APPEAL 1200

OCTOBER 2003

45. ANSWER: (B) is the most correct answer. 37 CFR § 1.192(c)(7); MPEP § 1206, under the heading “Appeal Brief Content,” subheading “(7) Grouping of Claims.” 37 CFR § 1.192(c)(7) requires that an appellant perform two affirmative acts in the brief to receive separate consideration of the patentability of a plurality of claims that are subject to the same rejection. The appellant must (1) state that the claims do not stand or fall together and (2) present arguments why the claims subject to the same rejection are separately patentable. Since the appellant here has only performed the two affirmative acts with respect to claims 1, 4 and 6, these are the claims that the Board must consider separately for patentability. The examiner has no input on the grouping of claims. (D) is incorrect inasmuch as § 1.192(c)(7) requires the inclusion of reasons in order to avoid unsupported assertions of separate patentability. See MPEP § 1206, subheading subheading “(7) Grouping of Claims.” Where the grouping of claims section is inconsistent with the arguments section as in the facts of this case, the examiner should have notified the appellant that the brief was in noncompliance as per 37 CFR § 1.192(d). See Ex parte Schier, 21 USPQ2d 1016 (Bd. Pat. App. & Int. 1991); Ex parte Ohsumi, 21 USPQ2d 1020 (Bd. Pat. App. & Int. 1991). However, failure of the examiner to note noncompliance does not require the Board to separately consider claims which have not been specifically argued in the brief. (A) is incorrect inasmuch as the two affirmative acts required by § 1.192(c)(7) to have the separate patentability of a plurality of claims subject to the same rejection considered, i.e., (1) state that the claims do not stand or fall together and (2) present arguments why the claims subject to the same rejection are separately patentable, have not been presented for each of claims 1-10. (C) is are incorrect because the provisions of § 1.192(c)(7) have been satisfied for claims 1, 4 and 6. (E) is wrong because the provisions of § 1.192(c)(7) have been satisfied. (A), (C) and (D) are incorrect answers.

42. ANSWER: (C) is the most correct answer. 37 CFR § 1.193(a)(2); MPEP § 1208.01. If the claimed invention is rendered obvious by Smith in view of Jones and Brown, the statement of rejection must

include all three references. Reliance on Brown to support the rejection is a different rejection from a rejection relying only on Smith in view of Jones. In accordance with MPEP § 1208.01, the Board will not consider the teachings of Brown because Brown was used to support the rejection, but was not listed in the statement of the rejection. As stated in MPEP § 1208.01, “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).” Therefore, (B) and (D) are clearly wrong. (A) is incorrect. The decision cannot affirm the rejection since there is no motivation for combining the teachings of Smith and Jones absent the teachings of Brown. Therefore, the rejection

must be reversed, not affirmed.

38. ANSWER: (D) is the most correct answer. 37 CFR § 1.197(c); MPEP § 1214.06. This case is specifically set forth in MPEP § 1214.06 under the heading “Claims Stand Allowed.” Answers (A), (B) and (C) apply

only if no claims stand allowed in the application. They are incorrect because the facts state that claim 3 was allowed. See MPEP § 1214.06, under the heading “No Claims Stand Allowed.” (B) is incorrect. See MPEP § 1214.06 under the heading “Claims Stand Allowed.” Where one or more other claims stand allowed, the examiner is not authorized to convert to independent form a dependent claim that has

been objected to (but not allowed or rejected) based on its dependency to a rejected claim. (C) is incorrect. See MPEP § 1214.06 under the heading “Claims Stand Allowed.” Where one or more other

claims stand allowed, the examiner is not authorized to provide appellant with time to rewrite a dependent claim into independent form where the dependent claim was objected to (but not allowed or

rejected) based on its dependency to a rejected claim.

APRIL 2003

38. ANSWER: (C) is the most correct answer. See 37 CFR § 1.116; MPEP § 1207, first paragraph. Answers (A), (B), and (D) are purely fictional. With respect to answer (E), see MPEP § 1207, first paragraph.

31. ANSWER: (B) is the most correct answer. See MPEP § 1209, under the heading “Participation by Examiner.” As to (A), see MPEP § 705. As to (C) signature requirement does not apply. 37 C.F.R. § 1.196(b); MPEP § 1205. The notice will not be returned. As to (D), see Gentry Gallery v. Berkline Corp., 134 F.3d 1473, 45 U.S.P.Q.2d 1498 (Fed. Cir. 1998).

