By Sarah Fendrick --
Last week, the U.S. Patent and Trademark Office published a notice in the Federal Register (74 Fed. Reg. 66097) proposing changes in the
procedure for handling notices of appeal and appeal briefs that identify fewer
than all of the rejected claims as being appealed. Under the change, rejected claims that are identified as not
appealed in a notice of appeal or appeal brief will automatically be deemed
canceled.
Under current procedures, an applicant is not able
to appeal only part of an examiner's decision. Under 37 C.F.R. § 1.113(c), a reply to a final Office action must
include cancellation of each rejected claim or appeal from the rejection of
each rejected claim. Similarly, a
reply to a non-final action must cancel each rejected claim subject to any
ground of rejection not addressed in the reply. See 37 C.F.R. § 1.111(b). Therefore, in order to comply with either provision, an applicant must
file an amendment canceling the non-appealed claim separately from a notice of
appeal or appeal brief. Failure to file an amendment separately will result in an appeal of the
entire examiner's decision.
The change in procedure would allow applicants to
appeal only some of the rejected claims without filing a separate amendment to
cancel the non-appealed claims. The non-appealed rejected claims would be deemed canceled as of the date
on which the notice of appeal or appeal brief was filed.
To have claims automatically canceled, an applicant
must clearly limit the appeal to fewer than all of the rejected claims. If an applicant fails to clearly limit
the appeal to only identified claims or there are inconsistencies regarding
whether all of the rejected claims are appealed, the appeal will be treated as
an appeal of the entire examiner's decision.
The proposed change will be applicable to any
notice of appeal or appeal brief filed under 37 C.F.R. §§ 41.31 and 41.37.
Comments