37 CFR § 41.39 — Examiner’s answer. (MPEP Coverage Index) – BlueIron IP
37 CFR § 41.39 Examiner’s answer.
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 41.39, including 161 rules from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Summary
The Examiner’s answer is a critical response from the primary examiner to an appeal brief, incorporating all grounds of rejection and submitted within the time directed by the Director.
What this section covers
- Define what this section covers at a high level, including the primary examiner's response to an appeal brief.
Key obligations
- State the primary requirement practitioners must satisfy, which is to ensure the examiner's answer incorporates grounds of rejection.
- State an additional required element or condition if applicable, such as the timing within which the examiner must provide a written answer.
- State a key compliance obligation tied to authority (USC/CFR), noting that the examiner's answer must be provided within the time directed by the Director.
Practice notes
- Give a practical drafting or filing tip grounded in this section, such as ensuring the examiner's answer clearly addresses each ground of rejection mentioned in the appeal brief.
- Call out a common pitfall or best practice relevant to this section, like missing critical grounds of rejection in the examiner's answer.
Official MPEP § 41.39 — Examiner’s answer.
Source: USPTOLast Modified: 10/30/2024 08:50:22
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brief conference decision), unless the examiner’s answer expressly indicates that a ground of rejection has been withdrawn.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 [ sic] 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 [ sic] 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.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, heading added to (b) introductory text, (b)(1) first two sentences revised, (b)(2) second, third and fourth sentences revised, and heading added to para.(c), 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
- Abandonment
- Abandonment Failure Reply
-
- Appeal Brief
- Appeal Notice
- Appeal Withdrawal
- Board Decision
-
-
- Post Decision Procedure
-
- Reply Brief
-
- Examination Procedure
- Allowance Practice
- Examiner Action
- Action Signing
- Fees
- Patent Issuance
- Issue Fee
- Issue Fee Timing
- Patent Term
- Patent Term Adjustment
- Ptab Contested Case
-
-
- Secondary Considerations
- Section 112
- Section 112A
- New Matter