Chapter   1200  Appeal
---SECTION---1201 Introduction

The Patent and Trademark Office in administering the Patent Laws makes
many decisions of a discretionary nature which the applicant may feel
deny him or her the patent protection to which he or she is entitled. 
The differences of opinion on such matters can be justly resolved only
by prescribing and following judicial procedures. Where the differences
of opinion concern the denial of patent claims because of prior art or
material deficiencies in the disclosure set forth in the application,
the questions thereby raised are said to relate to the merits, and
appeal procedure within the Patent and Trademark Office and to the
courts has long been provided by statute.

The line of demarcation between appealable matters for the Board of
Patent Appeals and Interferences (Board) and petitionable matters for
the Commissioner of Patents and Trademarks should be carefully observed.
The Board will not ordinarily hear a question which it believes should
be decided by the Commissioner, and the Commissioner will not ordinarily
entertain a petition where the question presented is an appealable
matter. However, since  37 CFR 1.181(f) states that any petition not
filed within 2 months from the action complained of may be dismissed as
untimely and since  37 CFR 1.144 states that petitions from restriction
requirements must be filed no later than appeal, petitionable matters
will rarely be present in a case by the time it is before the Board for
a decision. In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 
1990).

---SECTION---1203 Composition of Board

35 U.S.C. 7 provides for a Board of Patent Appeals and Interferences as
follows:

35 U.S.C. 7 Board of Patent Appeals and Interferences.

(a) The examiners-in-chief shall be persons of competent legal knowledge
and scientific ability, who shall be appointed to the competitive
service. The Commissioner, the Deputy Commissioner, the Assistant
Commissioners, and the examiners-in-chief shall constitute the Board of
Patent Appeals and Interferences.

(b) The Board of Patent Appeals and Interferences shall, on written
appeal of an applicant, review adverse decisions of examiners upon
applications for patents and shall determine priority and patentability
of invention in interference declared under section 135(a) of this
title. Each appeal and interference shall be heard by at least three
members of the Board of Patent Appeals and Interferences, who shall be
designated by the Commissioner. Only the Board of Patent Appeals and
Interferences has the authority to grant rehearings.

(c) Whenever the Commissioner considers it necessary, in order to keep
current the work of the Board of Patent Appeals and Interferences, the
Commissioner may designate any patent examiner of the primary examiner
grade or higher, having the requisite ability, to serve as
examiner-in-chief for periods not exceeding six months each. An examiner
so designated shall be qualified to act as a member of the Board of
Patent Appeals and Interferences. Not more than one of the members of
the Board of Patent Appeals and Interferences hearing an appeal or
determining an interference may be an examiner so designated. The
Secretary of Commerce is authorized to fix the pay of each designated
examiner-in-chief in the Patent and Trademark Office at not to exceed
the maximum rate of basic pay payable for grade GS-16 of the General
Schedule under section 5332 of title 5. The rate of basic pay of each
individual designated examiner-in-chief shall be adjusted, at the close
of the period for which that individual was designated to act
examiner-in-chief, to the rate of basic pay that individual would have
been receiving at the close of such period if such designation had not
been made.

The Commissioner's Notice of October 15, 1993  (1156 O.G. 32,  Nov. 9,
1993) authorizes the Chairman, Vice Chairman and Examiners-in-Chief of
the Board to use the respective titles Chief Administrative Patent
Judge, Vice Chief Administrative Patent Judge, and Administrative Patent
Judge for signing all correspondence and decisions, and for other
business-related activities.

If subsequent to the hearing, but prior to the decision, an
administrative patent judge (referred to as an "examiner-in-chief" in 
35 U.S.C. 7) who heard the appeal becomes unable to participate in the
decision or any subsequent action for some reason, the Chief
Administrative Patent Judge of the Board, at his or her discretion, may
without a rehearing substitute a different Board member for the one who
is unavailable, or may offer the appellant the opportunity for a
rehearing. See In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed. Cir.
1985).

Should a member die or otherwise become unavailable (for example,
retirement) to reconsider a decision, normally another member will be
designated by the Chief Administrative Patent Judge as a substitute for
the absent member.

---SECTION---1204 Administrative Handling

Ex parte appeals to the Board, and all papers relating thereto, are
forwarded to the examining group for docketing. All appeal papers, such
as the notice of appeal, appeal brief, and request for extension of time
to file the brief, are processed by the appropriate examining group.

To ensure that all records are current, memorandum form PTO-262 is
attached to the file wrapper when it is remanded by the Board. It is
important that this memorandum be promptly completed and forwarded by
the group if the application is allowed, the prosecution is reopened, a
continuation application is filed, or if the appeal is discontinued for
any other reason.

If the brief is not filed within the time designated by  37 CFR 1.192,
the applicant will be notified that the appeal stands dismissed.

  "SPECIAL CASE"

Subject alone to diligent prosecution by the applicant, an application
for patent that once has been made special and advanced out of turn by
the Office for examination will continue to be special throughout its
entire course of prosecution in the Patent and Trademark Office,
including appeal, if any, to the Board. See MPEP Section  708.02.

A petition to make an application special after the appeal has been
forwarded to the Board may be addressed to the Board. However, no such
petition will be granted unless the brief has been filed and applicant
has made the same type of showing required by the Commissioner under  37
CFR 1.102. Therefore, diligent prosecution is essential to a favorable
decision on a petition to make special.

---SECTION---1205 Notice of Appeal

35 U.S.C. 134 Appeal to the Board of Patent Appeals and Interferences.

An applicant for a patent, any of whose claims has been twice rejected,
may appeal from the decision of the primary examiner to the Board of
Patent Appeals and Interferences, having once paid the fee for such
appeal.

35 U.S.C. 41 Patent fees

(a) The Commissioner shall charge the following fees:

                  +++    

(6)(A) On filing an appeal from the examiner to the Board of Patent
Appeals and Interferences, $190.

(B) In addition, on filing a brief in support of the appeal, $190, and
on requesting an oral hearing in the appeal before the Board of Patent
Appeals and Interferences, $160.

NOTE:  Under  35 U.S.C. 41(f), the amounts of the fees have been
increased by rule; see  37 CFR 1.17(b)-(d) for current fee amounts.

37 CFR 1.191 Appeal to Board of Patent Appeals and Interferences.

(a) Every applicant for a patent or for reissue of a patent, and every
owner of a patent under reexamination, any of whose claims has been
twice or finally (Section  1.113) rejected, may appeal from the decision
of the examiner to the Board of Patent Appeals and Interferences by
filing a notice of appeal and the fee set forth in Section  1.17(b)
within the time period provided under Section Section  1.134 and 1.136
for reply.

(b) The signature requirement of Section  1.33 does not apply to a
notice of appeal filed under this section.

(c) An appeal when taken must be taken from the rejection of all claims
under rejection which applicant or patent owner proposes to contest.
Questions relating to matters not affecting the merits of the invention
may be required to be settled before an appeal can be considered.

(d) The time periods set forth in Section Section   1.191 and 1.192 are
subject to the provisions of Section  1.136 for patent applications and
Section  1.550(c) for reexamination proceedings. The time periods set
forth in Section Section  1.193, 1.194, 1.196, and 1.197 are subject to
the provisions of Section  1.136(b) for patent applications or Section 
1.550(c) for reexamination proceedings. See Section  1.304(a) for
extensions of time for filing a notice of appeal to the U.S. Court of
Appeals for the Federal Circuit or for commencing a civil action.

(e) Jurisdiction over the application or patent under reexamination
passes to the Board of Patent Appeals and Interferences upon transmittal
of the file, including all briefs and examiner's answers, to the Board.
Prior to the entry of a decision on the appeal, the Commissioner may sua
sponte order the application remanded to the examiner.

Under  37 CFR 1.191(a), an applicant or patent owner in a reexamination
proceeding dissatisfied with the primary examiner's decision in the
second or final rejection of his or her claims may appeal to the Board
for review of the examiner's rejection by filing a notice of appeal and
the required fee set forth in  37 CFR 1.17(b) within the time period
provided under  37 CFR 1.134 and 1.136.  A notice of appeal may be filed
after any of the claims has been twice rejected, regardless of whether
the claim(s) has/have been finally rejected.  The limitation of "twice
or finally...rejected" does not have to be related to a particular
application.  For example, if any claim was rejected in a parent
application, and the claim is again rejected in a continuing
application, then applicant will be entitled to file an appeal in the
continuing application, even if the claim was rejected only once in the
continuing application.

Although the rules no longer require that the notice of appeal identify
the rejected claim(s) appealed, or be signed, applicants should to
continue to file notices of appeal which identify the appealed claims
and are signed. The requirement was eliminated from  37 CFR 1.191 as
being redundant of the requirements of  37 CFR 1.192 and to avoid the
delay and expense to both applicant and the PTO which is involved in
treating a defective notice of appeal. It should be noted that the
elimination of the requirement to sign a notice of appeal does not
affect the requirements for other papers (such as an amendment under  37
CFR 1.116) submitted with the notice, or for other actions contained
within the notice, e.g., an authorization to charge fees to a deposit
account. Thus, failure to sign the notice of appeal may have unintended
adverse consequences; for example, if an unsigned notice of appeal
contains an (unsigned) authorization to charge the appeal fee to a
deposit account, the notice of appeal will be unacceptable because the
appeal fee is lacking.

The notice of appeal must be filed within the period for reply set in
the last Office action, which is normally 3 months for applications. See
MPEP Section  714.13.  Failure to remove all grounds of rejection and
otherwise place an application in condition for allowance or to file an
appeal after final rejection will result in the application becoming
abandoned, even if one or more claims have been allowed, except where
claims suggested for interference have been copied.  The notice of
appeal and appropriate fee may be filed up to 6 months from the date of
the final rejection, so long as an appropriate petition and fee for an
extension of time is filed either prior to or with the notice of appeal. 
Failure to file an appeal in a reexamination proceeding will result in
issuance of the certificate under  37 CFR 1.570.

37 CFR 1.191 provides for appeal to the Board by the patent owner from
any decision in a reexamination proceeding adverse to patentability, in
accordance with  35 U.S.C. 306. See also MPEP Section  2273.

The use of a separate letter containing the notice of appeal is strongly
recommended. Form PTO/SB/31 may be used for filing a notice of appeal.

Form PTO/SB/31. Notice of Appeal from the Examiner to the Board of
Patent Appeals and Interferences[GRAPHIC]

MATTERS HANDLED CONCURRENTLY WITH APPEAL

The Patent and Trademark Office does not acknowledge receipt of a Notice
of Appeal by separate letter. However, if a self-addressed postcard is
included with the Notice of Appeal, it will be date stamped and mailed.

Form paragraphs 12.01-12.04 may be used to indicate defects in a Notice
of Appeal.

12.01 Notice of Appeal Unacceptable - Fee Unpaid

The notice of appeal filed on   [1] is not acceptable because the appeal
fee required under  37 CFR  1.17(b) was not filed, or was not timely
filed.

Applicant may obtain an extension of time under  37 CFR 1.136(a) to file
the appropriate appeal fee.  The date on which the notice of appeal, the
appeal fee, the petition under  37 CFR 1.136(a), and the petition fee
are filed will be the date of the reply and also the date for
determining the period of extension and the corresponding amount of the
fee.  In no case may an applicant reply later than the maximum SIX MONTH
statutory period or obtain an extension pursuant to  37 CFR 1.136(a) for
more than FIVE MONTHS beyond the date of reply set in an Office action.

12.02 Notice of Appeal Unacceptable - No 2nd Rejection

The notice of appeal filed on   [1] is not acceptable because there has
been no second or final rejection in this application, as required under 
37 CFR 1.191(a).

12.03 Notice of Appeal Unacceptable - Not Timely Filed

The notice of appeal filed on   [1] is not acceptable because it was
filed after the expiration of the period set in the prior Office action. 
This application will become abandoned unless applicant obtains an
extension under  37 CFR 1.136(a).  The date on which the notice of
appeal, the appeal fee, the petition under  37 CFR 1.136(a), and the
petition fee under  37 CFR 1.17(a) are filed will be the date of the
reply and also the date for determining the period of extension and the
corresponding amount of the fee.  In no case may an applicant reply
later than the maximum SIX MONTH statutory period or obtain an extension
pursuant to  37 CFR 1.136(a) for more than FIVE MONTHS beyond the date
of reply set in an Office action.

12.04 Notice of Appeal Unacceptable - Claims Allowed

The notice of appeal filed on   [1] is not acceptable because a notice
of allowability was mailed by the Office on [2].

---SECTION---1206 Appeal Brief

37 CFR 1.192 Appellant's brief.

(a) Appellant must, within two months from the date of the notice of
appeal under Section  1.191 or within the time allowed for reply to the
action from which the appeal was taken, if such time is later, file a
brief in triplicate.  The brief must be accompanied by the fee set forth
in Section  1.17(c) and must set forth the authorities and arguments on
which appellant will rely to maintain the appeal.  Any arguments or
authorities not included in the brief will be refused consideration by
the Board of Patent Appeals and Interferences, unless good cause is
shown.

(b) On failure to file the brief, accompanied by the requisite fee,
within the time allowed, the appeal shall stand dismissed.

(c) The brief shall contain the following items under appropriate
headings and in the order indicated below unless the brief is filed by
an applicant who is not represented by a registered practitioner:

(1) Real party in interest. A statement identifying the real party in
interest, if the party named in the caption of the brief is not the real
party in interest.

(2) Related appeals and interferences. A statement identifying by number
and filing date all other appeals or interferences known to appellant,
the appellant's legal representative, or assignee which will directly
affect or be directly affected by or have a bearing on the Board's
decision in the pending appeal.

(3) Status of claims.  A statement of the status of all the claims,
pending or canceled, and identifying the claims appealed.

(4) Status of amendments. A statement of the status of any amendment
filed subsequent to final rejection.

(5) Summary of invention. A concise explanation of the invention defined
in the claims involved in the appeal, which shall refer to the
specification by page and line number, and to the drawing, if any, by
reference characters.

(6) Issues. A concise statement of the issues presented for review.

(7) Grouping of claims. For each ground of rejection which appellant
contests and which applies to a group of two or more claims, the Board
shall select a single claim from the group and shall decide the appeal
as to the ground of rejection on the basis of that claim alone unless a
statement is included that the claims of the group do not stand or fall
together and, in the argument under paragraph (c)(8) of this section,
appellant explains why the claims of the group are believed to be
separately patentable. Merely pointing out differences in what the
claims cover is not an argument as to why the claims are separately
patentable.

(8) Argument. The contentions of appellant with respect to each of the
issues presented for review in paragraph (c)(6) of this section, and the
basis therefor, with citations of the authorities, statutes, and parts
of the record relied on. Each issue should be treated under a separate
heading.

(i) For each rejection under  35 U.S.C. 112, first paragraph, the
argument shall specify the errors in the rejection and how the first
paragraph of  35 U.S.C. 112 is complied with, including, as appropriate,
how the specification and drawings, if any,

(A) describe the subject matter defined by each of the rejected claims,

(B) enable any person skilled in the art to make and use the subject
matter defined by each of the rejected claims, and

(C) set forth the best mode contemplated by the inventor of carrying out
his or her invention.

(ii) For each rejection under  35 U.S.C. 112, second paragraph, the
argument shall specify the errors in the rejection and how the claims
particularly point out and distinctly claim the subject matter which
applicant regards as the invention.

(iii) For each rejection under  35 U.S.C. 102, the argument shall
specify the errors in the rejection and why the rejected claims are
patentable under  35 U.S.C. 102, including any specific limitations in
the rejected claims which are not described in the prior art relied upon
in the rejection.

(iv) For each rejection under  35 U.S.C. 103, the argument shall specify
the errors in the rejection and, if appropriate, the specific
limitations in the rejected claims which are not described in the prior
art relied on in the rejection, and shall explain how such limitations
render the claimed subject matter unobvious over the prior art. If the
rejection is based upon a combination of references, the argument shall
explain why the references, taken as a whole, do not suggest the claimed
subject matter, and shall include, as may be appropriate, an explanation
of why features disclosed in one reference may not properly be combined
with features disclosed in another reference. A general argument that
all the limitations are not described in a single reference does not
satisfy the requirements of this paragraph.

(v) For any rejection other than those referred to in paragraphs
(c)(8)(i) to (iv) of this section, the argument shall specify the errors
in the rejection and the specific limitations in the rejected claims, if
appropriate, or other reasons, which cause the rejection to be in error.

(9) Appendix. An appendix containing a copy of the claims involved in
the appeal. 

(d) If a brief is filed which does not comply with all the requirements
of paragraph (c) of this section, appellant will be notified of the
reasons for non-compliance and provided with a period of one month
within which to file an amended brief.  If appellant does not file an
amended brief during the one-month period, or files an amended brief
which does not overcome all the reasons for non-compliance stated in the
notification, the appeal will stand dismissed.

Where the brief is not filed, but within the period allowed for filing
the brief an amendment is presented which places the application in
condition for allowance, the amendment may be entered since the
application retains its pending status during said period. Amendments
should not be included in the appeal brief. Amendments should be filed
as separate papers. See MPEP Section  1207,  Section  1215.01, and
Section  1215.02.

TIME FOR FILING APPEAL BRIEF

37 CFR 1.192(a) provides 2 months from the date of the Notice of Appeal
for the appellant to file an appeal brief. In a reexamination
proceeding, the time period can be extended only under the provisions of 
37 CFR 1.550(c). See also MPEP Section  2274.

The usual period of time in which appellant must file his or her brief
is 2 months from the date of appeal. The Office date of receipt of the
Notice of Appeal (and not the date indicated on any Certificate of
Mailing under  37 CFR 1.8) is the date from which this 2 month time
period is measured. See MPEP Section  512. However,  37 CFR 1.192(a)
alternatively permits the brief to be filed "within the time allowed for
reply to the action from which the appeal was taken, if such time is
later." These time periods may be extended under  37 CFR 1.136(a), and
if  37 CFR 1.136(a) is not available, under  37 CFR 1.136(b) for
extraordinary circumstances.

In the event that the appellant finds that he or she is unable to file a
brief within the time period allotted by the rules, he or she may file a
petition, with fee, to the examining group, requesting additional time
under  37 CFR 1.136(a).  Additional time in excess of 5 months will not
be granted unless extraordinary circumstances are involved under  37 CFR
1.136(b). The time extended is added to the calendar day of the original
period, as opposed to being added to the day it would have been due when
said last day is a Saturday, Sunday, or Federal holiday.

If after an appeal has been filed, but prior to the date for submitting
a brief, an interference is declared, appellant's brief need not be
filed while the interference is pending, unless the administrative
patent judge has consented to prosecution of the application
concurrently with the interference.  See MPEP Section  2315. Absent such
concurrent prosecution, the examiner may, after the interference has
terminated and the files have been returned to him or her, (A) set a
2-month period for filing the brief, or (B) withdraw the final rejection
of the appealed claims in order to enter an additional rejection on a
ground arising out of the interference. See, for example,  MPEP Section 
2363.03. Also, if the appellant was the losing party in the
interference, claims which were designated as corresponding to the lost
count or counts will stand finally disposed of under  37 CFR 1.663.

When an application is revived after abandonment for failure on the part
of the appellant to take appropriate action after final rejection, and
the petition to revive was accompanied by a Notice of Appeal, appellant
has 2 months, from the mailing date of the Commissioner's affirmative
decision on the petition, in which to file the appeal brief. The time
period for filing the appeal brief may be extended under  37 CFR 1.136.

With the exception of a declaration of an interference or suggestion of
claims for an interference and timely copying of claims for an
interference, the appeal ordinarily will be dismissed if the brief is
not filed within the period provided by  37 CFR 1.192(a) or within such
additional time as may be properly extended.

A brief must be filed to preserve appellant's right to the appealed
claims, notwithstanding circumstances such as:

(A) the possibility or imminence of an interference involving the
subject application, but not resulting in withdrawal of the final
rejection prior to the brief's due date;

(B) the filing of a petition for supervisory action under  37 CFR 1.181;

(C) the filing of an amendment, even if it is one which the examiner
previously has indicated may place one or more claims in condition for
allowance, unless the examiner, in acting on the amendment, disposes of
all issues on appeal;

(D) the receipt of a letter from the examiner stating that prosecution
is suspended, without the examiner withdrawing the final rejection from
which appeal has been taken or suggesting claims for an interference,
and without an administrative patent judge declaring an interference
with the subject application.

Although failure to file the brief within the permissible time will
result in dismissal of the appeal, if any claims stand allowed, the
application does not become abandoned by the dismissal, but is returned
to the examiner for action on the allowed claims. See MPEP Section 
1215.04. If there are no allowed claims, the application is abandoned as
of the date the brief was due. Claims which have been objected to as
dependent from a rejected claim do not stand allowed. In a reexamination
proceeding failure to file the brief will result in the issuance of the
certificate under  37 CFR 1.570.

