MPEP 1207

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1207 Examiner's Answer[edit | edit source]

37 CFR 41.39. Examiner’s answer.

(a)

(1) The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief including such explanation of the invention claimed and of the references relied upon and grounds of rejection as may be necessary, supplying a copy to appellant. If the primary examiner determines that the appeal does not comply with the provisions of §§ 41.31 and 41.37 or does not relate to an appealable action, the primary examiner shall make such determination of record.

(2) An examiner’s answer may include a new ground of rejection.

(b) If an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must within two months from the date of the examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:

(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. Any amendment or submission of affidavits or other evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.

(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address each new ground of rejection as set forth in § 41.37(c)(1)(vii) and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.

(c) Extensions of time under § 1.136 (a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136 (b) of this title for extensions of time to reply for patent applications and § 1.550 (c) of this title for extensions of time to reply for ex parte reexamination proceedings.

After an appeal brief under 37 CFR 41.37 has been filed and the examiner has considered the issues on appeal, the examiner may:

(A) reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner (see MPEP § 1207.04);

(B) withdraw the final rejection and allow the application if the examiner determines that the rejections have been overcome and no new ground of rejection is appropriate; or

(C) maintain the appeal by conducting an appeal conference (MPEP § 1207.01) and draft an examiner’s answer (MPEP § 1207.02). Any examiner's answer mailed on or after September 13, 2004 may include a new ground of rejection (MPEP § 1207.03).

1207.01 Appeal Conference[edit | edit source]

An appeal conference is mandatory in all cases in which an acceptable brief has been filed. However, if the examiner charged with preparing the examiner's answer reaches the conclusion that the appeal should not go forward, and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary. In this case, the examiner may reopen prosecution and issue another Office action. See MPEP § 1207.04.

The attendees of the appeal conference are the examiner responsible for preparing the examiner’s answer and two other examiners.

The examiner responsible for preparing the examiner’s answer should weigh the arguments of the other examiners presented during the appeal conference. If it is determined that the rejection(s) should be maintained, the examiner responsible for preparing the examiner’s answer will prepare the examiner’s answer.

1207.02 Contents of Examiner’s Answer[edit | edit source]

The examiner should furnish the appellant with a written statement in answer to the appellant's brief within 2 months after the receipt of the brief by the examiner.

The answer should contain a response to the allegations or arguments in the brief and should call attention to any errors in appellant’s copy of the claims.

The examiner should treat affidavits, declarations, or exhibits filed with the notice of appeal in accordance with 37 CFR 1.116. If an affidavit, declaration, or exhibit was refused entry under 37 CFR 1.116 or prohibited by 37 CFR 41.33, the examiner should not comment on it in the examiner’s answer. Likewise, it would be improper for appellant to rely on an affidavit, declaration, or exhibit, which was not entered, in an appeal brief.

If appellant has grounds for challenging the non-entry of an affidavit, declaration, or exhibit, he or she should file a timely petition seeking supervisory review of the non-entry.

Translations of any non-English documents used to support any rejections are required.

The examiner should identify any ground of rejection not addressed by the brief in the examiner's answer.

Because of the practice of the Office in entering amendments after final action under justifiable circumstances for purposes of appeal, many cases coming before the Board for consideration contain claims which are not the claims treated in the examiner’s final rejection. They are either entirely new claims or amended versions of the finally rejected claims or both. Where an amendment under 37 CFR 1.116 or 41.33 would be entered for appeal purposes, the examiner must identify (in an advisory action) how one or more individual rejections set forth in the final rejection would be used to reject the added or amended claim(s).

If there is a complete and thorough development of the issues at the time of final rejection, it is possible to save time in preparing the examiner’s answer required by 37 CFR 41.39 by copying a rejection from a prior Office action and then pasting the copied rejection into the answer. An examiner’s answer should not refer, either directly or indirectly, to any prior Office action without fully restating the point relied on in the answer. Of course, if the examiner feels that some further explanation of the rejection is necessary, he or she should include it in the ground of rejection set forth in the answer. For example, if a rejected claim were amended after the final rejection by adding limitations, the examiner should address the added limitations in the ground of rejection set forth in the answer. The statement of the rejection in the answer must account for the claim as amended and the answer must also include any necessary rebuttal of arguments presented in the appellant’s brief.

The examiner should reevaluate his or her position in the light of the arguments presented in the brief, and should expressly withdraw any rejections not adhered toin the “Grounds of Rejection Withdrawn” subsection of the examiner’s answer. This should be done even though any rejection not repeated and discussed in the answer may be taken by the Board as having been withdrawn. Ex parte Emm, 118 USPQ 180 (Bd. App. 1957).

A new ground of rejection is permitted in an examiner’s answer. See MPEP § 1207.03. If reopening of prosecution is necessary, the examiner must obtain approval from the supervisory patent examiner prior to reopening prosecution after an appeal. See MPEP § 1002.02(d) and § 1207.04.

All correspondence with the Board, whether by the examiner or the appellant, must be on the record. No unpublished decisions which are unavailable to the general public by reason of 35 U.S.C. 122(a) can be cited by the examiner or the appellant except that either the examiner or the appellant has the right to cite an unpublished decision in an application having common ownership with the application on appeal.

If an examiner’s answer is believed to contain a new interpretation or application of the existing patent law, the examiner’s answer, application file, and an explanatory memorandum should be forwarded to the TC Director for consideration. See MPEP § 1003. If approved by the TC Director, the examiner’s answer should be forwarded to the Office of the Deputy Commissioner for Patent Examination Policy for final approval.

Briefs must comply with 37 CFR 41.37, and all examiner’s answers filed in response to such briefs must comply with the guidelines set forth below.

(A)CONTENT REQUIREMENTS FOR EXAMINER’S ANSWER. The examiner’s answer is required to include, under appropriate headings, in the order indicated, the following items:

(1)Real Party in Interest. A statement acknowledging that the brief has identified by name the real party in interest .

(2)Related Appeals and Interferences. A statement identifying by application, patent, appeal or interference number all other prior and pending appeals, interferences or judicial proceedings known to the examiner which may be related to, directly affect or be directly affected by, or have a bearing on the Board’s decision in the pending appeal. Copies of any decisions rendered by a court or the Board in any proceeding identified under this paragraph should be included in the Related proceedings appendix section.


(3)Status of Claims. A statement of whether the examiner agrees or disagrees with the statement of the status of claims contained in the brief . If the examiner disagrees with the statement of the status of the claims contained in the brief, the examiner must set forth a correct statement of the status of all the claims in the proceeding.

(4)Status of Amendments After Final. A statement of whether the examiner agrees or disagrees with the statement of the status of amendments contained in the brief and an explanation of any disagreement.


(5)Summary of Claimed Subject Matter. A statement of whether the examiner agrees or disagrees with the summary of claimed subject matter contained in the brief and an explanation of any disagreement.

(6)Grounds of Rejection to be Reviewed on Appeal. A statement of whether the examiner agrees or disagrees with the statement of the grounds of rejection to be reviewed set forth in the brief and an explanation of any disagreement. Form paragraphs 12.154 and 12.154.01 or 12.154.02 may be used. In addition, the examiner must include the following subheadings (if appropriate):

(a)“Grounds of Rejection Withdrawn” - a listing of grounds of rejection under appeal that the examiner has withdrawn (form paragraph 12.154.05 may be used);

(b)“Grounds of Rejection Not On Review” - a listing of all grounds of rejection that have not been withdrawn and have not been presented by the appellant for review in the brief (form paragraph 12.154.011 may be used);

(c)“Non-Appealable Issues” - a listing of any non-appealable issues in the brief (form paragraph 12.154.03 may be used); and

(d)“New Grounds of Rejection” - a listing of any new grounds of rejection (prominently identified, e.g., a separate heading with all capitalized letters) that has been approved by the TC Director, or a designee. Form paragraph 12.154.04 may be used.

