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1207    Examiner’s Answer [R-11.2013]

37 C.F.R. 41.39   Examiner’s answer.

  • (a) Content of examiner's answer. The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief.
    • (1) An examiner's answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision), unless the examiner's answer expressly indicates that a ground of rejection has been withdrawn.
    • (2) An examiner's answer may include a new ground of rejection. For purposes of the examiner's answer, any rejection that relies upon any Evidence not relied upon in the Office action from which the appeal is taken (as modified by any advisory action) shall be designated by the primary examiner as a new ground of rejection. The examiner must obtain the approval of the Director to furnish an answer that includes a new ground of rejection.
  • (b) Appellant's response to new ground of rejection. 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 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 as set forth in § 41.37(c)(1)(iv) each new ground of rejection 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 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. 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) 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 drafting an examiner’s answer (MPEP § 1207.02).

1207.01   Appeal Conference [R-11.2013]

An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1205) has been filed. However, if the examiner charged with the responsibility of preparing the examiner’s answer reaches a 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 or may prepare a notice of allowability if appropriate. See MPEP § 1207.04.

The participants of the appeal conference should include (1) the examiner charged with preparation of the examiner’s answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as a conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal. During the appeal conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.

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.

On the examiner’s answer, below the primary examiner’s signature, the word “Conferees:” should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held. If the examiner’s answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the Director - i.e., the Director of the USPTO. This authority has been delegated to the Tecnology Center (TC) Directors or their designee(s). The answer must also include the signature of a Technology Center (TC) Director or designee to indicate that he or she approves the new ground of rejection. See MPEP § 1207.03 and form paragraph 12.279.01.

The Patent Appeal Center will review the examiner’s answer to determine whether there is an indication that an appeal conference has been held. If the examiner’s answer does not contain the appropriate indication that an appeal conference has been held (i.e., including the names of the conferees and identifying themselves as the conferees along with their initials), the Patent Appeal Center may return the application to the examiner for corrective action.

1207.02   Contents of Examiner’s Answer [R-11.2013]

Examiner’s answers may be returned for correction by the Patent Appeal Center if they do not comply with the guidelines set forth below.

  • (A) The examiner’s answer should include, under appropriate headings, in the order indicated, the following items:
    • (1) Grounds of Rejection to be Reviewed on Appeal.

      A statement that every ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre-appeal brief conference decision) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.”

      The examiner must treat all pending, rejected claims as being on appeal, and must maintain all of the rejections set forth in the Office action from which the appeal is taken, unless appellant has overcome the rejection (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or evidence). In situations where the appellant makes a request to hold a rejection in abeyance or did not present any argument on a rejection in the appeal brief, the examiner should maintain the rejection in the examiner’s answer.

      • Withdrawn Rejections – Under the subheading “WITHDRAWN REJECTIONS,” the examiner should list any grounds of rejection that are being withdrawn (e.g., those that have been overcome by appellant.)
      • New Grounds of Rejection – Under the subheading “NEW GROUNDS OF REJECTION,” the examiner must set forth any new grounds of rejection. An examiner’s answer that contains a new ground of rejection must be approved and signed by the Director (or his/her designee). For each new ground of rejection, a complete explanation supporting the rejection must be provided with a proper reference to the applicable statute, prior art references relied upon, and the claim numbers of the claims that are subject to the rejection in the examiner’s answer.
    • (2) Response to Argument. A statement of whether the examiner disagrees with each of the arguments of appellant in the brief with respect to the issues presented and an explanation of the reasons for disagreement with any such argument. The examiner must use headings and subheadings paralleling the headings and subheadings utilized in the appellant’s brief.

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. While 37 CFR 41.39(a) states the examiner "may" furnish a written answer, current procedures do not permit an appeal to proceed to the Board without an examiner's answer. The mailing date of the examiner's answer begins the period for filing a reply brief, which in turn transfers jurisdiction to the Board as described in 37 CFR 41.35(a). In addition, the mailing date of the examiner's answer begins the time for appellants to request for an oral hearing as described in 37 CFR 41.47(b). In the event that the final rejection fully addresses the arguments in the appeal brief, the examiner should complete an examiner's answer with a typical "Grounds of Rejection to be Reviewed on Appeal" section and a simplified "Response to Arguments" section that simply refers to the appropriate portion of the final rejection.