If the time for filing a brief has passed and the application has
consequently become abandoned, the applicant may petition to revive the
application, as in other cases of abandonment, and to reinstate the
appeal; if the appeal is dismissed, but the application is not
abandoned, the petition would be to reinstate the claims and the appeal,
but a showing equivalent to that in a petition to revive under  37 CFR
1.137 is required.  In either event, a proper brief must be filed before
the petition will be considered on its merits.

Where the dismissal of the appeal is believed to be in error, filing a
petition, pointing out the error, may be sufficient.

A fee under  37 CFR 1.17(c) is required when the brief is filed.  37 CFR
1.192(a) requires the submission of three copies of the appeal brief.

APPEAL BRIEF CONTENT

The brief, as well as every other paper relating to an appeal, should
indicate the number of the examining group to which the application or
patent under reexamination is assigned and the application or
reexamination control number. When the brief is received, it is
forwarded to the group where it is entered in the file, and referred to
the examiner.

An appellant's brief must be responsive to every ground of rejection
stated by the examiner.

Where an appeal brief fails to address any ground of rejection,
appellant shall be notified by the examiner that he or she must correct
the defect by filing a brief (in triplicate) in compliance with  37 CFR
1.192(c).  See  37 CFR 1.192(d).  Form paragraphs 12.76-12.76.06 and
12.78, or form PTOL-462, "Notification of Non-Compliance with  37 CFR
1.192(c)," may be used to notify the appellant of the deficiency. Oral
argument at a hearing will not remedy such deficiency of a brief. The
fact that appellant may consider a ground to be clearly improper does
not justify a failure to point out to the Board the reasons for that
belief.

The mere filing of paper entitled as a brief will not necessarily be
considered to be in compliance with  37 CFR 1.192(c). The rule requires
that the brief must set forth the authorities and arguments relied upon.
Since it is essential that the Board should be provided with a brief
fully stating the position of the appellant with respect to each issue
involved in the appeal so that no search of the record is required in
order to determine that position,  37 CFR 1.192(c) requires that the
brief contain specific items, as discussed below.

An exception to the requirement that all the items specified in  37 CFR
1.192(c) be included in the brief is made if the application or
reexamination proceeding is being prosecuted by the appellant pro se,
i.e., there is no attorney or agent of record, and the brief was neither
prepared nor signed by a registered attorney or agent.  The brief of a
pro se appellant which does not contain all of the items, (1) to (9),
specified in  37 CFR 1.192(c) will be accepted as long as it
substantially complies with the requirements of items (1), (2), and (8).
If the brief of a pro se appellant is accepted, it will be presumed that
all the claims of a rejected group of claims stand or fall together
unless an argument is included in the brief that presents reasons as to
why the appellant considers one or more of the claims in the rejected
group to be separately patentable from the other claims in the group.  

A distinction must be made between the lack of any argument and the
presentation of arguments which carry no conviction.  In the former
case, notification of a defective appeal brief is in order, while in the
latter case, the application or reexamination is forwarded to the Board
for a decision on the merits.  As noted above, the examiner may use form
paragraphs 12.76-12.76.06 and 12.78, or form PTOL-462, "Notification of
Non-Compliance with  37 CFR 1.192(c)," to notify appellant that the
appeal brief is defective.

If in his or her brief, appellant relies on some reference, he or she is
expected to provide the Board with three copies of it.

The specific items required by  37 CFR 1.192(c) are:

(1) Real party in interest. A statement identifying the real party in
interest, if the party named in the caption of the brief is not the real
party in interest. If appellant does not name a real party in interest,
the examiner will assume that the party named in the caption of the
brief is the real party in interest, i.e., the owner at the time the
brief is being filed.

The identification of the real party in interest will allow members of
the Board to comply with ethics regulations associated with working in
matters in which the member has a financial interest to avoid any
potential conflict of interest. While the examiner will assume that the
real party in interest is the individual or individuals identified in
the caption when the real party in interest is not explicitly set out in
the brief, nevertheless, the Board may require the appellant to
explicitly name the real party in interest. See MPEP Section  1210.01.

(2) Related appeals and interferences. A statement identifying by
application number and filing date all other appeals or interferences
known to appellant, the appellant's legal representative, or assignee
which will directly affect or be directly affected by or have a bearing
on the Board's decision in the pending appeal.  The appeal or
interference number should also be listed.  The statement is not limited
to copending applications. If appellant does not identify any other
appeals or interferences, the examiner will presume that there are none.
While the examiner will assume that there are no related cases when no
related case is explicitly set out in the brief, nevertheless, the Board
may require the appellant to explicitly identify any related case. See
MPEP Section  1210.01.

(3) Status of Claims.  A statement of the status of all the claims in
the application, or patent under reexamination, i.e., for each claim in
the case, appellant must state whether it is cancelled, allowed,
rejected, etc. Each claim on appeal must be identified.

(4) Status of Amendments. A statement of the status of any amendment
filed subsequent to final rejection, i.e., whether or not the amendment
has been acted upon by the examiner, and if so, whether it was entered,
denied entry, or entered in part. This statement should be of the status
of the amendment as understood by the appellant.

Items (3) and (4) are included in  37 CFR 1.192(c) to avoid confusion as
to which claims are on appeal, and the precise wording of those claims,
particularly where the appellant has sought to amend claims after final
rejection. The inclusion of items (3) and (4) in the brief will advise
the examiner of what the appellant considers the status of the claims
and post-final rejection amendments to be, allowing any disagreement on
these questions to be resolved before the appeal is taken up for
decision by the Board.

(5) Summary of Invention. A concise explanation of the invention defined
in the claims involved in the appeal. This explanation is required to
refer to the specification by page and line number, and, if there is a
drawing, to the drawing by reference characters. Where applicable, it is
preferable to read the appealed claims on the specification and any
drawing. While reference to page and line number of the specification
may require somewhat more detail than simply summarizing the invention,
it is considered important to enable the Board to more quickly determine
where the claimed subject matter is described in the application.

(6) Issues. A concise statement of the issues presented for review. Each
stated issue should correspond to a separate ground of rejection which
appellant wishes the Board of Patent Appeals and Interferences to
review. While the statement of the issues must be concise, it should not
be so concise as to omit the basis of each issue. For example, the
statement of an issue as "Whether claims 1 and 2 are unpatentable" would
not comply with  37 CFR 1.192(c)(6). Rather, the basis of the alleged
unpatentability would have to be stated, e.g., "Whether claims 1 and 2
are unpatentable under  35 U.S.C. 103 over Smith in view of Jones," or
"Whether claims 1 and 2 are unpatentable under  35 U.S.C. 112, first
paragraph, as being based on a nonenabling disclosure." The statement
would be limited to the issues presented, and should not include any
argument concerning the merits of those issues.

(7) Grouping of Claims. For each ground of rejection which appellant
contests and which applies to a group of two or more claims, the Board
shall select a single claim from the group and shall decide the appeal
as to the ground of rejection on the basis of that claim alone, unless a
statement is included that the claims of the group do not stand or fall
together and, in the argument section of the brief (37 CFR 1.192(c)(8)),
appellant explains why the claims of the group are believed to be
separately patentable. Merely pointing out differences in what the
claims cover is not an argument as to why the claims are separately
patentable. If an appealed ground of rejection applies to more than one
claim and appellant considers the rejected claims to be separately
patentable,  37 CFR 1.192(c)(7) requires appellant to state that the
claims do not stand or fall together, and to present in the appropriate
part or parts of the argument under  37 CFR 1.192(c)(8) the reasons why
they are considered separately patentable.

The absence of such a statement and argument is a concession by the
applicant that, if the ground of rejection were sustained as to any one
of the rejected claims, it will be equally applicable to all of them. 
37 CFR 1.192(c)(7) is consistent with the practice of the Court of
Appeals for the Federal Circuit indicated in such cases as In re Young,
927 F.2d 588, 18 USPQ2d 1089 (Fed. Cir. 1991); In re Nielson, 816 F.2d
1567, 2 USPQ2d 1525 (Fed. Cir. 1987); In re King, 801 F.2d 1324, 231
USPQ 136 (Fed. Cir. 1986); and In re Sernaker, 702 F.2d 989, 217 USPQ 1
(Fed. Cir. 1983).  37 CFR 1.192(c)(7) requires the inclusion of reasons
in order to avoid unsupported assertions of separate patentability. The
reasons may be included in the appropriate portion of the "Argument"
section of the brief. For example, if claims 1 to 4 are rejected under 
35 U.S.C. 102 and appellant considers claim 4 to be separately
patentable from claims 1 to 3, he or she should so state in the
"Grouping of claims" section of the brief, and then give the reasons for
separate patentability in the  35 U.S.C. 102 portion of the "Argument"
section (i.e., under  37 CFR 1.192(c) (8) (iii)).

In the absence of a separate statement that the claims do not stand or
fall together, the Board panel assigned to the case will normally select
the broadest claim in a group and will consider only that claim, even
though the group may contain two broad claims, such as "ABCDE" and
"ABCDF.". The same would be true in a case where there are both broad
method and apparatus claims on appeal in the same group. The rationale
behind the rule, as amended, is to make the appeal process as efficient
as possible. Thus, while the Board will consider each separately argued
claim, the work of the Board can be done in a more efficient manner by
selecting a single claim from a group of claims when the appellant does
not meet the requirements of  37 CFR 1.192(c)(7).

It should be noted that  37 CFR 1.192(c)(7) requires the appellant to
perform two affirmative acts in his or her brief in order to have the
separate patentability of a plurality of claims subject to the same
rejection considered. The appellant must (A) state that the claims do
not stand or fall together and (B) present arguments why the claims
subject to the same rejection are separately patentable. Where the
appellant does neither, the claims will be treated as standing or
falling together. Where, however, the appellant (A) omits the statement
required by  37 CFR 1.192(c)(7) yet presents arguments in the argument
section of the brief, or (B) includes the statement required by  37 CFR
1.192(c)(7) to the effect that one or more claims do not stand or fall
together (i.e., that they are separately patentable) yet does not offer
argument in support thereof in the "Argument" section of the brief, the
appellant should be notified of the noncompliance as per  37 CFR
1.192(d).  Ex parte Schier, 21 USPQ2d 1016 (Bd. Pat. App. & Int. 1991);
Ex parte Ohsumi, 21 USPQ2d 1020 (Bd. Pat. App. & Int. 1991).

(8) Argument. The appellant's contentions with respect to each of the
issues presented for review in  37 CFR 1.192(c) (6), and the basis for
those contentions, including citations of authorities, statutes, and
parts of the record relied on, should be presented in this section.

Included in this paragraph are five subparagraphs, (i) to (v). 
Subparagraphs (i) to (iv) concern the grounds of rejection most commonly
involved in ex parte appeals, namely,  35 U.S.C. 112, first and second
paragraphs,  35 U.S.C. 102, and  35 U.S.C. 103. Subparagraph (v) is a
general provision concerning grounds of rejection not covered by
subparagraphs (i) to (iv).

The purpose of subparagraphs (i) to (iv) is to ensure that the
appellant's argument concerning each appealed ground of rejection will
include a discussion of the questions relevant to that ground.
Compliance with the requirements of the particular subparagraphs which
are pertinent to the grounds of rejection involved in an appeal will be
beneficial both to the Patent and Trademark Office and appellants. It
will not only facilitate a decision by the Board of Patent Appeals and
Interferences by enabling the Board to determine more quickly and
precisely the appellant's position on the relevant issues, but also will
help appellants to focus their arguments on those issues.

For each rejection not falling under subparagraphs (i) to (iv),
subparagraph (v) provides that the argument should specify the specific
limitations in the rejected claims, if appropriate, or other reasons,
which cause the rejection to be in error. This language recognizes that
for some grounds of rejection, it may not be necessary to specify
particular claim limitations, for example, a rejection under  35 U.S.C.
101, on the ground that the claims are directed to nonstatutory subject
matter, as in Ex parte Hibberd, 227 USPQ 443 (Bd. Pat. App. & Inter.
1985).

37 CFR 1.192(a) contains the following sentence:

Any argument or authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and Interferences, unless
good cause is shown. This sentence emphasizes that all arguments and
authorities which an appellant wishes the Board to consider should be
included in the brief. It should be noted that arguments not presented
in the brief and made for the first time at the oral hearing are not
normally entitled to consideration. In re Chiddix, 209 USPQ 78 (Comm'r
Pat. 1980); Rosenblum v. Hiroshima, 220 USPQ 383 (Comm'r Pat. 1983).

37 CFR 1.192(a) is not intended to preclude the filing of a supplemental
paper if new authority should become available or relevant after the
brief was filed. An example of such circumstances would be where a
pertinent decision of a court or other tribunal was not published until
after the brief was filed.

(9) Appendix. An appendix containing a copy of the claims involved in
the appeal.

The copy of the claims required in the brief Appendix by  37 CFR
1.192(c) (9) should be a clean copy and should not include any brackets
or underlining as required by  37 CFR 1.121(a)(2). See MPEP Section  
1454 for the presentation of the copy of the claims in a reissue
application.

For sake of convenience, the copy of the claims involved should be
double spaced and the appendix should start on a new page.

37 CFR 1.192(c) merely specifies the minimum requirements for a brief,
and does not prohibit the inclusion of any other material which an
appellant may consider necessary or desirable, for example, a list of
references, table of contents, table of cases, etc. A brief is in
compliance with  37 CFR 1.192(c) as long as it includes items (1) to (9)
in the order set forth (with the appendix, item (9), at the end).

REVIEW OF BRIEF BY EXAMINER

The question of whether a brief complies with the rule is a matter
within the jurisdiction of the examiner.  37 CFR 1.192(d) provides that
if a brief is filed which does not comply with all the requirements of
paragraph (c), the appellant will be notified of the reasons for
noncompliance. Appellant will be given the longest of any of the
following time periods to correct the defect(s):

(A) 1 month or 30 days from the mailing of the notification of
non-compliance, whichever is longer;

(B) within the time period for reply to the action from which appeal has
been taken; or

(C) within 2 months from the date of the notice of appeal under  37 CFR
1.191.   Extensions of time may be granted under  37 CFR 1.136(a) or
1.136(b). The examiner may use the form paragraphs set forth below or
form PTOL-462, "Notification of Non-Compliance with  37 CFR 1.192(c),"
to notify appellant that the appeal brief is defective.  The appeal will
be dismissed if the appellant does not timely file an amended brief, or
files an amended brief which does not overcome all the reasons for
noncompliance of which the appellant was notified.

Under  37 CFR 1.192(d), the appellant may file an amended brief to
correct any deficiencies in the original brief. Moreover, if appellant
disagrees with the examiner's holding of noncompliance, a petition under 
37 CFR 1.181 may be filed.

Once the brief has been filed, a petition to suspend proceedings may be
considered on its merits, but will be granted only in exceptional cases,
such as where the writing of the examiner's answer would be fruitless or
the proceedings would work an unusual hardship on the appellant.

For a reply brief, see MPEP Section  1208.03.

Form paragraphs 12.08-12.13, 12.16, 12.17, and 12.69-12.78, or Form
PTOL-462, "Notification of Non-Compliance with  37 CFR 1.192(c)," may be
used concerning the appeal brief.

12.08 Appeal Dismissed - Brief Fee Unpaid, No Allowed Claims

The appeal under  37 CFR 1.191 is dismissed because the fee for filing
the brief, as required under  37 CFR  1.17(c) was not submitted or
timely submitted and the period for obtaining an extension of time to
file the brief under  37 CFR 1.136(a) has expired.

As a result of this dismissal, the application is ABANDONED since there
are no allowed claims.

Examiner Note:

Claims which have been indicated as containing allowable subject matter,
but are objected to as being dependent upon a rejected claim, are to be
considered as if they were rejected.  See MPEP Section  1215.04.

12.09 Appeal Dismissed - Brief Fee Unpaid, Allowed Claims

The appeal under  37 CFR 1.191 is dismissed because the fee for filing
the appeal brief, as required under  37 CFR  1.17(c), was not submitted
or timely submitted and the period for obtaining an extension of time to
file the brief under  37 CFR 1.136(a) has expired.

As a result of this dismissal, the application will be further processed
by the examiner since it contains allowed claims.  Prosecution on the
merits remains CLOSED.

Examiner Note:

Claims which have been indicated as containing allowable subject matter,
but are objected to as being dependent upon a rejected claim, are to be
considered as if they were rejected.  See MPEP Section  1215.04.

12.09.01 Appeal Dismissed - Allowed Claims, Formal Matters Remaining

In view of applicant's failure to file a brief within the time
prescribed by  37 CFR 1.192(a), the appeal stands dismissed and the
proceedings as to the rejected claims are considered terminated.  See 
37 CFR 1.197(c).

This application will be passed to issue on allowed claim  [1] provided
the following formal matters are corrected.  Prosecution is otherwise
closed.

[2]

Applicant is required to make the necessary corrections within a
shortened statutory period set to expire ONE MONTH or THIRTY DAYS,
whichever is longer, from the mailing date of this letter.  Extensions
of time may be granted under  37 CFR 1.136.

Examiner Note:

1. This paragraph should only be used if the formal matters cannot be
handled by examiner's amendment.  See MPEP Section  1215.04.

2. In bracket 2, insert a description of the formal matters to be
corrected.

3. Claims which have been indicated as containing allowable subject
matter but are objected to as being dependent upon a rejected claim are
to be considered as if they were rejected.  See MPEP Section  1215.04.

12.10 Extension To File Brief - Granted

The request for an extension of time under  37 CFR 1.136(b) for filing
the appeal brief under  37 CFR 1.192 filed on   [1] has been approved
for [2].

Examiner Note:

This paragraph should only be used when  37 CFR 1.136(a) is not
available or has been exhausted, such as in litigation reissues.

12.11 Extension To File Brief - Denied

The request for an extension of time under  37 CFR 1.136(b) for filing
the appeal brief under  37 CFR 1.192 filed on   [1] has been disapproved
because no sufficient cause for the extension has been shown.

Examiner Note:

This paragraph should only be used when  37 CFR 1.136(a) is not
available or has been exhausted, such as in litigation reissues.

12.12 Brief Defective - Unsigned

The appeal brief filed on   [1] is defective because it is unsigned.  37
CFR 1.33.  A ratification properly signed is required.

To avoid dismissal of the appeal, appellant must ratify the appeal brief
within the longest of any of the following TIME PERIODS: (1) ONE MONTH
or THIRTY DAYS from the mailing of this communication, whichever is
longer; (2) within the time period for reply to the action from which
appeal has been taken; or (3) within two months from the date of the
notice of appeal under  37 CFR 1.191.  Extensions of these time periods
may be granted under  37 CFR 1.136.

12.13 Brief Defective - Three Copies Lacking

The appeal brief filed on   [1] is defective because the three copies of
the Brief required under  37 CFR 1.192(a) have not been submitted.

To avoid dismissal of the appeal, appellant must submit the necessary
additional copies of the appeal brief within the longest of any of the
following TIME PERIODS: (1) ONE MONTH or THIRTY DAYS, whichever is
longer, from the mailing of this communication; (2) within the time
period for reply to the action from which appeal has been taken; or, (3)
within two months from the date of the notice of appeal under  37 CFR
1.191.  Extensions of these time periods may be granted under  37 CFR
1.136.

12.16 Brief Unacceptable - Fee Unpaid

The appeal brief filed on [1] is unacceptable because the fee required
under  37 CFR  1.17(c) was not timely filed.

This application will become abandoned unless appellant obtains an
extension of time under  37 CFR 1.136(a)  and files the required appeal
brief fee.  The date on which the brief, the fee for filing the brief,
the petition under  37 CFR 1.136(a), and the petition fee under  37 CFR
1.17(a) are filed will be the date of the reply and also the date for
determining the period of extension and the corresponding amount of the
fee.  In no case may an appellant obtain an extension for more than FIVE
MONTHS under  37 CFR 1.136(a) beyond the TWO MONTH period for filing the
appeal brief.

12.17 Brief Unacceptable - Not Timely Filed

The appeal brief filed on [1] is unacceptable because it was filed after
the expiration of the required period for reply.

This application will become abandoned unless appellant obtains an
extension of time under  37 CFR 1.136(a).  The date on which the appeal
brief, the fee for filing the brief, the petition under  37 CFR
1.136(a), and the petition fee under  37 CFR 1.17(a) are filed will be
the date of the reply and also the date for determining the period of
extension and the corresponding amount of the fee.  In no case may an
appellant obtain an extension for more than FIVE MONTHS under  37 CFR
1.136(a) beyond the TWO MONTH period for filing the appeal brief.

Form paragraph 12.69, followed by one or more of from paragraphs
12.69.01-12.78 may be used for noting noncompliance with  37 CFR
1.192(c)

12.69 Heading for Notice Under 37 CFR 1.192(c)

NOTIFICATION OF NON-COMPLIANCE WITH THE REQUIREMENTS OF 37 CFR 1.192(c)

Examiner Note:

Use form PTOL-90 and follow with one or more of form paragraphs 12.69.01
to 12.77 and conclude with paragraph 12.78.

