New ground for rejection by the Board after appeal
From Patentbarquestions
1213: What Decisions the Board may Make:
1213.02 New Grounds for Rejection
the Board can make a rejection on new grounds for any claim it wants to.
(even if the claim was not previously rejected).
Remember, this is different than the examiner who can only reject a claim on new grounds
if he had already rejected the same claim for different reasons
(an examiner it not allowed to find a new ground to reject a claim he previously put into allowance).
Q) Exam Concepts – Appeals
Appeals
1) Definitely know that dependent claims objected for their dependency on a rejected independent claim
will be treated as if rejected if appeal doesn’t overcome the independent claim’s rejection (this includes
withdrawal of the appeal). The application IS NOT abandoned/allowed right away, but rather goes back to
the examiner’s jurisdiction, whereupon he’ll either allow the application with any surviving claims or,
if no claims survived, abandon it.
2) Got a few questions on new ground of rejection by the board
(not examiner, which surprised me a little, since I thought they’d test this new ground more heavily).
3) Know that after ANY claim has been twice rejected, and you are currently under a rejection, you can appeal.
4) Got an old exam question repeat regarding what happens when an applicant files an RCE with no fee
during appeal (treated as a withdrawal of appeal, but since the RCE was improper, the application is abandoned
if no claims stand allowed or issued with any allowed claims–all claims dependent on a rejected independent
claim will be canceled by the Examiner before he passes the application to allowance).
5) Board remand – I know on the old exam the answer was that the board could not remand to examiner for
consideration of an affidavit or amendment. Though there is discussion of how the board could possibly remand
for consideration of amendment in E8R4, the old answer’s reasoning still stands (there is no mention in the
question facts that the applicant properly stated with the amendment why it was not entered sooner).
It seems this is still the answer.
Q) Claims stand or fall together (4.00.28p)
28. Which of the following is true?
(A) On appeal of a rejection of ten claims to the Board of Patent Appeals and
Interferences, each appealed claim stands or falls separately as a result of
appellant pointing out differences in what the claims cover.
(B) The 2-month period for filing a petition mentioned in 37 CFR 1.181(f) is
extendable under 37 CFR 1.136(a).
(C) An examiner may enter a new ground of rejection in the examiner’s answer to an
applicant’s appeal brief.
(D) After filing a notice of appeal, an applicant is estopped from further prosecuting
the same claims in a continuation application.
(E) When desiring to claim foreign priority, the oath or declaration in a reissue
application must claim foreign priority even though the priority claim was made
in the original patent.
28. ANSWER: (E). See MPEP 1414 Content of Reissue Oath/Declaration and 37 CFR
1.175(a) which states that reissue oaths/declarations must meet the requirements of 37 CFR 1.63,
including 1.63(c) relating to a claim for foreign priority. As to (A), 37 CFR 1.192(c)(7) requires
appellant to state that the claims do not stand or fall together. Appellant must present
appropriate argument under 37 CFR 1.192(c)(8) why each claim is separately patentable.
Merely pointing out differences in what the claims cover is not argument why the claims are
separately patentable. MPEP 1206, pages 1200-8 and 9. As to (B), see MPEP 1002 and the
sentence bridging pages 1000-2 and 1000-3. As to (C), 37 CFR 1.193(a)(2) prohibits the entry
of a new ground of rejection in an examiner’s answer. As to (D), continuation may be filed
during pendency of parent.
