1207.02 Contents of Examiner’s Answer [R-07.2022]

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byChhabra Law Firm

1207.02 Contents of Examiner’s Answer [R-07.2022]

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decision) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.”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      • Withdrawn Rejections – Under the subheading “WITHDRAWN REJECTIONS,” the examiner should list any grounds of rejection that are being withdrawn (e.g., those that have been overcome by appellant.)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 their 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 1) the period for filing a reply brief, which in turn transfers jurisdiction to the Board as described in 37 CFR 41.35(a); 2) the time for appellants to request for an oral hearing as described in 37 CFR 41.47(b); and 3) the time period for the payment of the appeal forwarding fee unless a petition was filed under 37 CFR 1.181 to designate a new ground of rejection in the examiner’s answer. See 37 CFR 41.45(a). 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, they 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 § 2120 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. In the instance where the appellant has failed to argue a non-statutory double patenting rejection or requested such rejection be held in abeyance, the examiner may use FP 12.278.

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 their 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. If the examiner withdraws all of the rejections of an independent claim that was previously under rejection while still maintaining the rejections of other claims, then the answer should note the change of status of the claim(s). The answer should also include changes to the status of dependent claims should all rejections of a dependent claim be withdrawn. If the examiner withdraws all rejections to a dependent claim, while maintaining the rejection of the independent claim from which the claim depends, the applicant may file an amendment pursuant to 37 CFR 41.33(b)(2) rewriting the claims in independent form. If the rejection of the independent claim is affirmed on appeal, the amendment to rewrite the claim in independent form under 37 CFR 41.33(b)(2) must be presented prior to the expiration of the time period set forth in 37 CFR 90.3. See MPEP §§ 1214.06 and 1214.07.

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 Deputy 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

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 the TC Director’s 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.

¶ 12.278 Warning in Examiner’s Answer containing NSDP rejection not argued

This appeal includes a rejection of claims [1] which are rejected on the ground of non-statutory double patenting. This rejection was not addressed in the appellant’s appeal brief. Should the Board either summarily affirm or not reach the rejection and the appellant should fail to overcome the rejection with a properly filed terminal disclaimer prior to seeking judicial review either by an appeal to the U.S. Court of Appeals for the Federal Circuit (35 U.S.C. 141) or by civil action in the U.S. District Court for the Eastern District of Virginia (35 U.S.C. 145) the appeal may be dismissed by the Court for lack of jurisdiction because the claims on appeal are subject to the non-statutory double patenting rejection. Alternatively, the Court may summarily affirm the non-statutory double patenting rejection without considering other grounds of rejection challenged on the appeal.

Examiner Note:

  • 1. For use when claims are subject to the non-statutory double patenting rejection that has not been argued in the appeal brief.
  • 2. In bracket 1, insert the claim numbers of the claims subject to the non-statutory double patenting rejection.

¶ 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.