What 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 MoreWhat happens after a reply brief is filed in response to an Examiner’s Answer?
After a reply brief is filed in response to an Examiner’s Answer, the jurisdiction over the appeal passes to the Board. According to MPEP § 2275: “After receipt of a reply brief in compliance with 37 CFR 41.41 or the expiration of the time in which to file such a reply brief (37 CFR 41.35),…
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…
Read MoreHow should an examiner handle withdrawn rejections in an Examiner’s Answer?
When handling withdrawn rejections in an Examiner’s Answer, an examiner should: List withdrawn rejections under the subheading “WITHDRAWN REJECTIONS” Explain which rejections are being withdrawn and why Update the status of affected claims if all rejections on a claim are withdrawn The MPEP states: “Under the subheading ‘WITHDRAWN REJECTIONS,’ the examiner should list any grounds…
Read MoreWhen does an examiner prepare an Examiner’s Answer?
According to MPEP 1207, an examiner prepares an Examiner’s Answer after two key events have occurred: An appeal brief has been filed by the applicant under 37 CFR 41.37 The examiner has considered the issues on appeal The MPEP states: “After an appeal brief under 37 CFR 41.37 has been filed and the examiner has…
Read MoreHow does the USPTO define a ‘new ground of rejection’ in an Examiner’s Answer?
How does the USPTO define a ‘new ground of rejection’ in an Examiner’s Answer? The USPTO defines a ‘new ground of rejection’ in an Examiner’s Answer based on whether the applicant has had a fair opportunity to react to the thrust of the rejection. According to MPEP 1207.03: “A position or rationale that changes the…
Read MoreWhat happens if an appellant doesn’t argue a non-statutory double patenting rejection in their appeal brief?
If an appellant doesn’t argue a non-statutory double patenting (NSDP) rejection in their appeal brief, the examiner should: Maintain the rejection in the Examiner’s Answer Include a warning about potential consequences The MPEP provides a form paragraph (FP 12.278) for this situation, which states in part: “This appeal includes a rejection of claims [1] which…
Read MoreWhat is the time limit for responding to a new ground of rejection in an examiner’s answer?
According to MPEP 1207.03(c), the appellant has two months from the date of the examiner’s answer to respond to a new ground of rejection. The MPEP states: “The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c)…
Read MoreWhat are the options for responding to a new ground of rejection in an examiner’s answer?
According to MPEP 1207.03(c), an appellant has two options when responding to a new ground of rejection in an examiner’s answer: Reopen prosecution: File a reply under 37 CFR 1.111 with or without amendment or submission of affidavits or other evidence. This request will be treated as a request to withdraw the appeal. Maintain appeal:…
Read MoreWhat is the procedure if an appellant believes a new argument is raised in the examiner’s answer?
If an appellant believes a new argument is raised in the examiner’s answer, they have two main options: File a petition under 37 CFR 1.181 to designate the new argument as a new ground of rejection. Address the new argument directly in the reply brief without filing a petition. The MPEP clarifies: “If appellant wishes…
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