12.69.01 Statement in Brief That Claims Do Not Stand or Fall Together -
Supporting Reasons Lacking

The brief includes a statement that claims   [1] do not stand or fall
together, but fails to present reasons in support thereof as required
under  37 CFR 1.192(c)(5). MPEP Section  1206.

Examiner Note:

1. This paragraph should be used only when no supporting reasons are
presented in the brief.  If reasons are presented, even if they are not
agreed with, use form paragraph 12.55.02 instead of this form paragraph. 
Reasons for disagreement are discussed in either the "Grounds of
Rejection" or in the "Response to Argument" portion of the Examiner's
Answer.

2. If the brief contains neither a statement that claims do not stand or
fall together nor reasons in support thereof, use paragraph 12.55.01 in
the Examiner's Answer.

12.70 Missing Section Headings

The brief does not contain the items of the brief required by  37 CFR
1.192(c) under the appropriate headings and/or in the order indicated. 
[1]

Examiner Note:

In bracket 1, insert an indication of the missing headings or errors in
the order of items.

12.70.01 Defect in Statement of Real Party in Interest

The brief does not contain a heading identifying the real party in
interest as required by  37 CFR 1.192(c)(1).

12.70.02 Defect in Statement of Related Appeals and Interferences

The brief does not contain a heading identifying the related appeals and
interferences directly affected by or having a bearing on the decision
in the pending appeal as required by  37 CFR 1.192(c)(2).

12.71 Defect in Statement of Status of Claims

The brief does not contain a statement of the status of all the claims,
pending or canceled, and identify the claims appealed as required by  37
CFR 1.192(c)(3).  [1]

Examiner Note:

In bracket 1, insert an indication of the missing claim status
information.

12.72 Defect in Statement of Status of Amendment Filed After Final
Rejection

The brief does not contain a statement of the status of an amendment
filed subsequent to the final rejection as required by  37 CFR
1.192(c)(4). [1]

Examiner Note:

In bracket 1, insert an identification of the amendment for which the
status is missing.

12.73 Defect in Explanation of the Invention

The brief does not contain a concise explanation of the invention
defined in the claims involved in the appeal, which refers to the
specification by page and line number, and to the drawing, if any, by
reference characters as required by  37 CFR 1.192(c)(5).  [1]

Examiner Note:

In bracket 1, insert an indication of the missing explanation.

12.74 Defect in Statement of the Issues

The brief does not contain a concise statement of the issues presented
for review as required by  37 CFR 1.192(c)(6).  [1]

Examiner Note:

In bracket 1, insert an indication of the missing concise statement of
the issues presented for review.

12.76 Defect in the Arguments of the Appellant

The brief does not contain arguments of the appellant with respect to
each of the issues presented for review in  37 CFR 1.192(c)(6), and the
basis therefor, with citations of the authorities, statutes, and parts
of the record relied on as required by  37 CFR 1.192(c)(8).

Examiner Note:

Include one or more of form paragraphs 12.76.01 to 12.76.06 which apply.

12.76.01 Separate Heading for Each Issue

Each issue should be treated under a separate heading.

12.76.02 Defect in 112, First Paragraph, Rejection Argument

The brief does not contain, for each rejection under  35 U.S.C. 112
(first paragraph), an argument which specifies the errors in the
rejection and how the first paragraph of  35 U.S.C. 112 is complied
with, including how the specification and drawings, if any,   [1].

Examiner Note:

In bracket 1, insert the following wording, as appropriate:

(a) --describe the subject matter defined by each of the rejected
claims--,

(b)--enable any person skilled in the art to make and use the subject
matter defined by each of the rejected claims--, or

(c)--set forth the best mode contemplated by the inventor of carrying
out his/her invention--.

12.76.03 Defect in 112, Second Paragraph, Rejection Argument

The brief does not contain, for each rejection under  35 U.S.C. 112
(second paragraph), an argument which specifies the errors in the
rejection and how the claims particularly point out and distinctly claim
the subject matter which applicant regards as the invention.

12.76.04 Defect in 102 Rejection Argument

The brief does not contain, for each rejection under  35 U.S.C. 102, an
argument which specifies the errors in the rejection and why the
rejected claims are patentable under  35 U.S.C. 102, including any
specific limitations in the rejected claims which are not described in
the prior art relied upon in the rejection.

Examiner Note:

Specify claim(s) for which no argument of error was specified.

12.76.05 Defect in 103 Rejection Argument

The brief does not contain, for each rejection under  35 U.S.C. 103, an
argument which specifies the errors in the rejection and, if
appropriate, the specific limitations in the rejected claims which are
not described in the prior art relied upon in the rejection, and an
explanation how such limitations render the claimed subject matter
unobvious over the prior art.  If the rejection is based upon a
combination of references, the argument must explain why the references,
taken as a whole do not suggest the claimed subject matter, and shall
include, as may be appropriate, an explanation of why features disclosed
in one reference may not be properly combined with features disclosed in
another reference.  A general argument that all the limitations are not
described in a single reference does not satisfy the requirements of  37
CFR 1.192(c)(8)(iv).

Examiner Note:

Specify claim(s) for which no argument of error was specified.

12.76.06 For Any Rejection Other Than Those Referred to in Paragraphs
(c)(8)(i) to (iv) of 37 CFR 1.192 for Which No Argument or Error Was
Specified

The brief does not contain an argument which specifies the errors in the
rejection and the specific limitations in the rejected claims, if
appropriate, or other reasons, which cause the rejection to be in error.

Examiner Note:

Specify claim(s) for which for which no argument of error was specified.

12.77 No Copy of Appealed Claims in Appendix

The brief does not contain a copy of the claims involved in the appeal
in the Appendix.

12.78 Period For Response Under 37 CFR 1.192(d)

Appellant is required to comply with provisions of  37 CFR 1.192(c). To
avoid dismissal of the appeal, Appellant must comply with the provisions
of  37 CFR 1.192(c) within the longest of any of the following TIME
PERIODS: (1) ONE MONTH or THIRTY DAYS, whichever is longer, from the
mailing of this communication; (2) within the time period for reply to
the action from which appeal has been taken; or (3) within two months
from the date of the notice of appeal under  37 CFR 1.191.  Extensions
of these time periods may be granted under  37 CFR 1.136.

Examiner Note:

This paragraph has limited application.  To notify applicant of
non-compliance with  37 CFR 1.192(c) examiner must use form PTOL-462.

---SECTION---1207 Amendment Filed With or After Appeal

To expedite the resolution of cases under final rejection, an amendment
filed at any time after final rejection, but before jurisdiction has
passed to the Board (see MPEP Section  1210), may be entered upon or
after filing of an appeal brief provided that the amendment conforms to
the requirements of  37 CFR 1.116. For example, if the amendment
necessitates a new search, raises the issue of new matter, presents
additional claims without cancelling a corresponding number of finally
rejected claims, or otherwise introduces new issues, it will not be
entered. A new amendment, new affidavit, or other new evidence must be
submitted in a paper separate from the appeal brief.  Entry of a new
amendment, new affidavit, or other new evidence in an application on
appeal is not a matter of right.  The entry of an amendment (which may
or may not include a new affidavit, declaration, or exhibit) submitted
in an application on appeal continues to be governed by  37 CFR 1.116,
and the entry of a new affidavit or other new evidence in an application
on appeal is governed by  37 CFR 1.195.  Examiners must respond to all
nonentered amendments after final rejection, and indicate the status of
each claim of record or proposed, including the designation of claims
that would be entered on the filing of an appeal if filed in a separate
paper. If the examiner indicates (in the advisory action) that a
proposed amendment of the claim(s) would be entered for purposes of
appeal, it is imperative for the examiner to also state (in the same
advisory action) how the individual rejection(s) set forth in the final
Office action will be used to reject the added or amended claim(s) in
the examiner's answer.  See  37 CFR 1.193(a)(2) and MPEP Section 
1208.01. Except where an amendment merely cancels claims and/or adopts
examiner suggestions, removes issues from appeal, or in some other way
requires only a cursory review by the examiner, compliance with the
requirement of a showing under  37 CFR 1.116 will be expected of all
amendments after final rejection.

If, after appeal has been taken, a paper is presented which on its face
clearly places the application in condition for allowance, such paper
should be entered and a Notice of Allowability form PTOL-37 promptly
sent to applicant.

In accordance with the above, the brief must be directed to the claims
and to the record of the case as they appeared at the time of the
appeal, but it may, of course, withdraw from consideration on appeal any
claims or issues as desired by appellant.  Even if the appeal brief
withdraws from consideration any claims or issues (i.e., appellant
acquiesces to any rejection), the examiner must continue to make the
rejection in the examiner's answer, unless an amendment obviating the
rejection has been previously proposed and entered.

A timely filed brief will be referred to the examiner for consideration
of its propriety as to the appeal issues and for preparation of an
examiner's answer if the brief is proper and the application is not
allowable. The examiner's answer may withdraw the rejection of claims,
if appropriate.  The examiner may also determine that it is necessary to
reopen prosecution to enter a new ground of rejection. Note MPEP Section 
1208.02. No new ground of rejection, however, is permitted in an
examiner's answer. 37 CFR 1.193(a)(2).  See MPEP Section  714.13 for
procedure on handling amendments filed after final action and before
appeal.

An amendment received after jurisdiction has passed to the Board should
not be considered by the examiner unless remanded by the Board for such
purpose. See MPEP Section  1210 and Section  1211.01.

Note that  37 CFR 1.192(c)(4) requires a statement as to the status of
any amendment filed subsequent to the final rejection. See also MPEP
Section  1206.

---SECTION---1208 Examiner's Answer

37 CFR 1.193 Examiner's answer and reply brief.

(a)(1) The primary examiner may, within such time as may be directed by
the Commissioner, furnish a written statement in answer to appellant's
brief including such explanation of the invention claimed and of the
references and grounds of rejection as may be necessary, supplying a
copy to appellant.  If the primary examiner finds that the appeal is not
regular in form or does not relate to an appealable action, the primary
examiner shall so state.

(2) An examiner's answer must not include a new ground of rejection, but
if an amendment under Section  1.116 proposes to add or amend one or
more claims and appellant was advised that the amendment under Section 
1.116 would be entered for purposes of appeal and which individual
rejection(s) set forth in the action from which the appeal was taken
would be used to reject the added or amended claim(s), then the appeal
brief must address the rejection(s) of the claim(s) added or amended by
the amendment under Section  1.116 as appellant was so advised and the
examiner's answer may include the rejection(s) of the claim(s) added or
amended by the amendment under Section  1.116 as appellant was so
advised. The filing of an amendment under Section  1.116 which is
entered for purposes of appeal represents appellant's consent that when
so advised any appeal proceed on those claim(s) added or amended by the
amendment under Section  1.116 subject to any rejection set forth in the
action from which the appeal was taken.

(b)(1) Appellant may file a reply brief to an examiner's answer within
two months from the date of such examiner's answer.  See Section 
1.136(b) for extensions of time for filing a reply brief in a patent
application and Section  1.550(c) for extensions of time for filing a
reply brief in a reexamination proceeding. The primary examiner must
either acknowledge receipt and entry of the reply brief or withdraw the
final rejection and reopen prosecution to respond to the reply brief. A
supplemental examiner's answer is not permitted, unless the application
has been remanded by the Board of Patent Appeals and Interferences for
such purpose.

(2) Where prosecution is reopened by the primary examiner after an
appeal or reply brief has been filed, appellant must exercise one of the
following two options to avoid abandonment of the application:

(i) File a reply under Section  1.111, if the Office action is not
final, or a reply under Section  1.113, if the Office action is final;
or

(ii) Request reinstatement of the appeal. If reinstatement of the appeal
is requested, such request must be accompanied by a supplemental appeal
brief, but no new amendments, affidavits (Section Section  1.130, 1.131
or 1.132) or other evidence are permitted.

APPEAL CONFERENCE

Appealed cases in which the brief has been filed may be reviewed by
conference in the group, in a manner deemed appropriate by the Group
Director. For example, those participating in the conference may include
(1) a primary examiner, (2) the examiner charged with preparation of the
examiner's answer, and (3) another examiner, known as the conferee,
having sufficient experience to be of assistance in the consideration of
the merits of the issues on appeal.

The Group Director has the discretion as to whether or not appeal
conferences are necessary in the examining group and, if so, in which
instances they are to be held. If an appeal conference is held, the
Supervisory Patent Examiner should be informed thereof.

If a conference is held, the primary examiner responsible for signing
the examiner's answer should weigh the arguments of the other examiners.
If it is determined that the rejection(s) should be maintained, the
examiner will then prepare his or her examiner's answer. During the
conference, consideration should be given to the possibility of dropping
cumulative art rejections and eliminating technical rejections of
doubtful value.

On the examiner's answer, the third person (conferee) should place his
or her initials below those of the examiner who prepared the answer,
thus: ABC (conf.). This does not indicate, necessarily, concurrence with
the position taken in the answer.

If the examiner charged with the responsibility of preparing the answer
reaches the conclusion that the appeal should not be forwarded and the
primary examiner approves, no conference is held.

Before preparing the answer, the examiner should make certain that all
amendments approved for entry have in fact been physically entered. The
Clerk of the Board will return to the group any application in which
approved amendments have not been entered.

ANSWER

The examiner should furnish the appellant with a written statement in
answer to the appellant's brief within 2 months after the receipt of the
brief by the examiner.

The answer should contain a response to the allegations or arguments in
the brief and should call attention to any errors in appellant's copy of
the claims. If any rejection is withdrawn, the withdrawal should be
clearly stated in the examiner's answer under "Issues." Grounds of
rejection not argued in the examiner's answer are usually treated as
having been dropped, but may be considered by the Board if it desires to
do so. The examiner should treat affidavits, declarations, or exhibits
filed with or after the notice of appeal in accordance with  37 CFR
1.195. If an affidavit, declaration, or exhibit was refused entry under 
37 CFR 1.195, the examiner should not comment on it in the examiner's
answer.  Likewise, it would be improper for appellant to rely on an
affidavit, declaration, or exhibit, which was refused entry, in an
appeal brief.  If appellant has grounds for challenging the non-entry of
an affidavit, declaration, or exhibit, he or she should file a timely
petition seeking supervisory review of the non-entry. Any affidavits or
declarations in the file swearing behind a patent should be clearly
identified by the examiner as being considered under either  37 CFR
1.131 or  37 CFR 1.608(b).

If the brief fails to address any or all grounds of rejection advanced
by the examiner, or comply with  37 CFR 1.192(c), the indicated
procedure for handling such briefs set forth in MPEP Section  1206 under
"Review of Brief by Examiner" should be followed.

Because of the practice of the Patent and Trademark Office in entering
amendments after final action under justifiable circumstances for
purposes of appeal, many cases coming before the Board for consideration
contain claims which are not the claims treated in the examiner's final
rejection. They are either entirely new claims or amended versions of
the finally rejected claims or both. Where an amendment under  37 CFR
1.116 would be entered for appeal purposes, the examiner must identify
(in an advisory action) how one or more individual rejections set forth
in the final rejection would be used to reject the added or amended
claim(s).  See  37 CFR 1.193(a)(2) and MPEP Section  1208.01.  It is
important to note that if more than a mere reference to one or more
individual rejections set forth in the final rejection is necessary to
explain how the added or amended claims would be rejected, then the
amendment should not be entered because it raises new issues requiring
further consideration and/or search.  Furthermore, the mere fact that an
amendment under  37 CFR 1.116 could fall within the operation of  37 CFR
1.193(a)(2) does not mean that the amendment must be entered by the
examiner.  That is, the provisions of  37 CFR 1.116 (and not  37 CFR
1.193(a)(2)) control as to whether an amendment under  37 CFR 1.116 is
entitled to entry.

It also frequently happens that an examiner will state a position in the
answer in a manner that represents a shift from the position stated in
the final rejection without indicating that the last stated position
supersedes the former. Such a situation confuses the issue and likewise
poses difficulties for the Board since it is not clear exactly what the
examiner's ultimate position is.

If there is a complete and thorough development of the issues at the
time of final rejection, it is possible to save time in preparing the
examiner's answer required by  37 CFR 1.193 by taking any of the
following steps:

(A) Examiners may incorporate in the answer their statement of the
grounds of rejection merely by reference to the final rejection (or a
single other action on which it is based,  MPEP Section  706.07).  Only
those statements of grounds of rejection appearing in a single prior
action may be incorporated by reference. An examiner's answer should not
refer, either directly or indirectly, to more than one prior Office
action. Statements of grounds of rejection appearing in actions other
than the aforementioned single prior action should be quoted in the
answer. The page and paragraph of the final action or other single prior
action which it is desired to incorporate by reference should be
explicitly identified. Of course, if the examiner feels that some
further explanation of the rejection is necessary, he or she should
include it in the answer but ordinarily he or she may avoid another
recital of the issues and another elaboration of the grounds of
rejection. The answer should also include any necessary rebuttal of
arguments presented in the appellant's brief if the final action does
not adequately meet the arguments.

(B) If the appellant fails to describe the invention, as required by  37
CFR 1.192, the examiner is not required to provide these omissions under 
37 CFR 1.192(d). The examiner should, however, clarify the description
and explanation in the answer if he or she feels it necessary to present
properly and effectively his or her case to the Board.

The examiner should reevaluate his or her position in the light of the
arguments presented in the brief, and should expressly withdraw any
rejections not adhered to, especially if the rejection was made in an
action which is incorporated by reference. This should be done even
though any rejection not repeated and discussed in the answer may be
taken by the Board as having been withdrawn. Ex parte Emm, 118 USPQ 180
(Bd. App. 1957).

A new ground of rejection is no longer permitted in an examiner's
answer.  For a discussion of what constitutes a new ground of rejection,
see MPEP Section  1208.01. If a new ground of rejection is necessary,
prosecution must be reopened.  The examiner must obtain approval from
the Supervisory Patent Examiner prior to reopening prosecution after an
appeal.  See MPEP Section  1002.02(d).

All correspondence with the Board, whether by the examiner or the
appellant, must be on the record. No unpublished decisions which are
unavailable to the general public by reason of  35 U.S.C. 122 can be
cited by the examiner or the appellant except that either the examiner
or the appellant has the right to cite an unpublished decision in an
application having common ownership with the application on appeal.

When files are forwarded, soft copies and prints of references therein
should remain in the file wrapper.

If an examiner's answer is believed to contain a new interpretation or
application of the existing patent law, the examiner's answer,
application file, and an explanatory memorandum should be forwarded to
the Group Director for consideration. See MPEP Section  1003.  If
approved by the Group Director, the examiner's answer should be
forwarded to the Office of the Deputy Assistant Commissioner for Patent
Policy and Projects for final approval.

Briefs must comply with  37 CFR 1.192, and all examiner's answers filed
in response to such briefs must comply with the guidelines set forth
below.

(A) REQUIREMENTS FOR EXAMINER'S ANSWER.  The examiner's answer is
required to include, under appropriate headings, in the order indicated,
the following items:

(1) Real Party in Interest.  A statement acknowledging the
identification of the real party in financial interest or indicating
that the party named in the caption of the brief is the real party in
interest, or if the brief contains a proper heading but no real party in
interest is identified, a statement that it is presumed that the party
named in the caption of the brief is the real party in interest. While
the examiner will make this presumption, the Board has discretion to
require an explicit statement on this item from appellant.

(2) Related Appeals and Interferences. A statement acknowledging
appellant's identification of related cases which will directly affect
or be directly affected by or have a bearing on the decision in the
pending appeal, or if the appellant sets forth the required heading but
does not identify any related appeals or interferences, a statement that
it is presumed that there are none. While the examiner will make this
presumption, the Board has discretion to require an explicit statement
on this item from appellant.

(3) Status of Claims.  A statement of whether the examiner agrees or
disagrees with the statement of the status of claims contained in the
brief and a correct statement of the status of all the claims pending or
cancelled, if necessary.  If the examiner considers that some or all of
the finally rejected claims are allowable, see MPEP Section  1208.02.

(4) Status of Amendments. A statement of whether the examiner disagrees
with the statement of the status of amendments contained in the brief,
and an explanation of any disagreement.

(5) Summary of Invention. A statement of whether the examiner disagrees
with the summary of invention contained in the brief, an explanation of
why the examiner disagrees, and a correct summary of invention, if
necessary.

(6) Issues. A statement of whether the examiner disagrees with the
statement of the issues in the brief and an explanation of why the
examiner disagrees, including:

(a) identification of any issues which are petitionable rather than
appealable, and

(b) identification of any issues or grounds of rejection on appeal which
the examiner no longer considers applicable.

(7) Grouping of Claims.  A statement of whether the examiner disagrees
with any statement in the brief that certain claims do not stand or fall
together, and, if the examiner disagrees, an explanation as to why those
claims are not separately patentable.

