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CFR Citation: 37 CFR Parts 1, 5, and 41

RIN ID: RIN 0651-AB32

NOTICE: Part III

DOCUMENT ACTION: Proposed rule.

SUBJECT CATEGORY: Rules of Practice Before the Board of Patent Appeals and Interferences

DATES: Submit comments on or before January 26, 2004.

DOCUMENT SUMMARY: The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office proposes changes to the rules governing practice before the Board of Patent Appeals and Interferences to consolidate and simplify such rules and to reflect developments in case law, legislation, and administrative practice.

SUMMARY: Commerce Department, Patent and Trademark Office,

SUPPLEMENTAL INFORMATION

This notice combines two rule makings previously announced in the Unified Agenda as 0651AB27 (Appeals) and 0651AB32 (Interferences). Filing Comments on This Proposed Rule

To the extent reasonably possible, the Office will make the comments available at http://www.uspto.gov/web/offices/dcom/bpai/. To facilitate this goal, the Office strongly encourages the submission of comments electronically, in either ASCII format or ADOBE[reg] portable document format (pdf). Regardless of which submission mode you select, write only ``Consolidated Board Rules'' in the subject line to ensure prompt consideration of your comments.

Since the comments will be made available to the public, the comments should not include information that the submitter does not wish to have published. Comments that include confidentiality notices will not be entered into the record.

The Board of Patent Appeals and Interferences (Board) has significantly overhauled its operations to address concerns about the duration of proceedings before the Board. Improvements include an increase in the number of administrative patent judges, outreach programs to educate parties and examiners about Board operations, and restructuring of Board procedures. This rule making proposes to revise the rules governing Board proceedings to better reflect these new procedures. Consistent with these improvements, the rules are also consolidated and simplified to ease use. Finally, the rules address case law and legislative changes that have occurred since the last significant revision of the Board's rules.

Explanation of Proposed Changes

In keeping with longstanding patent practice, existing rules are denominated ``Rule x'' in this supplementary information. The proposed rules are denominated ``proposed Sec. 41.x'' to help readers distinguish between existing and proposed rules.

Rules 1(a)(1)(iii), 5(e), 6(d)(9), 8(a)(2)(i)(B) and (a)(2)(i)(C), and 11(e), and subpart E of part 1, would be removed to consolidate interference information in proposed part 41, subparts D and E.

Rules 4(a)(2); 9(g); 36; 59(a)(1); 103(g); 112; 113(a); 114(d); 131(a)(1); 136(a)(1) and (a)(2); 181(a)(3); 248(c); 292(a) and (c); 295(b); 302(b); 303(c); 304(a)(1) and (a)(2); 322(a)(3); 323; 324; 565(e); 701(c)(2)(ii); 703(a)(4), (b)(3)(ii), (b)(4), (d)(2), and (e); 704(c)(9); and 993 would be revised to change crossreferences to Board proceedings.

Rule 14(e) would be revised to eliminate references to Board actions. An analogous rule for Board actions is proposed in Sec. 41.6(a). The Office previously proposed a similar change to Rule 14(e). See ``Changes to Implement Electronic Maintenance of Official Patent Application Records'', 68 FR 14365 (25 March 2003), in which the paragraph in question was numbered Rule 14(f). The Office received two comments that were specific to thenproposed Rule 14(f). See http://www.uspto.gov/web/offices/pac/dapp/opla/comments/efw/aipla.pdf and
http://www.uspto.gov/web/offices/pac/dapp/opla/comments/efw/neifeld.pdf. To avoid confusion with this proposed rule making, no
change was adopted to the language of the rule beyond renumbering it as Rule 14(e). 68 FR 38611, 38612, 38620 (30 June 2003). In the present proposal, the language of the rule has been simplified to avoid some of the criticisms in one comment, but the suggestion in the comments to relax the standards for publishing decisions is not being proposed. Proposed Rule 14(e)(1) would continue to state that publicly available materials are publicly available. Such materials may be published without notification to or permission from the applicant or patent owner.

Rules 17(b)(d) and (h) would be revised to remove the Board fees, which will be relocated to proposed Sec. 41.20.

Rule 48(a)(c) and (i) would be revised, and Rule 48(j) added, to consolidate the crossreference correction of inventorship for applications in contested cases before the Board.

Rules 55(a)(3) and (a)(4), and 136(b) would be revised to eliminate the crossreferences to Board rules.

Rule 116 would be amended to limit amendments after a final rejection or other final action (Rule 113) in an application or in an ex parte reexamination filed under Rule 510, or after an action closing prosecution (Rule 949) in an inter partes reexamination filed under Rule 913, to such amendments filed before or with any appeal to the Board under proposed Sec. 41.31 or Sec. 41.61. Amendments after appeal currently treated under Rule 116 would be moved to proposed Sec. Sec. 41.33 and 41.63. Rule 116(d) would be amended to permit only an amendment canceling claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, to be made in an inter partes reexamination proceeding after the right of appeal notice has issued under Rule 953, except as provided in Rule 981 or as permitted by proposed Sec. 41.77(b)(1). Rule 116(e) would be added to set forth a standard for treatment of an affidavit or other evidence submitted after a final rejection or other final action (Rule 113) in an application or in an ex parte reexamination filed under Rule 510, or in an action closing prosecution (Rule 949) in an inter partes reexamination filed under Rule 913, but before or with any appeal (proposed Sec. 41.31 or proposed Sec. 41.61). The proposed standard would be that such an affidavit or other evidence could be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. This standard is currently in effect under Rule 195 for an affidavit or other evidence submitted
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after appeal. Rule 116(f) would be added to prohibit affidavits and other evidence in an inter partes reexamination proceeding after the right of appeal notice under Rule 953, except as provided in Rule 981 or as permitted by proposed Sec. 41.77(b)(1).

Rule 191 would be amended to direct appellants under 35 U.S.C. 134(a) or (b) to proposed part 41, subpart B. Rules 192196 would be removed and reserved.

Rule 197 would be amended by changing its title to ``Return of Jurisdiction from the Board of Patent Appeals and Interferences; termination of proceedings'' to reflect the two remaining paragraphs of this section. The subject matter of current paragraph (b) would be moved to proposed Sec. 41.52 and the subject matter of current paragraph (c) would be moved to proposed paragraph (b) of this section. In addition, paragraph (a) would be amended to return of jurisdiction of the involved application or patent under ex parte reexamination proceeding to the examiner.

