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2677    Examiner’s Answer [R-11.2013]

37 C.F.R. 41.69   Examiner’s answer.

  • (a) The primary examiner may, within such time as directed by the Director, furnish a written answer to the owner’s and/or requester’s appellant brief or respondent brief including, as may be necessary, such explanation of the invention claimed and of the references relied upon, the grounds of rejection, and the reasons for patentability, including grounds for not adopting any proposed rejection. A copy of the answer shall be supplied to the owner and all requesters. If the primary examiner determines that the appeal does not comply with the provisions of §§ 41.61, 41.66, 41.67 and 41.68 or does not relate to an appealable action, the primary examiner shall make such determination of record.
  • (b) An examiner’s answer may not include a new ground of rejection.
  • (c) An examiner’s answer may not include a new determination not to make a proposed rejection of a claim.
  • (d) Any new ground of rejection, or any new determination not to make a proposed rejection, must be made in an Office action reopening prosecution.

Where the term “brief” is used in this section, it shall refer to any appellant briefs and/or respondent briefs in the reexamination proceeding, unless specific identification of an “appellant brief” or a “respondent brief” is made.

Before preparing an examiner’s answer, the examiner should make certain that all amendments approved for entry have in fact been physically entered by the Central Reexamination Unit (CRU). The clerk of the Board will return to the CRU any reexamination proceeding in which approved amendments have not been entered.

The examiner should furnish each party to the reexamination (even a party that has not filed an appellant nor respondent brief) with a comprehensive examiner’s answer that provides a written statement in answer to each appellant brief and each respondent brief. The examiner’s answer is to be completed by the examiner within two weeks after the appeal conference. After the answer is completed (and signed), the examiner obtains the initials of the appeal conference participants (the conferees) and then forwards the reexamination file with the answer to the CRU Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS). The CRU SPRS/TC QAS reviews the answer, and if the answer is in order, forwards the reexamination file with the answer to the CRU support staff.

The examiner’s answer may incorporate from any of the briefs the most accurate and most comprehensive information. It should contain a response to the allegations or arguments made in all of the briefs and should call attention to any errors in an appellant’s copy of the claims. If a ground of rejection or reason for patentability is not addressed in the examiner’s answer, the proceeding will be remanded by the Board to the examiner.

The examiner should report his/her conclusions on any affidavits, declarations, or exhibits that were admitted to the record. Any affidavits or declarations in the file swearing behind a patent should be clearly identified by the examiner as being considered under either 37 CFR 1.131(a) or 37 CFR 41.154(a). The distinction is important since the Board will usually consider holdings on 37 CFR 1.131(a) affidavits or declarations but not holdings on 37 CFR 41.154(a) affidavits or declarations in appeal cases.

It sometimes happens that an examiner will state a position (e.g., reasoning) in the answer in a manner that represents a shift from the position stated in the Right of Appeal Notice (RAN). In such a case, the answer must indicate that the last stated position supersedes the former.

If there is a complete and thorough development of the issues at the time of the RAN, it is possible to save time in preparing the examiner’s answer. Examiners may incorporate in the answer their statement of the grounds of rejection or determinations of patentability merely by reference to the RAN. The page(s) and paragraph(s) of the RAN which it is desired to incorporate by reference should be explicitly identified. If the examiner feels that further explanation is necessary, he/she should include it in the answer. The examiner’s answer should also include rebuttal of any and all arguments presented in all of the briefs.

All correspondence with the Board, whether by the examiner or an appellant or respondent, must be on the record. No unpublished decisions which are unavailable to the general public by reason of 35 U.S.C. 122 can be cited by the examiner or the parties.

The examiner should reevaluate his/her position in the light of the arguments presented in the briefs, and should expressly withdraw any rejections or determinations of patentability not adhered to. Such a withdrawal would be a new finding of patentability (determination not to make a rejection) or new ground of rejection, respectively. Pursuant to 37 CFR 41.69(b), an examiner’s answer “may not include a new ground of rejection.” Pursuant to 37 CFR 41.69(c), an examiner’s answer “may not include a new determination not to make a proposed rejection of a claim.” Accordingly, prosecution must be reopened for any withdrawal of a rejection or of a determination of patentability. Before issuing the action reopening prosecution, the examiner will consult with the Reexamination Legal Advisor (RLA) to discuss at what point in the prosecution the prosecution should be reopened, and then the examiner will prepare an appropriate Office action. Note that the examiner may withdraw the Action Closing Prosecution (ACP) and reopen prosecution at any time prior to the mailing of the examiner’s answer.

Examiners should no longer hold any appeal briefs defective including those appeal briefs that are already on the examiner’s dockets, because they have already been reviewed by the Board and accepted. See MPEP § 2674. In a rare situation where an appeal brief contains serious defects that will prevent the examiner from drafting an examiner’s answer, the examiner should report the issue to the Director of CRU who will communicate with the Board regarding the issue.

