Appeal

Notice of Appeal — MPEP 1204 Available when any claim twice rejected — need not be in same application. Must be filed within reply period + fee. Extendable under 1.136. Presumed to appeal ALL claims under rejection. Cannot file with RCE. Premature if filed before Office considers pending reply.

Appeal Brief — MPEP 1205 / 37 CFR 41.37 Due 2 months from the filing date of the notice of appeal (date received at USPTO). Certificate of mailing under 37 CFR 1.8 IS available for the notice of appeal itself — but the 2-month appeal brief deadline then runs from the USPTO receipt date of the notice. Fee currently $0 but failure to file = dismissal. Required content: real party in interest, related appeals, summary of claimed subject matter, argument, claims appendix. Argument rules: explain why examiner erred per contested ground, each ground under separate heading, claims argued as group stand or fall together, merely pointing out what claim recites is NOT argument.

Non-Compliant Brief — MPEP 1205.03 Patent Appeal Center determines compliance. Must correct within set time or dismissed. Once accepted, will not later be held defective.

Amendments After Appeal — MPEP 1206 / 37 CFR 41.33 Before brief: as provided in 1.116. On or after brief: ONLY cancel claims (without affecting other claims) OR rewrite dependent claims into independent form. Evidence after notice but before brief: only if overcomes ALL rejections AND good sufficient reasons why not earlier presented.

Examiner Answer — MPEP 1207 After brief examiner may: reopen prosecution, allow, or maintain appeal with answer. Appeal conference mandatory — examiner, SPE, and conferee.

New Ground in Examiner Answer — MPEP 1207.03 Must be designated AND TC Director approved. Appellant has 2 months (NO 1.136(a) extensions) to: reopen prosecution with 1.111 reply OR maintain appeal with reply brief. New ground: changing 102 to 103, new calculations, different structure, changing basic thrust. Not new ground: same basis with more explanation, fewer references same teaching. Key test: fair opportunity to respond to thrust of rejection.

Petition for Undesignated New Ground — MPEP 1207.03(b) Exclusive remedy under 41.40 via 1.181. Within 2 months from answer, BEFORE reply brief. Filing reply brief before petition decision = withdrawal of petition.

Reply Brief — MPEP 1208 Only ONE reply brief. Due later of: 2 months from answer OR 2 months from decision refusing to designate new ground. Cannot include new evidence or amendments.

Appeal Forwarding Fee — MPEP 1208.01 Due later of: 2 months from answer OR 2 months from decision refusing new ground designation. Failure = dismissed. NOT covered by general fee authorization — must specifically authorize under 37 CFR 41.20, not 37 CFR 1.16-1.18.

Oral Hearing — MPEP 1209 Separate paper captioned REQUEST FOR ORAL HEARING + fee, due within 2 months from answer OR on date of filing reply brief — whichever is EARLIER.

Board Decision — MPEP 1213 May: affirm, reverse, affirm in part, remand, or enter new ground under 41.50(b).

Board New Ground — 37 CFR 41.50(b) Not final for judicial review. Appellant has 2 months (NO extensions) to: reopen prosecution OR request rehearing. Failure = appeal terminated.

Judicial Review — MPEP 1216 Federal Circuit under 35 USC 141 OR civil action against Director in EDVA under 35 USC 145 — choosing one waives the other.