Before preparing the answer, the examiner should make certain that each after-final amendment or evidence has been indicated as being entered or not-entered and an advisory action has been entered for each after-final amendment or evidence to notify the appellant of the entry or non-entry. The Board may remand to the examiner any application in which an after-final amendment or evidence has not been indicated as entered or not-entered and acted upon in an advisory action.

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 in the Record 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 under 37 CFR 1.181 seeking supervisory review of the non-entry. Any affidavits or declarations in the file swearing behind a reference should be clearly identified by the examiner as being considered under 37 CFR 1.131.

If a document being relied upon by the examiner in support of a rejection is in a language other than English, a translation must be obtained so that the record is clear as to the precise facts the examiner is relying upon in support of the rejection. The translation may be a machine translation or an English equivalent of the non-English document. See MPEP § 706.02 for reliance upon abstracts and foreign language documents in support of a rejection.

Examiners are not required to make any determination whether fewer than all of the rejected claims are identified by the appellant as being appealed. The Board will presume that all of the rejected claims are on appeal except for any claims subsequently canceled by an amendment filed by appellant. Therefore, the examiner will treat all pending, rejected claims as being on appeal, and maintain all of the rejections set forth in the Office action from which the appeal is taken, unless appellant has overcome the rejection (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or evidence). In situations where the appellant makes a request to hold a rejection in abeyance or did not present any argument on a rejection in the appeal brief, the examiner should maintain the rejection in the examiner’s answer and should identify that the appellant has not argued the rejection in the appeal brief.

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).

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 to in the “WITHDRAWN REJECTIONS” subsection of the examiner’s answer.

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 may 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 Associate Commissioner for Patent Examination Policy for final approval.

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

¶ 12.249    Examiner’s Answer Cover Sheet

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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].

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. This form paragraph is printed with the USPTO letterhead.
  • 3. In bracket 1, insert the application number of the appealed application.
  • 4. In bracket 2, insert the filing date of the appealed application.
  • 5. In bracket 3, insert the name(s) of the appellant.
  • 6. In bracket 4, insert the name of the registered representative of the appellant.
  • 7. In bracket 5, indicate the date on which the brief was filed.

¶ 12.254    Grounds of Rejection to be Reviewed on Appeal

(1) Grounds of Rejection to be Reviewed on Appeal

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. Follow this form paragraph with form paragraph 12.254.01 or 12.254.02.

¶ 12.254.01    Statement of Grounds of Rejection, not modified

Every ground of rejection set forth in the Office action dated [1] from which the appeal is taken is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.” New grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF REJECTION.”

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
  • 3. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
  • 4. Use form paragraph 12.256 to introduce any new grounds of rejection.
  • 5. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
  • 6. Use this form paragraph when there was no modification made to the grounds of rejection in an advisory action or pre-appeal conference decision.

¶ 12.254.02    Statement of Grounds of Rejection, modified

The ground(s) of rejection set forth in the Office action dated [1] from which the appeal is taken have been modified by the [2] dated [3]. A list of rejections withdrawn by the examiner (if any) is included under the subheading “WITHDRAWN REJECTIONS.” New grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF REJECTION.”

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
  • 3. In bracket 2, insert --advisory action-- and/or --pre-appeal brief conference decision--.
  • 4. In bracket 3, insert the mailing date of the advisory action and/or pre-appeal brief conference decision--.
  • 5. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
  • 6. Use form paragraph 12.256 to introduce any new grounds of rejection.
  • 7. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
  • 8. Use this form paragraph when the grounds of rejection were modified in an advisory action or pre-appeal brief conference decision.

¶ 12.255    Restatement of Rejection

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

[1]

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. Precede this form paragraph with either 12.254.01 or 12.254.02.
  • 3. Use this form paragraph to optionally include a statement of rejection and/or supporting rationale for every ground of rejection involved in the appeal.
  • 4. Only use this form paragraph when the restatement of the rejection does not include any new ground(s) of rejection.
  • 5. In bracket 1, explain each ground of rejection maintained by the examiner.

¶ 12.256    New Grounds of Rejection - Heading

NEW GROUNDS OF REJECTION

[1]

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. Any new ground(s) of rejection in the examiner’s answer must be prominently identified (e.g., using this form paragraph).
  • 3. Provide a concise statement of each new ground of rejection presented for review in bracket 1; and
  • 4. Conclude an examiner’s answer raising new grounds of rejection with form paragraph 12.279.01: (1) to notify applicant of the reply period and options following the new grounds of rejection; and (2) to include the required approval of the TC Director or his/her designee.

