If an applicant timely files a Request for Continued Examination (RCE) under 37 CFR 1.114, including the required fee and a submission, after a final decision by the Patent Trial and Appeal Board (PTAB) but prior to filing a notice of appeal to the Federal Circuit or commencing a civil action, what is the effect on the application?

A. The RCE is dismissed as improper because an RCE may never be filed after a decision by the Board.

B. The Board retains jurisdiction over the application to evaluate the RCE submission.

C. The appeal is withdrawn and prosecution in the application is reopened.

D. The application is automatically suspended for up to 63 days while the Board reviews the submission.

During a pending ex parte appeal where all claims stand rejected and no claims are allowed, the applicant files a Request for Continued Examination (RCE) accompanied by the required fee. However, the submission consists solely of an Information Disclosure Statement (IDS), which is not considered a bona fide attempt to provide a complete reply to the last outstanding Office action. How should the examiner handle this RCE and what is the status of the application?

A. The RCE is granted, the appeal is maintained, and the examiner must issue a Non-Final Office action addressing the IDS.

B. The application is automatically passed to issue with all rejected claims canceled by examiner's amendment.

C. The request is treated as an improper RCE, the appeal is withdrawn, proceedings as to the rejected claims are terminated, and the application becomes abandoned.

D. The appeal continues uninterrupted because an improper RCE cannot result in the withdrawal of an appeal under 37 CFR 1.114(d).

MPEP Chapter 1200 & 37 CFR Part 41 Exam Share: 6–8% of Exam (~6–8 Questions) ✓ MPEP Ninth Edition, Rev. 01.2024 (Nov 2024)

MPEP 1200 Practice Questions (Appeals)

Master when claims are ripe for appeal (twice rejected or final), Notice of Appeal vs. Appeal Brief deadlines, Pre-Appeal Brief Conferences, and new grounds of rejection.

AI Practice ✓ Based on MPEP Ninth Edition, Rev. 01.2024 (Nov 2024)

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MPEP-1200 • #q0221 AI-Generated • Model-Checked ⓘ

An applicant files a Request for Continued Examination (RCE) with the required fee after filing an appeal brief, but fails to include the required submission. The application contains allowed claims, but outstanding formal matters need to be corrected. If the examiner issues a notice withdrawing the appeal and requiring correction of the formal matters, what is the shortened statutory period set for the applicant's reply, and what is the absolute maximum statutory limit for any extensions of time?

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How MPEP 1200 PTAB Appeals Is Tested on the 2026 Patent Bar Exam

MPEP Chapter 1200 (Appeal) tests the strict procedural timeline of an ex parte appeal to the Patent Trial and Appeal Board (PTAB). Under 35 U.S.C. 134(a) and 37 CFR 41.31, an applicant may file a Notice of Appeal once any claim has been twice rejected or given a final rejection. The Appeal Brief (37 CFR 41.37) is due within 2 months from the receipt of the Notice of Appeal (extendable up to 5 additional months under 37 CFR 1.136(a)).

Pay special attention to when PTAB jurisdiction attaches (37 CFR 41.35: upon filing a Reply Brief or expiration of the 2-month Reply Brief window) and what happens if the Examiner’s Answer designates a new ground of rejection (MPEP § 1207.03): the appellant must within 2 months either (1) request that prosecution be reopened before the examiner, or (2) file a Reply Brief maintaining the appeal—failure to do either results in dismissal of the appeal as to the claims subject to the new ground.

Also know the Pre-Appeal Brief Request for Review (MPEP § 1204.02): it must be filed on the same day as the Notice of Appeal (before filing the Appeal Brief), is limited to 5 pages of arguments, and cannot include any amendments or affidavits.

High-Yield MPEP Rev. 01.2024 Sections to Master

MPEP § 1204

Notice of Appeal (37 CFR 41.31) & Pre-Appeal Brief Conference (§ 1204.02)

MPEP § 1205

Appeal Brief Requirements & 2-Month Deadline (37 CFR 41.37)

MPEP § 1207.03

New Ground of Rejection in Examiner’s Answer — Appellant’s Two Options

MPEP § 1208

Reply Brief & Request for Oral Hearing (37 CFR 41.41 & 41.47)

MPEP § 1214

Procedure Following Decision by PTAB & Request for Rehearing (41.52)

Frequently Asked Questions: MPEP 1200 PTAB Appeals

Can an applicant appeal a single non-final rejection if the same claim was rejected in a parent application?

Yes. Under MPEP § 1204, if a claim was rejected in a parent application and is rejected again in the first Office action of a continuing application, the claim has been "twice rejected" within the meaning of 35 U.S.C. 134(a) and may be appealed immediately.

What are an appellant’s options when an Examiner’s Answer includes a designated new ground of rejection?

Under 37 CFR 41.39(b) and MPEP § 1207.03, within 2 months (extendable under 37 CFR 1.136(a)), the appellant must either (1) request that prosecution be reopened by filing a reply under 37 CFR 1.111, or (2) request that the appeal be maintained by filing a Reply Brief under 37 CFR 41.41.

What happens if an appellant files an RCE after the Appeal Brief is filed?

Under 37 CFR 41.35(b)(3) and MPEP § 1215.01, filing a proper RCE prior to a decision on the appeal withdraws the appeal and reopens prosecution before the examiner; if the application contains no allowed claims and the RCE is improper, the application may become abandoned.