Rule 198 would be amended by changing its title to ``Reopening after a final decision of the Board of Patent Appeals and
Interferences'' to better reflect the substance of the section and to clarify that it applies when a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review.

Rule 324(a) and (c) would be revised, and Rule 324(d) added, to consolidate crossreferences to correction of inventorship for patents in contested cases before the Board.

Rule 959 would be revised to direct inter partes reexamination participants to proposed part 41, subpart C, for information about appeals in such proceedings.

Rules 961977 would be removed to consolidate inter partes reexamination appeal information in proposed part 41, subpart C.

Rule 979 would be amended by changing its title to ``Return of Jurisdiction from the Board of Patent Appeals and Interferences; termination of proceedings'' to reflect the two paragraphs of this section. Most of the subject matter of current paragraphs (a)(g) would be moved to proposed Sec. Sec. 41.79, 41.81 and 41.83. Paragraph (a) would be amended to recite that jurisdiction over an inter partes reexamination proceeding passes to the examiner after a decision by the Board of Patent Appeals and Interferences upon transmittal of the file to the examiner, subject to each appellant's right of appeal or other review, for such further action as the condition of the inter partes reexamination proceeding may require, to carry into effect the decision of the Board of Patent Appeals and Interferences. Paragraph (b) would be amended to state that upon termination of the appeal before the Board of Patent Appeals and Interferences (proposed Sec. 41.83), if no further appeal has been taken (Rule 983), the inter partes
reexamination proceeding will be terminated and the Director will issue a certificate under Rule 997. If an appeal to the U.S. Court of Appeals for the Federal Circuit has been filed, that appeal is considered terminated when the mandate is received by the Office.

Rule 981 would be amended by changing its title to ``Reopening after a final decision of the Board of Patent Appeals and
Interferences'' to better reflect the substance of the section and to clarify that it applies when a decision by the Board of Patent Appeals and Interferences on appeal has become final for judicial review.

Section 3 of part 5 provides that no interference will be declared with an application under a national secrecy order. In part, this is because the application cannot issue while the secrecy order is in place so the completion requirement of proposed Sec. 41.102 is not met. Cf. Case v. CPC Int'l, Inc., 730 F.2d 745, 750, 221 USPQ 196, 200 (Fed. Cir. 1984) (the Director declares an interference to determine whether the application may issue). The proposed revision to Rule 5.3 would remove the reference to a patent because an interference may be provoked with an application as well (proposed Sec. 41.202(a)(1)). The proposed revision would also remove the requirement to place a notice in the file of the targeted patent. Since the Office will not act on the suggestion for an interference, the notice only serves to cast unexamined doubt on the claims of the patentee without providing any route of relief. An applicant intent on having an interference should take steps to have the secrecy order lifted.

Section 23(c)(7) of part 10 would be amended to change the cross reference to the interference rules.

A new part 41 would permit consolidation of rules relating to Board practice and to simplify reference to such practices. The Board would continue the practice used in part 1 of this title of citing sections without the part number. In proceedings before the Board, a party could cite ``Sec. 41.x'' as ``Board Rule x''.

Proposed part 41 would better state the existing practice and should not be read to change the existing practice except as explicitly provided.

Proposed subpart A would state policies, practices, and definitions common to all proceedings before the Board.

Proposed Sec. 41.1 would set forth general principles for proposed part 41. Proposed Sec. 41.1(a) would define the scope of rules. Proposed Sec. 41.1(b) would mandate that the Board's rules be construed to achieve just, speedy, and inexpensive resolutions of all Board proceedings, following the model of Rule 601 and Federal Rule of Civil Procedure 1. Proposed Sec. 41.1(c) would explicitly extend the requirement for decorum under Rule 3 to Board proceedings, including dealings with opposing parties. Board officials are similarly expected to treat parties with courtesy and decorum.

Proposed Sec. 41.2 would set forth definitions for Board proceedings under proposed part 41. The preamble to proposed Sec. 41.2 is based on the preamble of Rule 601, which cautions that context may give a defined word a different meaning. For instance, although ``final'' would be defined for the purposes of identifying final agency actions of the Board, it would not change the meaning of ``final rejection'' in proposed Sec. 41.37(c)(1)(iv), which refers to an action by an examiner.

The proposed definition of ``Board'' would cover three distinct situations. First, for the purposes of a final agency action committed to a panel of Board members, the definition would be identical in scope to 35 U.S.C. 6(b). Second, the definition would include action by the Chief Administrative Patent Judge in matters delegated in these proposed rules to the Chief Administrative Patent Judge. Third, the definition would recognize that nonfinal actions are often performed by officials other than a panel or the Chief Administrative Patent Judge. See Rule 610(a); cf. 37 CFR 2.127(c). This definition should not be read to authorize a final decision on patentability, priority, or United States Government ownership by anything other than a Board panel. Other than instances in which a panel is required by statute, the selection and authorization of an official to act on behalf of the Board would be entirely a matter of internal administration.

The definition of ``Board member'' would follow the definition in 35 U.S.C. 6(a), under which the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office, the Commissioner for
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Patents, and the Commissioner for Trademarks are ex officio members of the Board.

The phrase ``contested case'' would include patent interferences (35 U.S.C. 135(a)) and proceedings with interferencebased procedures (42 U.S.C. 2182 and 2457(d)). The existence of a contested case is a predicate for authorizing a subpoena under 35 U.S.C. 24. Although both appeals in inter partes reexaminations under 35 U.S.C. 134(c) and some petitions to the Chief Administrative Patent Judge, such as a petition for access under 35 U.S.C. 135(c), may involve more than one party, they are not considered contested cases for the purposes of proposed part 41.

Finality is required for judicial review. Barton v. Adang, 162 F.3d 1140, 1143, 49 USPQ2d 1128, 1131 (Fed. Cir. 1998). The term ``final'' would be defined pursuant to 5 U.S.C. 704 to assist parties in determining when a Board action is ripe for judicial review. In Barton, 162 F.3d at 1143, 49 USPQ2d at 1131, the Court of Appeals for the Federal Circuit held that an adverse judgment against a single party in a multiparty patent interference was a final agency action with respect to that party for the purposes of review under 35 U.S.C. 141. The proposed definition of ``final'' would follow Barton in linking the question of finality to whether an agency action on the merits is operative against the party seeking judicial review. Under 35 U.S.C. 6(b), a decision on the merits in an appeal or a contested case by any entity other than three Board members cannot be a final agency action. Affirming or reversing disposes of an issue on appeal on the merits; vacating or remanding does not. Entry of a new ground of rejection, by definition, does not dispose of an issue on the merits. A petition decision might not be final if, for instance, the decision is rendered without prejudice to take some further action. An issue in a nonfinal decision may usually be preserved for review in a final decision. See, e.g., proposed Sec. 41.125(c)(5) under which a party may request reconsideration by a panel.

