As provided in MPEP § 2674, the sole responsibility for determining whether rebuttal briefs comply with 37 CFR 1.943(c) and 37 CFR 41.71 was delegated to the Board effective August 17, 2010, but jurisdiction over the inter partes reexamination proceeding (i.e., to consider briefs, conduct an appeal conference, draft an examiner’s answer, and decide the entry of amendments, evidence, and information disclosure statements filed after the Right of Appeal Notice (RAN) or after the filing of a notice of appeal) is retained in the Central Reexamination Unit (CRU) until a docketing notice is entered after the time period for filing the last rebuttal brief expires or the examiner acknowledges the receipt and entry of the last rebuttal brief. Accordingly, when a rebuttal brief is received in response to an examiner’s answer, it is reviewed by the Board and then forwarded to the CRU for the examiner to consider the submission(s) and acknowledge the rebuttal brief using a Form PTOL-90.
Some examples of acknowledgement by the examiner are:
The rebuttal brief filed 1/16/2999 by patent owner appellant has been entered.
No further response by the examiner is appropriate. Any further reply/comments by any party will be not be considered, and may be returned to the party that submitted it. The inter partes reexamination proceeding is being forwarded to the Board for decision on the appeal.
The rebuttal brief filed on 1/16/2999 by the third party requester appellant has been entered. The requester requested an Oral Hearing.
No further response by the examiner is appropriate. Any further reply/comments by any party will be not be considered, and may be returned to the party that submitted it. The reexamination proceeding is being forwarded to the Board for decision on the appeals.
In a very rare situation, where the examiner finds that it is essential to address a rebuttal brief, the examiner must reopen prosecution. In order to reopen prosecution after an examiner’s answer, the CRU Director must approve the same in writing, at the end of the action that reopens prosecution.