In addition, examiners are not required to make any determination whether fewer than all of the rejected claims are identified by the party as being appealed. If the notice of appeal or appeal brief identifies fewer than all of the rejected claims as being appealed, the issue will be addressed by the Board panel. The examiner will treat all pending claims in the proceeding as being on appeal.

In a situation where at least two adverse parties filed an appeal brief in the inter partes reexamination proceeding (e.g., the patent owner filed an appellant’s brief and the third-party requester filed a respondent’s brief), most of the time the issues have been completely developed by the examiner in the RAN and by both parties in their briefs, and additional briefing from the examiner is not necessary for the Board panel to decide the issues. Therefore, examiners may use the new PTOL-2291 form ( "Inter Partes Reexamination Examiner’s Answer" ) to incorporate by reference the RAN including the grounds of rejection and determinations not to make a proposed rejection set forth in the RAN, in a proceeding where at least two adverse parties filed an appeal brief. With the approval of the CRU Director, examiners may provide additional explanation as an attachment to the form PTOL-2291. For situations other than where at least two adverse parties have filed an appeal brief, examiners are encouraged to incorporate in the examiner’s answer their statements of the grounds of rejection and determinations not to make a proposed rejection set forth in the RAN. Examiners are reminded that no new ground of rejection and no new determination not to make a proposed rejection are permitted in an examiner’s answer.

If the examiner requests to be present at the oral hearing, the request must be set forth in a separate letter as noted in MPEP § 1209.

MPEP § 1207 - § 1207.05 relate to preparation of examiner’s answers on appeal in patent applications and ex parte reexamination proceedings.

All examiner’s answers in inter partes reexamination proceedings must comply with the guidelines set forth below.

I.   REQUIREMENTS FOR EXAMINER’S ANSWER

The examiner may incorporate from any of the briefs information required for the examiner’s answer, as needed to provide accurate and comprehensive information. The examiner’s answer must include, in the order indicated, the following items. Again, the term “brief” or “briefs” shall refer to any appellant briefs and/or respondent briefs in the reexamination proceeding, unless specific identification of an “appellant brief” or a “respondent brief” is made.