The definition of ``hearing'' would reflect the holding of In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 4 (Fed. Cir. 1985) that a party is entitled to judicial consideration of properly raised issues, but is not entitled to an oral argument or consideration of improperly raised issues.

The definitions of ``panel'' and ``panel proceeding'' would reflect the minimum quorum established in 35 U.S.C. 6(b), which reserves action on patentability and priority to panels. 35 U.S.C. 6(b).

The term ``party'' would set forth a generic term for entities acting in a Board proceeding.

The delegation of petition authority to the Chief Administrative Patent Judge in proposed Sec. 41.3(a) would be new as a rule, but follows a delegation already published in the Manual of Patent Examining Procedure (MPEP) at Sec. 1002.02(f). This delegation by rule would not prejudice the Director's prerogative to decide a petition or to delegate authority to decide a petition to another subordinate. The Chief Administrative Patent Judge could also delegate petitiondeciding authority to an official, provided the delegation is stated in writing. Note that under proposed Sec. 41.3(b)(1) decisions committed by statute to the Board would not be subject to petitions for supervisory review. Such decisions would include merits decisions in appeals and contested cases, and decisions on requests for rehearing. 35 U.S.C. 6(b). Review of such decisions would come through a request for rehearing or through judicial review. Proposed Sec. 41.3(b)(2), which would provide for petitions in contested cases to be decided by other officials, would reflect the MPEP's designation of other actions typical in the ordinary course of Board proceedings as ``petitions''. See MPEP Sec. 1002.02(g) (various procedural decisions in
interferences). These actions would be considered routine motions or requests.

Proposed Sec. 41.3(c) would reflect current practice in requiring payment of a standard petition fee. Matters that would be excluded from the scope of petitions in Sec. 41.3(a)(2) would not be petitions and so would not require payment of a fee. Petitions seeking supervisory review of a discretionary matter would also not require payment of a petition fee. Compare Rule 181(a)(3) with Rules 182 and 183.

Proposed Sec. 41.3(d) would reflect the current practice of not staying any action for a petition for supervisory review in Rule 181(f). Note that the Court of Appeals for the Federal Circuit has held that a request for rehearing may toll the time for seeking judicial review. In re Graves, 69 F.3d 1147, 1151, 36 USPQ2d 1697, 1700 (Fed. Cir. 1995).

Proposed Sec. 41.3(e) would set times for filing petitions. As with Rule 181(f), failure to file a timely petition would be sufficient basis for dismissing or denying a motion.

Proposed Sec. 41.4(a) and (b) would follow the requirements of Rules 136(b) and 645 in providing rules for extensions of time and for acceptance of untimely papers. Congress has authorized patent term adjustments for time spent in proceedings before the Board. 35 U.S.C. 154(b)(1)(C). Consequently, the Board must be mindful to avoid delays in its administration of its proceedings, including delays requested or caused by a party. The Board might set conditions on extensions to minimize the effects of any delay, including restriction under 35 U.S.C. 121 of claims directed to subject matter not involved in the Board proceeding. Proposed Sec. 41.4(c) would point parties to timeliness rules that are related to Board proceedings, but not within the scope of the Board rules.

Proposed Sec. 41.5 would set forth a limited delegation to the Board under 35 U.S.C. 2(b)(2) and 32 to regulate the conduct of counsel in Board proceedings. It would generally be more efficient to have a Board official familiar with the specific proceeding decide questions of representation limited to the specific proceeding. Disqualification would be a casespecific suspension or exclusion from practice within the meaning of 35 U.S.C. 32. Under the terms of section 32, the official conducting the disqualification hearing would have to be an attorney.

Proposed Sec. 41.5(b) would delegate to the Board the authority to conduct counsel disqualification proceedings while the Board has jurisdiction over a proceeding. It also would clarify counsel disqualification practice under Rule 613(c) by making explicit the fact that a final decision to disqualify is an exercise of the powers of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office under Sec. 32, not the Board. The rule would delegate to the Chief Administrative Patent Judge the authority to make final a decision to disqualify counsel in a proceeding before the Board for the purposes of judicial review. This delegation would not derogate from the Director the prerogative to make such decisions, nor would it prevent the Chief Administrative Patent Judge from further delegating authority to an administrative patent judge, provided the delegation was stated in writing.

Proposed Sec. 41.6(a) would relocate into part 41 the portions of Rule 14(e) that apply to the Board. Proposed Sec. 41.6(a)(1) would continue to state that publicly available materials are publicly available. Such materials may be published without notification to or permission from the applicant. Proposed Sec. 41.6(a)(2) would set forth the basis for making a determination under 35 U.S.C. 122(a) that the publication of a Board action constitutes a special
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circumstance. Parties should note that disagreement with a holding is not an appropriate basis for challenging a special circumstance determination. Moreover, a party not entitled to confidentiality under section 122(a) would not have the standing to challenge publication under this paragraph. For instance, an involved patentee could not assert an opposing applicant's confidences as the basis for blocking a publication.

Proposed Sec. 41.6(b) would generalize to all Board proceedings the practice under Rule 11(e) of making the record of most interference proceedings publicly available eventually, although that availability might not occur until an involved patent application becomes available. It also recognizes pregrant publication as a basis for making a file publicly available.

Proposed Sec. 41.7 would adopt the current practice of Rule 618 regarding duplicate papers and the expunging of papers, but would generalize it to all Board proceedings. In recent decades, the typical size of files has increased significantly. The increase imposes burdens on the Office in managing the records and on users of the record. This rule would provide a tool for managing the size and complexity of the record and for preventing abuses that can occur in filing.

