What is the timeline for preparing and reviewing an examiner’s answer in inter partes reexamination?
The timeline for preparing and reviewing an examiner’s answer in an inter partes reexamination proceeding is outlined in MPEP 2677. The key steps and timeframes are as follows: The examiner’s answer is to be completed by the examiner within two weeks after the appeal conference. After completion, the examiner obtains the initials of the appeal…
Read MoreCan an examiner’s answer include new grounds of rejection?
No, an examiner’s answer cannot include new grounds of rejection in an inter partes reexamination proceeding. This is explicitly stated in MPEP 2677, which cites 37 CFR 41.69(b): “An examiner’s answer may not include a new ground of rejection.” If the examiner determines that a new ground of rejection is necessary, they must reopen prosecution…
Read MoreWhat are the key components of an examiner’s answer in inter partes reexamination?
According to MPEP 2677, an examiner’s answer in an inter partes reexamination proceeding must include several key components in a specific order. These components are: Real Party in Interest Related Appeals and Interferences Status of Claims Status of Amendments Summary of Claimed Subject Matter Grounds of Rejection to be Reviewed on Appeal Findings of Patentability…
Read MoreHow should an examiner handle affidavits or declarations in an examiner’s answer?
When handling affidavits or declarations in an examiner’s answer for an inter partes reexamination proceeding, the examiner should follow the guidance provided in MPEP 2677. The key points are: The examiner should report their conclusions on any affidavits, declarations, or exhibits that were admitted to the record. Affidavits or declarations swearing behind a patent should…
Read MoreWhat is an examiner’s answer in an inter partes reexamination proceeding?
An examiner’s answer is a written response prepared by the primary examiner in an inter partes reexamination proceeding. It addresses the arguments presented in the appellant’s and/or requester’s briefs. According to MPEP 2677, the examiner’s answer should include: An explanation of the invention claimed and references relied upon Grounds of rejection Reasons for patentability Responses…
Read MoreHow should an examiner address new arguments or evidence in an examiner’s answer?
In an inter partes reexamination proceeding, examiners are not permitted to introduce new grounds of rejection or new findings of patentability in an examiner’s answer. According to MPEP 2677, the examiner’s answer must include an explicit statement that: “It does not contain any new ground of rejection, and it does not contain any new finding…
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