  • (A) Real Party in Interest. For each appellant and respondent brief, a statement by the examiner acknowledging the identification by name of the real party in interest.
  • (B) 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.
  • (C) Status of Claims. A statement of whether the examiner agrees or disagrees with the statement of the status of claims contained in the briefs. If the examiner disagrees with the statement of the status of claims contained in the briefs, the examiner must set forth a correct statement of the status of all the claims in the proceeding.
  • (D) Status of Amendments. A statement of whether the examiner agrees or disagrees with the statement of the status of amendments contained in any of the briefs, and an explanation of any disagreement with any of the briefs. If there are no amendments, the examiner shall so state.
  • (E) Summary of Claimed Subject Matter. A statement of whether the examiner agrees or disagrees with the summary of claimed subject matter contained in the briefs and an explanation of any disagreement.
  • (F)
    • (1) 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 briefs and an explanation of any disagreement. In addition, the examiner must include the following subheadings (and state “None” where appropriate):
      • (a) "Grounds of Rejection Not On Review" - a listing of all grounds of rejection that have not been withdrawn and have not been presented by an appellant for review in the brief; and
      • (b) "Non-Appealable Issues" - a listing of any non-appealable issues in the briefs.
    • (2) Findings of Patentability to be Reviewed on Appeal. A statement of whether the examiner agrees or disagrees with the statement of the findings of patentability to be reviewed set forth in the briefs and an explanation of any disagreement. In addition, the examiner must include the following subheadings (and state “None” where appropriate):
      • (a) "Findings of Patentability Not On Review" - a listing of all findings of patentability that have not been presented by an appellant for review in the brief; and
      • (b) "Non-Appealable Issues" - a listing of any non-appealable issues raised by the requester in the briefs.
  • (G) Claims Appendix. A statement of whether the copy of the appealed claims contained in the appendix to the appellant briefs is correct, and if any claim is not correct in any of the briefs, a copy of the correct claim.
  • (H) Evidence Relied Upon. A listing of the evidence relied on (e.g., patents, publications, Official Notice, admitted prior art), and, in the case of nonpatent references, the relevant page or pages. Note that new references cannot be applied in an examiner’s answer. 37 CFR 41.69(b). If new references are to be applied, prosecution must be reopened. Also note that both the art relied upon by the examiner in making rejections, and the art relied upon by the third party requester in the proposed rejections, will be listed by the examiner.
  • (I) Grounds of Rejection. For each ground of rejection maintained by the examiner applicable to the appealed claims, an explanation of the ground of rejection.
    • (1) 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,
      • (a) do not describe the subject matter defined by each of the rejected claims, and
      • (b) 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).
    • (2) 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.
    • (3) 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.
    • (4) For each rejection under 35 U.S.C. 103, the examiner’s answer must:
      • (a) 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,
      • (b) identify the differences between the rejected claims and the prior art relied on (i.e., the primary reference), and
      • (c) 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.
    • (5) For each rejection under 35 U.S.C. 102 or 103 where there are questions as to how limitations in the claims correspond to features in the art even after the examiner complies with the requirements of paragraphs (I)(3) and (4) above, the examiner must compare at least one of the rejected claims feature-by-feature with the art relied upon in the rejection. The comparison shall align the language of the claim side-by-side with a reference to the specific page or column, line number, drawing reference number, and quotation from the reference, as appropriate.
    • (6) For each rejection, other than those referred to in paragraphs (I)(1) to (I)(5), the examiner’s answer must specifically explain the basis for the particular rejection.
  • (J) Determinations of Patentability. For each determination of patentability, i.e., each determination of inapplicability of a proposed rejection to the appealed claims, a clear explanation of the determination.
    • (1) For each determination of inapplicability of a proposed rejection of the appealed claims 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 complied with, including, as appropriate, how the specification and drawings, if any, do describe the subject matter defined by each of the proposed-for-rejection claims, and/or would in fact enable a person skilled in the art to make and use the subject matter defined by each of the proposed-for-rejection claims without undue experimentation.
    • (2) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 112, second paragraph; the examiner’s answer must explain how the claims do particularly point out and distinctly claim the subject matter which "applicant" regards as the invention.
    • (3) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 102; the examiner’s answer must explain why the proposed-for-rejection claims are not anticipated and why they are patentable under 35 U.S.C. 102, pointing out which limitations recited in the patentable claims are not found in the art relied upon by the third party requester for the proposed rejection.
    • (4) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 103; the examiner’s answer must point out which limitations recited in the proposed-for-rejection claims are not found in the art relied upon by the third party requester for the proposed rejection, shall identify the difference between the claims and the art relied upon by the third party requester and must explain why the claimed subject matter is patentable over the art relied on by the third party requester. If the third party requester’s proposed rejection is based upon a combination of references, the examiner’s answer must explain the rationale for not making the combination.
    • (5) For each rejection proposed under 35 U.S.C. 102 or 103 where there are questions as to how limitations in the claims define over features in the art even after the examiner complies with the requirements of paragraphs (J)(3) and (J)(4) above, the examiner must compare at least one of the proposed-for-rejection claims feature-by-feature with the art relied on in the proposed rejection. The comparison must align the language of the claim side-by-side with a reference to the specific page or column, line number, drawing reference number, and quotation from the reference, as appropriate.
    • (6) For each determination of inapplicability of a proposed rejection, other than those referred to in paragraphs (J)(1) to (J)(5), the examiner’s answer must specifically explain why there is insufficient basis for making that particular proposed rejection.
  • (K) No New Ground of Rejection or New Finding of Patentability. The examiner’s answer must provide an explicit statement that it does not contain any new ground of rejection, and it does not contain any new finding of patentability (i.e., no new determination of inapplicability of a proposed rejection). This statement will serve as a reminder to the examiner that if a new ground of rejection or new finding of patentability is made, prosecution must be reopened. It will also provide appropriate notification to parties that no new ground of rejection or new finding of patentability was made.
  • (L) Response to Argument. A statement of whether the examiner disagrees with each of the contentions of appellants and respondents in their briefs with respect to the issues presented, and an explanation of the reasons for disagreement with any such contentions. If any ground of rejection or inapplicability of proposed rejection is not argued and responded to by the appropriate party, the examiner must point out each claim affected.
  • (M) 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.
  • (N) Period for Providing a Rebuttal Brief. The examiner will set forth the period for the appropriate appellant party, or appellant parties, to file a rebuttal brief after the examiner’s answer, and that no further papers will be permitted subsequent to the rebuttal brief.

II.   PROCESSING OF COMPLETED ANSWER

When the examiner’s answer is complete, the examiner will sign it. On the examiner’s answer, each conferee who was present at the appeal conference will place his/her initials below the signature of the examiner who prepared the answer. Thus: “John Smith (conferee)” should be typed, and “JS” should be initialed. (The initialing by the conferee does not necessarily indicate concurrence with the position taken in the examiner’s answer.)

The clerical staff will make a copy of the examiner’s answer for the patent owner and for the third party requester(s). The clerical staff should attach form PTOL-2070 to the copy of the answer to be mailed to the third party requester by the CRU.

The examiner must prepare the examiner’s answer, ensure that the clerical processing is done, and forward the case to the CRU SPRS/TC QAS no later than two weeks from the date of the appeal conference (unless otherwise authorized by the CRU Director).

If an examiner’s answer is believed to contain a new interpretation or application of the existing patent law, the examiner’s answer, the case file, and an explanatory memorandum should be forwarded to the CRU Director for consideration. See MPEP § 1003 which applies to the CRU Director as it does to TC Directors.

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Last Modified: 03/27/2014 10:10:35