(8) Claims Appealed.  A statement of whether the copy of the appealed
claims contained in the appendix to the brief is correct and, if not, a
correct copy of any incorrect claim.

(9) References of Record. A listing of the references of record relied
on, and, in the case of nonpatent references, the relevant page or
pages.

(10) Grounds of Rejection.  For each ground of rejection applicable to
the appealed claims, an explanation of the ground of rejection, or
reference to a final rejection or other single prior action for a clear
exposition of the rejection.

(a) For each rejection under  35 U.S.C. 112, first paragraph, the
examiner's answer, or the single prior action, shall explain how the
first paragraph of  35 U.S.C. 112 is not complied with, including, as
appropriate, how the specification and drawings, if any,

(i) do not describe the subject matter defined by each of the rejected
claims,

(ii) would not enable any person skilled in the art to make and use the
subject matter defined by each of the rejected claims without undue
experimentation, and (c) do not set forth the best mode contemplated by
the appellant of carrying out his or her invention.

(b) For each rejection under  35 U.S.C. 112, second paragraph, the
examiner's answer, or single prior action, shall explain how the claims
do not particularly point out and distinctly claim the subject matter
which applicant regards as the invention.

(c) For each rejection under  35 U.S.C. 102, the examiner's answer, or
single prior action, shall explain why the rejected claims are
anticipated or not patentable under  35 U.S.C. 102, pointing out where
all of the specific limitations recited in the rejected claims are found
in the prior art relied upon in the rejection.

(d) For each rejection under  35 U.S.C. 103, the examiner's answer, or
single prior action, shall:

(i) state the ground of rejection and point out where each of the
specific limitations recited in the rejected claims is found in the
prior art relied on in the rejection,

(ii) identify any difference between the rejected claims and the prior
art relied on, and

(iii) explain how and why the claimed subject matter is rendered
unpatentable over the prior art. If the rejection is based upon a
combination of references, the examiner's answer, or single prior
action, shall explain the rationale for making the combination.

(e) For each rejection under  35 U.S.C. 102 or 103 where there are
questions as to how limitations in the claims correspond to features in
the prior art even after the examiner complies with the requirements of
paragraphs (c) and (d) of this section, the examiner shall compare at
least one of the rejected claims feature by feature with the prior art
relied on in the rejection. The comparison shall align the language of
the claim side-by- side with a reference to the specific page, line
number, drawing reference number, and quotation from the prior art, as
appropriate.

(f) For each rejection, other than those referred to in paragraphs (a)
to (e) of this section, the examiner's answer, or single prior action,
shall specifically explain the basis for the particular rejection.

(11) Response to Argument. A statement of whether the examiner disagrees
with each of the contentions of appellant in the brief with respect to
the issues presented and an explanation of the reasons for disagreement
with any such contention. If any ground of rejection is not argued and
replied to by appellant, the response shall point out each claim
affected.

(B) FORM PARAGRAPHS.  A form suitable for the examiner's answer is as
follows:

12.49 Examiner's Answer Cover Sheet 

BEFORE THE BOARD OF PATENT APPEALS

AND INTERFERENCES

Paper No. [1]

Application Number:   [2]

Filing Date:   [3]

Appellant(s): [4]

__________________

[5]

For Appellant 

EXAMINER'S ANSWER

This is in response to the appeal brief filed [6].

Examiner Note:

1. This form paragraph includes the PTO Letterhead and should be used
only if typing your own action. Answers prepared in draft form for
typing by a typist should use form paragraph 12.50.

2. In bracket 1, insert the Paper No. of the examiner's answer.

3. In bracket 2, insert the application number of the appealed
application.

4. In bracket 3, insert the filing date of the appealed application.

5. In bracket 4, insert the name(s) of the appellant.

6. In bracket 5, insert the name of the registered representative of the
appellant.

7. In bracket 6, indicate the date on which the brief was filed, and
also indicate if any supplemental appeal brief was filed, as well as the
date on which the supplemental appeal brief was filed.

8. Form paragraph 12.50 should NOT follow use of this paragraph as it is
already incorporated herein.

12.50 Heading For Examiner's Answer

This is in response to the brief on appeal filed [1].

Examiner Note:

1. Use this form paragraph only when having the Examiner's Answer
prepared by a typist without using form paragraph 12.49.

2. In bracket 1, indicate the date on which the brief was filed, and
also indicate if any supplemental appeal brief was filed, as well as the
date on which the supplemental appeal brief was filed.

12.50.01 Real Party in Interest

 (1)	Real Party in Interest

Examiner Note:

Follow this paragraph with paragraph 12.50.02 or 12.50.03.  

12.50.02 Acknowledgment of Appellant's Identification of a Real Party in
Interest in the Brief

A statement identifying the real party in interest is contained in the
brief.

12.50.03 No Identification of a Real Party in Interest in the Brief

The brief does not contain a statement identifying the Real Party in
Interest.  Therefore, it is presumed that the party named in the caption
of the brief is the Real Party in Interest, i.e., the owner at the time
the brief was filed.  The Board, however, may exercise its discretion to
require an explicit statement as to the Real Party in Interest.

12.50.04 Related Appeals and Interferences

(2)	Related Appeals and Interferences

Examiner Note:

Follow this paragraph with paragraph 12.50.05 or 12.50.06.  

12.50.05 Acknowledgment of Appellant's Statement Identifying the Related
Appeals and Interferences

A statement identifying the related appeals and interferences which will
directly affect or be directly affected by or have a bearing on the
decision in the pending appeal is contained in the brief.

12.50.06 No Related Appeals and Interferences Identified

The brief does not contain a statement identifying the related appeals
and interferences which will directly affect or be directly affected by
or have a bearing on the decision in the pending appeal.  Therefore, it
is presumed that there are none.  The Board may, however, exercise its
discretion to require an explicit statement as to the existence of any
related appeals and interferences.

12.51 Status of Claims

(3)	Status of Claims

Examiner Note:

Follow this paragraph with one or more of paragraphs 12.51.01 to
12.51.10.

12.51.01 Agreement With Statement of Status of Claims

The statement of the status of claims contained in the brief is correct.

12.51.02 Disagreement With Statement of Status of Claims

The statement of the status of claims contained in the brief is
incorrect.  A correct statement of the status of the claims is as
follows:

Examiner Note:

1. Indicate the area of disagreement and the reasons for the
disagreement.

2. One or more of paragraphs 12.51.03 to 12.51.10 must follow this
paragraph.

12.51.03 Claims On Appeal

This appeal involves claim  [1].

Examiner Note:

1. In bracket 1, all the claims still on appeal should be specified.  Do
not list claims which are no longer rejected.

2. Also use form paragraphs 12.51.04 to 12.51.06 when appropriate to
clarify the status of the claims on appeal that were incorrectly listed
in the brief.

12.51.04 Status of Claims on Appeal - Substituted

Claim  [1] been substituted for the finally rejected claims.

Examiner Note:

	All substituted claims on appeal must be identified if the brief
incorrectly lists any substituted claims.  In bracket 1, insert the
claim number(s) corresponding to the substitute claims, followed by
--has-- or --have--, as appropriate.

12.51.05 Status of Claims on Appeal - Amended

Claim  [1] been amended subsequent to the final rejection.

Examiner Note:

All claims amended after final rejection must be identified if the brief
incorrectly lists any claims amended after final rejection.  In bracket
1, identify the claim number(s) corresponding to the claim(s) which have
been amended, followed by --has-- or --have--, as appropriate.

12.51.07 Claims Allowed

Claim  [1] allowed.

Examiner Note:

All allowed claims must be identified if the brief incorrectly lists any
allowed claims.

12.51.08 Claims Objected To

Claim  [1] objected to as being dependent upon a rejected base claim,
but would be allowable if rewritten in independent form including all of
the limitations of the base claim and any intervening claims.

Examiner Note:

All objected to claims must be identified if the brief incorrectly lists
any claims objected to.

12.51.09 Claims Withdrawn From Consideration

Claim  [1] withdrawn from consideration as not directed to the elected  
[2].

Examiner Note:

All withdrawn claims must be identified if the brief incorrectly lists
any withdrawn claims.

12.51.10 Claims Canceled

Claim  [1] been canceled.

Examiner Note:

All canceled claims must be identified if the brief incorrectly lists
any canceled claims.

12.52 Status of Amendments After Final

(4)	Status of Amendments After Final

Examiner Note:

Identify status of all amendments submitted after final rejection.  Use
one or more of paragraphs 12.52.01 to 12.52.04, if appropriate.

12.52.01 Agreement With Appellant's Statement of the Status of
Amendments After Final

The appellant's statement of the status of amendments after final
rejection contained in the brief is correct.

12.52.02 Disagreement With Appellant's Statement of the Status of
Amendments After Final

The appellant's statement of the status of amendments after final
rejection contained in the brief is incorrect.

Examiner Note:

Form paragraphs 12.52.03 and/or 12.52.04 must follow this paragraph to
explain the reasons for disagreeing with appellant's statement of the
status of the amendments.

12.52.03 Amendment After Final Entered

The amendment after final rejection filed on   [1] has been entered.

Examiner Note:

1. In bracket 1, insert the filing date of any entered after final
amendment.

2. Use this form paragraph for each after final amendment which has been
entered.

12.52.04 Amendment After Final Not Entered

The amendment after final rejection filed on   [1] has not been entered.

Examiner Note:

1. In bracket 1, insert the date of any after final amendment denied
entry.

2. Use this form paragraph for each after final amendment which has been
denied entry.

12.52.05 No Amendments After Final

No amendment after final has been filed.

12.53 Summary of Invention

(5)	Summary of Invention

Examiner Note:

Follow this paragraph with either of paragraphs 12.53.01 or 12.53.02.

12.53.01 Agreement With the Summary of Invention

The summary of invention contained in the brief is correct.

12.53.02 Disagreement With the Summary of Invention

The summary of invention contained in the brief is deficient because  
[1].

Examiner Note:

In bracket 1, explain the deficiency of the appellant's summary of the
invention.  Include a correct summary of the invention if necessary for
a clear understanding of the claimed invention.

12.54 Issues

(6)	Issues

Examiner Note:

Follow this paragraph with paragraphs 12.54.01, 12.54.02, or 12.54.03.

12.54.01 Agreement With Appellant's Statement of the Issues

The appellant's statement of the issues in the brief is correct.

12.54.02 Disagreement With Appellant's Statement of the Issues

The appellant's statement of the issues in the brief is substantially
correct.  The changes are as follows: [1]

Examiner Note:

In bracket 1, explain the changes with respect to the appellant's
statement of the issues in the brief including:

(i) an identification of any issues which are petitionable rather than
appealable, and/or

(ii) an identification of any issues or grounds of rejection on appeal
which the examiner no longer considers applicable, and/or

(iii) any change not covered in (i) or (ii).

12.54.03 Non-Appealable Issue in Brief

Appellant's brief presents arguments relating to   [1].  This issue
relates to petitionable subject matter under  37 CFR 1.181 and not to
appealable subject matter.  See MPEP Section Section  1002 and  1201.

12.55 Grouping of Claims

(7)	Grouping of Claims

Examiner Note:

Follow this paragraph with either paragraph 12.55.01, 12.55.02 or
12.55.04 for each grouping of claims (i.e., each ground of rejection
which appellant contests).

12.55.01 No Statement and Reasons in Brief That Claims Do Not Stand or
Fall Together

The rejection of claims   [1] stand or fall together because appellant's
brief does not include a statement that this grouping of claims does not
stand or fall together and reasons in support thereof.  See  37 CFR
1.192(c)(7).

Examiner Note:

1. Use this paragraph for each grouping of claims (i.e., ground of
rejection which appellant contests) wherein the brief includes neither a
statement that a grouping of claims does not stand or fall together nor
reasons in support thereof.

2. If the brief includes a statement that a grouping of claims does not
stand or fall together but does not provide reasons, as set forth in  37
CFR 1.192(c)(7), notify appellant of the non-compliance using form
paragraphs 12.69, 12.69.01 and 12.78.

12.55.02 No Agreement With Brief Why Claims Do Not Stand or Fall
Together

The appellant's statement in the brief that certain claims do not stand
or fall together is not agreed with because   [1].

Examiner Note:

In bracket 1, explain why the claim grouping listed in the brief is not
agreed with by the examiner and why, if appropriate, e.g., the claims as
listed by the appellant are not separately patentable.

12.55.04 Brief Gives Reasons Why Claims Do Not Stand or Fall Together

Appellant's brief includes a statement that claims   [1] do not stand or
fall together and provides reasons as set forth in  37 CFR 1.192(c)(7)
and (c)(8).

12.56 Claims Appealed

(8)	Claims Appealed

Examiner Note:

Follow this paragraph with paragraph 12.56.01, 12.56.02 or 12.56.03.

12.56.01 Copy of the Appealed Claims in Appendix Is Correct

The copy of the appealed claims contained in the Appendix to the brief
is correct.

12.56.02 Copy of the Appealed Claims in Appendix Is Substantially
Correct

A substantially correct copy of appealed claim  [1] appears on page  [2]
of the Appendix to the appellant's brief.  The minor errors are as
follows:   [3]

Examiner Note:

1. In bracket 1, indicate the claim or claims with small errors.

2. In bracket 3, indicate the nature of the errors.

12.56.03 Copy of the Appealed Claims in Appendix Contain Substantial
Errors

Claim  [1] contain(s) substantial errors as presented in the Appendix to
the brief.  Accordingly, claim  [2] correctly written in the Appendix to
the Examiner's Answer.

Examiner Note:

1. Appellant should include a correct copy of all appealed claims in the
Appendix to the brief.  See  37 CFR 1.192(c)(9).

2. Attach a correct copy of any incorrect claims as an Appendix to the
Examiner's Answer and draw a diagonal line in pencil through the
incorrect claim in the Appendix of the appellant's appeal brief.

3. Rather than using this form paragraph, if the errors in the claim(s)
are significant, appellant should be required to submit a corrected
brief using form paragraphs 12.69, 12.77 and 12.78, as well as any other
paragraphs 12.70 to 12.76 as may be appropriate.  Where the brief
includes arguments directed toward the errors, a corrected brief should
always be required.

12.57 Prior Art of Record

(9)	Prior Art of Record

Examiner Note:

Follow this paragraph with either paragraph 12.57.01 or 12.57.02.

12.57.01 No Prior Art Relied Upon

No prior art is relied upon by the examiner in the rejection of the
claims under appeal.

12.57.02 Listing of the Prior Art of Record Relied Upon

The following is a listing of the prior art of record relied upon in the
rejection of claims under appeal.

Examiner Note:

1. Use the following format for providing information on each reference
cited:

Number Name Date

2. The following are example formats for listing reference citations:

2,717,847 VERAIN 9-1955

1,345,890 MUTHER (Fed. Rep. of Germany)  7-1963

(Figure 2 labeled as Prior Art in this document)

3. See MPEP Section  707.05(e) for additional examples.

12.59 Grounds of Rejection

 (10)	Grounds of Rejection

The following ground(s) of rejection are applicable to the appealed
claims:

Examiner Note:

Explain each ground of rejection or refer to the single prior Office
action which clearly sets forth the rejection and complies with
appropriate paragraphs i - vi below:

(i) For each rejection under  35 U.S.C. 112, first paragraph, the
Examiner's Answer or a single prior action, shall explain how the first
paragraph of  35 U.S.C. 112 is not complied with, including, as
appropriate, how the specification and drawings, if any, (a) do not
describe the subject matter defined by each of the rejected claims, (b)
would not enable any person skilled in the art to make and use the
subject matter defined by each of the rejected claims, and (c) do not
set forth the best mode contemplated by the appellant of carrying out
his/her invention.

(ii) For each rejection under  35 U.S.C. 112, second paragraph, the
Examiner's Answer or single prior action, shall explain how the claims
do not particularly point out and distinctly claim the subject matter
which appellant regards as the invention.

(iii) For each rejection under  35 U.S.C. 102, the Examiner's Answer or
single prior action, shall explain why the rejected claims are
anticipated or not patentable under 35 U.S.C. 102, pointing out where
all of the specific limitations recited in the rejected claims are found
in the prior art relied upon in the rejection.

(iv) For each rejection under  35 U.S.C. 103, the Examiner's Answer or
single prior action, shall state the ground of rejection and point out
where each of the specific limitations recited in the rejected claims is
found in the prior art relied upon in the rejection, shall identify any
difference between the rejected claims and the prior art relied on and
shall explain how the claimed subject matter is rendered unpatentable
over the prior art.  If the rejection is based upon a combination of
references, the Examiner's Answer, or single prior action, shall explain
the rationale for making the combination.

(v) For each rejection under  35 U.S.C. 102 or 103 where there may be
questions as to how limitations in the claims correspond to features in
the prior art, the examiner, in addition to the requirements of (ii),
(iii) and (iv) above, should compare at least one of the rejected claims
feature by feature with the prior art relied on in the rejection.  The
comparison shall align the language of the claim side by side with a
reference to the specific page, line number, drawing reference number
and quotation from the prior art, as appropriate.

(vi) For each rejection, other than those referred to in paragraphs (i)
to (v) for this section, the Examiner's Answer, or single prior action,
shall specifically explain the basis for the particular rejection.

12.59.01 Reference to Rejection in Prior Office Action

Claim  [1] rejected under 35 U.S.C. [2].  This rejection is fully set
forth in prior Office action, Paper No. [3].

Examiner Note:

1. In bracket 1, insert the claims subject to this ground of rejection.

2. In bracket 2, insert the section of 35 U.S.C. under which the claims
are rejected.

3. In bracket 3, insert the Paper No. of the Office action in which the
rejection is set forth in detail.

12.61 Response to Argument

 (11)	Response to Argument

Examiner Note:

1. If an issue raised by appellant was fully responded to under the
"Grounds of Rejection" portion, no additional response is required here.

2. If an issue has been raised by appellant that was not fully responded
to under "Grounds of Rejection," a full response must be provided after
this paragraph.

12.63 Request to Present Oral Arguments

The examiner requests the opportunity to present arguments at the oral
hearing.

Examiner Note:

1. Use this paragraph only if an oral hearing has been requested by
appellant and the primary examiner intends to present an oral argument.

2. If appellant's request for an oral hearing has been made before or
with the brief, this form paragraph may be included at the end of the
Examiner's Answer.

3. If appellant's request for an oral hearing has been made after the
Examiner's Answer, this form paragraph may be included in an
acknowledgment of reply brief (see form paragraph 12.47), or in a
separate letter on a form PTOL-90.

12.79 Examiner's Answer, Conclusion

For the above reasons, it is believed that the rejections should be
sustained.

Respectfully submitted,

[1]

[2]

Examiner Note:

1. In bracket 1, insert examiner or typist initials and date.

2. In bracket 2, insert correspondence address of record.

For a case having a patentability report, see MPEP Section  705.01(a).

If the examiner requests an oral hearing, the request should appear in
the last paragraph of the examiner's answer. See the "Participation by
Examiner" discussion in MPEP Section  1209.

Up to two examiners are permitted to attend any one hearing as
observers, where the case is related to the examiners' field of
technology.  Such attendance by examiners is considered to be desirable
for the experience and educational benefits to the examiners.

If the appellant has requested an oral hearing, and the examiner wishes
to attend as an observer, the examiner should include a statement that
he/she will attend the hearing: (A) as the last paragraph of the
examiner's answer, if appellant's request for an oral hearing has been
made before or with the brief, or (B) in an acknowledgement of the reply
brief or in a separate letter on form PTOL-90, if appellant's request
for an oral hearing has been made after the examiner's answer.  Also,
the examiner should make a notation "Examiner will attend (but not
participate in) hearing" on the face of the file wrapper below the box
for the examiner's name.

---SECTION---1208.01 Prohibition Against Entry of New Ground of
Rejection in Examiner's Answer

37 CFR 1.193(a)(2) prohibits the entry of a new ground of rejection in
an examiner's answer.  At the time of preparing the answer to an appeal
brief, however, the examiner may decide that he or she should apply a
new ground of rejection against some or all of the appealed claims. In
such an instance where a new ground of rejection is necessary, the
examiner should reopen prosecution.  The examiner must obtain
supervisory approval in order to reopen prosecution after an appeal. 
See MPEP Section  1002.02(d).

There is no new ground of rejection when the basic thrust of the
rejection remains the same such that an appellant has been given a fair
opportunity to react to the rejection. See   In re Kronig, 539 F.2d
1300, 1302-03, 190 USPQ 425, 426-27 (CCPA 1976). Where the statutory
basis for the rejection remains the same, and the evidence relied upon
in support of the rejection remains the same, a change in the discussion
of, or rationale in support of, the rejection does not necessarily
constitute a new ground of rejection. Id. at 1303, 190 USPQ at 427
(reliance upon fewer references in affirming a rejection under  35
U.S.C. 103 does not constitute a new ground of rejection).  Where the
examiner simply changes (or adds) a rationale for supporting a
rejection, but relies upon the same statutory basis and evidence in
support of the rejection, there is no new ground of rejection.