23. ANSWER: (C) is the most correct answer. See MPEP § 1206, specifically the Examiner Note for Form Paragraph 12.69.01 (“This form paragraph should be used only when no supporting reasons are presented in the brief.”). If the examiner disagrees with the reasons given, the reason for disagreement should be addressed in the Examiner’s Answer. As discussed at MPEP § 1208, in the Examiner Note 2 for Form Paragraph 12.55.01 “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), [the examiner is to] notify appellant of the non-compliance using form paragraphs 12.69, 12.69.01 and 12.78.” As discussed at MPEP § 1208, in the Examiner Note for Form Paragraph 12.55.02, if the examiner disagrees with appellant’s statement in the brief that certain claims do not stand or fall together, the examiner explains in the examiner’s answer why the claim grouping listed in the brief is not agreed with and why, if appropriate, e.g., the claims as listed by the appellant are not separately patentable. Answer (A) is incorrect. See MPEP § 1206, Form paragraph 12.17. The Appeal Brief was filed less than seven months after the Notice of Appeal was filed. The applicant should be notified of the deficiency and provided an opportunity to request a five-month extension of time. Answer (B) is incorrect. See MPEP § 1206, Form paragraph 12.12. Answer (D) is incorrect. Where the applicant omits the statement required by 37 CFR § 1.192(c)(7) yet presents arguments in the argument section of the brief, the applicant should be notified of the noncompliance and given time to correct the deficiency. See 37 CFR § 1.192(c)(7); and MPEP § 1206, under the heading “Appeal Brief Content,” subheading “7. Grouping of Claims,” wherein it states, “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…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).” See also MPEP § 1206, under the heading “Review of Brief By Examiner,” wherein it states that “if a brief is filed which does not comply with all the requirements of [37 CFR § 1.192](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.” Answer (E) is incorrect. MPEP § 1206, under the heading “Appeal Brief Content,” states “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).”

45. ANSWER: (B) is the most correct answer. MPEP § 1208.01 states: “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).” Thus, to avoid waiver of the right to contest the examiner’s action, the appellant must file a timely petition. (A) is incorrect because the question of whether an answer contains a new ground of rejection is a petitionable, not appealable, matter. See MPEP § 1201. (C) is incorrect because an amendment or new evidence is needed to overcome the new ground of rejection and merely presenting arguments will not succeed. (D) is incorrect because the entry of the amendment or evidence is subject to the provisions of 37 CFR §§ 1.116 and 1.195 and there is no assurance that the examiner will approve entry. (E) is incorrect because it will constitute a waiver on the question of whether an impermissible new ground of rejection has been entered.

37. ANSWER: (A) is the most correct answer. MPEP § 1214.06, under the heading “Examiner Sustained in Whole or in Part.” Under the heading “No Claims Stand Allowed” it states “Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected.” (B) and (C) are not the most correct answers. These options would apply to applications where the Board reversed the rejection of the dependent claims and affirmed the rejection of the independent claim. (D) is not correct. The Board does not render a decision on objected to claims. See 37 CFR § 1.191(c). (E) is not correct because the mailing of a Board decision does not abandoned an application. See 37 CFR § 1.197(a).

25. ANSWER: (D) is the most correct answer. See MPEP § 1211.02. (D) is not a proper basis for remand because the Board has no authority to require the examiner to consider an affidavit which has not been entered after final rejection and which was filed while the application was pending before the examiner. Pursuant to 37 CFR § 1.195, “[a]ffidavits…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.” The facts are silent regarding whether such a showing was made. However, as discussed in MPEP § 715.09, “Review of an examiner’s refusal to enter [and consider] an affidavit as untimely is by petition and not by appeal to the Board of Patent Appeals and Interferences. In re Deters, 515 F.2d 1152, 185 USPQ 644 (CCPA 1975); Ex parte Hale, 49 USPQ 209 (Bd. App. 1941).” Thus, remand by the Board cannot be expected. Support for each of answers (A), (B), (C) and (E) is specifically provided for in MPEP § 1211.

8. ANSWER: (E) is the most correct answer. MPEP § 1205, under the heading “Appeal By Patent Applicant,” states that “[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.” (A), (B), (C), and (D) are not the most correct answer because a notice of appeal can be filed in a continuing application where at least one of the rejected claims was twice rejected, and one of the rejections may occur in the parent application.