(7) Claims Appendix. A statement of whether the copy of the appealed claims contained in the appendix to the brief is correct and, if not, a correct copy of any incorrect claim.

(8)Evidence Relied Upon. A listing of the evidence relied on (e.g., patents, publications, admitted prior art), and, in the case of nonpatent references, the relevant page or pages.

(9) Grounds of Rejection. For each ground of rejection maintained by the examiner and each new ground of rejection (if any), an explanation of the ground of rejection.

(a)For each rejection under 35 U.S.C. 112, first paragraph, the examiner’s answer, must explain how the first paragraph of 35 U.S.C. 112 is not complied with, including, as appropriate, how the specification and drawings, if any,

(i)do not describe the subject matter defined by each of the rejected claims,

(ii)would not enable any person skilled in the art to make and use the subject matter defined by each of the rejected claims without undue experimentation including a consideration of the undue experimentation factors set forth in MPEP §

2164.01(a), and

(iii) do not set forth the best mode contemplated by the appellant of carrying out his or her invention.

(b)For each rejection under 35 U.S.C. 112, second paragraph, the examiner’s answer must explain how the claims do not particularly point out and distinctly claim the subject matter which applicant regards as the invention.

(c)For each rejection under 35 U.S.C. 102, the examiner’s answer must explain why the rejected claims are anticipated or not patentable under 35 U.S.C. 102, pointing out where all of the specific limitations recited in the rejected claims are found in the prior art relied upon in the rejection.

(d)For each rejection under 35 U.S.C. 103, the examiner’s answer must:

(i)state the ground of rejection and point out where each of the specific limitations recited in the rejected claims is found in the prior art relied on in the rejection,

(ii)identify the differences between the rejected claims and the prior art relied on (i.e., the primary reference), and

(iii)explain why it would have been obvious at the time the invention was made to a person of ordinary skill in the art to have modified the primary reference to arrive at the claimed subject matter.


(e)For each rejection under 35 U.S.C. 102or 103 where there are questions as to how limitations in the claims correspond to features in the prior art even after the examiner complies with the requirements of paragraphs (c) and (d) of this section, the examiner must compare at least one of the rejected claims feature by feature with the prior art relied on in the rejection. The comparison must align the language of the claim side-by-side with a reference to the specific page, line number, drawing reference number, and quotation from the prior art, as appropriate.

(f)For each rejection, other than those referred to in paragraphs (a) to (e) of this section, the examiner’s answer must specifically explain the basis for the particular rejection.

(g)The examiner must prominently identify (e.g., a separate heading with all capitalized letters) any new ground of rejection that has been approved by the TC Director or designee.


(10) Response to Argument. A statement of whether the examiner disagrees with each of the contentions of appellant in the brief with respect to the issues presented and an explanation of the reasons for disagreement with any such contention. The examiner must use headings and subheadings paralleling the headings and subheadings utilized in the appellant’s brief.

(11) Related Proceedings Appendix. Copies of any decisions rendered by a court or the Board in any proceeding identified by the examiner in the “Related Appeals and Interferences” section of the answer.

(B)FORM PARAGRAPHS. A form suitable for the examiner’s answer is as follows:

¶ 12.149 Examiner’s Answer Cover Sheet

BEFORE THE BOARD OF PATENT APPEALS

AND INTERFERENCES

Application Number: [1]

Filing Date: [2]

Appellant(s): [3]

__________________

[4]

For Appellant

EXAMINER’S ANSWER

This is in response to the appeal brief filed [5] appealing from the Office action mailed [6].

Examiner Note:

1.This form paragraph is printed with the USPTO letterhead.

2.In bracket 1, insert the application number of the appealed application.

3.In bracket 2, insert the filing date of the appealed application.

4.In bracket 3, insert the name(s) of the appellant.

5.In bracket 4, insert the name of the registered representative of the appellant.

6.In bracket 5, indicate the date on which the brief was filed, and also indicate if any supplemental appeal brief was filed, as well as the date on which the supplemental appeal brief was filed.

7.In bracket 6, indicate the date on which the Office action being appealed was mailed.

8.Form paragraphs 12.149 to 12.179.01, as appropriate, should be used if the appeal brief was filed on or after September 13, 2004.

¶ 12.150.01 Real Party in Interest

(1) Real Party in Interest

A statement identifying by name the real party in interest is contained in the brief.

Examiner Note:

A statement identifying by name the real party in interest is required even if the party named in the caption of the brief is the real party in interest. See 37 CFR 41.37(c)(1)(i). Form PTOL-462, PTOL-462R, or form paragraphs 12.169-12.178 may be used, as applicable, to require a corrected appeal brief if the appeal brief is not in compliance with 37 CFR 41.37.

¶ 12.150.04 Related Appeals and Interferences

(2) Related Appeals and Interferences

Examiner Note:

Follow this form paragraph with form paragraph 12.150.05 or 12.150.06.

¶ 12.150.05 Identification of the Related Appeals and Interferences

The following are the related appeals, interferences, and judicial proceedings known to the examiner which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal:

Examiner Note:

1.Follow this form paragraph with an identification by application, patent, appeal or interference number of all other prior and pending appeals, interferences or judicial proceedings known to the examiner which may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal.

2.Include a copy of all court and Board decisions identified in this section in a related proceeding(s) appendix using form paragraphs 12.162 and 12.162.02.

¶ 12.150.06 No Related Appeals and Interferences Identified

The examiner is not aware of any related appeals, interferences, or judicial proceedings which will directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal.

¶ 12.151 Status of Claims

(3) Status of Claims

Examiner Note:

Follow this form paragraph with one or more of form paragraphs 12.151.01 to 12.151.10.

¶ 12.151.01 Agreement With Statement of Status of Claims

The statement of the status of claims contained in the brief is correct.

¶ 12.151.02 Disagreement With Statement of Status of Claims

The statement of the status of claims contained in the brief is incorrect. A correct statement of the status of the claims is as follows:.


Examiner Note:

1.Indicate the area of disagreement and the reasons for the disagreement.


2.One or more of form paragraphs 12.151.03 to 12.151.10must follow this paragraph.

¶ 12.151.03 Claims on Appeal

This appeal involves claim [1].

Examiner Note:

1.In bracket 1, all the claims still on appeal should be specified. Do not list claims which are no longer rejected.

2.Also use form paragraphs 12.151.04 to 12.151.10 when appropriate to clarify the status of the claims on appeal that were incorrectly listed in the brief.

¶ 12.151.04 Status of Claims on Appeal - Substituted

Claim[1] been substituted for the finally rejected claims.

Examiner Note:

All substituted claims on appeal must be identified if the brief 

incorrectly lists any substituted claims. In bracket 1, insert the claim number(s) corresponding to the substitute claims, followed by --has-- or --have--, as appropriate.

¶ 12.151.05 Status of Claims on Appeal - Amended

Claim[1] been amended subsequent to the final rejection.

Examiner Note:

All claims amended after final rejection must be identified if the brief incorrectly lists any claims amended after final rejection. In bracket 1, identify the claim number(s) corresponding to the claim(s) which have been amended, followed by --has-- or --have- -, as appropriate.

¶ 12.151.07 Claims Allowed

Claim[1] allowed.

Examiner Note:

All allowed claims must be identified if the brief incorrectly lists any allowed claims.