37 CFR 1.193(a)(2) also provides that if:

(A) an amendment under  37 CFR 1.116 proposes to add or amend one or
more claims;

(B) appellant was advised (through an advisory action) that the
amendment would be entered for purposes of appeal; and

(C) the advisory action indicates which individual rejection(s) set
forth in the action from which appeal has been taken would be used to
reject the added or amended claims, the

(1) the appeal brief must address the rejection(s) of the added or
amended claim(s) and

(2) the examiner's answer may include the rejection(s) of the added or
amended claims.   The filing of such an amendment represents appellant's
consent to proceed with the appeal process.  For example, when an
amendment under  37 CFR 1.116 cancels a claim (the "canceled claim") and
incorporates its limitations into the claim upon which it depends or
rewrites the claim as a new independent claim (the "appealed claim"),
the appealed claim contains the limitations of the canceled claim (i.e.,
the only difference between the appealed claim and the canceled claim is
the claim number).  In such situations, the appellant has been given a
fair opportunity to react to the ground of rejection (albeit to a claim
having a different claim number).  Thus, such a rejection does not
constitute a "new ground of rejection" within the meaning of  37 CFR
1.193(a)(2).

The phrase "individual rejection(s)" in  37 CFR 1.193(a)(2) addresses
the situation in which claim 2 (which depends upon claim 1) was rejected
under  35 U.S.C. 103 on the basis of Reference A in view of Reference B
and claim 3 (which depends upon claim 1) was rejected under  35 U.S.C.
103 on the basis of Reference A in view of Reference C, but no claim was
rejected under  35 U.S.C. 103 on the basis of Reference A in view of
References B and C.  An amendment under  37 CFR 1.116 proposes to
combine the limitations of claims 2 and 3 together into new claim 4.  In
this situation, the action from which the appeal is taken does not set
forth a rejection on the basis of Reference A in view of References B
and C, and, as such, the rejection of newly proposed claim 4 on this
basis in the examiner's answer may be seen as a new ground of rejection. 
However, if the amendment is entered by the examiner for purposes of
appeal and appellant was advised how the two individual rejections would
be used to reject claim 4, then the appeal brief must address the
rejection of claim 4 and the examiner's answer may include the rejection
of claim 4.  Of course, as a claim including the limitations of both
claim 2 and claim 3 is a newly proposed claim in the application raising
a new issue (i.e., a new ground of rejection), such an amendment under 
37 CFR 1.116 may properly be refused entry as raising new issues.

It must be emphasized that amended  37 CFR 1.193(a)(2) does not change
the existing practice with respect to amendment after final rejection
practice (37 CFR 1.116).  The fact that  37 CFR 1.193(a)(2) would
authorize the rejection in an examiner's answer of a claim sought to be
added or amended in an amendment under  37 CFR 1.116 has no effect on
whether the amendment under  37 CFR 1.116 is entitled to entry.  The
provisions of  37 CFR 1.116 control whether an amendment under  37 CFR
1.116 is entitled to entry; the provisions of  37 CFR 1.193(a)(2)
control the rejections to which a claim added or amended in an amendment
under  37 CFR 1.116 may be subject in an examiner's answer. 

A new prior art reference cited for the first time in an examiner's
answer generally will constitute a new ground of rejection.  If the
citation of a new prior art reference is necessary to support a
rejection, it must be included in the statement of rejection, which
would be considered to introduce a new ground of rejection.  Even if the
prior art reference is cited to support the rejection in a minor
capacity, it should be positively included in the statement of
rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n. 3
(CCPA 1970).  However, where a newly cited reference is added merely as
evidence of the prior well known statement made by the examiner, the
citation of the reference in the examiner's answer would not constitute
a new ground of rejection within the meaning of  37 CFR 1.192(a)(2). 
See also MPEP Section  2144.03.

Any allegation that an examiner's answer contains an impermissible new
ground of rejection is waived if not timely (37 CFR 1.181(f)) raised by
way of a petition under  37 CFR 1.181(a).

---SECTION---1208.02 Reopening of Prosecution After Appeal

The examiner may, with approval from the supervisory patent examiner,
reopen prosecution to enter a new ground of rejection after appellant's
brief or reply brief has been filed.  The Office action containing a new
ground of rejection may be made final if the new ground of rejection was
(A) necessitated by amendment, or (B) based on information presented in
an information disclosure statement under  37 CFR 1.97(c) where no
certification was filed. See MPEP Section  706.07(a).

Form paragraph 12.81 may be used when reopening prosecution:

12.81 Reopening of Prosecution - New Ground of Rejection After Appeal or
Examiner's Rebuttal of Reply Brief

In view of the [1] filed on [2], PROSECUTION IS HEREBY REOPENED. [3] set
forth below.

To avoid abandonment of the application, appellant must exercise one of
the following two options:

file a reply under  37 CFR 1.111 (if this Office action is non-final) or
a reply under  37 CFR 1.113 (if this Office action is final); or,

request reinstatement of the appeal. 

If reinstatement of the appeal is requested, such request must be
accompanied by a supplemental appeal brief, but no new amendments,
affidavits (37 CFR 1.130, 1.131 or 1.132) or other evidence are
permitted.  See  37 CFR 1.193(b)(2).

Examiner Note:

Use this form paragraph to reopen prosecution in order to make a new
ground of rejection of claims or to enter a rebuttal to the reply brief. 
The finality or non-finality of an Office action following a reopening
of prosecution depends on whether the action could have been properly
made final had it been entered prior to the appeal. 

1. In bracket 1, insert --appeal brief--, --supplemental appeal brief--,
--reply brief-- or --supplemental reply brief--.

2. In bracket 2, insert the date on which the brief was filed.

3. In bracket 3, insert --A new ground of rejection is--, --New grounds
of rejection are-- or --A rebuttal to the Reply Brief is--.

After reopening of prosecution, appellant must exercise one of the
following options to avoid abandonment of the application:

(A) file a reply under  37 CFR 1.111, if the Office action is non-final;

(B) file a reply under  37 CFR 1.113, if the Office action is final; or

(C) request reinstatement of the appeal.   See  37 CFR 1.193(b)(2).  If
reinstatement of the appeal is requested, the request must be
accompanied by a supplemental appeal brief; however, no new amendments,
affidavits (37 CFR 1.130, 1.131, or 1.132), or other evidence is
permitted.  The supplemental appeal brief must comply with the
requirements of  37 CFR 1.192(c), but in doing so may incorporate by
reference such parts of the previously-filed brief as may still be
applicable. The arguments presented in the supplemental appeal brief
need only be those relevant to the new ground(s) of rejection raised in
the Office action that reopened prosecution, but the appellant should
also identify all previously-raised issues and/or arguments which are
still considered to be relevant. If the examiner does not consider that
the supplemental appeal brief complies with the foregoing requirements,
appellant should be given a 1 - month time period within which to file
an amended supplemental brief under  37 CFR 1.192(d). See MPEP Section 
1206.

After the supplemental appeal brief is filed, the examiner may issue an
answer thereto, and appellant may file a reply brief. It is also
possible that, after reading the brief, the examiner may be convinced
that some or all of the finally rejected claims are allowable. Where the
examiner is of the opinion that some of the claims are allowable, he or
she should so specify in the examiner's answer and confine the arguments
to the remaining rejected claims. If the examiner finds, upon
reconsideration, that all the rejected claims are allowable, or where
the appellant in the brief withdraws the appeal as to some of the
rejected claims by submitting an appropriate amendment and the examiner
finds the remaining claims to be allowable, the examiner should allow
the application.

In applications where an interference has resulted from the applicant
provoking an interference with the patent which provided the basis for
final rejection, the rejection based on that patent should be withdrawn
and the appeal dismissed as to the involved claims.

---SECTION---1208.03 Reply Brief

37 CFR 1.193 Examiner's answer and reply brief.

                  +++    

(b)(1) Appellant may file a reply brief to an examiner's answer within
two months from the date of such examiner's answer.  See Section 
1.136(b) for extensions of time for filing a reply brief in a patent
application and Section  1.550(c) for extensions of time for filing a
reply brief in a reexamination proceeding. The primary examiner must
either acknowledge receipt and entry of the reply brief or withdraw the
final rejection and reopen prosecution to respond to the reply brief. A
supplemental examiner's answer is not permitted, unless the application
has been remanded by the Board of Patent Appeals and Interferences for
such purpose.

(2) Where prosecution is reopened by the primary examiner after an
appeal or reply brief has been filed, appellant must exercise one of the
following two options to avoid abandonment of the application:

(i) File a reply under Section  1.111, if the Office action is not
final, or a reply under Section  1.113, if the Office action is final;
or

(ii) Request reinstatement of the appeal. If reinstatement of the appeal
is requested, such request must be accompanied by a supplemental appeal
brief, but no new amendments, affidavits (Section Section  1.130, 1.131
or 1.132) or other evidence are permitted.

                  +++    

Under  37 CFR 1.193(b)(1), appellant may file a reply brief as a matter
of right within 2 months from the mailing date of the examiner's answer. 
Extensions of time to file the reply brief may be granted pursuant to 
37 CFR 1.136(b) or 1.550(c).  The primary examiner must then either: (A)
acknowledge receipt and entry of the reply brief by using form paragraph
12.47 on form PTOL-90; or (B) reopen prosecution to respond to the reply
brief.  See MPEP Section  1208.02.  A supplemental examiner's answer is
not permitted unless the application has been remanded by the Board for
such purpose.

Amendments, affidavits, and/or other evidence must be submitted in
papers separate from the reply brief, and the entry of such papers is
subject to the provisions of  37 CFR 1.116 and  37 CFR 1.195. A paper
that contains an amendment (or evidence) is not a reply brief within the
meaning of  37 CFR 1.193(b).  Such a paper will not be entitled to entry
simply because it is characterized as a reply brief.

While  37 CFR 1.193(b)(1) prohibits a supplemental examiner's answer (in
the absence of a remand from the Board of Patent Appeals and
Interference for such purpose), an examiner may (with Supervisory Patent
Examiner approval) respond to a reply brief by reopening prosecution. 
The acknowledgment of receipt and entry of a reply brief under  37 CFR
1.193(b)(1) is an indication by the examiner that no further response by
the examiner is deemed necessary.  Thus, a remand by the Board of Patent
Appeals and Interference under  37 CFR 1.193(b)(1) in an application
containing an acknowledgment of receipt and entry of a reply brief under 
37 CFR 1.193(b)(1) for the express purpose of a response by the examiner
to the reply brief (a supplemental examiner's answer) should rarely, if
ever, be necessary.

It should also be noted that an indication of a change in status of
claims (e.g  ., that certain rejections have been withdrawn as a result
of the reply brief) is not a supplemental examiner's answer and is of
course permitted.  Such an indication of a change in status of claims
may be made on form PTOL-90. 

For procedure where prosecution is reopened after a reply brief has been
filed, see MPEP Section  1208.02.

Form paragraph 12.47 may be used to acknowledge receipt and entry of a
reply brief.

12.47 Acknowledgment of Reply Brief

Application No. [1]

Art Unit [2]

The reply brief filed   [3] has been entered and considered.  The
application has been forwarded to the Board of Patent Appeals and
Interferences for decision on the appeal.

Examiner Note:

1. This form paragraph is to be printed on a blank page for attachment
to a PTOL-90 or PTO-90C.

2. If an amendment, an affidavit and/or a declaration has/have been
filed with the reply brief, the examiner must notify the appellant in
writing whether it has been entered.  Unless the amendment, affidavit,
and/or declaration place(s) the application in condition for allowance,
entry should not be permitted.  See  37 CFR 1.116 and  37 CFR 1.195. 
This is particularly important since a supplemental examiner's answer is
not permitted, unless the application has been remanded by the Board of
Patent Appeals and Interferences for such purpose.  See  37 CFR
1.193(b)(1).

---SECTION---1209 Oral Hearing

37 CFR 1.194 Oral hearing.

(a) An oral hearing should be requested only in those circumstances in
which appellant considers such a hearing necessary or desirable for a
proper presentation of the appeal. An appeal decided without an oral
hearing will receive the same consideration by the Board of Patent
Appeals and Interferences as appeals decided after oral hearing.

(b) If appellant desires an oral hearing, appellant must file, in a
separate paper, a written request for such hearing accompanied by the
fee set forth in Section  1.17(d) within two months from the date of the
examiner's answer. If appellant requests an oral hearing and submits
therewith the fee set forth in Section  1.17(d), an oral argument may be
presented by, or on behalf of, the primary examiner if considered
desirable by either the primary examiner or the Board.  See Section 
1.136(b) for extensions of time for requesting an oral hearing in a
patent application and Section  1.550(c) for extensions of time for
requesting an oral hearing in a reexamination proceeding.

(c) If no request and fee for oral hearing have been timely filed by
appellant, the appeal will be assigned for consideration and decision.
If appellant has requested an oral hearing and has submitted the fee set
forth in Section  1.17(d), a day of hearing will be set, and due notice
thereof given to appellant and to the primary examiner.  A hearing will
be held as stated in the notice, and oral argument will be limited to
twenty minutes for appellant and fifteen minutes for the primary
examiner unless otherwise ordered before the hearing begins. If the
Board decides that a hearing is not necessary, the Board will so notify
appellant.

37 CFR 1.194(b) provides that an appellant who desires an oral hearing
before the Board must request the hearing by filing, in a separate
paper, a written request therefor, accompanied by the appropriate fee
set forth in  37 CFR 1.17(d), within 2 months after the date of the
examiner's answer. This time period may only be extended by filing a
request under either  37 CFR 1.136(b) or, if the appeal involves a
reexamination proceeding, under  37 CFR 1.550(c).

A notice of hearing, stating the date, the time, and the docket, is
forwarded to the appellant in due course. If appellant fails to confirm
within the time required in the notice of hearing, the appeal will be
removed from the hearing docket and assigned on brief in due course.  No
refund of the fee for requesting an oral hearing will be made. 
Similarly, after confirmation, if no appearance is made at the scheduled
hearing, the appeal will be decided on brief. Since failure to notify
the Board of waiver of hearing in advance of the assigned date results
in a waste of the Board's resources, appellant should inform the Board
of a change in plans at the earliest possible opportunity. If the Board
determines that a hearing is not necessary (e.g., a remand to the
examiner is necessary or it is clear that the rejection(s) cannot be
sustained), appellant will be notified.

If appellant has any special request, such as for a particular date or
day of the week, this will be taken into consideration in setting the
hearing, if made known to the Board in advance, as long as such request
does not unduly delay a decision in the case and does not place an undue
administrative burden on the Board.

The appellant may also file a request, in a paper addressed to the Chief
Clerk of the Board, to present his/her arguments via telephone. The
appellant making the request will be required to bear the cost of the
telephone call.

If the time set in the notice of hearing conflicts with prior
commitments or if subsequent events make appearance impossible, the
hearing may be rescheduled on written request. However, in view of the
administrative burden involved in rescheduling hearings and the
potential delay which may result in the issuance of any patent based on
the application on appeal, postponements are discouraged and will not be
granted in the absence of convincing reasons in support of the requested
change.

Normally, 20 minutes are allowed for appellant to explain his or her
position. If appellant believes that additional time will be necessary,
a request for such time should be made well in advance and will be taken
into consideration in assigning the hearing date. The final decision on
whether additional time is to be granted rests within the discretion of
the senior member of the panel hearing the case.

PARTICIPATION BY EXAMINER

If the appellant has requested an oral hearing and the primary examiner
wishes to appear and present an oral argument before the Board, a
request to present oral argument must be included as the last paragraph
of the examiners' answer, using form paragraph 12.63. See MPEP Section 
1208.  If the appellant's request for a hearing is filed after the
examiner's answer, then the examiner's request must be in an
acknowledgement of reply brief, if applicable, or in a separate letter
on form PTOL-90.  In either case, the examiner should also make a
notation "Examiner Requests an Oral Hearing" on the face of the file
wrapper below the box for the examiner's name.

In those appeals in which an oral hearing has been confirmed and either
the primary examiner or the Board has indicated a desire for the
examiner to participate in the oral argument, oral argument may be
presented by the examiner whether or not appellant appears.

After the oral hearing has been confirmed and the date set as provided
in  37 CFR 1.194(c), the application file will be delivered to the
examiner via the appropriate Group Director at least 2 weeks prior to
the date of the hearing and the examiner will be notified of the date of
the hearing.  In those cases where the Board requests the presentation
of an oral argument by or on behalf of the primary examiner, the Board's
request may, where appropriate, indicate specific points or questions to
which the argument should be particularly directed. The application file
must be returned to the Board at least 2 working days before the
hearing.

In any appeal where oral argument is to be presented by, or on behalf
of, the primary examiner, the appellant will be given due notice of that
fact.

At the hearing, after the appellant has made his or her presentation,
the examiner will be allowed 15 minutes to reply as well as to present a
statement which clearly sets forth his or her position with respect to
the issues and rejections of record. Appellant may utilize any allotted
time not used in the initial presentation for rebuttal.

If the examiner wishes to attend the oral hearing as an observer but not
to present oral argument, see MPEP Section  1208.

---SECTION---1210 Actions Subsequent to Examiner's Answer but Before
Board's Decision

JURISDICTION OF BOARD

The application file and jurisdiction of the application are normally
transferred from the examining groups to the Board at one of the
following times:

(A) After 2 months from the examiner's answer, plus mail room time, if
no reply brief has been timely filed.

(B) After a supplemental examiner's answer, pursuant to a remand from
the Board, has been mailed.

(C) After the examiner has notified the appellant by written
communication that the reply brief has been entered and considered and
that the application will be forwarded to the Board (for example, by
mailing a PTOL-90 with form paragraph 12.47, as described in MPEP
Section  1208.03). 

Any amendment, affidavit, or other paper relating to the appeal, filed
thereafter but prior to the decision of the Board, may be considered by
the examiner only in the event the case is remanded by the Board for
that purpose.

DIVIDED JURISDICTION

Where appeal is taken from the second or final rejection only of one or
more claims presented for the purpose of provoking an interference,
jurisdiction of the rest of the case remains with the examiner, and
prosecution of the remaining claims may proceed as though the entire
case was under his or her jurisdiction. Also, where the examiner
certifies in writing that there is no conflict of subject matter and the
administrative patent judge in charge of the interference approves, an
appeal to the Board may proceed concurrently with an interference.  See
MPEP Section  2315.

ABANDONMENT OF APPEAL: APPLICATION REFILED OR ABANDONED

To avoid the rendering of decisions by the Board in applications which
have already been refiled as continuations, appellants should promptly
inform the clerk of the Board in writing as soon as they have positively
decided to refile or to abandon an application containing an appeal
awaiting a decision. Failure to exercise appropriate diligence in this
matter may result in the Board's refusing an otherwise proper request to
vacate its decision.

See MPEP Section  1215.01 -  Section  1215.03 concerning the withdrawal
of appeals.

---SECTION---1210.01 Order for Compliance

While the examiner will assume that the real party in interest is the
individual or individuals identified in the caption when the real party
in interest is not explicitly set out in the brief, the Board may
require the appellant to explicitly name the real party in interest.
Likewise, while the examiner will assume that there are no related cases
when no related case is explicitly set out in the brief, the Board may
require the appellant to explicitly identify any related case.  When the
Board elects to require an explicit statement, an order for compliance
with the rule will be entered setting a 1 - month period for reply to
the Board's requirement (37 CFR 1.192(d)). Extensions of time are only
available under  37 CFR 1.136(b).  An entire new brief need not, and
should not, be filed.  Rather, a simple paper identifying the real party
in interest or explicitly stating that the appellant is the real party
in interest will suffice. Failure to timely respond to the Board's
requirement may result in dismissal of the appeal. See MPEP Section 
1215.04 and MPEP Section  711.02(b).

---SECTION---1211 Remand by Board

The Board has authority to remand a case to the examiner when it deems
it necessary. For example, the Board may remand for a fuller description
of the claimed invention and, in the case of a machine, a statement of
its mode of operation.  In certain cases where the pertinence of the
references is not clear, the Board may call upon the examiner for a
further explanation.  In the case of multiple rejections of a cumulative
nature, the Board may also remand for selection of the preferred or best
ground.  The Board may also remand a case to the examiner for further
search where it feels that the most pertinent art has not been cited, or
to consider an amendment, affidavit, or declaration. See MPEP Section 
1211.01 and Section  1211.02. Furthermore, the Board may remand an
application to the examiner to prepare a supplemental examiner's answer
in response to a reply brief. The following form paragraph may be used
in preparing the supplemental examiner's answer after a remand from the
Board:

12.80 Supplemental Examiner's Answer - On Remand

Pursuant to the Remand under  37 CFR 1.193(b)(1) by the Board of Patent
Appeals and Interferences on [1], a supplemental Examiner's Answer is
set forth below: [2].