Proposed Sec. 41.8(a) would reflect the current practice under Rules 192(c)(1) and 602 regarding disclosure of the real partiesin interest. Federal officials must meet high ethical standards. A principal ethical concern is the avoidance of conflicts of interest for the officials, including even the appearance of a conflict. See e.g., Stanek v. Dep't of Transp., 805 F.2d 1572, 1577 (Fed. Cir. 1986) (affirming dismissal of employee for appearance of a conflict of interest). In the case of the Board, a conflict would typically arise when an official has an investment in a company with a direct interest in a Board proceeding. Such conflicts could only be avoided if the parties promptly provide the information necessary to identify potential conflicts. The identity of a real partyininterest might also affect the credibility of evidence presented in a proceeding. For instance, testimony from a source related to a real partyininterest may be seen as misleading or selfserving compared to evidence from a completely independent source (e.g., Refac Int'l, Ltd. v. Lotus Dev. Corp., 81 F.3d 1576, 158182, 38 USPQ2d 1665, 1669 (Fed. Cir. 1996) (failure to identify declarants as former coworkers was inequitable conduct)). Finally, in a contested case, the presence of a common real partyininterest might reflect a lack of genuine adversity between the parties. Common ownership would ordinarily result in prompt termination of any proceeding between the commonly owned parties. Barton, 162 F.3d at 1143, 49 USPQ2d at 1131 (recognizing the practice while noting an exception). See proposed Sec. 41.206.

The notice of judicial proceedings required in proposed Sec. 41.8(b) would be important because a judicial decision in another case might be binding on the Board or a party. The Board might also use such information to determine the best pacing for a Board proceeding. Notice of other administrative proceedings might also be relevant. In the case of other Office proceedings, particularly other Board proceedings, notice might allow the Board to more efficiently allocate its limited resources and to avoid inconsistent outcomes. In re Berg, 140 F.3d 1428, 1435 nn.7&8, 46 USPQ2d 1226, 1231 nn.7&8 (Fed. Cir. 1998) (calling failure to identify a related application relevant to a doublepatenting analysis ``misleading''). The ``affect or be affected by'' standard in proposed Sec. 41.8(b) is derived from Federal Circuit Rule 47.5(b). The proposed rule would also follow Rule 660(d) in requiring notice to the Board of judicial review of the proceeding itself. In the absence of such timely notice, the Board would usually distribute records associated in the proceeding to other parts of the Office for further action. Failure to provide a timely mandatory notice under proposed Sec. 41.8 might result in sanctions including disqualification of counsel and adverse judgment.

Proposed Sec. 41.9 would follow Rule 643 regarding action by an assignee to the exclusion of an inventor, but would generalize it to all Board proceedings. Orders permitting an assignee of a partial interest to act to the exclusion of an inventor or coassignee would rarely be granted outside of contested cases. Even in contested cases, such orders would typically issue only when the partial assignee was in a proceeding against its coassignee. Ex parte Hinkson, 1904 Comm'r. Dec. 342.

Proposed Sec. 41.20 would consolidate the rules on fees associated with Board practice. Rules 22, 23, and 2528, which govern fee practice before the Office generally, would continue to apply in Board proceedings. Proposed paragraph (a) would set forth the petition fee, while proposed paragraph (b) would set forth appealsrelated fees.

Proposed subpart B would set forth rules for the ex parte appeal under 35 U.S.C. 134 of a rejection in either a national application for a patent, an application for reissue of a patent, or an ex parte reexamination proceeding to the Board.

The preamble to proposed Sec. 41.30 would be based on a similar provision in the preamble of Rule 601. The term ``proceeding'' would set forth a generic term for a national application for a patent, an application for reissue of a patent, and an ex parte reexamination proceeding. The term ``applicant'' would set forth a generic term for either the applicant in a national application for a patent or the applicant in an application for reissue of a patent. The term ``owner'' would set forth a shorthand reference to the owner of the patent undergoing ex parte reexamination under Rule 510.

Proposed Sec. 41.31 would generally incorporate the requirements of current Rule 191(a)(d). Paragraph (a) would be subdivided into three parts to improve readability. Paragraph (d) would be amended to refer only to the time periods referred to in paragraphs (a)(1)(a)(3) of this section, while the current extension of time requirements for Rules 192, 193, 194, 196 and 197, now provided in Rule 191(e), would be relocated to proposed Sec. Sec. 41.37, 41.41, 41.47, 41.50 and 41.52.

Proposed Sec. 41.33(a) and (b) would replace the requirements of current Rule 116 with a prohibition of amendments submitted after the date the proceeding has been appealed pursuant to proposed Sec. 41.31(a)(1)(a)(3), except amendments canceling claims or rewriting dependent claims into independent form and as permitted by Sec. Sec. 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1). A dependent claim is rewritten into independent form by including all of the limitations of the base claim and any intervening claims. Thus, no limitation of a dependent claim can be excluded in rewriting that claim into independent form. Proposed Sec. 41.33(c) would replace the requirements of Rule 195 with a prohibition on the admission of affidavits and other evidence submitted after the case has been appealed pursuant to proposed Sec. 41.31(a)(1)(a)(3), except as permitted by proposed Sec. Sec. 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1). This would replace the current practice of permitting such evidence based on a showing of good and sufficient reasons why such evidence was not earlier presented. The Office believes that prosecution of an application should occur before the examiner prior to an appeal being filed, not after the case has been appealed pursuant to proposed Sec. 41.31(a)(1)(a)(3).

Proposed Sec. 41.35 would generally incorporate the requirements of current
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Rule 191(e). In addition, the section is proposed to be amended to make clear that jurisdiction over an application may be relinquished by the Board and the application returned to the examining operation to permit processing to be completed by the examining operation before the Board takes up the appeal for decision. This is consistent with the present practice of returning an appealed application to the examining operation where some matter requiring attention has been identified prior to assignment of the appeal number and docketing of the appeal. In addition, it is proposed to permit the Board to take other appropriate action to complete the proceeding. For example, if the proceeding was not complete because one copy of the brief was missing, the Board may contact the appellant to obtain the missing copy.

