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1215.03 Partial Withdrawal [R-3] - 1200 Appeal
1215.03 Partial Withdrawal [R-3]
A withdrawal of the appeal as to some of the claims on appeal operates as an authorization to cancel those claims from the application or reexamination proceeding and the appeal continues as to the remaining claims. The withdrawn claims will be canceled from an application by direction of the examiner at the **>time of the withdrawal of the appeal as to those claims. Examiner may use the following form paragraph to cancel the claims that are withdrawn from appeal at the time of the withdrawal:
¶ 12.121 Withdrawal of Appeal as to Some of the Claims on Appeal
The withdrawal of the appeal as to claims [1] operates as an authorization to cancel these claims from the application or reexamination proceeding. See MPEP § 1215.03. Accordingly, these claims are canceled.
Examiner Note
1. In bracket 1, insert the claim numbers of the claims that were withdrawn from appeal.
If appellant fails to respond to a new ground of rejection made in an examiner's answer by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the examiner's answer, the appeal is sua sponte dismissed as to the claims subject to the new ground of rejection. See MPEP § 1207.03. The examiner should use form paragraph 12.179.02 to notify the appellant of the dismissal and cancel those claims.
¶ 12.179.02 Dismissal Following New Ground(s) of Rejection in Examiner's Answer
Appellant failed to timely respond to the examiner's answer mailed on [1] that included a new ground of rejection mailed on [1]. Under 37 CFR 41.39(b), if an examiner's answer contains a rejection designated as a new ground of rejection, appellant must, within two months from the date of the examiner's answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, addressing each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant's failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.39, the appeal as to claims [2] is dismissed, and these claims are canceled.
Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.
Examiner Note
1. In bracket 1, insert the mailing date of the examiner's answer.
2. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
3. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.
Similarly, if appellant fails to respond to a supplemental examiner's answer that is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a) by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the supplemental answer, the appeal is sua sponte dismissed as to the claims subject to the rejection for which the Board has remanded the proceeding. See MPEP § 1207.05. Such supplemental examiner's answer may also include a new ground of rejection. The examiner should use form paragraph 12.186 to notify the appellant of the dismissal and cancel those claims.
¶ 12.186 Dismissal Following A Supplemental Examiner"s Answer Written in Response to a Remand for Further Consideration of a Rejection
Appellant failed to timely respond to the supplemental examiner's answer mailed on [1] that was written in response to a remand by the Board for further consideration of a rejection mailed on [1]. Under 37 CFR 41.50(a)(2), appellant must, within two months from the date of the supplemental examiner's answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. In view of appellant's failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.50(a)(2), the appeal as to claims [2] is dismissed, and these claims are canceled.
Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.
Examiner Note
1. In bracket 1, insert the mailing date of the supplemental examiner's answer.
2. In bracket 2, insert the claim numbers of the claims subject to the rejection for which the Board has remanded the proceeding.
3. In bracket 3, insert the claim numbers of the claims that are not subject to the rejection.
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