Examiner Note:

1. Insert the date of the Remand.

2. Provide reasons supporting the rejections set forth in the
supplemental Examiner's Answer.

The Supervisory Patent Examiner should approve and the Board should be
notified whenever a remanded application is withdrawn from appeal under
any circumstance. See MPEP Section  706.07(e) and Section  1002.02(d).

---SECTION---1211.01 Remand by Board To Consider Amendment 

While there is no obligation resting on the Board to consider new or
amended claims submitted while it has jurisdiction of the appeal. In re
Sweet, 136 F.2d 722, 58 USPQ 327 (CCPA 1943), a proposed amendment,
affidavit, declaration, or other paper may be remanded for such
consideration as the examiner may see fit to give. Such an amendment
will be treated as an amendment filed after appeal.  See MPEP Section 
1207.

If the proposed amendment is in effect an abandonment of the appeal,
e.g., by canceling the appealed claims, the amendment should be entered
and the clerk of the Board notified in order that the case may be
removed from the Board's docket.

---SECTION---1211.02 Remand by Board To Consider Affidavits or
Declarations

37 CFR 1.195 Affidavits or declarations after appeal.

Affidavits, declarations, or exhibits submitted after the case has been
appealed will not be admitted without a showing of good and sufficient
reasons why they were not earlier presented.

Affidavits or declarations filed with or after the filing of a notice of
appeal but before jurisdiction passes to the Board (see MPEP Section 
1210) will be considered for entry only if the appellant makes the
necessary showing under  37 CFR 1.195 as to why they were not earlier
presented. Authority from the Board is not necessary to consider such
affidavits or declarations. Affidavits or declarations filed after a
final rejection and prior to a notice of appeal are handled as provided
in MPEP Section  715.09,  Section  716, and Section  716.01.

In the case of affidavits or declarations filed after the application
has been forwarded to the Board, but before a decision thereon by the
Board, the examiner is without authority to consider the same in the
absence of a remand by the Board. When an application is remanded to the
examiner for the consideration of such affidavits or declarations, the
examiner, after having given such consideration as the facts in the case
require, will return the application to the Board with his or her
supplemental examiner's answer on remand, a copy of which should be
forwarded to the appellant. If such an affidavit or declaration is not
accompanied by the showing required under  37 CFR 1.195, the examiner
will not consider its merits. If the delay in filing such affidavit or
declaration is satisfactorily explained, the examiner will admit the
same and consider its merits.

It is not the custom of the Board to remand affidavits or declarations
offered in connection with a request for rehearing of its decision where
no rejection has been made under  37 CFR 1.196(b). Affidavits or
declarations submitted for this purpose, not remanded to the examiner,
are considered only as arguments. In re Martin, 154 F.2d 126, 69 USPQ 75
(CCPA 1946).

For remand to the examiner to consider appellant's remarks relating to a 
37 CFR 1.196(b) rejection, see MPEP Section  1214.01.

---SECTION---1212 Board Requires Appellant to Address Matter

37 CFR 1.196 Decision by the Board of Patent Appeals and Interferences.

                  +++    

(d) The Board of Patent Appeals and Interferences may require appellant
to address any matter that is deemed appropriate for a reasoned decision
on the pending appeal. Appellant will be given a non-extendable time
period within which to respond to such a requirement.

                  +++    

37 CFR 1.196(d) authorizes the Board to require an appellant to clarify
the record by addressing any matter deemed appropriate for a reasoned
decision on the appeal. This may include, for example: (A) the
applicability of particular case law that has not been previously
identified as relevant to an issue in the appeal; or (B) the
applicability of prior art that has not been made of record.

The rule further provides that the appellant will be given a
non-extendable time period within which to respond to the requirement.
Failure to respond within the time period set by the Board will result
in dismissal of the appeal.

The making of a requirement under  37 CFR 1.196(d) is discretionary with
the Board. The authority granted in  37 CFR 1.196(d) does not affect the
Board's authority to remand a case to the examiner in a situation where
the Board considers action by the examiner in the first instance to be
necessary or desirable. See MPEP Section  1211. Also, after an appellant
has replied to a requirement under  37 CFR 1.196(d), a remand to the
examiner may be deemed to be appropriate.

---SECTION---1213 Decision by Board

37 CFR 1.196 Decision by the Board of Patent Appeals and Interferences.

(a) The Board of Patent Appeals and Interferences, 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 or remand the
application to the examiner for further consideration. 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.

                  +++    

(e) Whenever a decision of the Board of Patent Appeals and Interferences
includes or allows a remand, that decision shall not be considered a
final decision. When appropriate, upon conclusion of proceedings on
remand before the examiner, the Board of Patent Appeals and
Interferences may enter an order otherwise making its decision final.

                  +++    

After consideration of the record including appellant's brief and the
examiner's answer, the Board writes 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.

37 CFR 1.196(e) provides that a decision of the Board which includes 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 an appellant following a decision by the Board.

On occasion, the Board has refused to consider an appeal until after the
conclusion of a pending civil action or appeal to the Court of Appeals
for the Federal Circuit involving issues identical with and/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. An appellant is not entitled,
after obtaining a final decision by the Patent and Trademark Office on
an issue in a case, to utilize the prolonged pendency of a court
proceeding as a means for avoiding res judicata while relitigating the
same or substantially the same issue in another application.

An applicant may request that the decision be withheld to permit the
refiling of the application at any time prior to the mailing of the
decision. Up to 30 days may be granted, although the time is usually
limited as much as possible. The Board will be more prone to entertain
the applicant's request where the request is filed early, obviating the
necessity for an oral hearing or even for the setting of the oral
hearing date. If the case has already been set for oral hearing, the
petition should include a request to vacate the hearing date, not to
postpone it.

In a situation where a withdrawal of the appeal is filed on the same day
that the decision is mailed, a petition to vacate the decision will be
denied.

See MPEP Section  1214.01 concerning the procedure following a new
ground of rejection by the Board under  37 CFR 1.196(b).

---SECTION---1213.01 Statement of Allowability by Board

37 CFR 1.196 Decision by the Board of Patent Appeals and Interferences.

                  +++    

(c) Should the decision of the Board of Patent Appeals and Interferences
include an explicit statement that a claim may be allowed in amended
form, appellant shall have the right to amend in conformity with such
statement, which shall be binding on the examiner in the absence of new
references or grounds of rejection.

                  +++    

If the Board's decision includes an explicit statement that a claim may
be allowed in amended form, appellant may amend the claim in conformity
with the statement and the statement would be binding on the examiner in
the absence of new prior art references or grounds of rejection. The
examiner should make certain that the amendment does in fact conform to
the statement in the Board's decision.

The making of a statement under  37 CFR 1.196(c) is discretionary with
the Board. In the absence of an express statement, a remark by the Board
that a certain feature does not appear in a claim is not to be taken as
a statement that the claim may be allowed if the feature is supplied by
amendment. Ex parte No rlund, 1913 C.D. 161, 192 O.G. 989 (Comm'r Pat.
1913).

Appellant's right to amend in conformity with the statement under  37
CFR 1.196(c)  may only be exercised within the period allowed for
seeking court review under  37 CFR 1.304.  See MPEP Section  1216.

---SECTION---1213.02 New Grounds of Rejection by Board

37 CFR 1.196 Decision by the Board of Patent Appeals and Interferences.

                  +++    

(b) Should the Board of Patent Appeals and Interferences have knowledge
of any grounds not involved 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 constitutes a new ground of
rejection of the claim. 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
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 proceedings (Section  1.197(c)) as
to the rejected claims:

(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which event the application
will be remanded to the examiner. The new ground of rejection is 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 stated in the decision. Should the examiner
reject the claims, appellant may again appeal pursuant to Section
Section  1.191 through 1.195 to the Board of Patent Appeals and
Interferences.

(2) Request that the application be reheard under Section  1.197(b) by
the Board of Patent Appeals and Interferences upon the same record. The
request for rehearing must address the new ground of rejection and state
with particularity the points believed to have been misapprehended or
overlooked in rendering the decision and also state all other grounds
upon which rehearing is sought.  Where request for such rehearing is
made, the Board of Patent Appeals and Interferences shall rehear the new
ground of rejection and, if necessary, render a new decision which shall
include all grounds of rejection upon which a patent is refused.  The
decision on rehearing is deemed to incorporate the earlier decision for
purposes of appeal, except for those portions specifically withdrawn on
rehearing, and is final for the purpose of judicial review, except when
noted otherwise in the decision.

                  +++    

(f) See Section  1.136(b) for extensions of time to take action under
this section in a patent application and Section  1.550(c) for
extensions of time in a reexamination proceeding.

Under  37 CFR 1.196(b), the Board may, in its decision, make a new
rejection of one or more of any of the claims pending in the case,
including claims which have been allowed by the examiner.

While  37 CFR 1.196(b) now authorizes the Board to reject allowed
claims, this authorization is not intended as an instruction to the
Board to reexamine every allowed claim in every appealed application. It
is, rather, intended to give the Board express authority to act when it
becomes apparent, during the consideration of rejected claims, that one
or more allowed claims may be subject to rejection on either the same or
on different grounds from those applied against the rejected claims.
Since the exercise of authority under  37 CFR 1.196(b) is discretionary,
no inference should be drawn from a failure to exercise that discretion.

See MPEP Section  1214.01 for the procedure following a new ground of
rejection under  37 CFR 1.196(b).

---SECTION---1213.03 Publication of Board Decision

Decisions of the Board may be published at the discretion of the
Commissioner. Requests by members of the public or applicants to publish
a decision of the Board should be referred to the Office of the
Solicitor. A decision in a pending or abandoned application will be
published in accordance with  37 CFR 1.14(d).

Decisions of the Board which are open to the public are being made
available in electronic form on the PTO website (http://www.uspto.gov).

---SECTION---1214 Procedure Following Decision by Board

37 CFR 1.197 Action following decision.

(a) After decision by the Board of Patent Appeals and Interferences, the
application will be returned to the examiner, subject to appellant's
right of appeal or other review, for such further action by appellant or
by the examiner, as the condition of the application may require, to
carry into effect the decision.

                  +++    

After an appeal to the Board has been decided, a copy of the decision is
mailed to the appellant and the original placed in the file. The clerk
of the Board notes the decision on the file wrapper and in the record of
appeals, and then forwards the file to the examiner through the office
of the Group Director immediately if all rejections are reversed, and
after about 10 weeks if any rejection is affirmed or after a decision on
a request for rehearing is rendered.

---SECTION---1214.01 Procedure Following New Ground of Rejection by
Board

When the Board makes a new rejection under  37 CFR 1.196(b), the
appellant has the option of:

(A) requesting rehearing; or

(B) submitting an appropriate amendment of the rejected claims, and/or a
showing of facts relating to the claims so rejected.

I. REQUEST FOR REHEARING

A request for rehearing by the Board of the rejection under  37 CFR
1.196(b) must be filed within 2 months from the date of the decision. 
Extensions of time are governed by  37 CFR 1.196(f). By proceeding in
this manner, the appellant waives his or her right to further
prosecution before the examiner. In re Greenfield, 40 F.2d 775, 5 USPQ
474 (CCPA 1930). If the Board's decision also includes an affirmance of
the examiner's rejection, a request for rehearing of the affirmance (see
MPEP Section  1214.03 and MPEP Section  1214.06, paragraph IV) should be
filed in a separate paper to facilitate consideration.

However, an appellant's request for rehearing accompanied by an
affidavit containing a showing of facts to be added to the record does
not afford rehearing by the Board as a matter of right under  37 CFR
1.196(b). The Board has authority to remand the application to the
examiner and the examiner has authority to consider a new showing of
facts following a new rejection by the Board and withdraw the Board's
rejection based on the appellant's affidavit and accompanying remarks. 
In such an instance, the examiner also has authority to make any
appropriate new rejection under  37 CFR 1.198 with the Group Director's
approval.

II. SUBMISSION OF AMENDMENT OR SHOWING OF FACTS

If the appellant elects to proceed before the examiner, he or she must
take such action within the 2 month period for reply set forth in the
rule. An extension under  37 CFR 1.136(a) is not available to extend the
period.  37 CFR 1.196(f).  A rejection under  37 CFR 1.196(b) in effect
nullifies the final rejection or indication of allowability and reopens
prosecution of the subject matter of the claims so rejected by the
Board.

The appellant may amend the claims involved, or substitute new claims to
avoid the art or reasons adduced by the Board. Ex parte Burrowes, 110
O.G. 599,1904 C.D. 155 (Comm'r Pat. 1904).  Such amended or new claims
must be directed to the same subject matter as the appealed claims. Ex
parte Comstock, 317 O.G. 4,1923 C.D. 82 (Comm'r Pat. 1923). The
appellant may also submit a showing of facts under  37 CFR 1.131 or
1.132, as may be appropriate.

Argument without either amendment of the claims so rejected or the
submission of a showing of facts can result only in a final rejection of
the claims, since the examiner is without authority to allow the claims
unless amended or unless the rejection is overcome by a showing of facts
not before the Board. The new ground of rejection raised by the Board
does not reopen the prosecution except as to that subject matter to
which the new rejection was applied. If the Board's decision in which
the rejection under  37 CFR 1.196(b) was made includes an affirmance of
the examiner's rejection, the basis of the affirmed rejection is not
open to further prosecution. If the appellant elects to proceed before
the examiner with regard to the new rejection, the Board's affirmance
will be treated as nonfinal for purposes of seeking judicial review, and
no request for rehearing of the affirmance need be filed at that time.
Prosecution before the examiner of the  37 CFR 1.196(b) rejection can
incidentally result in overcoming the affirmed rejection even though the
affirmed rejection is not open to further prosecution.  Therefore, it is
possible for the application to be allowed as a result of the limited
prosecution before the examiner of the  37 CFR 1.196(b) rejection. If
the application becomes allowed, the application should not be returned
to the Board.  Likewise, if the application is abandoned for any reason,
the application should not be returned to the Board.  If the rejection
under  37 CFR 1.196(b) is not overcome, the applicant can file a second
appeal (as discussed below). Such appeal must be limited to the  37 CFR
1.196(b) rejection and may not include the affirmed rejection. If the
application does not become allowed or abandoned as discussed above,
once prosecution of the claims which were rejected under  37 CFR
1.196(b) is terminated before the examiner, the application file must be
returned to the Board so that a decision making the original affirmance
final can be entered. The time for filing a request for rehearing on the
affirmance or seeking court review runs from the date of the decision by
the Board making the original affirmance final.  See MPEP Section 
1214.03 and Section  1216.

If the examiner does not consider that the amendment and/or showing of
facts overcome the rejection, he or she will again reject the claims; if
appropriate, the rejection will be made final.

An applicant in whose application such a final rejection has been made
by the examiner may mistakenly believe that he or she is entitled to
review by the Board of the rejection by virtue of the fact that the
application was previously on appeal, but under the provisions of  37
CFR 1.196(b)(1), after such a final rejection, an applicant who desires
further review of the matter must file a new appeal to the Board. Such
an appeal from the subsequent rejection by the examiner will be an
entirely new appeal involving a different ground and will require a new
notice of appeal and the payment of another fee.

In accordance with  37 CFR 1.196(f), the time periods for requesting
rehearing of the Board's new rejection under  37 CFR 1.196(b), or for
submitting an amendment or showing of facts, may not be extended by the
filing of a petition and fee under  37 CFR 1.136(a), but only under the
provisions of  37 CFR 1.136(b) or under  37 CFR 1.550(c) if the appeal
involves a reexamination proceeding.

---SECTION---1214.03 Rehearing

37 CFR 1.197 Action following decision.

                  +++    

(b) Appellant may file a single request for rehearing within two months
from the date of the original decision, unless the original decision is
so modified by the decision on rehearing as to become, in effect, a new
decision, and the Board of Patent Appeals and Interferences so states.
The request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked in rendering the
decision and also state all other grounds upon which rehearing is
sought.  See Section  1.136(b) for extensions of time for seeking
rehearing in a patent application and Section  1.550(c) for extensions
of time for seeking rehearing in a reexamination proceeding.

                  +++    

The term "rehearing" is used in  37 CFR 1.197(b) for consistency with
the language of  35 U.S.C. 7(b). It should not be interpreted as meaning
that an appellant is entitled to an oral hearing on the request for
rehearing, but only to a rehearing on the written record. It is not the
normal practice of the Board to grant rehearings in the sense of another
oral hearing. Ex parte Argoudelis, 157 USPQ 437, 441 (Bd. App. 1967),
rev'd. on other grounds, 434 F.2d 1390, 168 USPQ 99 (CCPA 1970).

37 CFR 1.197(b) provides that any request for rehearing must
specifically state the points believed to have been misapprehended or
overlooked in the Board's decision. Experience has shown that many
requests for rehearing are nothing more than reargument of appellant's
position on appeal.  In response, the rule was revised to limit requests
to the points of law or fact which appellant feels were overlooked or
misapprehended by the Board.

The 2-month period provided by  37 CFR 1.197(b) for filing a request for
rehearing can only be extended under the provisions of  37 CFR 1.136(b)
or under  37 CFR 1.550(c) if the appeal involves a reexamination
proceeding.

All copies of references in the file wrapper should be retained therein.

For extension of time to appeal to the Court of Appeals for the Federal
Circuit or commence a civil action under  37 CFR 1.304(a), see MPEP
Section  1216 and Section  1002.02(o).

For requests for reconsideration by the examiner, see MPEP Section 
1214.04. 

---SECTION---1214.04 Examiner Reversed

A complete reversal of the examiner's rejection brings the case up for
immediate action by the examiner. If the reversal does not place the
application in condition for immediate allowance (e.g., the Board has
entered a new ground of rejection under  37 CFR 1.196(b)), the examiner
should refer to the situations outlined in MPEP Section  1214.06 for
appropriate guidance.

The examiner should never regard such a reversal as a challenge to make
a new search to uncover other and better references. This is
particularly so where the application has meanwhile been transferred or
assigned to an examiner other than the one who rejected the claims
leading to the appeal. The second examiner should give full faith and
credit to the prior examiner's search.

If the examiner has specific knowledge of the existence of a particular
reference or references which indicate nonpatentability of any of the
appealed claims as to which the examiner was reversed, he or she should
submit the matter to the Group Director for authorization to reopen
prosecution under  37 CFR 1.198 for the purpose of entering the new
rejection.  See MPEP Section  1002.02(c) and MPEP Section  1214.07. The
Group Director's approval is placed on the action reopening prosecution.

The examiner may request rehearing of the Board decision.  Such a
request should normally be made within 2 months of the receipt of the
Board decision in the group. The Group Director's secretary should
therefore date stamp all Board decisions upon receipt in the group.

All requests by the examiner to the Board for rehearing of a decision
must be approved by the Group Director and must also be forwarded to the
Office of the Deputy Assistant Commissioner for Patent Policy and
Projects for approval before mailing.

The request should set a period of 1 month for the appellant to file a
reply.

If approved, the Office of the Deputy Assistant Commissioner for Patent
Policy and Projects will mail a copy of the request for rehearing to the
appellant. After the period set for appellant to file a reply (plus
mailing time) has expired,  the application file will be forwarded to
the Board.

---SECTION---1214.05 Cancellation of Withdrawn Claims

Where an appellant withdraws some of the appealed claims, and the Board
reverses the examiner on the remaining appealed claims, the withdrawal
is treated as an authorization to cancel the withdrawn claims. It is not
necessary to notify the appellant of the cancellation of the withdrawn
claims.

---SECTION---1214.06 Examiner Sustained in Whole or in Part

37 CFR 1.197 Action following decision.

                  +++    

(c)  	Termination of proceedings. Proceedings are considered terminated
by the dismissal of an appeal or the failure to timely file an appeal to
the court or a civil action (Section  1.304) except: (1) where claims
stand allowed in an application or (2) where the nature of the decision
requires further action by the examiner. The date of termination of
proceedings is the date on which the appeal is dismissed or the date on
which the time for appeal to the court or review by civil action
(Section  1.304) expires. If an appeal to the court or a civil action
has been filed, proceedings are considered terminated when the appeal or
civil action is terminated. An appeal to the U.S. Court of Appeals for
the Federal Circuit is terminated when the mandate is received by the
Office. A civil action is terminated when the time to appeal the
judgment expires.

                  +++    

The time for seeking review of a decision of the Board by the Court of
Appeals for the Federal Circuit or the U.S. District Court for the
District of Columbia is the same for both tribunals, that is, 2 months,
or 2 months with the extension provided by  37 CFR 1.304 in the event a
request for rehearing is timely filed before the Board, or as extended
by the Commissioner. See MPEP Section  1216. When the time for seeking
court review (plus 2 weeks to allow for information as to the filing of
an appeal or civil action, if any, to reach the examiner) has passed
without such review being sought, the examiner must take up the
application for consideration. The situations which can arise will
involve one or more of the following circumstances:

I. NO CLAIMS STAND ALLOWED

The proceedings in the application are terminated as of the date of the
expiration of the time for filing court action. The application is no
longer considered as pending. It is to be stamped abandoned and sent to
abandoned files.