¶ 12.151.08 Claims Objected To

Claim[1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.

Examiner Note:

All objected to claims must be identified if the brief incorrectly lists any claims objected to.

¶ 12.151.09 Claims Withdrawn From Consideration

Claim[1] withdrawn from consideration as not directed to the elected [2].

Examiner Note:

All withdrawn claims must be identified if the brief incorrectly lists any withdrawn claims.

¶ 12.151.10 Claims Canceled

Claim[1] been canceled.

Examiner Note:

All canceled claims must be identified if the brief incorrectly lists any canceled claims.

¶ 12.152 Status of Amendments After Final

(4) Status of Amendments After Final

Examiner Note:

Identify status of all amendments submitted after final rejection. Use one or more of form paragraphs 12.152.01 to 12.152.05, if appropriate.

¶ 12.152.01 Agreement With Appellant’s Statement of the Status of Amendments After Final

The appellant’s statement of the status of amendments after final rejection contained in the brief is correct.

¶ 12.152.02 Disagreement With Appellant’s Statement of the Status of Amendments After Final

The appellant’s statement of the status of amendments after final rejection contained in the brief is incorrect.

Examiner Note:

One or more of form paragraphs 12.152.03 to 12.152.05 must follow this form paragraph to explain the reasons for disagreeing with appellant’s statement of the status of the amendments.

¶ 12.152.03 Amendment After Final Entered

The amendment after final rejection filed on [1] has been entered.

Examiner Note:

1. In bracket 1, insert the filing date of any entered after final amendment.

2. Use this form paragraph for each after final amendment which has been entered.

¶ 12.152.04 Amendment After Final Not Entered

The amendment after final rejection filed on [1] has not been entered.

Examiner Note:

1. In bracket 1, insert the date of any after final amendment denied entry.

2. Use this form paragraph for each after final amendment which has been denied entry.

¶ 12.152.05 No Amendments After Final

No amendment after final has been filed.

¶ 12.153 Summary of Claimed Subject Matter

(5) Summary of Claimed Subject Matter

Examiner Note:

Follow this form paragraph with either of form paragraphs 12.153.01 or 12.153.02.

¶ 12.153.01 Agreement With the Summary of Claimed Subject Matter

The summary of claimed subject matter contained in the brief is correct.

¶ 12.153.02 Disagreement With the Summary of Claimed Subject Matter

The summary of claimed subject matter contained in the brief is deficient. 37 CFR 41.37(c)(1)(v) requires the summary of claimed subject matter to include: (1) a concise explanation of the subject matter defined in each of the independent claims involved in the appeal, referring to the specification by page and line number, and to the drawing, if any, by reference characters and (2) for each independent claim involved in the appeal and for each dependent claim argued separately, every means plus function and step plus function as permitted by 35 U.S.C. 112, sixth paragraph, must be identified and the structure, material, or acts described in the specification as corresponding to each claimed function must be set forth with reference to the specification by page and line number, and to the drawing, if any, by reference characters. The brief is deficient because [1].

Examiner Note:

1. In bracket 1, explain the deficiency of the appellant’s summary of the claimed subject matter. Include a correction if necessary for a clear understanding of the claimed invention.

2. Form PTOL-462, PTOL-462R, or form paragraphs 12.169- 12.178 may be used, as applicable, to require a corrected appeal brief if the appeal brief is not in compliance with 37 CFR 41.37. Note that an appellant who is not represented by a registered practitioner is not required to provide a concise explanation of the subject matter under 37 CFR 41.37(c)(1)(v). See the introductory paragraph of 37 CFR 41.37(c)(1).

¶ 12.154 Grounds of Rejection to be Reviewed on Appeal

(6) Grounds of Rejection to be Reviewed on Appeal

Examiner Note:

1.This form paragraph may be followed with one or more of form paragraphs 12.154.01 to 12.154.05.

2.Use form paragraph 12.154.04 to introduce any new grounds of rejection.

3.Form PTOL-462, PTOL-462R, or form paragraphs 12.169- 12.178 may be used, as applicable, to require a corrected appeal brief if the appeal brief is not in compliance with 37 CFR 41.37. Note that an appellant who is not represented by a registered practitioner is not required to provide a concise explanation of the grounds of rejection to be reviewed on appeal under 37 CFR 41.37(c)(1)(vi). See the introductory paragraph of 37 CFR 41.37(c)(1).

¶ 12.154.01 Agreement With Appellant’s Statement of the Grounds of Rejection

The appellant’s statement of the grounds of rejection to be reviewed on appeal is correct.

Examiner Note:

Follow this form paragraph with form paragraph 12.154.011 if there are grounds of rejection that have not been withdrawn and that have not been presented for review in appellant’s brief.

¶ 12.154.02 Disagreement With Appellant’s Statement of the Grounds of Rejection

The appellant’s statement of the grounds of rejection to be reviewed on appeal is substantially correct. The changes are as follows: [1]

Examiner Note:

In bracket 1, explain the changes with respect to the appellant’s statement of the grounds of rejection in the brief including:

(i) an identification of any grounds of rejection that were stated incorrectly (e.g., using form paragraph 12.154.05);

(ii) an identification of any grounds of rejection which the examiner is withdrawing because they are no longer applicable (e.g., using form paragraph 12.154.05); and

(iii) any new grounds of rejection (e.g., using form paragraph 12.154.04).

¶ 12.154.03 Non-Appealable Issue in Brief

Appellant’s brief presents arguments relating to [1]. This issue 

relates to petitionable subject matter under 37 CFR 1.181 and not to appealable subject matter. See MPEP § 1002 and § 1201.

¶ 12.154.04 New Grounds of Rejection - Heading

NEW GROUNDS OF REJECTION

[1]

Examiner Note:

1. Any new ground(s) of rejection in the examiner’s answer must be prominently identified (e.g., using this form paragraph) in the following sections of the answer:

(6) Grounds of Rejection to be Reviewed on Appeal (form paragraph 12.154) – use this form paragraph in section (6) of the answer to provide a concise statement of each new ground of rejection presented for review in bracket 1; and

(9) Grounds of Rejection (form paragraph 12.159) – use this form paragraph in section (9) of the answer to set forth the new grounds of rejection.

2. Conclude an examiner’s answer raising new grounds of rejection with form paragraph 12.179.01: (1) to notify applicant of the response period and options following the new grounds of rejection; and (2) to include the required approval of the TC Director or his/her designee.

¶ 12.154.05 Withdrawn Rejections

WITHDRAWN REJECTIONS

The following grounds of rejection are not presented for review on appeal because they have been withdrawn by the examiner. [1].

Examiner Note:

In bracket 1, insert the grounds of rejection that have been withdrawn.

¶ 12.154.011 Grounds of Rejection Not on Review

GROUNDS OF REJECTION NOT ON REVIEW

The following grounds of rejection have not been withdrawn by the examiner, but they are not under review on appeal because they have not been presented for review in the appellant’s brief. [1].

Examiner Note:

In bracket 1, insert the grounds of rejection that have not been withdrawn by the examiner but were not presented for review in appellant’s brief.

¶ 12.156 Claims Appendix

(7) Claims Appendix

Examiner Note:

Follow this form paragraph with form paragraph 12.156.01, 12.156.02 or 12.156.03.

¶ 12.156.01 Copy of the Appealed Claims in Appendix Is Correct

The copy of the appealed claims contained in the Appendix to the brief is correct.

