C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 41—PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart C—Inter Partes Appeals

37 C.F.R. § 41.77

Decisions and other actions by the Board

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(a) The Patent Trial and Appeal Board, in its decision, may affirm or reverse each decision of the examiner on all issues raised on each appealed claim, or remand the reexamination proceeding to the examiner for further consideration. The reversal of the examiner's determination not to make a rejection proposed by the third party requester constitutes a decision adverse to the patentability of the claims which are subject to that proposed rejection which will be set forth in the decision of the Patent Trial and Appeal Board as a new ground of rejection under paragraph (b) of this section. The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim, except as to any ground specifically reversed.

(b) Should the Board reverse the examiner's determination not to make a rejection proposed by a requester, the Board shall set forth in the opinion in support of its decision a new ground of rejection; or should the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement shall constitute a new ground of rejection of the claim. Any decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board makes a new ground of rejection, the owner, within one month from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal proceeding as to the rejected claim:

(1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.

(c) Where the owner has filed a response requesting reopening of prosecution under paragraph (b)(1) of this section, any requester, within one month of the date of service of the owner's response, may once file comments on the response. Such written comments must be limited to the issues raised by the Board's opinion reflecting its decision and the owner's response. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply.

(d) Following any response by the owner under paragraph (b)(1) of this section and any written comments from a requester under paragraph (c) of this section, the proceeding will be remanded to the examiner. The statement of the Board shall be binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. The examiner will consider any owner response under paragraph (b)(1) of this section and any written comments by a requester under paragraph (c) of this section and issue a determination that the rejection is maintained or has been overcome.

(e) Within one month of the examiner's determination pursuant to paragraph (d) of this section, the owner or any requester may once submit comments in response to the examiner's determination. Within one month of the date of service of comments in response to the examiner's determination, the owner and any requesters may file a reply to the comments. No requester reply may address the comments of any other requester reply. Any requester that had not previously filed an appeal or cross appeal and is seeking under this subsection to file comments or a reply to the comments is subject to the appeal and brief fees under § 41.20(b)(1) and (2), respectively, which must accompany the comments or reply.

(f) After submission of any comments and any reply pursuant to paragraph (e) of this section, or after time has expired, the proceeding will be returned to the Board which shall reconsider the matter and issue a new decision. The new decision is deemed to incorporate the earlier decision, except for those portions specifically withdrawn.

(g) The time period set forth in paragraph (b) of this section is subject to the extension of time provisions of § 1.956 of this title when the owner is responding under paragraph (b)(1) of this section. The time period set forth in paragraph (b) of this section may not be extended when the owner is responding under paragraph (b)(2) of this section. The time periods set forth in paragraphs (c) and (e) of this section may not be extended.

[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46631, Aug. 6, 2012]
Notes of Decisions
Cited in 15 cases, 2005–2020 · leading case: Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373 (Fed. Cir. 2016).
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Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373 (Fed. Cir. 2016). · cites it 3× “68 (citing 37 C.F.R. § 41.77 (a)-(b)). 1 The PTAB then remanded to the examiner to determine whether claims 4-12, 15-16, and 21 of the ’489 patent would have also been obvious over Caterpillar in view of Ogawa and in further view of U.”
Ipcom Gmbh & Co. v. Htc Corp., 861 F.3d 1362 (Fed. Cir. 2017). · cites it 4× “[JA5] After the Board’s decision in the first round of review finding the challenged claims of the ’830 patent unpatentable, IP-Com reopened prosecution under 37 C.F.R. § 41.77 (b) and amended its claims in the second round of review.”
Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir. 2013). · cites it 2× “Whether the Board relied on a new ground of rejection is a legal issue that we review de novo.”
In Re Dbc, 545 F.3d 1373 (Fed. Cir. 2008). “We also observe that DBC failed to request rehearing or reopening of prosecution pursuant to 37 C.F.R. § 41.77 , which it could have done had it believed that the Board made a new ground of rejection in affirming the examiner.”
Q.I. Press Controls, B v. v. Lee, 752 F.3d 1371 (Fed. Cir. 2014). · cites it 3× “37 C.F.R. § 41.77 (b) (“[Sjhould the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement shall constitute a new ground of rejection…”
Smithkline Beecham Corp. v. Apotex Corp., 403 F.3d 1331 (Fed. Cir. 2005). “In our law, 37 C.F.R. § 41.77 (b) specifically allows an administrative patent judge to raise the issue of patentability sua sponte as to claims designated to correspond to a count of an interference.”
Acme Scale Co., Inc. v. Lts Scale Co., LLC, 615 F. App'x 673 (Fed. Cir. 2015). · cites it 2× “(quoting 37 C.F.R. § 41.77 (d)) (emphasis added). In reversing an Examiner’s determination not to make a rejection proposed by a third party requester, the “proposed rejection [ ] will be set forth in the decision of the [Board] as a new ground of rejection.”
Progressive Cas. Ins. v. Liberty Mut. Liberty Mut. Ins., 625 F. App'x 552 (Fed. Cir. 2015). “§ 41 ;50(b); 37 C.F.R, § 41.77(b). But the Administrative Procedure Act imposes its own similar obligations on Board actions, including- in covered business method reviews.”
Rudolph Tech., Inc. v. Camtek, Ltd., 666 F. App'x 925 (Fed. Cir. 2016). · cites it 7× “The Board advised Rudolph that it had to take further action if Rudolph wished to appeal the new grounds on which the obviousness decision was based: Under 37 C.F.R. § 41.77 (b), our decision includes a new ground of rejection.”
Nuvasive, Inc. v. Iancu (Fed. Cir. 2018). · cites it 2× “37 C.F.R. § 41.77 (f) (2016). NuVasive chose to reopen prosecution rather than seek reconsideration of the Board’s decision.”
Polycom, Inc. v. Fullview, Inc. (Fed. Cir. 2019). · cites it 2× “The Board there- fore entered that new ground of rejection and, under 37 C.F.R. § 41.77 (b) (2004), provided Fullview with the option of reopening prosecution or requesting rehearing.”
Virnetx Inc. v. Cisco Sys., Inc. (Fed. Cir. 2019). · cites it 2× “VirnetX requested to reopen prosecution for claim 11 under 37 C.F.R. § 41.77 (a) following the Board’s new ground of rejection.”
Show all 15 citing cases →
— 37 C.F.R. § 41.77(b) — 1 case
Progressive Cas. Ins. v. Liberty Mut. Liberty Mut. Ins., 625 F. App'x 552 (Fed. Cir. 2015). “§ 41 ;50(b); 37 C.F.R, § 41.77(b). But the Administrative Procedure Act imposes its own similar obligations on Board actions, including- in covered business method reviews.”
— 37 C.F.R. § 41.77(d) — 2 cases
Ipcom Gmbh & Co. v. Htc Corp., 861 F.3d 1362 (Fed. Cir. 2017). “[JA5] After the Board’s decision in the first round of review finding the challenged claims of the ’830 patent unpatentable, IP-Com reopened prosecution under 37 C.F.R. § 41.77 (b) and amended its claims in the second round of review.”
Motiva Patents, LLC v. Sony Corp. (E.D. Tex. 2019).
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