¶ 12.257    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:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the grounds of rejection that have been withdrawn.

¶ 12.261    Response to Argument

(2) Response to Argument

Examiner Note:

1. For use if the notice of appeal was filed on or after January 23, 2012.

2. 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.

3. 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.

¶ 12.279    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]

Requirement to pay appeal forwarding fee. In order to avoid dismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of an appeal forwarding fee within the time permitted by 37 CFR 41.45(a), unless appellant had timely paid the fee for filing a brief required by 37 CFR 41.20(b) in effect on March 18, 2013.

Examiner Note:

1. For use if the notice of appeal was filed on or after January 23, 2012.

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

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

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

5. If the examiner’s answer includes a new ground of rejection, use form paragraph 12.279.01 instead of this form paragraph.

¶ 12.279.01    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 (1) 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 1.111 with 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) 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 (1) above by signing below:

[2]

Conferees:

[3]

[4]

Requirement to pay appeal forwarding fee. In order to avoid dismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of an appeal forwarding fee within the time permitted by 37 CFR 41.45(a), unless appellant had timely paid the fee for filing a brief required by 37 CFR 41.20(b) in effect on March 18, 2013.

Examiner Note:

1. For use if the notice of appeal was filed on or after January 23, 2012.

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

3. 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.

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

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

¶ 12.279.02    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. 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. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the mailing date of the examiner’s answer.
  • 3. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
  • 4. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.

1207.03    New Ground of Rejection in Examiner’s Answer [R-11.2013]

37 CFR 41.39(a)(2) permits the entry of a new ground of rejection in an examiner’s answer. 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 pending 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.

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 under the subheading "New Grounds of Rejection" of the answer (see MPEP § 1207.02). The examiner may use form paragraph 12.256.

The examiner’s answer must provide appellant a two-month time period for reply. The examiner may use form paragraph 12.279.01 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)(iv) 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.

III.   DESIGNATION AS A NEW GROUND OF REJECTION IN AN EXAMINER'S ANSWER

The following discussion is for the limited "purposes of the examiner’s answer," as per 37 CFR 41.39(a)(2). This discussion does not apply to new grounds of rejection made in final rejections under 37 CFR 1.113. The reason for this distinction is that 37 CFR 1.116 affords applicants the opportunity to submit rebuttal evidence after a final rejection but on or before the date of filing a notice of appeal. An appellant’s ability to introduce new evidence after the filing of an appeal is more limited under 37 CFR 41.33(d) than it is prior to the appeal. Thus, applicants are able to present rebuttal evidence in response to a final rejection, while they are not permitted to do so in response to an examiner’s answer on appeal, unless an answer is designated as containing a new ground of rejection.

If Evidence (such as a new prior art reference, but not including a newly relied upon dictionary definition) is applied or cited for the first time in an examiner’s answer, then 37 CFR 41.39(a)(2) requires that the rejection be designated as 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 and be designated as a new ground of rejection. In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970).

See 37 CFR 41.30 and MPEP § 1204.04 for a detailed discussion of what constitutes "evidence" for the purposes of appeal.

A position or rationale that changes the "basic thrust of the rejection" will also give rise to a new ground of rejection. In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976). However, the examiner need not use identical language in both the examiner’s answer and the Office action from which the appeal is taken to avoid triggering a new ground of rejection. It is not a new ground of rejection, for example, if the examiner’s answer responds to appellant’s arguments using different language, or restates the reasoning of the rejection in a different way, so long as the "basic thrust of the rejection" is the same. In re Kronig, 539 F.2d at 1303; see also In re Jung, 637 F.3d 1356, 1364–65 (Fed. Cir. 2001) (additional explanation responding to arguments offered for the first time "did not change the rejection" and appellant had fair opportunity to respond); In re Noznick, 391 F.2d 946, 949 (CCPA 1968) (no new ground of rejection made when "explaining to appellants why their arguments were ineffective to overcome the rejection made by the examiner" ); In re Krammes, 314 F.2d 813, 817 (CCPA 1963) ( "It is well established that mere difference in form of expression of the reasons for finding claims unpatentable or unobvious over the references does not amount to reliance on a different ground of rejection." (citations omitted)); In re Cowles, 156 F.2d 551, 1241 (CCPA 1946) (holding that the use of "different language" does not necessarily trigger a new ground of rejection).

