prepared, e.g.," the remand under 37 CFR 41.50(a)(1) for reasons other than for further consideration of a rejection", or "the reply brief under 37 CFR 41.41 filed".
2. In bracket 2, insert the date of remand or the date the reply brief was filed.
3. In bracket 3, provide the supplemental examiner's answer (e.g., pursuant to 37 CFR 41.43(a), without raising any new grounds of rejection.
4. In bracket 4, insert the TC Director's or designee's signature. A TC Director or designee must approve every supplemental examiner' s answer.
¶ 12.185 Supplemental Examiner's Answer - On Remand FOR FURTHER CONSIDERATION OF A REJECTION
Pursuant to the remand under 37 CFR 41.50(a)(1) by the Board of Patent Appeals and Interferences on [1] for further consideration of a rejection, a supplemental Examiner's Answer under 37 CFR 41.50(a)(2) is set forth below: [2].
The appellant must within TWO MONTHS from the date of the supplemental 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:
(1) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit, or other evidence. Any amendment, affidavit, or other evidence must be relevant to the issues set forth in the remand or raised in the supplemental examiner's answer. Any request that prosecution be reopened will be treated as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i).
(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 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 under 37 CFR 41.50(a)(2)(i). See 37 CFR 41.50(a)(2)(ii).
Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.
A Technology Center Director or designee has approved this supplemental examiner's answer by signing below:
[3]
Examiner Note
1. In bracket 1, insert the date of the remand.
2. In bracket 2, provide reasons supporting the rejections set forth in the supplemental Examiner's Answer.
3. In bracket 3, insert the TC Director's or designee's signature. A TC Director or designee must approve every supplemental examiner's answer.
The supervisory patent examiner must approve any action in which a remanded application is withdrawn from appeal. See MPEP § 706.07(e) and § 1002.02(d). If the examiner decides to withdraw the final rejection and reopen prosecution to enter a new ground of rejection, approval from the supervisory patent examiner is required. See MPEP § 1207.04.<
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