Claims indicated as allowable prior to appeal except for their
dependency from rejected claims will be treated as if they were
rejected. The following examples illustrate the appropriate approach to
be taken by the examiner in various situations:

(A) If claims 1-2 are pending, and the Board affirms a rejection of
claim 1 and claim 2 was objected to prior to appeal as being allowable
except for its dependency from claim 1, the examiner should hold the
application abandoned.

(B) If the Board or court affirms a rejection against an independent
claim and reverses all rejections against a claim dependent thereon, the
examiner, after expiration of the period for further appeal, should
proceed in one of two ways:

(1) Convert the dependent claim into independent form by examiner's
amendment, cancel all claims in which the rejection was affirmed, and
issue the application; or

(2) Set a 1-month time limit in which appellant may rewrite the
dependent claim(s) in independent form. Extensions of time under  37 CFR
1.136(a) will not be permitted. If no timely reply is received, the
examiner will cancel all rejected and objected to claims and issue the
application with the allowed claims only.

The following language may be used where appropriate:

Claim(s) ______ is/are incomplete because the claim(s) on which it/they
depend(s) from has/have been cancelled by the examiner in accordance
with MPEP Section 1214.06. Applicant is given a ONE MONTH TIME LIMIT
from the date of this letter in which to present claim(s) ________ in
independent form. NO EXTENSIONS OF TIME UNDER  37 CFR 1.136(a) WILL BE
GRANTED. Failure to comply with this deadline will result in
cancellation of claim(s) ________ and this application will be:

   i.	allowed with claim(s) ______ (if other claims are allowed), or

   ii.	abandoned (if there are no allowed claims).

II. CLAIMS STAND ALLOWED

The appellant is not required to file a reply. The examiner takes the
application up and passes it to issue on the claims which stand allowed.
A red-ink line should be drawn through the refused claims and the notion 
"Board Decision" written in the margin in red ink.

If the Board affirms a rejection of claim 1, claim 2 was objected to
prior to appeal as being allowable except for its dependency from claim
1 and independent claim 3 is allowed, the examiner should cancel claims
1 and 2 and issue the application with claim 3 only.

If uncorrected matters of form which cannot be handled without written
correspondence remain in the application, the examiner should take
appropriate action but prosecution is otherwise closed.  Note paragraph
I of this section for handling of claims dependent on rejected claims. 
A letter such as set forth in form paragraph 12.20 is suggested:

12.20 Period For Seeking Court Review Has Lapsed

The period for seeking court review of the decision by the Board of
Patent Appeals and Interferences rendered [1] has expired and no further
action has been taken by appellant.  The proceedings as to the rejected
claims are considered terminated; see  37 CFR 1.197(c).

The application will be passed to issue on allowed claim  [2] provided
the following formal matters are promptly corrected:   [3].  Prosecution
is otherwise closed. 

Applicant is required to make the necessary corrections addressing the
outstanding formal matters within a shortened statutory period set to
expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing
date of this letter.  Extensions of time may be granted under  37 CFR
1.136. 

Examiner Note:

1. In bracket 1, enter the date of the decision.

2. In bracket 2, identify the allowed claims.

3. In bracket 3, identify the formal matters that need correction.

III. CLAIMS REQUIRE ACTION

If the decision of the Board is an affirmance in part and includes a
reversal of a rejection that brings certain claims up for action on the
merits, such as a decision reversing the rejection of generic claims in
an application containing claims to nonelected species not previously
acted upon, the examiner will take the application up for appropriate
action on the matters thus brought up, but the application is not
considered open to further prosecution except as to such matters.

IV.  	37 CFR 1.196(b) REJECTION

Where the Board makes a new rejection under  37 CFR 1.196(b) and no
action is taken with reference thereto by appellant within 2 months, the
examiner should proceed in the manner indicated in paragraphs I-III of
this section as appropriate. See MPEP Section  1214.01.

If the Board affirms the examiner's rejection, but also enters a new
ground of rejection under  37 CFR 1.196(b), the subsequent procedure
depends upon the action taken by the appellant with respect to the  37
CFR 1.196(b) rejection.

(A) If the appellant elects to request rehearing of the new rejection
(see MPEP Section  1214.01, paragraph I), the request for rehearing of
the new rejection and of the affirmance must be filed within 2 months
from the date of the Board's decision.

(B) If the appellant elects to proceed before the examiner with regard
to the new rejection (see MPEP Section  1214.01, paragraph II) the
Board's affirmance will be treated as nonfinal, and no request for
rehearing of the affirmance need be filed at that time. Prosecution
before the examiner of the  37 CFR 1.196(b) rejection can incidentally
result in overcoming the affirmed rejection even though the affirmed
rejection is not open to further prosecution. Therefore, it is possible
for the application to be allowed as a result of the limited prosecution
before the examiner of the  37 CFR 1.196(b) rejection. If the
application becomes allowed, it should not be returned to the Board.
Likewise, if the application is abandoned for any reason, it should not
be returned to the Board. If the rejection under 37 CFR1.196(b) is not
overcome, the applicant can file a second appeal (as discussed below).
Such appeal must be limited to the 37 CFR1.196(b) rejection and may not
include the affirmed rejection. If the application does not become
allowed or abandoned as discussed above, once prosecution of the claims
which were rejected under  37 CFR 1.196(b) is terminated before the
examiner, the application file must be returned to the Board so that a
decision making the original affirmance final can be entered.  The time
for filing a request for rehearing on the affirmance or seeking court
review runs from the date of the decision by the Board making the
original affirmance final. See MPEP Section  1214.03 and Section  1216.

V. APPEAL DISMISSED

Where the appeal has been dismissed for failure to argue a ground of
rejection involving all the appealed claims, see MPEP Section  1215.04.

The practice under the situations identified in paragraphs I-III of this
section is similar to the practice after a decision of the court
outlined in MPEP Section  1216.01.

In view of the above practice, examiners must be very careful that
applications which come back from the Board are not overlooked because
every case, except those in which all claims stand rejected after the
Board's decision, is up for action by the examiner in the event no court
review has been sought. Consequently, when a file is received after
decision by the Board, it must be examined and appropriate precautions
taken to indicate the presence of allowed claims, if any. This may be
done by writing the notation "Allowed Claims" or "Rejection Reversed" on
the "Contents"  page of the file wrapper immediately below the
endorsement "Decision by Board."

See MPEP Section  1216.01 and Section  1216.02 for procedure where court
review is sought.

---SECTION---1214.07 Reopening of Prosecution

37 CFR 1.198 Reopening after decision.

Cases which have been decided by the Board of Patent Appeals and
Interferences will not be reopened or reconsidered by the primary
examiner, except under the provisions of Section  1.196, without the
written authority of the Commissioner, and then only for the
consideration of matters not already adjudicated, sufficient cause being
shown.

Sometimes an amendment is filed after the Board's decision which does
not carry into effect any recommendation made by the Board and which
presents a new or amended claim or claims.  In view of the fact that the
prosecution of the application is closed, the appellant is not entitled
to have such amendment entered as a matter of right. However, if the
amendment obviously places the application in condition for allowance,
the primary examiner should endorse on the amendatory paper a
recommendation that the amendment be admitted, and with the concurrence
of the Supervisory Patent Examiner, the amendment will be entered. Note
MPEP Section  1002.02(d).

Where the amendment cannot be entered, the examiner should write to the
appellant indicating that the amendment cannot be entered and stating
the reason why. The refusal should never be made to appear arbitrary or
capricious.

Form paragraph 12.19 should be used:

12.19 Amendment After Board Decision, Entry Refused

The amendment filed [1] after a decision by the Board of Patent Appeals
and Interferences is not entered because prosecution is closed and the
proposed claim(s) raise new issues which require further consideration
or search (37 CFR 1.116(c)).  See also  37 CFR 1.198.

[2]

Examiner Note:

1. In bracket 2, identify the new issues.

2. This paragraph is not to be used where a  37 CFR 1.196 (b) rejection
has been made by the Board of Patent Appeals and Interferences.

In the event that claims stand allowed in the application under the
conditions set forth in MPEP Section  1214.06, paragraph II, the
application should be passed to issue.

Petitions under  37 CFR 1.198 to reopen or reconsider prosecution of a
patent application after decision by the Board, where no court action
has been filed, are decided by the Group Director,  MPEP Section 
1002.02(c).

The Commissioner also entertains petitions under  37 CFR 1.198 to reopen
certain cases in which an appellant has sought review under  35 U.S.C.
141 or 145.  This procedure is restricted to cases which have been
decided by the Board and which are amenable to settlement without the
need for going forward with the court proceeding. Such petitions will
ordinarily be granted only in the following categories of cases:

(A) When the decision of the Board asserts that the rejection of the
claims is proper because the claims do not include a disclosed
limitation or because they suffer from some other curable defect, and
the decision reasonably is suggestive that claims including the
limitation or devoid of the defect will be allowable;

(B) When the decision of the Board asserts that the rejection of the
claims is proper because the record does not include evidence of a
specified character, and is reasonably suggestive that if such evidence
were presented, the appealed claims would be allowable, and it is
demonstrated that such evidence presently exists and can be offered; or

(C) When the decision of the Board is based on a practice, rule, law, or
judicial precedent which, since the Board's decision, has been
rescinded, repealed, or overruled.

Such petitions will not be ordinarily entertained after the filing of
the Commissioner's brief in cases in which review has been sought under 
35 U.S.C. 141, or after trial in a  35 U.S.C. 145 case.

In the case of an appeal under  35 U.S.C. 141, if the petition is
granted, steps will be taken to request the court to remand the case to
the Patent and Trademark Office. If so remanded, the proposed
amendments, evidence, and arguments will be entered of record in the
application file for consideration, and further action will be taken by
the Board in the first instance or by the examiner as may be
appropriate.  In the case of civil action under  35 U.S.C. 145, steps
will be taken for obtaining dismissal of the action without prejudice to
consideration of the proposals.

---SECTION---1215 Withdrawal or Dismissal of Appeal

---SECTION---1215.01 Withdrawal of Appeal

Except in those instances where a withdrawal of an appeal would result
in abandonment of the application, an attorney not of record in an
application may file a paper under  37 CFR 1.34(a) withdrawing an
appeal. In such instances where no allowable claims appear in the
application, the withdrawal of an appeal is in fact an express
abandonment and does not comply with  37 CFR 1.138 except where a
continuing application is being filed on the same date.

Where, after appeal has been filed and before decision by the Board, an
applicant withdraws the appeal after the period for reply to the final
rejection has expired, the application is to be considered abandoned as
of the date on which the appeal was withdrawn unless there are allowed
claims in the case.

Where a letter abandoning the application is filed in accordance with 
37 CFR 1.138, the effective date of abandonment is the date of
recognition of the letter by an appropriate official of the Office or a
different date, if so specified in the letter itself. See MPEP Section 
711.01.

If a brief has been filed within the time permitted by  37 CFR 1.192 (or
any extension thereof) and an answer mailed and appellant withdraws the
appeal, the application is returned to the examiner.

To avoid the rendering of decisions by the Board in applications which
have already been refiled as continuations, applicants should promptly
inform the clerk of the Board in writing as soon as they have positively
decided to refile or to abandon an application containing an appeal
awaiting a decision. Failure to exercise appropriate diligence in this
matter may result in the Board's refusing an otherwise proper request to
vacate its decision.

Applications having no allowed claims will be abandoned.  Claims which
are allowable except for their dependency from rejected claims will be
treated as if they were rejected. The following examples illustrate the
appropriate approach to be taken by the examiner in various situations:

(A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should
cancel claims 2 and 3 and issue the application with claim 1 only.

(B) Claims 1 - 3 are rejected. The examiner should hold the application
abandoned.

(C) Claim 1 is rejected and claim 2 is objected to as being allowable
except for its dependency from claim 1. The examiner should hold the
application abandoned.

(D) Claim 1 is rejected and claim 2 is objected to as being allowable
except for its dependency from claim 1; independent claim 3 is allowed.
The examiner should cancel claims 1 and 2 and issue the application with
claim 3 only.

---SECTION---1215.02 Claims Standing Allowed

If the application contains allowed claims, as well as claims on appeal,
the withdrawal of the appeal does not operate as an abandonment of the
application, but is considered a withdrawal of the appeal as to those
claims and authority to the examiner to cancel the same. An amendment
canceling the appealed claims is equivalent to a withdrawal of the
appeal.

---SECTION---1215.03 Partial Withdrawal

A withdrawal of the appeal as to some of the claims on appeal operates
as an authorization to cancel those claims from the application 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
conclusion of the appeal proceedings, if necessary (e.g., the examiner
is reversed as to the rejection of the remaining claims on appeal),
without further action by the applicant. 

---SECTION---1215.04 Dismissal of Appeal

If no brief is filed within the time prescribed by  37 CFR 1.192, the
appeal stands dismissed by operation of the rule. Form PTOL-461
"Notification of Defective Notice of Appeal or Defective Brief," or form
paragraph 12.17 notifying the appellant that the appeal stands dismissed
is not an action in the case and does not start any period for reply. If
no claims stand allowed, the application is considered as abandoned on
the date the brief was due. If claims stand allowed in the application,
the failure to file a brief and consequent dismissal of the appeal is to
be treated as a withdrawal of the appeal and of any claim not standing
allowed. The application should be passed to issue forthwith. Unless
appellant specifically withdraws the appeal as to rejected claims, the
appeal should not be dismissed until the extended period (5 months under 
37 CFR 1.136(a)) to file the brief has expired.

Applications having no allowed claims will be abandoned.  Claims which
are allowable except for their dependency from rejected claims will be
treated as if they were rejected. The following examples illustrate the
appropriate approach to be taken by the examiner in various situations:

(A) Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should
cancel claims 2 and 3 and issue the application with claim 1 only.

(B) Claims 1 - 3 are rejected. The examiner should hold the application
abandoned.

(C) Claim 1 is rejected and claim 2 is objected to as being allowable
except for its dependency from claim 1. The examiner should hold the
application abandoned.

(D) Claim 1 is rejected and claim 2 is objected to as being allowable
except for its dependency from claim 1; independent claim 3 is allowed.
The examiner should cancel claims 1 and 2 and issue the application with
claim 3 only.

However, if formal matters remain to be attended to, the examiner should
take appropriate action on such matters, setting a shortened period for
reply, but the application is to be considered closed to further
prosecution except as to such matters.  Form paragraph 12.09.01 may be
used for this purpose. See MPEP Section  1206.

An appeal will also be dismissed if an applicant fails to timely and
fully reply to a notice of noncompliance with  37 CFR 1.192(c).  See
MPEP Section  1206 and  37 CFR 1.192(d).  As in examples (B)-(C) above,
if no allowed claims remain in the application, the application is
abandoned as of the date the reply to the notice was due.  The applicant
may petition to revive the application as in other cases of abandonment,
and to reinstate the appeal.  If the appeal is dismissed, but allowed
claims remain in the application, as in examples (A) and (D) above, the
application is not abandoned; to reinstate the claims cancelled by the
examiner because of the dismissal, the applicant must petition to
reinstate the claims and the appeal, but a showing equivalent to a
petition to revive under  37 CFR 1.137 is required.  In either event, a
proper reply to the notice of noncompliance must be filed before the
petition will be considered on its merits.

---SECTION---1216 Judicial Review 

35 U.S.C. 141 Appeal to Court of Appeals for the Federal Circuit.

An applicant dissatisfied with the decision in an appeal to the Board of
Patent Appeals and Interferences under section 134 of this title may
appeal the decision to the United States Court of Appeals for the
Federal Circuit. By filing such an appeal the applicant waives his or
her right to proceed under section 145 of this title. A party to an
interference dissatisfied with the decision of the Board of Patent
Appeals and Interferences on the interference may appeal the decision to
the United States Court of Appeals for the Federal Circuit, but such
appeal shall be dismissed if any adverse party to such interference,
within twenty days after the appellant has filed notice of appeal in
accordance with section 142 of this title, files notice with the
Commissioner that the party elects to have all further proceedings
conducted as provided in section 146 of this title. If the appellant
does not, within thirty days after filing of such notice by the adverse
party, file a civil action under section 146, the decision appealed from
shall govern the further proceedings in the case.

35 U.S.C. 145 Civil action to obtain patent.

An applicant dissatisfied with the decision of the Board of Patent
Appeals and Interferences in an appeal under section 134 of this title,
may, unless appeal has been taken to the United States Court of Appeals
for the Federal Circuit, have remedy by civil action against the
Commissioner in the United States District Court for the District of
Columbia if commenced within such time after such decision, not less
than sixty days, as the Commissioner appoints. The court may adjudge
that such applicant is entitled to receive a patent for his invention,
as specified in any of his claims involved in the decision of the Board
of Patent Appeals and Interferences, as the facts in the case may appear
and such adjudication shall authorize the Commissioner to issue such
patent on compliance with the requirements of law. All the expenses of
the proceedings shall be paid by the applicant.

35 U.S.C. 146 Civil action in case of interference.

Any party to an interference dissatisfied with the decision of the Board
of Patent Appeals and Interferences, may have remedy by civil action, if
commenced within such time after such decision, not less than sixty
days, as the Commissioner appoints or as provided in section 141 of this
title, unless he has appealed to the United States Court of Appeals for
the Federal Circuit, and such appeal is pending or has been decided. In
such suits the record in the Patent and Trademark Office shall be
admitted on motion of either party upon the terms and conditions as to
costs, expenses, and the further cross-examination of the witnesses as
the court imposes, without prejudice to the right of the parties to take
further testimony. The testimony and exhibits of the record in the
Patent and Trademark Office when admitted shall have the same effect as
if originally taken and produced in the suit.

Such suit may be instituted against the party in interest as shown by
the records of the Patent and Trademark Office at the time of the
decision complained of, but any party in interest may become a party to
the action. If there be adverse parties residing in a plurality of
districts not embraced within the same state, or an adverse party
residing in a foreign country, the United States District Court for the
District of Columbia shall have jurisdiction and may issue summons
against the adverse parties directed to the marshal of any district in
which any adverse party resides. Summons against adverse parties
residing in foreign countries may be served by publication or otherwise
as the court directs. The Commissioner shall not be a necessary party
but he shall be notified of the filing of the suit by the clerk of the
court in which it is filed and shall have the right to intervene.
Judgment of the court in favor of the right of an applicant to a patent
shall authorize the Commissioner to issue such patent on the filing in
the Patent and Trademark Office of a certified copy of the judgment and
on compliance with the requirements of law.

35 U.S.C. 306 Appeal.

The patent owner involved in a reexamination proceeding under this
chapter may appeal under the provisions of section 134 of this title,
and may seek court review under the provisions of sections 141 to 145 of
this title, with respect to any decision adverse to the patentability of
any original or proposed amended or new claim of the patent.

37 CFR 1.301 Appeal to U.S. Court of Appeals for the Federal Circuit.

Any applicant or any owner of a patent involved in a reexamination
proceeding dissatisfied with the decision of the Board of Patent Appeals
and Interferences, and any party to an interference dissatisfied with
the decision of the Board of Patent Appeals and Interferences, may
appeal to the U.S. Court of Appeals for the Federal Circuit. The
appellant must take the following steps in such an appeal: (a) In the
Patent and Trademark Office file a written notice of appeal directed to
the Commissioner (see Section Section  1.302 and 1.304); and (b) in the
Court, file a copy of the notice of appeal and pay the fee for appeal,
as provided by the rules of the Court.

37 CFR 1.303 Civil action under 35 U.S.C. 145, 146, 306.

(a) Any applicant or any owner of a patent involved in a reexamination
proceeding dissatisfied with the decision of the Board of Patent Appeals
and Interferences, and any party dissatisfied with the decision of the
Board of Patent Appeals and Interferences, may, instead of appealing to
the U.S. Court of Appeals for the Federal Circuit (Section  1.301), have
remedy by civil action under  35 U.S.C. 145 or 146, as appropriate. Such
civil action must be commenced within the time specified in Section 
1.304.

(b) If an applicant in an ex parte case or an owner of a patent involved
in a reexamination proceeding has taken an appeal to the U.S. Court of
Appeals for the Federal Circuit, he or she thereby waives his or her
right to proceed under  35 U.S.C. 145.

(c) If any adverse party to an appeal taken to the U.S. Court of Appeals
for the Federal Circuit by a defeated party in an interference

proceeding files notice with the Commissioner within twenty days after
the filing of the defeated party's notice of appeal to the court
(Section  1.302), that he or she elects to have all further proceedings
conducted as provided in  35 U.S.C. 146, the notice of election must be
served as provided in Section  1.646.