1207.03(a)   Determining Whether a Ground of Rejection is New

I.   SITUATIONS WHERE A GROUND OF REJECTION IS NEW

The following examples are intended to provide guidance as to what constitutes a new ground of rejection in an examiner’s answer. What constitutes a "new ground of rejection" is a highly fact-specific question. See, e.g., Kronig, 539 F.2d at 1303 (finding new ground entered based upon "facts of this case" and declining to find other cases controlling given "the distinctive facts at bar" ); In re Ahlert, 424 F.2d 1088, 1092 (CCPA 1970) ( "[l]ooking at the facts of this case, we are constrained to hold" that a new ground was entered). If a situation arises that does not fall neatly within any of the following examples, it is recommended that the examiner identify the example below that is most analogous to the situation at hand, keeping in mind that "the ultimate criterion of whether a rejection is considered ‘new’ * * * is whether appellants have had fair opportunity to react to the thrust of the rejection." Kronig, 539 F.2d at 1302.

  Factual Situations That Constitute a New Ground of Rejection

  • 1. Changing the statutory basis of rejection from 35 U.S.C. 102 to 35 U.S.C. 103.

    If the examiner’s answer changes the statutory basis of the rejection from 35 U.S.C. 102 to 35 U.S.C. 103, then the rejection should be designated as a new ground of rejection. For example, in In re Hughes, 345 F.2d 184 (CCPA 1965), the Board affirmed an examiner’s rejection under 35 U.S.C. 102 over a single reference. On appeal, the Solicitor argued that the Board’s decision should be sustained under 35 U.S.C. 103 over that same reference. The court declined to sustain the rejection under 35 U.S.C. 103, holding that a change in the statutory basis of rejection would constitute a new ground of rejection, and observed that "the issues arising under the two sections [35 U.S.C. 102 and 103] may be vastly different, and may call for the production and introduction of quite different types of evidence." Hughes, 345 F.2d at 186–87.

  • 2. Changing the statutory basis of rejection from 35 U.S.C. 103 to 35 U.S.C. 102, based on a different teaching.

    If the examiner’s answer changes the statutory basis of the rejection from 35 U.S.C. 103 to 35 U.S.C. 102, and relies on a different portion of a reference which goes beyond the scope of the portion that was previously relied upon, then the rejection should be designated as a new ground of rejection. For example, in In re Echerd, 471 F.2d 632 (CCPA 1973), the examiner rejected the claims under 35 U.S.C. 103 over a combination of two references. The Board then changed the ground of rejection to 35 U.S.C. 102 over one of those references, relying on a different portion of that reference for some claim limitations, and asserted that the remaining claim limitations were inherently present in that reference. The court held that the Board’s affirmance constituted a new ground of rejection. Echerd, 471 F.2d at 635 ( "[A]ppellants should have been accorded an opportunity to present rebuttal evidence as to the new assumptions of inherent characteristics. * * *" (citation omitted)).

  • 3. Citing new calculations in support of overlapping ranges.

    If a claim reciting a range is rejected as anticipated or obvious based on prior art that falls within or overlaps with the claimed range (see MPEP §§ 2131.03 and 2144.05), and the rejection is based upon range values calculated for the first time in the examiner’s answer, then the rejection should be designated as a new ground of rejection. For example, in In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005), the examiner rejected the claims under 35 U.S.C. 103 based on overlapping ranges of particle sizes and size distributions. The Board affirmed the rejection, but included in its decision an appendix containing calculations to support the prima facie case of obviousness. The court held the Board’s reliance upon those values to constitute a new ground of rejection, stating that "the Board found facts not found by the examiner regarding the differences between the prior art and the claimed invention, which in fairness required an opportunity for response." Kumar, 418 F.3d at 1368 (citation omitted).

  • 4. Citing new structure in support of structural obviousness.

    If, in support of an obviousness rejection based on close structural similarity (see MPEP § 2144.09), the examiner’s answer relies on a different structure than the one on which the examiner previously relied, then the rejection should be designated as a new ground of rejection. For example, in In re Wiechert, 370 F.2d 927, 152 USPQ 247 (CCPA 1967), the examiner rejected claims to a chemical composition under 35 U.S.C. 103 based on the composition’s structural similarity to a prior art compound disclosed in a reference. The Board affirmed the rejection under 35 U.S.C. 103 over that same reference, but did so based on a different compound than the one the examiner cited. The court held that the Board’s decision constituted a new ground of rejection, stating, "Under such circumstances, we conclude that when a rejection is factually based on an entirely different portion of an existing reference the appellant should be afforded an opportunity to make a showing of unobviousness vis-a-vis such portion of the reference." Wiechert, 370 F.2d at 933, 152 USPQ at 252.

