I agreeto Idea 1207.04 Reopening of Prosecution After Appeal
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Idea#148

This idea is in review.
Chapter 1300 - Allowance and Issue »

1207.04 Reopening of Prosecution After Appeal

MPEP 1207.04 may be incorrectly interpreted to allow an examiner to re-open prosecution after appeal as final (under 37 CFR 1.113). In fact, we have experienced this on at least 4 occasions, generally with the sloppiest and/or laziest examiners.

37 CFR 41.37 sets forth the requirements for appeal briefs. Thereafter comes rule 41.39, which says the examiner "may" file an answer. If the examiner does file an answer, and if it raises a new grounds of rejection, the examiner is required to allow the applicant to re-open under 37 CFR 1.111 (non-final). This is a scenario in which an examiner may wish to supplement otherwise sound rejections with one or more further rejections.

However, if the examiner re-opens directly, without filing an answer -- constructively "answering" by withdrawing the previous grounds of rejection and raising new ones -- some examiners believe they can re-open under 37 CFR 1.113 (final). This makes no sense and is not clearly set forth as improper in the MPEP as it should be.

Raising new grounds of rejection after appeal, whether by answer or directly re-opening from the examiner side, necessarily leads to 37 CFR 1.111 based at least on 37 CFR 41.39(b)(1).

(b) Appellant's response to new ground of rejection. If an examiner's answer contains a rejection designated as a new ground of rejection, appellant must within two months from the date of the examiner's answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:

(1) Reopen prosecution . Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.

(2) Maintain appeal . Request that the appeal be maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address as set forth in § 41.37(c)(1)(iv) each new ground of rejection and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.

It cannot be that an applicant has to pay for an appeal, then immediately for an RCE because his successful brief has overcome all grounds of rejection by argument.

Any revision of the MPEP in this regard should clearly set this forth to end abuse by unscrupulous examiners.

Submitted by dlightner 6 months ago

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  1. Status Changed from Active to In Review
    3 months ago
  2. The idea was posted
    6 months ago

Comments (8)

  1. I, also, have seen examiners abuse this section of MPEP. Please clarify to prevent further abuse.

    6 months ago
    1 Agreed
    0 Disagreed
  2. Original post states: "Raising new grounds of rejection after appeal, whether by answer or directly re-opening from the examiner side, necessarily leads to 37 CFR 1.111 based at least on 37 CFR 41.39(b)(1)."

    This is incorrect. If the examiner reopens prosecution without submitting a written answer to the appeal brief, then 41.39(b) is irrelevant. 41.39(b) begins by stating that "If an examiner’s answer contains a rejection designated as a new ground of rejection...". In the event that the examiner reopens prosecution without submitting a written answer to the appeal brief, then of course there would be no answer at all, let alone one containing a new ground of rejection. Thus 41.39(b) does not control how prosecution develops when the examiner reopens prosecution without submitting a written answer.

    A new rejection after appeal would necessarily be a "second or subsequent" action on the merits. Such an action may properly be made final if it is necessitated by an amendment by Applicant or information on certain IDSs, consistent with the policy in MPEP 706.07(a).

    6 months ago
    0 Agreed
    1 Disagreed
  3. dlightner Idea Submitter

    huhnra, I disagree, and there is no support for your position. Why should an examiner who properly procedurally follows the rules (has an appropriate rejection and supplements it) be set to a higher standard than one who forced the case into appeal and withdraws the rejections, conceding their weakness, and substitutes them? After submitting a notice of appeal fee and drafting and filing an appeal brief, the examiner is not entitled to side step the requirements that would be in place for a legitimate rejection (for which an answer can be filed) by conceding and returning final.

    Recall that the MPEP does not make law, but explains who the statutes, case law, and rules should be followed by non-lawyers. The CFR sets forth a fairly high standard.

    An appeal can only be filed for applications in which a claim has been TWICE rejected, therefore the amendment basis cannot be true. Also, the MPEP guides that only when no statement is filed under 38 CFR 1.97(e), can the action be made final.

    In the situation I am talking about, the examiner concedes that his position was groundless, withdraws the original grounds only after he has forced a large cost upon an applicant. This, if done properly (with the IDS issue), SHOULD have received a notice of allowance, but for the IDS. This scenario usually results in an RCE, when the applicant has sat on his hands, but would be non-final if he can make the statement under 1.97(e).

    "Prosecution" does not develop after appeal. The examiner has two options once he has forced the case to appeal: (1) stand his ground and answer; or (2) concede his flawed position, which he has twice raised against the same claim(s), and reopen non-final. You suggest that an examiner with no case should be treated better than an examiner who has can maintain and supplement his case in the answer. This neither corresponds to the rules, nor follows any sense of logic or justice.