Proposed Sec. 41.37 would generally incorporate the requirements of Rule 192. In addition, it is proposed to:
(1) Change the title of the section from ``Appellant's brief'' to ``Appeal brief''.
(2) In paragraph (a), require one copy of the brief rather than three copies consistent with the Office's move to an electronic file wrapper.
(3) In paragraph (a), require the brief to be filed within two months from the date of the notice of appeal under proposed Sec. 41.31 even if the time allowed for reply to the action from which the appeal was taken is later, which overall simplifies docketing of the due date. (4) In paragraph (c)(1)(i), require a statement in the brief identifying by name the real party in interest even if the party named in the caption of the brief is the real party in interest. This amendment would provide appellant the necessary mechanism for complying with proposed Sec. 41.8(a) in an appeal to the Board.
(5) In paragraph (c)(1)(ii), require identification of all other prior and pending appeals, interferences or judicial proceedings known to appellant, the appellant's legal representative, or assignee which may be related to, directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal, as well as to set forth a mechanism for complying with proposed Sec. 41.8(b) in an appeal to the Board.
(6) In paragraph (c)(1)(iii), require both a statement of the status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims that are being appealed.
(7) In paragraph (c)(1)(v), require a concise explanation of the invention defined in each of the independent claims involved in the appeal, which explanation shall refer to the specification by page and line number, and to the drawings, if any, by reference characters. For each claim involved in the appeal, it is proposed that every means plus function and step plus function as permitted by 35 U.S.C. 112, sixth paragraph, be identified and that the structure, material, or acts described in the specification as corresponding to each claimed function be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters. The current requirement of Rule 192(c)(5) to set forth a concise explanation of the invention defined in the claims involved in the appeal by reference to the specification by page and line number, and to the drawings, if any, by reference characters is not being followed in a great number of briefs before the Board. It is expected that the proposed requirements will be enforced by the examiner. Accordingly, any brief filed by an appellant who is represented by a registered practitioner that fails to set forth a summary which references the specification by page and line number, and to the drawing, if any, by reference characters or which fails to identify every means plus function and step plus function as permitted by 35 U.S.C. 112, sixth paragraph, would be in noncompliance with this section and would be handled as set forth in proposed paragraph (d) of this section. (8) In paragraph (c)(1)(vi), require a concise statement listing each ground of rejection presented for review rather than issues for review. An example of a concise statement is ``Claims 1 to 10 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. X.''
(9) Delete the current grouping of claims requirement set forth in Rule 192(c)(7). The general purpose served by Rule 192(c)(7) is addressed in proposed Sec. 41.37(c)(1)(viii). The existing grouping of claims requirement has led to many problems such as (i) Grouping of claims across multiple rejections (e.g., claims 19 rejected under 35 U.S.C. 102 over A while claims 1015 are rejected under 35 U.S.C. 103 over A and the appellant states that claims 115 are grouped together); (ii) Claims being grouped together but argued separately (e.g., claims 19 rejected under Sec. 102 over A, the appellant groups claims 19 together but then argues the patentability of claims 1 and 5 separately); and (iii) examiners disagreeing with the appellant's grouping of claims.
(10) In paragraph (c)(1)(vii), require that any arguments or authorities not included in the brief or a reply brief filed pursuant to proposed Sec. 41.41 will be refused consideration by the Board, unless good cause is shown (requirement currently found in Rule 192(a)), and to require a separate heading for each ground of rejection in place of the previous Grouping of claims section of the brief. For each ground of rejection applying to two or more claims, the claims may be argued separately or as a group. It is proposed that, when an appellant argues as a group multiple claims subject to the same ground of rejection, the Board may select a single claim from that group of claims and treat its disposition of a ground of rejection of that claim as applying to the disposition of that ground of rejection of all claims in the group of claims. Notwithstanding any other provision of this paragraph, it is proposed to make explicit by rule that an appellant's failure to argue separately claims that the appellant has grouped together constitutes a waiver of any argument that the Board must consider the patentability of any grouped claim separately. See In re McDaniel, 293 F.3d 1379, 1384, 63 USPQ2d 1462, 146566 (Fed. Cir. 2002) (interpreting Rule 192(c)(7) to require separate treatment of separately rejected claims). It is further proposed that any claim argued separately should be placed under a subheading identifying the claim by number and that claims argued as a group should be placed under a subheading identifying the claims by number. For example, if Claims 1 to 5 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Y and appellant is only going to argue the limitations of independent claim 1, and thereby group dependent claims 2 to 5 to stand or fall with independent claim 1, then one possible heading as required by this subsection could be Rejection under 35 U.S.C. 102(b) over U.S. Patent No. Y and the optional subheading would be Claims 1 to 5. As another example, where claims 1 to 3 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Z and the appellant wishes to argue separately the patentability of each claim, a possible heading as required by this subsection could be Rejection under 35 U.S.C. 102(b) over U.S. Patent No. Z, and the optional subheadings would be Claim 1, Claim 2 and Claim 3. Under each subheading the appellant would present the argument for patentability of that claim.
(11) In paragraph (c)(1)(vii), state that ``Merely pointing out differences in
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what the claims cover is not an argument as to why the claims are separately patentable'', a statement that in slightly different form appears in Rule 192(c)(7).
(12) In paragraph (c)(1)(vii), eliminate subparagraphs (i) through (v) of Rule 192(c)(8) which relate to the manner in which arguments are to be made. Although they provide useful advice as to what an effective argument ought to include, these provisions have often been ignored by appellants and, for the most part, have not been enforced as set forth in paragraph (d) of that rule.
(13) Add paragraph (c)(1)(ix) to require appellant to include an evidence appendix of any evidence relied upon by appellant in the appeal with a statement setting forth where that evidence was entered in the record by the examiner so that the Board will be able to easily reference such evidence during consideration of the appeal. (14) Add paragraph (c)(1)(x) to require appellant to include a related proceedings appendix containing copies of decisions rendered by a court or the Board in any proceeding identified pursuant to paragraph (c)(1)(ii) of this section so that the Board can take into
consideration such decisions.
(15) Add paragraph (c)(2) to exclude any new or nonadmitted amendment, affidavit or other evidence from being included in the brief.
(16) Add paragraph (e) to provide notice that the periods set forth in this section are extendable under the provisions of Rule 136 for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision currently appears in Rule 191(d), but would be more useful if provided in this section.

Proposed Sec. 41.39 would generally incorporate requirements found in Rule 193(a).

Proposed Sec. 41.39(a)(2) would permit a new ground of rejection to be included in an examiner's answer eliminating the current prohibition of new grounds of rejection in examiner's answers. Many appellants are making new arguments for the first time in their appeal brief (apparently stimulated by a former change to the appeal process that inserted the prohibition on new grounds of rejection in the examiner's answer). Because the current appeal rules only allow the examiner to make a new ground by reopening prosecution, some examiners have allowed cases to go forward to the Board without addressing the new arguments. Thus, the proposed revision would improve the quality of examiner's answers and reduce pendency by providing for the inclusion of the new ground of rejection in an examiner's answer without having to reopen prosecution. By permitting examiners to include a new ground of rejection in an examiner's answer, newly presented arguments can now be addressed by a new ground of rejection in the examiner's answer when appropriate. Furthermore, if new arguments can now be addressed by the examiner by incorporating a new ground of rejection in the examiner's answer, the new arguments may be able to be addressed without reopening prosecution and thereby decreasing pendency. Proposed paragraph (b) of this rule would specify the options available to an appellant who has received a new ground of rejection, including the option to request and have prosecution reopened before the examiner.