  • 5. Pointing to a different portion of the claim to maintain a "new matter" rejection.

    If, in support of a claim rejection under 35 U.S.C. 112 based on new matter (see MPEP § 2163.06), a different feature or aspect of the rejected claim is believed to constitute new matter, then the rejection should be designated as a new ground of rejection. For example, in In re Waymouth, 486 F.2d 1058, 179 USPQ 627 (CCPA 1973), the claims included the limitation "said sodium iodide * * * present in amount of at least 0.17 mg./cc. of said arc tube volume." The examiner’s rejection stated that the claimed "sodium iodide" constituted new matter because the specification was alleged only to disclose "sodium." The Board affirmed the rejection, but did so on a "wholly different basis," namely, that the specification failed to disclose the claimed "0.17 mg./cc." volume limitation. Waymouth, 486 F.2d at 1060, 179 USPQ at 629. The court held that the Board’s rationale constituted a new ground of rejection, "necessitating different responses by appellants." Id. at 1061.

II.   SITUATIONS THAT ARE NOT CONSIDERED 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. 103 does not constitute a new ground of rejection).

In addition, 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 1.116 or 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. 102 on 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.

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.

  Factual Situations That Do Not Constitute a New Ground of Rejection

  • 1. Citing a different portion of a reference to elaborate upon that which has been cited previously.

    If the examiner’s answer cites a different portion of an applied reference which goes no farther than, and merely elaborates upon, what is taught in the previously cited portion of that reference, then the rejection does not constitute a new ground of rejection. For example, in In re DBC, 545 F.3d 1373 (Fed. Cir. 2008), the examiner rejected the claims under 35 U.S.C. 103 over a combination of references, including the English translation of the abstract for a Japanese patent. The examiner cited the English abstract for two claim limitations: (1) Mangosteen rind, and (2) fruit or vegetable juice. The Board affirmed the rejection under 35 U.S.C. 103 over the same references, but instead of citing the abstract, the Board cited an Example on page 16 of the English translation of the Japanese reference, which was not before the examiner. DBC, 545 F.3d at 1381. Importantly, the Board cited the Example for the same two claim limitations taught in the abstract, and the Example merely elaborated upon the medicinal qualities of the mangosteen rind (which medicinal qualities were not claimed) and taught orange juice as the preferred fruit juice (while the claim merely recited fruit or vegetable juice). Hence, the Example merely provided a more specific disclosure of the same two generic limitations that were fully taught by the abstract. The court held that this did not constitute a new ground of rejection because "the example in the translation goes no farther than, and merely elaborates upon, what is taught by the abstract." DBC, 545 F.3d at 1382 n.5.

  • 2. Changing the statutory basis of rejection from 35 U.S.C. 103 to 35 U.S.C. 102, but relying on the same teachings.

    If the examiner’s answer changes the statutory basis of the rejection from 35 U.S.C. 103 to 35 U.S.C. 102, and relies on the same teachings of the remaining reference to support the 35 U.S.C. 102 rejection, then the rejection does not constitute a new ground of rejection. For example, in In re May, 574 F.2d 1082 (CCPA 1978), a claim directed to a genus of chemical compounds was rejected under 35 U.S.C. 103 over a combination of references. The primary reference disclosed a species that fell within the claimed genus. Both the examiner and the Board cited the species to reject the claim under 35 U.S.C. 103. The court affirmed the rejection, but did so under 35 U.S.C. 102, stating that "lack of novelty is the epitome of obviousness." May, 574 F.2d at 1089 (citing In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974)). Because the court relied on the same prior art species as both the examiner and Board, the court held that this did not constitute a new ground of rejection. May, 574 F.2d at 1089.

  • 3. Relying on fewer than all references in support of a 35 U.S.C. 103 rejection, but relying on the same teachings.

