Earlier I posted about the BPAI decision Ex parte Ghuman — a precedential one — in which the Board remanded a case back to the Examiner with instructions to cancel claims that were not appealed, for later return to the Board. This is a problem for Appellants because a minor mistake (forgetting to file a concurrent amendment cancelling non-appealed claims) now results in a significant delay in getting the case before the Board.
As one who frequently appeals, I was thrilled to read that the PTO has decided to address this problem by modifying the CFR rules which govern appeals! Under the PTO's proposed new rule, when an Appellant "clearly limits the appeal to fewer than all of the rejected claims", the non-appealed claims are deemed to have been cancelled. The new rule further provides that the Examiner should note the cancellation in the Examiner's answer. Most importantly — and here's the part that overrules Ex parte Ghuman — "an application will not be returned or remanded by the BPAI for correction merely due to a failure of an examiner’s answer to note the cancellation of non-appealed rejected claims."
You can read the proposed rulemaking notice here, and thanks to PatentDocs for reporting this news (here).
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