The proposed change to permit new grounds of rejection in examiner's answers would not be openended but is envisioned to be rare, rather than a routine occurrence. The Office plans to issue instructions that will be incorporated into the MPEP requiring that any new ground of rejection made by an examiner in an answer must be approved by a management official such as a Technology Center Director and that any new ground of rejection made in an answer be prominently identified as such. It is the further intent of the Office to provide guidance to examiners that will also be incorporated into the MPEP as to what circumstances, e.g., responding to a new argument or new evidence submitted prior to appeal, would be appropriate for entry of a new ground of rejection in an examiner's answer rather than the reopening of prosecution. Where, for example, a new argument(s) or new evidence cannot be addressed by the examiner based on the information then of record, the examiner may need to reopen prosecution rather than apply a new ground of rejection in an examiner's answer to address the new argument(s) or new evidence. Paragraph (b) of Sec. 41.39 would provide the appellant two options when a new ground of rejection in an examiner's answer is made, including the option of having prosecution reopened.

The following examples are set forth to provide guidance as to when the Office may or may not consider a factual scenario suitable for introducing new grounds of rejection in the examiner's answer. These examples are not considered an exhaustive list of situations that meet or do not meet the criteria for making a new ground of rejection in an examiner's answer:

Example 1: A new ground of rejection based upon prior art may be allowed if the examiner obviously failed to include a dependent claim in a rejection. For example, in the final rejection, claims 1, 13 and 27 were rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Y. Claim 27 depended from claim 22 which depended from claim 13 which depended from independent claim 1. No rejection of claim 22 was set forth in the final rejection; however, the summary sheet of the final rejection indicated that claims 1, 13 and 27 were rejected. In this situation, the examiner would reject claim 22 under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Y as a new ground of rejection in the answer.

Example 2: A new ground of rejection would not be allowed to reject a previously allowed or objected to claim even if the new ground of rejection would rely upon prior art already of record. In this instance, rather than making a new ground of rejection in an examiner's answer, if the basis for the new ground of rejection was approved by a supervisory patent examiner as currently set forth in MPEP 1208.02, the examiner would reopen prosecution.

Example 3: The proposed amendment is intended to continue to permit the examiner to include new grounds of rejection where appellant was advised that an amendment under Rule 116 would be entered for appeal purposes. The proposed rule would eliminate Rule 193(a)(2), which states that the filing of an amendment under Rule 116 represents applicant's consent when so advised that any appeal on that claim will proceed subject to any rejections set forth in an action from which appeal was taken. Proposed Sec. 41.39(a)(2) broadens the situations in which an examiner can make a new ground of rejection to include circumstances currently covered by Rule 193(a)(2).

Paragraph (b) of Sec. 41.39 would set forth the responses an appellant may make when an examiner's answer sets forth a new ground of rejection. Appellant would be required within two months from the date of the examiner's answer containing a new ground of rejection either: (1) To request that prosecution be reopened by filing a reply under Rule 111 with or without amendment or submission of affidavits (Rules 130, 131 or 132) or other evidence, which would result in prosecution being reopened before the examiner, or
(2) To file a reply brief under Sec. 41.41, which would act as a request that the appeal be maintained. Such a reply brief could not be accompanied by any amendment, affidavit (Rules 130, 131, or 132) or other evidence. If such a reply brief were accompanied by any amendment or evidence, it would be treated as a request that prosecution be reopened before the examiner under paragraph (b)(1) of this section. Any reply brief would have to specify the error in each new ground of rejection as set forth in Sec. 41.37(c)(1)(viii) and should [[Page 66654]]
generally follow the other requirements of a brief set forth in Sec. 41.37(c).

If in response to the examiner's answer containing a new ground of rejection, appellant decides to reopen prosecution of the application before the examiner, the Office will treat the decision to reopen prosecution also as a request to withdraw the appeal. If appellant fails to exercise one of the two options within two months from the date of the examiner's answer, the appeal will be dismissed (i.e., terminated) sua sponte.

Paragraph (c) of Sec. 41.39 is proposed to be added to provide notice that the period set forth in proposed paragraph (b) of this section is extendable under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision currently appears in Rule 191(d), but it would be more useful if provided in this section.

Proposed Sec. 41.41 would generally incorporate requirements found in Rule 193(b). In addition:
(1) Paragraph (a) would make explicit that a reply brief could not include any new or nonadmitted amendment, affidavit or other evidence. (2) Paragraph (b) would be added to make clear that a reply brief not in compliance with paragraph (a) would not be considered. The examiner would notify the appellant in this event.
(3) Paragraph (c) would be added to provide notice that the period set forth in this section would be extendable under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision currently appears in Rule 191(d), but would be more useful if provided in this section.

Proposed Sec. 41.43 is proposed to be added to permit the examiner to furnish a supplemental examiner's answer to respond to any new issue raised in the reply brief. This would dispense with the need for the Board to remand the proceeding to the examiner to treat any new issue raised in the reply brief. It is proposed that a supplemental examiner's answer may not include a new ground of rejection. If a supplemental examiner's answer is furnished by the examiner, it is proposed to permit the appellant to file another reply brief under proposed Sec. 41.41 within two months from the date of the supplemental examiner's answer.

The current prohibition against a supplemental examiner's answer in other than a remand situation would be removed to permit use of supplemental examiner's answers where the examiner is responding only to new issues raised in the reply brief. As a consequence, the requirements pertaining to appellants when prosecution is reopened under Rule 193(b)(2) would be removed.

Section 41.43(a)(1) as proposed would permit the examiner to furnish a supplemental examiner's answer to respond to any new issue raised in a reply brief. It should be noted that an indication of a change in status of claims (e.g., that certain rejections have been withdrawn as a result of a reply brief) is not a supplemental examiner's answer and therefore would not give appellant the right to file a reply brief. Such an indication of a change in status may be made on form PTOL90. The Office will develop examples to help the examiner determine what would or would not be considered a new issue warranting a supplemental examiner's answer. An appellant who disagrees with an examiner's decision that a supplemental examiner's answer is permitted under this proposed rule may petition for review of the decision under Rule 181. Possible examples of new issues raised in a reply brief include the following:

Example 1: The rejection is under 35 U.S.C. 103 over A in view of B. The brief argues that element 4 of reference B cannot be combined with reference A as it would destroy the function performed by reference A. The reply brief argues that B is nonanalogous art and therefore the two references cannot be combined.