    6 months ago
    1 Agreed
    1 Disagreed
  4. "Why should an examiner...be set to a higher standard"

    What higher standard are you talking about?

    "After submitting a notice of appeal fee and drafting and filing an appeal brief, the examiner is not entitled..."

    That sounds like what you _want_ the policy to be, rather than what the policy actually is. Under current policy, examiners can indeed reopen prosecution under certain circumstances. You may not like it, but that doesn't mean that the MPEP is incorrect, as suggested in the original post.

    "Recall that the MPEP does not make law..."

    The withdrawal of finality is a matter of policy, not a matter of law. The office can set its own policies on when to withdraw finality.

    "You suggest that an examiner with no case should be treated better than an examiner who has can maintain..."

    No, I haven't suggest that. Here is what I wrote:

    Such an action may properly be made final if it is necessitated by an amendment by Applicant or information on certain IDSs, consistent with the policy in MPEP 706.07(a).

    You should post a serial no. where you feel that policy was not adhered to so that everyone can have a look for themselves.

    3 months ago
    0 Agreed
    1 Disagreed
    1. dlightner Idea Submitter

      An examiner with a sloppy, unsustainable rejection, relies on this unclear definition to first raise issues that should have been raised ealier in prosecution -- not at the appeal stage.

      Administrative law is law, not policy, and the agency has been given the authority under the federal code to expound rules, which may not conflict with the code, but have an effect of law. The MPEP is meant to explain these rules (administrative law), code sections (legislation), and case law. Finality and procedural rules are administrative law, just as are the requirements for conforming amendments, appeal briefs, etc.

      At least to the extent that I am advocating something, you too are advocating a position. Your position relies on unclear procedural administrative law in the appeal process, and insists on maintaining the vague explanation which allows flexibility for examiners. I do not think this should be a choice for examiners, just like it is not a choice if they raise new rejections in a qualitatively better answer. It makes no sense that, absent an amendment or non-certified IDS, the examiner should abort appeal and reopen final--with new rejections that could have and should have been raised earlier--in view of the examiner's obligations (by clear administrative law) if the examiner files an answer. This goes against the "policy" (which is actual policy) of compact prosecution.

      3 months ago
      1 Agreed
      0 Disagreed
  5. Assuming only negligent training of examiners, rather than malice on their part, there is nevertheless a need for clarification here, as explained by the original poster.

    Generally re-capping what is well-presented above, when an examiner re-opens prosecution, MPEP 706.07(a) controls. It reflects basic procedural due process considerations, and the Administrative Procedures Act, each of which requires the USPTO to allow an applicant an opportunity to challenge an unprovoked new grounds for rejecting any claim without requiring the applicant to pay more money to the USPTO to do so.

    The key factor here is whether the examiner can fairly show that an applicant's action (e.g., amending a claim, belatedly submitting a new reference, etc.) provided a reasonable grounds for going final.

    3 months ago
    0 Agreed
    0 Disagreed
  6. Moderator
    Rob

    It is noted that the current language in MPEP 1207.04 provides:

    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 statement under 37 CFR 1.97(e) was filed. See MPEP § 706.07(a).

    This language appears consistent with the latest message by the idea generator as well as other comments in the thread.

    3 months ago
    0 Agreed
    0 Disagreed
  7. I agree with the original poster. Moreover, I do not think there is any basis for the contents of MPEP section 1207.04 at all. I do not understand why the MPEP indicates that Examiners have the right, under any circumstance, to reopen prosecution after an Appeal Brief has been filed. 35 USC 134 states that an applicant "may appeal from the final decision of the primary examiner to the Patent Trial and Appeal Board." By reopening prosecution, the Examiner has denied the applicant that right. Moreover, there does not appear to be anything in the Patent Rules that gives the Examiner the right to reopen prosecution. Instead,37 CFR 41.39 only states that Examiners can provide a new ground of rejection in the Examiner's Answer. It does not state that an Examiner can issue a new Office Action. Nor does it seem necessary to allow the Examiner to prevent the Applicant from appealing the Examiner's decisiont to the PTAB. Even if the Examiner's original rejection had a fundamental flaw, the Examiner still has the opportunity to correct that flaw by issuing a new rejection in the Examiner's Answer. Thus, it seems that the only purpose of reopening prosecution after the Appellant has filed her brief is to prevent the Appellant from having the decision reviewed by the board.

    Finally, if one were to take the position that the Applicant is not being denied any right because the rejection is being withdrawn, and thus, there is nothing to Appeal, I would point to the wording of the statute which is that the Applicant has the right to appeal the Examiner's "decision." Thus, even if the original rejection is withdrawn and replaced with a new rejection, the Examiner's decision, i.e., that the claims are unpatentable, remains the same and Applicant is being denied the right to appeal that decision.

    2 months ago
    0 Agreed
    0 Disagreed