¶ 12.156.02 Copy of the Appealed Claims in Appendix Is Substantially Correct

A substantially correct copy of appealed claim [1] appears on page [2] of the Appendix to the appellant’s brief. The minor errors are as follows: [3]

Examiner Note:

1. In bracket 1, indicate the claim or claims with small errors.

2. In bracket 3, indicate the nature of the errors.

¶ 12.156.03 Copy of the Appealed Claims in Appendix Contain Substantial Errors

Claim [1] contain(s) substantial errors as presented in the Appendix to the brief. Accordingly, claim [2] correctly written in the Appendix to the Examiner’s Answer.

Examiner Note:

1. Appellant should include a correct copy of all appealed claims in the Appendix to the brief. See 37 CFR 41.37(c)(1)(viii).

2. Attach a correct copy of any incorrect claims as an Appendix to the Examiner’s Answer and if the application is still a paper file, draw a diagonal line in pencil through the incorrect claim in the Appendix of the appellant’s appeal brief.

3. Rather than using this form paragraph, if the errors in the claim(s) are significant, appellant should be required to submit a corrected brief using form PTOL-462, PTOL-462R, or form paragraphs 12.169-12.178, as applicable. Where the brief includes arguments directed toward the errors, a corrected brief should always be required.

¶ 12.157 Evidence Relied Upon

(8) Evidence Relied Upon

Examiner Note:

Follow this form paragraph with either form paragraph 12.157.01 or 12.157.02.

¶ 12.157.01 No Evidence Relied Upon

No evidence is relied upon by the examiner in the rejection of the claims under appeal.

¶ 12.157.02 Listing of Evidence Relied Upon

The following is a listing of the evidence (e.g., patents, publications, Official Notice, and admitted prior art) relied upon in the rejection of claims under appeal.

Examiner Note:

1. Use the following format for providing information on each reference cited:

Number Name Date

2. The following are example formats for listing reference citations:


2,717,847 VERAIN 9-1955
1,345,890 MUTHER (Fed. Rep. of Germany) 7-1963
(Figure 2 labeled as Prior Art in this document)

3. See MPEP § 707.05(e) for additional examples.

¶ 12.159 Grounds of Rejection

(9) Grounds of Rejection

The following ground(s) of rejection are applicable to the appealed claims:

Examiner Note:

1. Explain each ground of rejection maintained by the examiner as provided below:

(i) For each rejection under 35 U.S.C. 112, first paragraph, the Examiner’s Answer shall explain how the first paragraph of 35 U.S.C. 112 is not complied with, including, as appropriate, how the specification and drawings, if any, (a) do not describe the subject matter defined by each of the rejected claims, (b) would not enable any person skilled in the art to make and use the subject matter defined by each of the rejected claims, and (c) do not set forth the best mode contemplated by the appellant of carrying out his/her invention.

(ii) For each rejection under 35 U.S.C. 112, second paragraph, the Examiner’s Answer shall explain how the claims do not particularly point out and distinctly claim the subject matter which appellant regards as the invention.

(iii) For each rejection under 35 U.S.C. 102, the Examiner’s Answer shall explain why the rejected claims are anticipated or not patentable under 35 U.S.C. 102, pointing out where all of the specific limitations recited in the rejected claims are found in the prior art relied upon in the rejection.

(iv) For each rejection under 35 U.S.C. 103, the Examiner’s Answer shall state the ground of rejection and point out where each of the specific limitations recited in the rejected claims is found in the prior art relied upon in the rejection, shall identify the differences between the rejected claims and the prior art relied on (i.e., the primary reference) and shall explain why it would have been obvious at the time the invention was made to a person of ordinary skill in the art to have modified the primary reference to arrive at the claimed subject matter

(v) For each rejection under 35 U.S.C. 102 or 103 where there may be questions as to how limitations in the claims correspond to features in the prior art, the examiner, in addition to the requirements of (ii), (iii) and (iv) above, should compare at least one of the rejected claims feature by feature with the prior art relied on in the rejection. The comparison shall align the language of the claim side by side with a reference to the specific page, line number, drawing reference number and quotation from the prior art, as appropriate.

(vi) For each rejection, other than those referred to in paragraphs (i) to (v) for this section, the Examiner’s Answer shall specifically explain the basis for the particular rejection.

2. If there are any new grounds of rejection, use form paragraph 12.154.04 to provide a prominent heading and use form paragraph 12.179.01 instead of form paragraph 12.179 to conclude the examiner’s answer.

¶ 12.161 Response to Argument

(10) Response to Argument

Examiner Note:

1. If an issue raised by appellant was fully responded to under the “Grounds of Rejection to be Reviewed on Appeal” portion, no additional response is required here.

2. If an issue has been raised by appellant that was not fully responded to under “Grounds of Rejection to be Reviewed on Appeal,” a full response must be provided after this form paragraph.


¶ 12.162 Related Proceeding(s) Appendix

(11) Related Proceeding(s) Appendix

Examiner Note:

Follow this form paragraph with either form paragraph 12.162.01 or 12.162.02.

¶ 12.162.01 No Related Proceeding Identified

No decision rendered by a court or the Board is identified by the examiner in the Related Appeals and Interferences section of this examiner’s answer.

¶ 12.162.02 Copies Related to Proceeding

Copies of the court or Board decision(s) identified in the Related Appeals and Interferences section of this examiner’s answer are provided herein.

¶ 12.179 Conclusion to Examiner’s Answer, No New Grounds of Rejection

For the above reasons, it is believed that the rejections should be sustained.

Respectfully submitted,

[1]

Conferees:

[2]

[3]

Examiner Note:

1. In bracket 1, insert initials of the examiner and the date.

2. In bracket 2, insert names of the conferees. The conferees must also place their initials next to their names.

3. In bracket 3, insert correspondence address of record.

4. If the examiner’s answer includes a new ground of rejection, use form paragraph 12.179.01 instead of this form paragraph.

¶ 12.179.01 Conclusion to Examiner’s Answer Raising New Grounds of Rejection

For the above reasons, it is believed that the rejections should be sustained.

This examiner’s answer contains a new ground of rejection set forth in section (9) above. Accordingly, appellant must within TWO MONTHS from the date of this answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:

(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111with or without amendment, affidavit or other evidence. Any amendment, affidavit or other evidence must be relevant to the new grounds of rejection. A request that complies with 37 CFR 41.39(b)(1) will be entered and considered. Any request that prosecution be reopened will be treated as a request to withdraw the appeal.

(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. Such a reply brief must address each new ground of rejection as set forth in 37 CFR 41.37(c)(1)(vii) and should be in compliance with the other requirements of 37 CFR 41.37(c). If a reply brief filed pursuant to 37 CFR 41.39(b)(2) is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under 37 CFR 41.39(b)(1).

Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.

Respectfully submitted,

[1]

A Technology Center Director or designee must personally approve the new ground(s) of rejection set forth in section (9) above by signing below:

[2]

Conferees:

[3]

[4]

Examiner Note:

1. In bracket 1, insert initials of the examiner and the date.

2. In bracket 2, insert TC Director’s or designee’s signature. All new grounds of rejection must be approved by a TC Director or designee.

3. In bracket 3, insert names of the conferees. The conferees must also place their initials next to their names.

4. In bracket 4, insert correspondence address of record.

1207.03 New Ground of Rejection in Examiner’s Answer[edit | edit source]

37 CFR 41.39(a)(2) permits the entry of a new ground of rejection in an examiner’s answer mailed on or after September 13, 2004. New grounds of rejection in an examiner’s answer are envisioned to be rare, rather than a routine occurrence. For example, where appellant made a new argument for the first time in the appeal brief, the examiner may include a new ground of rejection in an examiner’s answer to address the newly presented argument by adding a secondary reference from the prior art on the record. New grounds of rejection are not limited to only a rejection made in response to an argument presented for the first time in an appeal brief. At the time of preparing the answer to an appeal brief, the examiner may decide that he or she should apply a new ground of rejection against some or all of the appealed claims. In such an instance where a new ground of rejection is necessary, the examiner should either reopen prosecution or set forth the new ground of rejection in the answer. The examiner must obtain supervisory approval in order to reopen prosecution after an appeal. See MPEP § 1002.02(d) and §

1207.04. A supplemental examiner’s answer cannot include a new ground of rejection, except when a supplemental answer is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a). See MPEP § 1207.05.