    If the examiner’s answer removes one or more references from the statement of rejection under 35 U.S.C. 103, and relies on the same teachings of the remaining references to support the 35 U.S.C. 103 rejection, then the rejection does not constitute a new ground of rejection. For example, in In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976), the examiner rejected the claims under 35 U.S.C. 103 over four references. The Board affirmed the rejection under 35 U.S.C. 103, but limited its discussion to three of the references applied by the examiner. Id. The Board relied upon the references for the same teachings as did the examiner. The court held that this did not constitute a new ground of rejection. Kronig, 539 F.2d at 1303 ( "Having compared the rationale of the rejection advanced by the examiner and the board on this record, we are convinced that the basic thrust of the rejection at the examiner and board level was the same." ). See also In re Bush, 296 F.2d 491, 495–96 (CCPA 1961) (Examiner rejected claims 28 and 29 under 35 U.S.C. 103 based upon "Whitney in view of Harth;" Board did not enter new ground of rejection by relying only on Whitney).

  • 4. Changing the order of references in the statement of rejection, but relying on the same teachings of those references.

    If the examiner’s answer changes the order of references in the statement of rejection under 35 U.S.C. 103, and relies on the same teachings of those references to support the 35 U.S.C. 103 rejection, then the rejection does not constitute a new ground of rejection. For example, in In re Cowles, 156 F.2d 551, 552 (CCPA 1946), the examiner rejected the claims under 35 U.S.C. 103 over "Foret in view of either Preleuthner or Seyfried." The Board affirmed the rejection under 35 U.S.C. 103, but styled the statement of rejection as to some of the rejected claims as "Seyfried in view of Foret," but relied on the same teachings of Seyfried and Foret on which the examiner relied. The court held that this did not constitute a new ground of rejection. Cowles, 156 F.2d at 554. See also In re Krammes, 314 F.2d 813, 816– 17 (CCPA 1963) (holding that a different "order of combining the references" did not constitute a new ground of rejection because each reference was cited for the "same teaching" previously cited).

  • 5. Considering, in order to respond to applicant’s arguments, other portions of a reference submitted by the applicant.

    If an applicant submits a new reference to argue, for example, that the prior art "teaches away" from the claimed invention (see MPEP § 2145), and the examiner’s answer points to portions of that same reference to counter the argument, then the rejection does not constitute a new ground of rejection. In In re Hedges, 783 F.2d 1038 (Fed. Cir. 1986), the claimed invention was directed to a process for sulfonating diphenyl sulfone at a temperature above 127° C. Id. at 1039. The examiner rejected the claims under 35 U.S.C. 103 over a single reference. The applicant submitted three additional references as evidence that the prior art teaches away from performing sulfonation above 127° C, citing portions of those references which taught lower temperature reactions. The Board affirmed the rejection, finding the applicant’s evidence unpersuasive. On appeal, the Solicitor responded to the applicant’s "teaching away" argument by pointing to other portions of those same references which, contrary to applicant’s argument, disclosed reactions occurring above 127° C. The court held that this did not constitute a new ground of rejection because "[t]he Solicitor has done no more than search the references of record for disclosures pertinent to the same arguments for which [applicant] cited the references." Hedges, 783 F.2d at 1039–40.

1207.03(b)   Petition to Designate a New Ground of Rejection and to Reopen Prosecution

37 C.F.R. 41.40  Tolling of time period to file a reply brief.

  • (a) Timing. Any request to seek review of the primary examiner's failure to designate a rejection as a new ground of rejection in an examiner's answer must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner's answer and before the filing of any reply brief. Failure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection.
  • (b) Petition granted and prosecution reopened. A decision granting a petition under § 1.181 to designate a new ground of rejection in an examiner's answer will provide a two-month time period in which appellant must file a reply under § 1.111 of this title to reopen the prosecution before the primary examiner. On failure to timely file a reply under § 1.111, the appeal will stand dismissed.
  • (c) Petition not granted and appeal maintained. A decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer will provide a two-month time period in which appellant may file only a single reply brief under § 41.41.
  • (d) Withdrawal of petition and appeal maintained. If a reply brief under § 41.41 is filed within two months from the date of the examiner's answer and on or after the filing of a petition under § 1.181 to designate a new ground of rejection in an examiner's answer, but before a decision on the petition, the reply brief will be treated as a request to withdraw the petition and to maintain the appeal.
  • (e) Extensions of time. 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.

Appellant cannot request to reopen prosecution pursuant to 37 CFR 41.39(b) if the examiner’s answer does not have a rejection that is designated as a new ground of rejection.

