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   Appeal question, need some help deciphering MPEP
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   Author  Topic: Appeal question, need some help deciphering MPEP  (Read 837 times)
Estella Estella
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Appeal question, need some help deciphering MPEP
« on: Mar 24th, 2007, 8:57pm »
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I was reading up and reviewing the past exams to prepare for the examiniation.
 
I encoutered a question and after getting it wrong, I still didnt understand why the answer was correct. The reason being:
 
What does the term "claims stand or fall together"?
 
I know that this statement is used during an appeal, wherein the appellant and examiner has to state whether the claims stand or fall together. But what does this term actually mean?
 
Another question is regarding a conflict during this appeal. What will happen if the applicant state that the claims DO fall or stand together and the examienr disagrees and argues that the claims DO NOT stand or fall together? What will the Board do in this circumstance?
 
I read the section on the MPEP and it confused me even more.
 
PLEASE HELP!!!!!!
 
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asdfg
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Re: Appeal question, need some help deciphering MP
« Reply #1 on: Mar 25th, 2007, 11:12pm »
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[quote author=Estella Estella link=board=patent_agents;num=1174795052;start=0#0 date=03/24/07 at 20:57:23]I was reading up and reviewing the past exams to prepare for the examiniation.
 
I encoutered a question and after getting it wrong, I still didnt understand why the answer was correct. The reason being:
 
What does the term "claims stand or fall together"?
 
This is part of Appeal brief - 1205.02 Argument section:  
 
Each ground of rejection must be treated under a separate heading. For each ground of rejection applying to two or more claims, the claims may be argued separately or as a group. When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. The failure of appellant to separately argue claims which 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, 1465-66 (Fed. Cir. 2002). Any claim argued separately should be placed under a subheading identifying the claim by number. 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." Another example is where claims 1 to 3 stand rejected under 35 U.S.C. 102(b) as being anticipated by U.S. Patent No. Z and 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. The best practice is to use a subheading for each claim for which separate consideration by the Board is desired
 
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asdfg
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Re: Appeal question, need some help deciphering MP
« Reply #2 on: Mar 26th, 2007, 1:42pm »
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Another question is regarding a conflict during this appeal. What will happen if the applicant state that the claims DO fall or stand together and the examienr disagrees and argues that the claims DO NOT stand or fall together? What will the Board do in this circumstance?
 
I read the section on the MPEP and it confused me even more.
 
PLEASE HELP!!!!!!
 
[/quote]
 
I came across this Q from Oct 2003 PM which is similar. Ans. is also given below:
 
45. A patent application has claims 1-10 pending.  Claims 1 and 7 are independent claims.  Claims 2-6 depend directly from claim 1 while claims 8-10 depend directly from claim 7.  Claims 1-10 have been twice rejected by the primary examiner under 35 USC 103(a) as being unpatentable over Smith patent in view of Jones patent.  The applicant has appealed the rejection  
to the Board of Patent Appeals and Interferences.  In the brief under the “grouping of claims” section, appellant states that each of the claims is separately patentable.  In the arguments section of the brief, appellant separately argues only claims 1, 4 and 6.  In the examiner’s answer, the  
examiner disagrees with appellant’s claim grouping because all the claims present a similar issue of patentability.  The examiner states that the claims all stand or fall together as a single group.  In accordance with the patent laws, rules and procedures as related in the MPEP, which claim(s)  
must the Board consider separately on the merits?  
 
(A) The Board must consider each of claims 1-10 separately on the merits.  
(B) The Board must only consider claims 1, 4 and 6 separately on the merits.  
(C) The Board must only consider claim 1 separately on the merits.  
(D) The Board must consider claim 1 and claim 7 separately on the merits as  
representative of all the claims on appeal.  
(E) The Board must determine which claim is representative of all the claims on  
appeal and consider only that claim separately on the merits.  
 
 
Ans: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.  
 
 
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Estella Estella
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Re: Appeal question, need some help deciphering MP
« Reply #3 on: Mar 27th, 2007, 6:10pm »
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asdfg:
 
did I tell you how much I love you? Well I do!!!!
 
Thank you so much for clearing up my question. I have a better understanding of the term. I hope I pass the bar exam.
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asdfg
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Posts: 43
Re: Appeal question, need some help deciphering MP
« Reply #4 on: Mar 28th, 2007, 3:23pm »
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Thank you. Good to know my posts have helped. And I do hope you pass the bar exam.  
Suggestions:Read old papers thorougly. I read them umpteen  times spending  
n hrs a day, not 2-3 hrs as others have posted.
 
Even if you have a few repeats, that will help you spend more time on other Q. If there are 10 repeats, you can spend more than 4.5 min for each of the other Q.
Also read previous posts under New Patent Bar Online Exam - Prometric and try to find out the ans. I did this at the last min. read about assignments,Intl .filing. Actually it should be possible to frame your own Q (stories) and try to find Ans. I wish I had done this.
Best Wishes.
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