I.REQUIREMENTS FOR A NEW GROUND OF REJECTION

Any new ground of rejection made by an examiner in an answer must be:

(A)approved by a Technology Center (TC) Director or designee; and

(B)prominently identified in the “Grounds of Rejection to be Reviewed on Appeal” section and the “Grounds of Rejection” section of the answer (see MPEP § 1207.02). The examiner may use form paragraph 12.154.04.

The examiner’s answer must provide appellant a two-month time period for reply. The examiner may use form paragraph 12.179.01 to notify appellant of the period for reply and to include the approval of the TC Director or designee. In response to an examiner’s answer that contains a new ground of rejection, appellant must either file:

(A)a reply in compliance with 37 CFR 1.111 to request that prosecution be reopened; or

(B)a reply brief that addresses each new ground of rejection in compliance with 37 CFR 41.37(c)(1)(vii) to maintain the appeal.

Appellant must file the reply or reply brief within two months from the date of the examiner’s answer to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. See 37 CFR 41.39(b) and subsection “V. APPELLANT’S REPLY TO NEW GROUNDS OF REJECTION” below.

II.SITUATIONS WHERE NEW GROUNDS OF REJECTION ARE NOT PERMISSIBLE


A new ground of rejection would not be permitted to reject a previously allowed or objected to claim even if the new ground of rejection would rely upon evidence already of record. In this instance, rather than making a new ground of rejection in an examiner’s answer, if the basis for the new ground of rejection was approved by a supervisory patent examiner as currently set forth in MPEP § 1207.04, the examiner would reopen prosecution. In addition, if an appellant has clearly set forth an argument in a previous reply during prosecution of the application and the examiner has failed to address that argument, the examiner would not be permitted to add a new ground of rejection in the examiner’s answer to respond to that argument but would be permitted to reopen prosecution, if appropriate. New grounds of rejection cannot be made in a supplemental examiner’s answer unless it is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a).

III.SITUATIONS THAT ARE NOT CONSIDERED AS NEW GROUNDS OF REJECTION


There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection. See In re Kronig, 539 F.2d 1300, 1302- 03, 190 USPQ 425, 426-27 (CCPA 1976). Where the statutory basis for the rejection remains the same, and the evidence relied upon in support of the rejection remains the same, a change in the discussion of, or rationale in support of, the rejection does not necessarily constitute a new ground of rejection. Id. at 1303, 190 USPQ at 427 (reliance upon fewer references in affirming a rejection under 35 U.S.C. 103does not constitute a new ground of rejection).

In addition, former 37 CFR 1.193(a)(2) also provided that if:

(A)an amendment under 37 CFR 1.116 [or 41.33] proposes to add or amend one or more claims;

(B)appellant was advised (through an advisory action) that the amendment would be entered for purposes of appeal; and

(C)the advisory action indicates which individual rejection(s) set forth in the action from which appeal has been taken would be used to reject the added or amended claims, then

(1)the appeal brief must address the rejection( s) of the added or amended claim(s) and

(2)the examiner’s answer may include the rejection(s) of the added or amended claims. Such rejection(s) made in the examiner’s answer would not be considered as a new ground of rejection.

The filing of such an amendment represents appellant’s consent to proceed with the appeal process. For example, when an amendment under 37 CFR 1.116or 41.33 cancels a claim (the “canceled claim”) and incorporates its limitations into the claim upon which it depends or rewrites the claim as a new independent claim (the “appealed claim”), the appealed claim contains the limitations of the canceled claim (i.e., the only difference between the appealed claim and the canceled claim is the claim number). In such situations, the appellant has been given a fair opportunity to react to the ground of rejection (albeit to a claim having a different claim number). Thus, such a rejection does not constitute a “new ground of rejection” within the meaning of 37 CFR 41.39.

The phrase “individual rejections”  addresses 

situations such as the following: the action contains a rejection of claim 1 under 35 U.S.C. 102 on the basis of Reference A, a rejection of claim 2 (which depends upon claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of Reference B and a rejection of claim 3 (which depends upon claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of Reference C. In this situation, the action contains the following “individual rejections”: (1) 35 U.S.C. 102on the basis of Reference A; (2) 35 U.S.C. 103 on the basis of Reference A in view of Reference B; and (3) 35 U.S.C. 103 on the basis of Reference A in view of Reference C. The action, however, does not contain any rejection on the basis of A in view of B and C. If an amendment under 37 CFR 1.116 or 41.33 proposes to combine the limitations of claims 1 and 2 together into amended claim 1 and cancels claim 2, a rejection of amended claim 1 under 35 U.S.C. 103 on the basis of Reference A in view of Reference B would be appropriate and would not be considered a new ground of rejection within the meaning of 37 CFR 41.39, provided the applicant was advised that this rejection would be applied to amended claim 1 in an advisory action. Furthermore, since claim 3 (which depends upon claim 1) would include the limitations of the original claims 1, 2, and 3, a rejection of amended claim 3 (amended by the amendment to original claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of Reference B and Reference C may be appropriate and would not be considered a new ground of rejection within the meaning of 37 CFR 41.39, provided applicant was advised that this rejection would be applied to amended claim 3 in the advisory action. Of course, as amended claim 3 includes the limitations of the original claims 1, 2, and 3, amended claim 3 is a newly proposed claim in the application raising a new issue (i.e., a new ground of rejection), and such an amendment under 37 CFR 1.116 or 41.33 may properly be refused entry as raising a new issue.

It must be emphasized that 37 CFR 41.39(a)(2) does not change the existing practice with respect to amendment after final rejection practice (37 CFR 1.116). The fact that 37 CFR 41.39(a)(2) would authorize the rejection in an examiner’s answer of a claim sought to be added or amended in an amendment under 37 CFR 1.116 or 41.33 has no effect on whether the amendment under 37 CFR 1.116 or 41.33 is entitled to entry. The provisions of 37 CFR 1.116 or 41.33 control whether an amendment under 37 CFR 1.116 or 41.33 is entitled to entry; the provisions of 37 CFR 41.39(a)(2) permits a new ground of rejection to be included in an answer against a claim added or amended in an amendment under 37 CFR 1.116 or 41.33.

A new prior art reference applied or cited for the first time in an examiner’s answer generally will constitute a new ground of rejection. If the citation of a new prior art reference is necessary to support a rejection, it must be included in the statement of rejection, which would be considered to introduce a new ground of rejection. Even if the prior art reference is cited to support the rejection in a minor capacity, it should be positively included in the statement of rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n. 3 (CCPA 1970). Where a newly cited reference is added merely as evidence of the prior statement made by the examiner as to what is “well- known” in the art which was challenged for the first time in the appeal brief, the citation of the reference in the examiner’s answer would not ordinarily constitute a new ground of rejection within the meaning of 37 CFR 41.39(a)(2). See also MPEP § 2144.03.