37 CFR 41.40 sets forth the exclusive procedure for an appellant to request review of the primary examiner’s failure to designate a rejection as a new ground of rejection via a petition to the Director under 37 CFR 1.181. This procedure should be used if an appellant feels an answer includes a new ground of rejection that has not been designated as such and wishes to reopen prosecution so that new amendments or evidence may be submitted in response to the rejection. However, if appellant wishes to submit only arguments, the filing of a petition under 37 CFR 1.181 would not be necessary because appellant may submit the arguments in a reply brief. Any such petition under 37 CFR 1.181 must be filed within two months from the entry of the examiner’s answer and prior to the filing of a reply brief.

The authority to decide petitions under 37 CFR 41.40 is delegated to the TC Director or designee. A decision granting a petition under 37 CFR 41.40 will provide a two-month time period in which appellant must file a reply under 37 CFR 1.111 to avoid the dismissal of the appeal. No corrected examiner’s answer will be provided.

If the petition is granted, appellant may present amendment, evidence, and/or arguments in the reply under 37 CFR 1.111 that are directed to other rejections that are not new grounds of rejection. An after-final amendment or evidence that was previously refused entry is not automatically entered. Appellant may include such amendment or evidence in the reply. Upon filing of the reply, the prosecution will be reopened and the examiner will consider the reply. The examiner may make the next Office action final (if appropriate). See MPEP § 706.07(a).

On the other hand, if the Office refuses to grant a petition under 37 CFR 1.181 requesting designation as a new ground of rejection under 37 CFR 41.40, the appeal will be maintained. A decision refusing to grant a petition will provide a two-month time period in which appellant may file only a single reply brief under 37 CFR 41.40. The jurisdiction will pass to the Board upon the filing of a reply brief or the expiration of the two-month time period, whichever is earlier. See 37 CFR 41.35(a).

Any reply brief that is filed within two months from the date of the examiner’s answer, but before a decision on the petition, will be treated as a request to withdraw the petition and to maintain the appeal. No decision on the petition will be provided. Jurisdiction will pass to the Board upon the filing of the reply brief. See 37 CFR 41.35(a).

The time periods set forth in 37 CFR 41.40 are not extendable under 37 CFR 1.136(a), but are extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. See 37 CFR 41.40(e).

1207.03(c)   Appellant's Reply to New Grounds of Rejection

37 C.F.R. 41.39  Examiner’s answer.

*****

  • (b) Appellant's response to new ground of rejection. 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 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 as set forth in § 41.37(c)(1)(iv) each new ground of rejection 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 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 provisions of 37 CFR 41.39(b) apply only to rejections that are designated as new grounds of rejection in the examiner's answer. If appellant believes there is an undesignated new ground of rejection, review is by way of the procedure established in 37 CFR 41.40.

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).

I.   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 (or affidavit or other evidence) 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 time period 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. See subsection “III. 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).

II.   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) Argument page(s).

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 will be treated as a request that prosecution be reopened under 37 CFR 41.39(b)(1) assuming the answer contained a rejection designated as a new ground.

The reply brief may include new arguments responsive to the designated new grounds of rejection. Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the appeal, unless good cause is shown.

Unless the Board remands the appeal under 37 CFR 41.50(a)(1) for further action by the examiner, the examiner may not answer the reply brief. Jursidiction passes to the Board immediately on filing of a reply brief or expiration of the period to do so.

III.   FAILURE TO REPLY TO A NEW GROUND OF REJECTION

As specified in 37 CFR 41.35, jusridiction over the proceeding passes to the Board on filing of a reply brief or the expiration of time to file a reply brief. Therefore, examiners will not normally make determinations as to the sufficiency of a 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.

If the appeal is dismissed by the Board, the examiner should follow the procedure set forth in MPEP § 1215.

1207.04   Reopening of Prosecution After Appeal [R-11.2013]

The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s brief. A new ground as used in this subsection includes both a new ground that would not be proper in an examiner's answer as described in MPEP § 1207.03, subsection II and a new ground that would be proper (with appropriate supervisory approval) as described in MPEP § 1207.03, subsection III. In deciding whether to reopen prosecution or to add a new ground of rejection to an examiner's answer where proper under MPEP § 1207.03 et seq., examiners and their supervisors should consider the degree to which the rejection previously of record is being changed, any previous reopenings after appeal brief, and the overall pendency of the application. 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). Ordinarily any after final amendment or affidavit or other evidence that was not entered before must be entered and considered on the merits as part of the action reopening prosecution. Where more than one after final amendments that conflict with each other were filed, e.g., the same claim is replaced by more than one amendment with new proposed claims of differing scope, than the first amendment should be entered and the subsequent amendments should not be entered.