Example 2: Same rejection as in Example 1. The brief argues only that the pump means of claim 1 is not taught in the applied prior art. The reply brief argues that the particular retaining means of claim 1 is not taught in the applied prior art.

Paragraph (a)(1) of proposed Sec. 41.43 would also set forth the ability of the examiner to withdraw the final rejection and reopen prosecution as an alternative to the use of a supplemental examiner's answer. The primary examiner's decision to withdraw the final rejection and reopen prosecution to enter a new ground of rejection will require approval from the supervisory patent examiner as currently set forth in MPEP 1208.02.

Paragraph (b) of proposed Sec. 41.43 would permit appellant to file a supplemental reply brief in response to a supplemental examiner's answer within two months from the date of the supplemental examiner's answer. That twomonth time period may be extended under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings as set forth in proposed Sec. 41.43(c).

Proposed Sec. 41.47 would generally incorporate the requirements of Rule 194. In addition:
(1) Paragraph (b) is proposed to be amended to require the separate paper requesting the oral hearing to be captioned ``REQUEST FOR ORAL HEARING'' and that such a request can be filed within two months from the date of the examiner's answer or supplemental examiner's answer. (2) Paragraph (d) is proposed to be added to set forth the procedure for handling the request for oral hearing when an appellant has complied with all the requirements of paragraph (b) of this section. Since notice to the primary examiner is a matter internal to the Office, it is proposed that the requirement for notice to the primary examiner be removed from the rule. It is anticipated that the primary examiner will be sent notice of the hearing time and date by e mail.
(3) Paragraph (e) is proposed to be added to specifically provide that at the oral hearing (i) appellant may only rely on evidence that has been previously considered by the primary examiner and present argument that has been relied upon in the brief or reply brief; (ii) the primary examiner may only rely on argument and evidence raised in the answer or a supplemental answer; and (iii) that appellant opens and concludes the argument (i.e., the order of the argument at the hearing is: Appellant opens, then the primary examiner argues, then the appellant concludes presuming that appellant has reserved some time for a concluding argument).
(4) The substance of proposed paragraph (f) is found in Rule 194. Exemplary situations where the Board may decide no hearing is necessary include those where the Board has become convinced, prior to hearing, that an application must be remanded for further consideration prior to evaluating the merits of the appeal or that the examiner's position cannot be sustained in any event.
(5) Paragraph (g) is proposed to be added to provide notice that the periods set forth in this section are extendable under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision currently appears in Rule 191(d), but would be more useful if provided in this section.

Proposed Sec. 41.50 would generally incorporate the requirements of Rule 196. In addition:
(1) Paragraph (a)(1) would explicitly provide that the Board, in its principal role under 35 U.S.C. 6(b) of reviewing adverse decisions of examiners, may in its decision affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner. The Board
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may also remand an application to the examiner.
(2) Paragraph (a)(2) would be added to require appellant to respond to any supplemental examiner's answer issued in response to a remand from the Board to the examiner for further consideration of a rejection to avoid sua sponte dismissal of the appeal as to all claims under appeal. It is proposed that appellant must exercise one of the following two options to avoid such sua sponte dismissal of the appeal as to all claims under appeal: (i) Request that prosecution be reopened before the examiner by filing a reply under Rule 111 with or without amendment or submission of affidavits (Rules 130, 131 or 132) or other evidence, and (ii) request that the appeal be maintained by filing a reply brief as provided in proposed Sec. 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the examiner under proposed Sec. 41.50(a)(2)(i). Any request that prosecution be reopened under this paragraph would be treated as a request to withdraw the appeal.

A first example of a remand from the Board to the examiner for further consideration of a rejection is a remand for the examiner to provide additional explanation as to how a reference anticipates a claim (i.e., asking the examiner to set forth a prima facie case of anticipation). A second example of a remand from the Board to the examiner for further consideration of a rejection is a remand for the examiner to ascertain (i.e., set forth) the differences between the claimed subject matter of the primary reference in an obviousness rejection and then to state why the claimed subject matter as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art (i.e., asking the examiner to set forth a prima facie case of obviousness).

A first example of a remand from the Board to the examiner that is not for further consideration of a rejection is a remand for the examiner to consider an Information Disclosure Statement. A second example of a remand from the Board to the examiner that is not for further consideration of a rejection is a remand for the examiner to consider a reply brief.
(3) Paragraph (b)(2) would eliminate the provision relating to requests that the application or patent under ex parte reexamination be reheard, since that provision would be included in proposed Sec. 41.52(a).
(4) Paragraph (c) would provide that the opinion of the Board may include an explicit statement how a claim on appeal could be amended to overcome a specific rejection and that when the opinion of the Board included such a statement, appellant would have the right to amend in conformity therewith. Such an amendment in conformity with such statement would overcome the specific rejection, but an examiner could still reject a claim soamended, provided that the rejection constituted a new ground of rejection.
(5) Paragraph (d) would provide that appellant's failure to timely respond to an order of the Board of Patent Appeals and Interferences could result in the dismissal of the appeal.
(6) Paragraph (f) would be added to provide notice that the periods set forth in this section are extendable under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision currently appears in Rule 191(d), but it would appear to be more useful if provided in this section.

Proposed Sec. 41.52 would generally incorporate the requirements of Rule 197(b). In addition, paragraph (a) is proposed to be amended to incorporate the matter being deleted from Rule 196(b)(2) relating to the request that the application or patent under ex parte reexamination be reheard. In addition, the rule as proposed would permit the Board to simply deny a request for rehearing in appropriate cases rather than rendering a new opinion and decision on the request for rehearing. Paragraph (b) is proposed to be added to provide notice that the period set forth in this section is extendable under the provisions of Rule 136(b) for patent applications and Rule 550(c) for ex parte reexamination proceedings. This provision currently appears in Rule 191(d), but would be more useful if provided in this section.

Proposed Sec. 41.54 would generally incorporate the requirements of Rule 197(a).

Proposed Sec. 41.56 provides that an appeal under this proposed subpart is terminated by the dismissal of the appeal or when, after a final Board action a notice of appeal under 35 U.S.C. 141 is filed, a civil action under 35 U.S.C. 146 is commenced, or the time for seeking judicial review (Rule 304) has expired. Termination of an appeal under this proposed subpart is the cessation of the appeal proceeding before the Board and is distinct and separate from the termination of proceedings on an application (proposed Rule 197(b)) or the termination of proceedings on an ex parte reexamination proceeding which is concluded by the issuance of a certificate pursuant to Rule 570. A dismissal of an appeal results in a termination of the appeal proceeding before the Board. After dismissal of an appeal, an application is returned to the examiner to determine the proper course of action (e.g., possible allowance and issuance if there are allowed claims; possible abandonment if there are no allowed claims) as set forth in sections 1214 to 1215.04 of the MPEP. After dismissal of an appeal, an ex parte reexamination proceeding is returned to the examiner to issue the appropriate certificate pursuant to Rule 570.