IV.REQUEST FOR DESIGNATION AS NEW GROUND OF REJECTION

Appellant cannot request to reopen prosecution pursuant to 37 CFR 41.39(b) if the examiner’s answer does not have a new ground of rejection under 37 CFR 41.39. If appellant believes that an examiner’s answer contains a new ground of rejection not identified as such, appellant may file a petition under 37 CFR 1.181(a) within two months from the mailing of the examiner’s answer requesting that a ground of rejection set forth in the answer be designated as a new ground of rejection. Any such petition must set forth a detailed explanation as to why the ground of rejection set forth in the answer constitutes a new ground of rejection. Any allegation that an examiner’s answer contains a new ground of rejection not identified as such is waived if not timely raised (i.e., by filing the petition within two months of the answer) by way of a petition under 37 CFR 1.181(a). The filing of a petition under 37 CFR 1.181 does not toll any time period running. If appellant wishes to present arguments to address the rejection in the examiner’s answer, appellant must file a reply brief to the examiner’s answer within two months from the mailing date of the examiner’s answer. If the TC Director or designee decides that the rejection is considered a new ground of rejection and approves the new ground of rejection, the examiner would be required to send a corrected examiner’s answer that identifies the rejection as a new ground of rejection and includes the approval of the TC Director or designee. The appellant may then file either a request that prosecution be reopened by filing a reply under 37 CFR 1.111, or a request that the appeal be maintained by filing a reply brief or resubmitting the previously-filed reply brief, within two months from the mailing of the corrected answer. If the TC Director or designee agrees with the examiner that the rejection is not a new ground of rejection, the examiner would not be required to send a corrected examiner’s answer.

V.APPELLANT’S REPLY TO NEW GROUNDS OF REJECTION

37 CFR 41.39(b) provides that:

if an examiner’s answer contains a new ground of rejection, appellant must within two months from the date of the examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:

(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. Any amendment or submission of affidavits or other evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.

(2) Maintain appeal. Request that the appeal be 

maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address each new ground of rejection as set forth in § 41.37(c)(1)(vii) and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.

The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. See 37 CFR 41.39(c).

A.Request That Prosecution Be Reopened by Filing a Reply

If appellant requests that prosecution be reopened, the appellant must file a reply that addresses each new ground of rejection set forth in the examiner’s answer in compliance with 37 CFR 1.111 within two months from the mailing of the examiner’s answer. The reply may also include amendments, evidence, and/or arguments directed to claims not subject to the new ground of rejection or other rejections. If there is an after-final amendment (or affidavit or other evidence) that was not entered, appellant may include such amendment in the reply to the examiner’s answer.

If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, the examiner should provide a 30-day or 1 month time period, whichever is longer, for appellant to complete the reply pursuant to 37 CFR 1.135(c). See MPEP §

714.03. If the reply is not bona fide (e.g., does not address the new ground of rejection) and the two- month time period has expired, examiner must sua sponte dismiss the appeal as to the claims subject to the new ground of rejection. See subsection “C. Failure to Reply to a New Ground of Rejection” below.

Once appellant files a reply in compliance with 37 CFR 1.111 in response to an examiner’s answer that contains a new ground of rejection, the examiner must reopen prosecution by entering and considering the reply. The examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).

B.Request That the Appeal Be Maintained by Filing a Reply Brief

If appellant requests that the appeal be maintained, the appellant must file a reply brief that addresses each new ground of rejection set forth in the answer in compliance with 37 CFR 41.37(c)(1)(vii) within two months from the mailing of the answer. The reply brief should include the following items, with each item starting on a separate page, so as to follow the other requirements of a brief as set forth in 37 CFR 41.37(c):

(1)Identification page setting forth the appellant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (i.e., Reply Brief);

(2)Status of claims page(s);

(3)Grounds of rejection to be reviewed on appeal page(s); and

(4)Argument page(s).

The reply brief can also be a substitute brief replacing the original brief by responding to both the new ground of rejection and all other grounds of rejection covered in the original brief. In such an instance, the reply brief must meet all the requirements of a brief as set forth in 37 CFR 41.37(c).

The reply brief must also be in compliance with requirements set forth in 37 CFR 41.41, e.g., it cannot include any new amendment or affidavit. If the reply brief is accompanied by any amendment or evidence, it would be treated as a request that prosecution be reopened under 37 CFR 41.39(b)(1).

The examiner may provide a supplemental examiner’s answer (with TC Director or designee approval) to respond to any new issue raised in the reply brief. The supplemental examiner’s answer responding to a reply brief cannot include any new grounds of rejection. See MPEP § 1207.05. In response to the supplemental examiner’s answer, the appellant may file another reply brief under 37 CFR 41.41 within 2 months from the mailing of the supplemental exam iner’s answer. The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. Appellant cannot request that prosecution be reopened pursuant to 37 CFR 41.39(b) at that time.

C.Failure To Reply to a New Ground of Rejection

If appellant fails to timely file a reply under 37 CFR 1.111 or a reply brief in response to an examiner’s answer that contains a new ground of rejection, the appeal will be sua sponte dismissed as to the claims subject to the new ground of rejection. If all of the claims under appeal are subject to the new ground of rejection, the entire appeal will be dismissed. The examiner should follow the procedure set forth in MPEP § 1215 to dismiss the appeal. For example, if there is no allowed claim in the application, the application would be abandoned when the two-month time expired.

If only some of the claims under appeal are subject to the new ground of rejection, the dismissal of the appeal as to those claims operates as an authorization to cancel those claims and the appeal continues as to the remaining claims. The examiner must:

(1)Cancel the claims subject to the new ground of rejection; and

(2)Notify the appellant that the appeal as to the claims subject to the new ground of rejection is dismissed and those claims are canceled.

Examiner may use form paragraph 12.179.02 to dismiss the claims subject to the new ground of rejection.


¶ 12.179.02 Dismissal Following New Ground(s) of Rejection in Examiner’s Answer

Appellant failed to timely respond to the examiner’s answer mailed on [1] that included a new ground of rejection mailed on [1]. Under 37 CFR 41.39(b), if an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must, within two months from the date of the examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, addressing each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.39, the appeal as to claims [2] is dismissed, and these claims are canceled.

Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.

Examiner Note:

1. In bracket 1, insert the mailing date of the examiner’s answer.

2. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.

3. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.

1207.04 Reopening of Prosecution After Appeal[edit | edit source]

The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection after appellant’s brief or reply brief has been filed. The Office action containing a new ground of rejection may be made final if the new ground of rejection was (A) necessitated by amendment, or (B) based on information presented in an information disclosure statement under 37 CFR 1.97(c) where no statement under 37 CFR 1.97(e) was filed. See MPEP § 706.07(a). Any after final amendment or affidavit or other evidence that was not entered before must be entered and considered on the merits.

Form paragraph 12.187 may be used when reopening prosecution:


¶ 12.187 Reopening of Prosecution After Appeal Brief or Reply Brief

In view of the [1] filed on [2], PROSECUTION IS HEREBY REOPENED. [3] set forth below.

To avoid abandonment of the application, appellant must exercise one of the following two options:

(1) file a reply under 37 CFR 1.111 (if this Office action is non- final) or a reply under 37 CFR 1.113 (if this Office action is final); or,

(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.

A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:

[4]

Examiner Note:

1.In bracket 1, insert --appeal brief--, --supplemental appeal brief--, --reply brief-- or --supplemental reply brief--.

2.In bracket 2, insert the date on which the brief was filed.

3.In bracket 3, insert --A new ground of rejection is-- or --New grounds of rejection are--.

4.In bracket 4, insert the SPE’s signature. Approval of the SPE is required to reopen prosecution after an appeal. See MPEP §§ 1002.02(d) and 1208.02.