Form paragraph 12.239 may be used when reopening prosecution:

¶ 12.239    Reopening of Prosecution After Appeal 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. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert --appeal brief-- or --amended appeal brief--.
  • 3. In bracket 2, insert the date on which the brief was filed.
  • 4. In bracket 3, insert --A new ground of rejection is-- or --New grounds of rejection are--.
  • 5. 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 1207.04.
  • 6. 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, the fee paid for the notice of appeal, appeal brief (if applicable), forwarding an appeal to the Board (if applicable) 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 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.

1207.05   Substitute Examiner’s Answer [R-11.2013]

After receipt of a reply brief in compliance with 37 CFR 41.41, jurisdiction over the appeal passes to the Board. Normally, the examiner does not need to acknowledge the reply brief and will not have an opportunity for further comment prior to a decision by the Board. However, the Board may remand the appeal to the examiner to furnish a substitute examiner’s answer responsive to the remand.

37 C.F.R. 41.50   Decisions and other actions by the Board.

  • (a)
    • (1) Affirmance and reversal. 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 substitute 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 substitute 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 substitute examiner's answer. A request that complies with this paragraph (a) 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.

*****

The examiner may only furnish a substitute examiner’s answer in response to a remand.

In response to a substitute 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 substitute 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 substitute examiner’s answer responding to a remand by the Board for further consideration of a rejection. See MPEP § 1207.03.

I.   SUBSTITUTE EXAMINER’S ANSWER RESPONDING TO A REMAND FOR FURTHER CONSIDERATION OF REJECTION

The examiner may provide a substitute 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 substitute examiner’s answer and has the option to request that prosecution be reopened. A substitute 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)(2) may set forth a new ground of rejection. Any new ground of rejection made in such a substitute examiner’s answer must comply with the requirements set forth in MPEP § 1207.03. The examiner may use form paragraph 12.285 in preparing the substitute examiner’s answer responding a remand by the Board for further consideration of a rejection.

¶ 12.285    Substitute Examiner’s Answer - On Remand FOR FURTHER CONSIDERATION OF A REJECTION

Pursuant to the remand under 37 CFR 41.50(a)(1) by the Patent Trial and Appeal Board on [1]for further consideration of a rejection, a substitute 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 substitute 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 substitute 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 substitute examiner’s answer by signing below:

[3]

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the date of the remand.
  • 3. In bracket 2, provide reasons supporting the rejections set forth in the substitute Examiner’s Answer.
  • 4. In bracket 3, insert the TC Director’s or designee’s signature. A TC Director or designee must approve every substitute examiner’s answer.

A.   Appellant’s Reply

If a substitute 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)(2), the appellant must, within two months of the date of the substitute 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 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 substitute 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 substitute examiner’s answer in compliance with 37 CFR 1.111 within two months from the mailing of the substitute 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 substitute examiner's 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 substitute examiner’s answer.

If the reply is not fully responsive to the ground of rejection set forth in the substitute examiner’s answer, but the reply is bona fide, the examiner should provide a time period 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 substitute 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 substitute examiner’s answer in compliance with 37 CFR 41.37(c)(1)(iv) within two months from the mailing of the substitute examiner's 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.

B.   Failure To Reply to a Substitute 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 substitute 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. As jurisdiction passes to the Board at the expiration of time to file a reply brief, the Board will prepare and mail the dismissal. 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 after the appeal is dismissed. 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 Board will render a decision in due course.

II.   SUBSTITUTE EXAMINER’S ANSWER RESPONDING TO A REMAND THAT IS NOT FOR FURTHER CONSIDERATION OF REJECTION

The Director of the USPTO may remand an appeal to the examiner. See 37 CFR 41.35(c). 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 filed before jurisdiction over the appeal transerred to the Board under 37 CFR 41.35(d), a reply brief that raised new issues that were not considered by the examiner, an amendment, or an affidavit. See MPEP § 1211. Consideration of any Information Disclosure Statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board’s jurisdiction ends. The examiner may provide a substitute examiner’s answer in response to the remand. Appellant may respond by filing a reply brief within two months from the mailing of the substitute 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).

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