37 CFR 1.304 Time for appeal or civil action.

(a)(1) The time for filing the notice of appeal to the U.S. Court of
Appeals for the Federal Circuit (Section  1.302) or for commencing a
civil action (Section  1.303) is two months from the date of the
decision of the Board of Patent Appeals and Interferences.  If a request
for rehearing or reconsideration of the decision is filed within the
time period provided under Section  1.197(b) or Section  1.658(b), the
time for filing an appeal or commencing a civil action shall expire two
months after action on the request.  In interferences, the time for
filing a cross-appeal or cross-action expires:

(i) 14 days after service of the notice of appeal or the summons and
complaint; or

(ii) Two months after the date of decision of the Board of Patent
Appeals and Interferences, whichever is later.

(2) The time periods set forth in this section are not subject to the
provisions of Section  1.136, Section  1.550(c) or Section  1.645 (a) or
(b).

(3) The Commissioner may extend the time for filing an appeal or
commencing a civil action:

(i) For good cause shown if requested in writing before the expiration
of the period for filing an appeal or commencing a civil action, or

(ii) Upon written request after the expiration of the period for filing
an appeal or commencing a civil action upon a showing that the failure
to act was the result of excusable neglect.

(b) The times specified in this section in days are calendar days. The
time specified herein in months are calendar months except that one day
shall be added to any two-month period which includes February 28. If
the last day of the time specified for appeal or commencing a civil
action falls on a Saturday, Sunday, or Federal holiday in the District
of Columbia, the time is extended to the next day which is neither a
Saturday, Sunday, nor a Federal holiday.

(c) If a defeated party to an interference has taken an appeal to the
U.S. Court of Appeals for the Federal Circuit and an adverse party has
filed notice under  35 U.S.C. 141 electing to have all further
proceedings conducted under  35 U.S.C. 146 (Section  1.303(c)), the time
for filing a civil action thereafter is specified in  35 U.S.C. 141. The
time for filing a cross-action expires 14 days after service of the
summons and complaint.

EX PARTE AND REEXAMINATION PROCEEDINGS

The applicant in an ex parte proceeding or the owner of a patent
involved in a reexamination proceeding who is dissatisfied with a
decision of the Board may seek judicial review either by an appeal to
the U.S. Court of Appeals for the Federal Circuit (35 U.S.C. 141 and
306;  37 CFR 1.301) or by a civil action in the U.S. District Court for
the District of Columbia (35 U.S.C. 145 and 306;  37 CFR 1.303(a)). By
filing an appeal to the Federal Circuit, the applicant in an ex parte
case or the owner of a patent involved in a reexamination proceeding
waives the right to seek judicial review by a civil action under 35
U.S.C.145,  37 CFR 1.303(b).

INTERFERENCE PROCEEDINGS

Any party to an interference who is dissatisfied with a decision of the
Board may seek judicial review either by an appeal to the Federal
Circuit (35 U.S.C. 141;  37 CFR 1.301) or, if no  35 U.S.C. 141 appeal
is pending or has been decided, by a civil action in an appropriate
district court (35 U.S.C. 146;  37 CFR 1.303(a)).  Furthermore, a  35
U.S.C. 141 appeal to the Federal Circuit by a dissatisfied party in an
interference will be dismissed if any adverse party in the interference,
within 20 days after the appellant has filed a notice of appeal
according to  35 U.S.C. 142, files notice with the Commissioner that
such adverse party elects to have all further proceedings conducted in
accordance with 35 U.S.C.146.  35 U.S.C. 141;  37 CFR 1.303(c).  If,
within 30 days after filing of such notice of election by an adverse
party, the appellant does not file a civil action under 35 U.S.C.146,
the decision appealed from shall govern the further proceedings in the
case.  35 U.S.C. 141.  Copies of such notice of election, which must be
served as provided in  37 CFR 1.646, will be transmitted by the
Solicitor to the Federal Circuit for such action as may be necessary (37
CFR 1.303(c)).

TIME FOR FILING NOTICE OF APPEAL OR COMMENCING CIVIL ACTION

The time for filing a notice of a  35 U.S.C. 141 appeal to the Federal
Circuit or for commencing a civil action under 35 U.S.C. 145 or 146 is
within 2 months of the Board's decision.  37 CFR 1.304(a).  However, if
a request for rehearing or reconsideration of the Board's decision is
filed within the time provided under  37 CFR 1.197(b) (ex parte appeals)
or  37 CFR 1.658(b) (inter partes appeals), the time for filing a notice
of appeal to the Federal Circuit or for commencing a civil action
expires 2 months after a decision on a request for rehearing or
reconsideration (37 CFR 1.304(a)).

These 2-month periods meet the 60-day requirement of  35 U.S.C. 142,
145, and 146 except for time periods which include February 28. In order
to comply with the  60-day requirement,  37 CFR 1.304(b) provides that
an additional day shall be added to any 2-month period for initiating
review which includes February 28. Appeals will always be timely if the
judicial review is initiated within 2 months of the final decision.

The times specified in  37 CFR 1.304 are calendar days. If the last day
of the time specified for appeal or commencing a civil action falls on a
Saturday, Sunday, or a Federal holiday in the District of Columbia, the
time is extended to the next day which is neither a Saturday, Sunday,
nor a Federal holiday (37 CFR 1.304(b)).

TIME FOR FILING CROSS-APPEAL OR CROSS-ACTION

37 CFR 1.304(a) specifies that the time for filing a cross-appeal or a
cross-action expires (A) 14 days after service of the notice of appeal
or the summons and complaint or (B) 2 months after the decision to be
reviewed, whichever is later.

37 CFR 1.304(a) provides that the time for filing a cross-action expires
14 days after service of the summons and complaint. The district court
will determine whether any cross-action was timely filed since neither
the complaint nor cross-action is filed in the Patent and Trademark
Office.

EXTENSION OF TIME TO SEEK JUDICIAL REVIEW

In  37 CFR 1.304(a), the Office has adopted a standard which is similar
to the standard used in the Federal courts for granting extensions.
Under the rule, the Commissioner may extend the time (A) for good cause
if requested before the expiration of the time provided for initiating
judicial review or (B) upon a showing of excusable neglect in failing to
initiate judicial review if requested after the expiration of the time
period. This standard is applicable once the "last" decision has been
entered, i.e., either the decision (in circumstances where no timely
rehearing or reconsideration is sought), the decision on rehearing of
the Board in an ex parte appeal, or the decision on reconsideration of
the Board in an interference. Extensions of time under  37 CFR 1.136(b)
and 1.550(c) and fee extensions under  37 CFR 1.136(a) are not available
to extend the time for the purpose of judicial review once a decision or
a decision on rehearing or reconsideration has been entered.  37 CFR
1.304(a) states that the provisions of  37 CFR 1.136 and 1.550(c) are
not available to extend the time to initiate judicial review.

Requests for extension of time to seek judicial review under  37 CFR
1.304 should be addressed as follows:

Box 8

Commissioner of Patents and Trademarks

Washington, D.C. 20231

Attention: Office of The Solicitor

Requests may also be hand-carried to the Office of the Solicitor.

APPLICATION UNDER JUDICIAL REVIEW

The administrative file of an application under judicial review, even
though carried to a court, will not be opened to the public by the
Patent and Trademark Office, unless it is otherwise available to the
public under  37 CFR 1.11.

During judicial review, the involved application or reexamination is not
under the jurisdiction of the examiner or the Board, unless remanded to
the Patent and Trademark Office by the court.  Any amendment, such as
one copying claims from a patent for interference purposes, can be
admitted only under the provisions of  37 CFR 1.198. See MPEP Section 
1214.07.

SERVICE OF COURT PAPERS ON THE COMMISSIONER

Rule 5(b) of the Federal Rules of Civil Procedure provides in pertinent
part:

Whenever under these rules service is required or permitted to be made
upon a party represented by an attorney the service shall be made upon
the attorney unless service upon the party himself is ordered by the
court. Service upon the attorney . . . shall be made by delivering a
copy to him or by mailing it to him at his last known address . . . .

Similarly, Rule 25(b) of the Federal Rules of Appellate Procedure
provides that "[s]ervice on a party represented by counsel shall be made
on counsel."

Accordingly, all service copies of papers filed in court proceedings in
which the Commissioner of Patents and Trademarks is a party must be
served on the Solicitor of the Patent and Trademark Office. Service on
the Solicitor may be effected in either of the following ways:

(A) By hand between 8:30 A.M. and 5:00 P.M. EST at the Office of the
Solicitor

(B) By mail in an envelope addressed as follows:

Office of the Solicitor

P.O. Box 15667

Arlington, VA 22215

While the above mail service address may be supplemented to include the
name of the particular attorney assigned to the court case, it must not
be supplemented to refer to either the Commissioner of Patents and
Trademarks or the U.S. Patent and Trademark Office.

Any court papers mailed to an address other than the above mail service
address or delivered by hand to the Patent and Trademark Office are
deemed to have been served on the Commissioner when actually received in
the Office of the Solicitor.

The above mail service address should not be used for filing a notice of
appeal to the Federal Circuit. See MPEP Section  1216.01. Nor should the
above mail service address be used for noncourt papers, i.e., papers
which are intended to be filed in the Patent and Trademark Office in
connection with an application or other proceeding pending in the Patent
and Trademark Office. ANY NONCOURT PAPERS WHICH ARE MAILED TO THE ABOVE
MAIL SERVICE ADDRESS WILL BE RETURNED TO THE SENDER. NO EXCEPTIONS WILL
BE MADE TO THIS POLICY.

---SECTION---1216.01 Appeals to the Federal Circuit

35 U.S.C. 142 Notice of appeal.

When an appeal is taken to the United States Court of Appeals for the
Federal Circuit, the appellant shall file in the Patent and Trademark
Office a written notice of appeal directed to the Commissioner,  within
such time after the date of the decision from which the appeal is taken
as the Commissioner prescribes, but in no case less than sixty days,
after that date.

35 U.S.C. 143 Proceedings on appeal.

With respect to an appeal described in section 142 of this title, the
Commissioner shall transmit to the United States Court of Appeals for
the Federal Circuit a certified list of documents comprising the record
in the Patent and Trademark Office. The court may request that the
Commissioner forward the original or certified copies of such documents
during pendency of the appeal. In an ex parte case, the Commissioner
shall submit to the court in writing the grounds for the decision of the
Patent and Trademark Office, addressing all the issues involved in the
appeal. The court shall, before hearing an appeal, give notice of the
time and place of the hearing to the Commissioner and the parties in the
appeal.

35 U.S.C. 144 Decision on appeal.

The United States Court of Appeals for the Federal Circuit shall review
the decision from which an appeal is taken on the record before the
Patent and Trademark Office. Upon its determination the court shall
issue its mandate and opinion, which shall be entered of record in the
Patent and Trademark Office and shall govern the further proceedings in
the case.

37 CFR 1.302 Notice of appeal.

(a) When an appeal is taken to the U.S. Court of Appeals for the Federal
Circuit, the appellant shall give notice thereof to the Commissioner
within the time specified in Section  1.304.

(b) In interferences, the notice must be served as provided in Section 
1.646.

(c) A notice of appeal, if mailed to the Office, shall be addressed as
follows: Box 8, Commissioner of Patents and Trademarks, Washington, DC
20231.

Filing an appeal to the Federal Circuit requires that the applicant, the
owner of a patent involved in a reexamination proceeding, or a party to
an interference proceeding: (A) file in the Patent and Trademark Office
a written notice of appeal (35 U.S.C. 142) directed to the Commissioner
and (B) file with the Clerk of the Federal Circuit a copy of the notice
of appeal and pay the docket fee for the appeal, as provided by Federal
Circuit Rule 52.  37 CFR 1.301.

For a notice of appeal to be considered timely filed in the Patent and
Trademark Office, it must: (A) actually reach the Patent and Trademark
Office within the time specified in  37 CFR 1.304 (including any
extensions) or (B) be mailed within the time specified in  37 CFR 1.304
(including any extensions) by "Express Mail" in accordance with  37 CFR
1.10.

A Notice of Appeal to the Federal Circuit should not be mailed to the
Commissioner, the Board or the examiner. Nor should it be mailed to the
Solicitor's mail service address for court papers given in MPEP Section 
1216.  Instead, it should be filed in the Patent and Trademark Office in
any one of the following ways:

(A) By mail addressed as follows, in which case the notice of appeal
must actually reach the Patent and Trademark Office by the due date:

Commissioner of Patents and Trademarks

Box 8

Washington, D.C. 20231

Attention: Office of the Solicitor

(B) By "Express Mail"  (U.S. Postal Service only) under  37 CFR 1.10
addressed as follows, in which case the notice of appeal is deemed filed
on the "date-in" on the "Express Mail" mailing label:

Commissioner of Patents and Trademarks

Box 8

Washington, D.C. 20231

Attention: Office of the Solicitor

(C) By hand to the Office of the Solicitor.

A copy of the notice of appeal and the docket fee should be filed with
the Clerk of the Federal Circuit, whose mailing and actual address is:

U.S. Court of Appeals for the Federal Circuit

717 Madison Place, N.W.

Washington, D.C.  20439

The Solicitor, prior to a decision by the Federal Circuit, may request
that the case be remanded to the Patent and Trademark Office and
prosecution reopened. See MPEP Section  1214.07.

OFFICE PROCEDURE FOLLOWING DECISION BY THE FEDERAL CIRCUIT

After the Federal Circuit has heard and decided the appeal, an
uncertified copy of the decision is sent to the Patent and Trademark
Office and to the appellant and appellee (if any).

In due course, the Clerk of the Federal Circuit forwards to the Patent
and Trademark Office a certified copy of the court's decision. This
certified copy is known as the "mandate." The mandate is entered in the
file of the application, reexamination or interference which was the
subject of the appeal. The date of receipt of the mandate by the Patent
and Trademark Office marks the conclusion of the appeal, i.e., the
termination of proceedings as that term is used in  35 U.S.C. 120. See 
37 CFR 1.197(c), or "termination of the interference" as that term is
used in  35 U.S.C. 135(c).

The Federal Circuit's opinion may or may not be precedential. Whether or
not the opinion is precedential, the Patent and Trademark Office will
not give the public access to the administrative record of an involved
application, or to the file of an interference, unless it is otherwise
available to the public under  37 CFR 1.11.  However, since the court
record in a  35 U.S.C. 141 appeal generally includes a copy of at least
part of the application, such may be inspected at the Federal Circuit.
In re Mosher, 248 F.2d 956, 115 USPQ 140 (CCPA 1957).

In an ex parte appeal, after the mandate is entered in the application
or reexamination file, the file is then returned to the appropriate
Patent and Trademark Office official for further proceedings consistent
with the mandate.  See MPEP Section  1214.06 for handling of claims
dependent on rejected claims.

A. All Claims Rejected

If all claims in the case stand rejected, proceedings in the case are
considered terminated on the date of receipt of the Federal Circuit's
mandate.  Because the case is no longer considered pending, it is
ordinarily not open to subsequent amendment and prosecution by the
applicant. Continental Can Company v.   Schuyler, 326 F. Supp. 283, 168
USPQ 625 (D.D.C. 1970). However, exceptions may occur where the mandate
clearly indicates that further action in the Patent and Trademark Office
is to be taken in accordance with the Federal Circuit's opinion.

B. Some Claims Allowed

Where the case includes one or more allowed claims, including claims
allowed by the examiner prior to appeal and claims whose rejections were
reversed by either the Board or the court, the proceedings are
considered terminated only as to any claims which still stand rejected.
It is not necessary for the applicant or patent owner to cancel the
rejected claims, since they may be canceled by the examiner in an
examiner's amendment or by an appropriate notation in the margin of the
claims, to avoid confusion to the printer.  Thus, if no formal matters
remain to be attended to, the examiner will pass the application to
issue forthwith on the allowed claims or, in the case of a
reexamination, will issue a "Notice of Intent to Issue a Reexamination
Certificate and/or Examiner's Amendment." See MPEP Section  2287. The
examiner should set forth the reasons for allowance, referring to and
incorporating a copy of the appellate brief and the court decision.  See
MPEP Section  1302.14.

If formal matters remain to be attended to, the examiner promptly should
take appropriate action on such matters, such as by an examiner's
amendment or by an Office action setting a 1-month (but not less than
30-day) shortened statutory period for reply. However, the application
or reexamination proceeding is considered closed to further prosecution
except as to such matters.

C. Remand

Where the decision of the court brings up for action on the merits
claims which were not previously considered on the merits, such as a
decision reversing a rejection of generic claims in an application
containing claims to nonelected species, the examiner will take the case
up for appropriate action on the matters thus brought up, but the case
is not considered open to further prosecution except as to such matters.

D. Reopening of Prosecution

In rare situations it may be necessary to reopen prosecution of an
application after a decision by the Federal Circuit.  Any Office action
proposing to reopen prosecution after a decision by the Federal Circuit
must be forwarded to the Office of the Assistant Commissioner for
Patents for written approval, which will be indicated on the Office
action.

DISMISSAL OF APPEAL

After an appeal is docketed in the Federal Circuit, failure to prosecute
the appeal, such as by appellant's failure to file a brief, may result
in dismissal of the appeal by the court. Under particular circumstances,
the appeal also may be dismissed by the court on motion of the appellant
and/or the Commissioner.

The court proceedings are considered terminated as of the date of
dismissal. After dismissal, the action taken by the examiner will be the
same as set forth above under the heading "Office Procedure Following
Decision by the Federal Circuit."

In the event of a dismissal for a reason other than failure to prosecute
the appeal, the status of the application, reexamination proceeding or
interference must be determined according to the circumstances leading
to the dismissal.

---SECTION---1216.02 Civil Suits Under 35 U.S.C. 145 

A  35 U.S.C. 145 civil action is commenced by filing a complaint in the
U.S. District Court for the District of Columbia within the time
specified in  37 CFR 1.304 (see MPEP Section  1216). Furthermore, copies
of the complaint and summons must be served in a timely manner on the
Solicitor, the U.S. Attorney for the District of Columbia, and the
Attorney General in the manner set forth in Rules 4(d)(4) and 4(d)(5) of
the Federal Rules of Civil Procedure. Regarding timely service, see
Walsdorf v. Comm'r, 229 USPQ 559 (D.D.C. 1986) and Hodge v. Rostker, 501
F. Supp. 332 (D.D.C. 1980). When a  35 U.S.C. 145 civil action is filed,
a notice thereof is placed in the application or reexamination file,
which ordinarily will be kept in the Solicitor's Office pending
termination of the civil action.

In an action under  35 U.S.C. 145, the plaintiff may introduce evidence
not previously presented to the Patent and Trademark Office. However,
plaintiff will be precluded from presenting new issues, at least in the
absence of some reason of justice put forward for failure to present the
issue to the Patent and Trademark Office. DeSeversky v. Brenner, 424
F.2d 857, 858, 164 USPQ 495, 496 (D.C. Cir. 1970); MacKay v. Quigg, 641
F. Supp. 567, 570, 231 USPQ 907, 908 (D.D.C. 1986).  Furthermore, new
evidence is not admissible in district court where it was available to
the parties but was withheld from the Patent and Trademark Office as a
result of fraud, bad faith, or gross negligence.   DeSeversky, 424 F.2d
at 858 n.5, 164 USPQ at 496 n.5; California R esearch Corp. v. Ladd, 356
F.2d 813, 821 n.18, 148 USPQ 404, 473 n.18 (D.C. Cir. 1966); MacKay, 641
F. Supp. at 570, 231 USPQ at 908; Monsanto Company v. Kamp, 269 F. Supp.
818, 822, 154 USPQ 259, 260 (D.D.C. 1967); Killian v.   Watson, 121 USPQ
507, 507 (D.D.C. 1958).

Upon termination of the civil action, a statement of the court's final
disposition of the case is placed in the application or reexamination
file, which is then returned to the examiner for action in accordance
with the same procedures as follow termination of a  35 U.S.C. 141
appeal. See MPEP Section  1216.01.  37 CFR 1.197(c) provides that a
civil action is terminated when the time to appeal the judgment expires.
Where the exact date when the civil action was terminated is material,
the date may be ascertained from the Solicitor's Office.

The procedures to be followed in the Patent and Trademark Office after a
decision, remand, or dismissal of the case by the district court are the
same as the procedures followed with respect to  35 U.S.C. 141 appeals. 
See MPEP Section  1216.01.

Where a civil action involving an application has been dismissed before
coming to trial, the application will not be opened to the public unless
it is otherwise available to the public under  37 CFR 1.11. However, the
complaint and any other court papers not under a protective order are
open to the public and may be inspected at the Office of the Clerk for
the U.S. District Court for the District of Columbia, located in the
U.S. Courthouse, Constitution and John Marshall Place, N.W., Washington,
D.C. 20001. The court papers in the Office of the Solicitor are not
generally made available for public inspection.

Any subpoena by the district court for an application or reexamination
file should be hand-carried to the Office of the Solicitor.