5.Use this form paragraph to reopen prosecution in order to make a new ground of rejection of claims. The Office action following a reopening of prosecution may be made final if all new grounds of rejection were either (A) necessitated by amendment or (B) based on information presented in an information disclosure statement under 37 CFR 1.97(c) where no statement under 37 CFR 1.97(e) was filed. See MPEP § 706.07(a).


After reopening of prosecution, appellant must exercise one of the following options to avoid abandonment of the application:

(A)file a reply under 37 CFR 1.111, if the Office action is non-final;

(B)file a reply under 37 CFR 1.113, if the Office action is final; or

(C)initiate a new appeal by filing a new notice of appeal under 37 CFR 41.31.

If appellant elects to continue prosecution and prosecution was reopened prior to a decision on the merits by the Board of Patent Appeals and Interferences, the fee paid for the notice of appeal, appeal brief, and request for oral hearing (if applicable) will be applied to a later appeal on the same application. If, however, the appeal fees set forth in 37 CFR 41.20 have increased since they were previously paid, applicant must pay the difference between the increased fees and the amount previously paid. If appellant elects to initiate a new appeal by filing a notice of appeal, appellant must file a complete new brief in compliance with the 37 CFR 41.37 within two months from the filing of the new notice of appeal. See MPEP § 1204.01 for more information on reinstatement of an appeal.


1207.05Supplemental Examiner’s Answer [R-3]

37 CFR 41.43. Examiner’s response to reply brief.

(a)(1)After receipt of a reply brief in compliance with § 41.41, the primary examiner must acknowledge receipt and entry of the reply brief. In addition, the primary examiner may withdraw the final rejection and reopen prosecution or may furnish a supplemental examiner’s answer responding to any new issue raised in the reply brief.

(2)A supplemental examiner’s answer responding to a reply brief may not include a new ground of rejection.

(b)If a supplemental examiner’s answer is furnished by the examiner, appellant may file another reply brief under § 41.41 to any supplemental examiner’s answer within two months from the date of the supplemental examiner’s answer.


37 CFR 41.50. Decisions and other actions by the Board.

(a)(1)The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner. 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. The Board may also remand an application to the examiner.

(2)If a supplemental examiner’s answer is written in response to a remand by the Board for further consideration of a rejection pursuant to paragraph (a)(1) of this section, the appellant must within two months from the date of the supplemental examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:

(i)Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this title) or other evidence. Any amendment or submission of affidavits or other evidence must be relevant to the issues set forth in the remand or raised in the supplemental examiner’s answer. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.

(ii)Maintain appeal. Request that the appeal be maintained by filing a reply brief as provided in § 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the examiner under paragraph (a)(2)(i) of this section.


Every supplemental examiner’s answer must be approved by a Technology Center (TC) Director or

designee. The examiner may furnish a supplemental examiner’s answer in response to any one of the following:


(A)A reply brief that raises new issues. The examiner may NOT include a new ground of rejection in the supplemental examiner’s answer responding to a reply brief. See 37 CFR 41.43(a)(2). Appellant may file another reply brief in response to the supplemental examiner’s answer within two months from the mailing of the supplemental answer. See MPEP §

1208.

(B)A remand by the Board for further consideration of a rejection under 37 CFR 41.50(a). See MPEP § 1211.01. In response to a supplemental examiner’s answer that is written in response to a remand by the Board for further consideration of a rejection, appellant must either file: (1) a reply under 37 CFR 1.111 to request that prosecution be reopened; or (2) a reply brief to request that the appeal be maintained, within two months from the mailing of the supplemental examiner’s answer, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. Examiner may include a new ground of rejection in the supplemental examiner’s answer responding to a remand by the Board for further consideration of a rejection. See MPEP § 1207.03.

(C)A remand by the Board for other purposes that are not for further consideration of a rejection under 37 CFR 41.50(a). The examiner may NOT include a new ground of rejection in the supplemental examiner’s answer responding to a remand by the Board, unless the remand is for further consideration of a rejection under 37 CFR 41.50(a) (see item B above). Appellant may file a reply brief with two months from the mailing of the supplemental answer.

I.SUPPLEMENTAL EXAMINER’S AN- SWER RESPONDING TO A REPLY BRIEF

In response to a reply brief filed in compliance with 37 CFR 41.41, the primary examiner may: (A) withdraw the final rejection and reopen prosecution (see MPEP § 1207.04); or (B) provide a supplemental examiner’s answer responding to any new issue raised in the reply brief. The examiner cannot issue a supplemental examiner’s answer if the reply brief raised no new issue. See MPEP § 1208 for more information on reply brief and examiner’s response to reply brief. If the reply brief does raise new issues, providing a supplemental examiner’s answer will avoid the need for the Board to remand the application or proceeding to the examiner to treat the new issues. Appellant does not have the option to request that prosecution be reopened in response to a supplemental examiner’s answer responding to a reply brief unless appellant files a request for continued examination under 37 CFR 1.114 or a continuing application. The following are examples of new issues raised in a reply brief that would give the examiner the discretion to provide a supplemental examiner’s answer:

Example 1: The rejection is under 35 U.S.C. 103over A in view of B. The brief argues that element 4 of reference B cannot be combined with reference A as it would destroy the function performed by reference A. The reply brief argues that B is nonanalogous art and therefore the two references cannot be combined.


Example 2: Same rejection as in example 1. The brief argues only that the pump means of claim 1 is not taught in the applied prior art. The reply brief argues that the particular retaining means of claim 1 is not taught in the applied prior art.

37 CFR 41.43(a)(2) prohibits a supplemental examiner’s answer responding to a reply brief from including a new ground of rejection. After the filing of a reply brief, any new ground of rejection responding to a reply brief must be by way of reopening of prosecution. See MPEP § 1207.04. The examiner’s decision to withdraw the final rejection and reopen prosecution to enter a new ground of rejection requires approval from the supervisory patent examiner, which approval must be indicated in the Office action setting forth the new ground of rejection. See MPEP § 1207.04.

It should also be noted that an indication that certain rejections have been withdrawn as a result of the reply brief is not, by itself, a supplemental examiner’s answer and is of course permitted. Such an indication of a change in status of claims would not give appellant the right to file another reply brief. The examiner may make the indication on form PTOL-90. An appellant who disagrees with an examiner’s decision that a supplemental examiner’s answer is permitted may petition for review of the decision under 37 CFR 1.181 within two months from the mailing of the supplemental examiner’s answer.

The examiner may use form paragraph 12.184 in the supplemental examiner’s answer to respond to a new issue raised in a reply brief.

¶ 12.184 Supplemental Examiner’s Answer -No option to Reopen Prosecution

Responsive to [1] on [2], a supplemental Examiner’s Answer is set forth below: [3].

Appellant may file another reply brief in compliance with 37 CFR 41.41 within two months of the date of mailing of this supplemental examiner’s answer. Extensions of time under 37 CFR 1.136(a) are not applicable to this two month time period. See 37 CFR 41.43(b)-(c).

A Technology Center Director or designee has approved this supplemental examiner’s answer by signing below:

[4]

Examiner Note:

1. In bracket 1, insert the reason the supplemental examiner’s answer is being prepared, e.g.,“ the remand under 37 CFR 41.50(a)(1) for reasons other than for further consideration of a rejection”, or “the reply brief under 37 CFR 41.41 filed”.

2. In bracket 2, insert the date of remand or the date the reply brief was filed.

3. In bracket 3, provide the supplemental examiner’s answer (e.g., pursuant to 37 CFR 41.43(a), without raising any new grounds of rejection.

4. In bracket 4, insert the TC Director’s or designee’s signature. A TC Director or designee must approve every supplemental examiner’ s answer.