Proposed subpart C provides rules for the inter partes appeal under 35 U.S.C. 315 of a rejection in an inter partes reexamination proceeding to the Board. This proposed subpart does not apply to any other Board proceeding and is strictly limited to appeals in inter partes reexamination proceedings filed under 35 U.S.C. 311.

The preamble to proposed Sec. 41.60 is based on a similar provision in the preamble of Rule 601. The term ``proceeding'' provides a shorthand reference to an inter partes reexamination proceeding. The term ``owner'' provides a shorthand reference to the owner of the patent undergoing inter partes reexamination under Rule 915. The term ``requester'' provides a generic term to describe each party other than the owner who requested that the patent undergo inter partes reexamination under Rule 915. The term ``appellant'' provides a generic term for any party, whether the owner or a requester, filing a notice of appeal or cross appeal under proposed Sec. 41.61. If more than one party appeals or cross appeals, each appealing or cross appealing party is an appellant with respect to the claims to which his or her appeal or cross appeal is directed. The term ``respondent'' provides a generic term for any requester responding under proposed Sec. 41.68 to the appellant's brief of the owner, or the owner responding under proposed Sec. 41.68 to the appellant's brief of any requester. No requester may be a respondent to the appellant brief of any other requester. The terms ``appellant'' and ``respondent'' are currently defined in Rule 962. The proposed definition of the term ``filing'' provides a generic requirement that any document filed in the proceeding by any party must include a certificate indicating service of the document to all other parties to the proceeding as required by Rule 903.

Proposed Sec. 41.61 would generally incorporate the requirements of current Rule 959 and the changes thereto proposed in ``Changes To Implement the
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2002 Inter Partes Reexamination and Other Technical Amendments to the Patent Statute'', 68 FR 22343 (28 April 2003) (RIN 0651AB57).

Proposed Sec. 41.63(a) and (b) would replace the requirements of current Rule 116 with a prohibition of amendments submitted after the date the proceeding has been appealed pursuant to proposed Sec. 41.61, except for amendments permitted by proposed Sec. 41.77(b)(1) and amendments canceling claims where such cancellation does not affect the scope of any other pending claim in the proceeding. Proposed Sec. 41.63(c) would replace the requirements of Rule 975 with a prohibition on the admission of affidavits and other evidence submitted after the case has been appealed pursuant to proposed Sec. 41.61 except as permitted by proposed Sec. 41.77(b)(1). This would replace the current practice of permitting such evidence based on a showing of good and sufficient reasons why such evidence was not earlier presented. The Office believes that prosecution of an application should occur before the examiner prior to an appeal being filed, not after the case has been appealed pursuant to proposed Sec. 41.61.

Proposed Sec. 41.64 would generally incorporate the requirements of Rule 961, but would make clear that jurisdiction over a proceeding may be relinquished and the proceeding returned to the examining operation to permit processing to be completed before the Board takes up the appeal for decision.

Proposed Sec. 41.66 would generally incorporate the requirements of Rule 963.

Proposed Sec. 41.67 would generally incorporate the requirements of Rule 965 and the changes thereto proposed in ``Changes To Implement the 2002 Inter Partes Reexamination and Other Technical Amendments to the Patent Statute'', 68 FR 22343 (28 April 2003) (RIN 0651AB57). In addition, it is proposed:
(1) In paragraph (a), to require one copy of the brief rather than three copies consistent with the Office's move to an electronic file wrapper.
(2) In paragraph (c)(1)(i), to require a statement in the brief identifying by name the real party in interest even if the party named in the caption of the brief is the real party in interest. This provides appellant the necessary mechanism of complying with proposed Sec. 41.8(a) in an appeal to the Board;
(3) In paragraph (c)(1)(ii), to require clear identification of all other prior and pending appeals, interferences or judicial proceedings known to appellant, the appellant's legal representative, or assignee which may be related to, directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal, as well as to provide a mechanism of complying with proposed Sec. 41.8(b) in an appeal to the Board.
(4) In paragraph (c)(1)(iii), to require both a statement of the status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims that are being appealed.
(5) In paragraph (c)(1)(v), to require a concise explanation of the subject matter defined in each of the independent claims involved in the appeal and which concise explanation shall refer to the specification by page and line number, and to the drawings, if any, by reference characters. For each claim involved in the appeal, it is proposed that every means plus function and step plus function as permitted by 35 U.S.C. 112, sixth paragraph, be identified and that the structure, material, or acts described in the specification as corresponding to each claimed function be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters. Any brief filed by an appellant who is represented by a registered practitioner that fails to provide a summary of the claimed subject matter which references the
specification by page and line number, and to the drawing, if any, by reference characters or which fails to identify every means plus function and step plus function as permitted by 35 U.S.C. 112, sixth paragraph, would be in noncompliance with this section and would be handled as provided in proposed paragraph (d) of this section. (6) In paragraph (c)(1)(vi), to require a concise statement listing each issue presented for review. An example of a concise statement is claims 1 to 10 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. X.
(7) To delete the current grouping of claims requirement set forth in Rule 965(c)(7). The general purpose served by Rule 965(c)(7) is addressed in proposed Sec. 41.67(c)(1)(viii). The existing grouping of claims requirement has led to many problems such as (i) Grouping of claims across multiple rejections (e.g., claims 19 rejected under 35 U.S.C. 102 over A while claims 1015 are rejected under 35 U.S.C. 103 over A and the appellant states that claims 115 are grouped together); (ii) claims being grouped together but argued separately (e.g., claims 19 rejected under Sec. 102 over A, the appellant groups claims 19 together but then argues the patentability of claims 1 and 5 separately); and (iii) examiners disagreeing with the appellant's grouping of claims.
(8) In paragraph (c)(1)(vii), to set forth that any arguments or authorities not included in a brief permitted in this section or filed pursuant to proposed Sec. Sec. 41.68 and 41.71 will be refused consideration by the Board, unless good cause is shown, and to require a se

FOR FURTHER INFORMATION CONTACT

Appeals: Jeffrey V. Nase or William F. Smith, 7033089797.

Otherwise: Richard Torczon, 7033089797.