II.SUPPLEMENTAL EXAMINER’S AN- SWER RESPONDING TO A REMAND FOR FURTHER CONSIDERATION OF REJECTION

The examiner may provide a supplemental examiner’s answer in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a). Appellant must respond to such supplemental examiner’s answer and has the option to request that prosecution be reopened. A supplemental examiner’s answer written in response to a remand by the Board for further consideration of a rejection pursuant to 37 CFR 41.50(a)(1) may set forth a new ground of rejection. Any new ground of rejection made in such a supplemental examiner’s answer must comply with the requirements set forth in MPEP §

1207.03. The examiner may use form paragraph 12.185 in preparing the supplemental examiner’s answer responding a remand by the Board for further consideration of a rejection.

¶ 12.185 Supplemental Examiner’s Answer - On Remand FOR FURTHER CONSIDERATION OF A REJECTION

Pursuant to the remand under 37 CFR 41.50(a)(1) by the Board of Patent Appeals and Interferences on [1] for further consideration of a rejection, a supplemental Examiner’s Answer under 37 CFR 41.50(a)(2) is set forth below: [2].

The appellant must within TWO MONTHS from the date of the supplemental examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:

(1) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit, or other evidence. Any amendment, affidavit, or other evidence must be relevant to the issues set forth in the remand or raised in the supplemental examiner’s answer. Any request that prosecution be reopened will be treated as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i).

(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened under 37 CFR 41.50(a)(2)(i). See 37 CFR 41.50(a)(2)(ii).

Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.

A Technology Center Director or designee has approved this supplemental examiner’s answer by signing below:

[3]

Examiner Note:

1. In bracket 1, insert the date of the remand.

2. In bracket 2, provide reasons supporting the rejections set forth in the supplemental Examiner’s Answer.

3. In bracket 3, insert the TC Director’s or designee’s signature. A TC Director or designee must approve every supplemental examiner’s answer.

A.Appellant’s Reply

If a supplemental examiner’s answer is written in response to a remand by the Board for further consideration of a rejection pursuant to 37 CFR 41.50(a)(1), the appellant must exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:

(i)Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment or submission of affidavits (37 CFR 1.130, 1.131 or 1.132) or other evidence. Any amendment or submission of affidavits or other evidence must be relevant to




the issues set forth in the remand or raised in the supplemental examiner’s answer. A request that complies with 37 CFR 41.50(a)(2)(i) will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of 37 CFR 1.112. Any request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) will be treated as a request to withdraw the appeal.

(ii)Maintain appeal. Request that the appeal be maintained by filing a reply brief as provided in 37 CFR 41.41. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the examiner under 37 CFR 41.50(a)(2)(i).

The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings.

1.Request That Prosecution Be Reopened by Filing a Reply

If appellant requests that prosecution be reopened, the appellant must file a reply that addresses each ground of rejection set forth in the supplemental examiner’s answer in compliance with 37 CFR 1.111within two months from the mailing of the supplemental examiner’s answer. The reply may also include amendments, evidence, and/or arguments directed to claims not subject to the ground of rejection set forth in the supplemental answer or other rejections. If there is after-final amendment (or affidavit or other evidence) that was not entered, appellant may include such amendment in the reply to the supplemental examiner’s answer.

If the reply is not fully responsive to the ground of rejection set forth in the supplemental examiner’s answer, but the reply is bona fide, the examiner should provide a 30-day or 1 month time period, whichever is longer, for appellant to complete the reply pursuant to 37 CFR 1.135(c). If the reply is not bona fide (e.g., does not address the ground of rejection) and the two-month time period has expired, the examiner must sua sponte dismiss the appeal as to the claims subject to the rejection for which the Board has remanded the case.

Once appellant files a reply in compliance with 37 CFR 1.111 in response to a supplemental examiner’s answer responding to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a), the examiner must reopen prosecution by entering and considering the reply. Examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).

2.Request That the Appeal Be Maintained by Filing a Reply Brief

If appellant requests that the appeal be maintained, the appellant must file a reply brief to address each grounds of rejection set forth in the supplemental examiner’s answer in compliance with 37 CFR 41.37(c)(1)(vii) within two months from the mailing of the supplemental answer. The reply brief must also be in compliance with requirements set forth in 37 CFR 41.41 (e.g., it cannot include any new amendment or affidavit). If the reply brief is accompanied by an amendment, affidavit or other evidence, it will be treated as a request that prosecution be reopened before the examiner.

The examiner may provide another supplemental examiner’s answer (with TC Director or designee approval) to respond to any new issue raised in the reply brief. The supplemental examiner’s answer responding to a reply brief cannot include any new grounds of rejection. See MPEP § 1207.05. In response to the supplemental examiner’s answer, the appellant may file another reply brief under 37 CFR 41.41 within 2 months from the mailing of the supplemental examiner’s answer. The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex partereexamination proceedings. Appellant cannot request that prosecution be reopened pursuant to 37 CFR 41.50(a) at that time.

B.Failure To Reply to a Supplemental Examiner’s Answer Under 37 CFR 41.50(a)

If appellant fails to timely file a reply under 37 CFR 1.111 or a reply brief in response to a supplemental examiner’s answer that was written in response to a remand by the Board for further consideration of a




rejection under 37 CFR 41.50(a), the appeal will be sua sponte dismissed as to the claims subject to the rejection for which the Board has remanded the proceeding. If all of the claims under appeal are subject to the rejection, the entire appeal will be dismissed. The examiner should follow the procedure set forth in MPEP § 1215 to dismiss the appeal. For example, if there is no allowed claim in the application, the application would be abandoned when the two-month time period has expired.

If only some of the claims under appeal are subject to the rejection, the dismissal of the appeal as to those claims operates as an authorization to cancel those claims and the appeal continues as to the remaining claims. The examiner must:

(1)cancel the claims subject to the rejection; and

(2)notify the appellant that the appeal as to the claims subject to the rejection is dismissed and those claims are canceled.

Examiner may use form paragraph 12.186 to dismiss the appeal as to the claims subject to the rejection and cancel the claims.

¶ 12.186 Dismissal Following A Supplemental Examiner's Answer Written in Response to a Remand for Further Consideration of a Rejection

Appellant failed to timely respond to the supplemental examiner’s answer mailed on [1] that was written in response to a remand by the Board for further consideration of a rejection mailed on [1]. Under 37 CFR 41.50(a)(2), appellant must, within two months from the date of the supplemental examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.50(a)(2), the appeal as to claims [2] is dismissed, and these claims are canceled.

Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.

Examiner Note:

1. In bracket 1, insert the mailing date of the supplemental examiner’s answer.

2. In bracket 2, insert the claim numbers of the claims subject to the rejection for which the Board has remanded the proceeding.

3. In bracket 3, insert the claim numbers of the claims that are not subject to the rejection.

III.SUPPLEMENTAL EXAMINER’S AN- SWER RESPONDING TO A REMAND FOR OTHER PURPOSES THAT ARE NOT FOR FURTHER CONSIDERATION OF REJECTION

The Board may remand an application to the examiner for a reason that is not for further consideration of a rejection, such as to consider an information disclosure statement, a reply brief that raised new issues that were not considered by the examiner, an amendment, or an affidavit. See MPEP § 1211. The examiner may provide a supplemental examiner’s answer in response to the remand by the Board. Appellant may respond by filing a reply brief within two months from the mailing of the supplemental answer. Appellant does not have the option to request that prosecution be reopened pursuant to 37 CFR 41.50(a) unless the remand by the Board is for further consideration of a rejection under 37 CFR 41.50(a).