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1207.02 Contents of Examiner's Answer [R-8] - 1200 Appeal
1207.02 Contents of Examiner's Answer [R-8]
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.
The answer should contain a response to the allegations or arguments in the brief **. If any rejection is withdrawn, the withdrawal should be clearly stated in the examiner's answer under subheading "**>WITHDRAWN REJECTIONS<" in the section "Grounds of Rejection to be Reviewed on Appeal." ** 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 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, he or she should file a timely petition 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.< The translation should be obtained prior to the appeal conference so that the participants of the appeal conference can consider the translation. The examiner should reference the pertinent portions of the translation at least in the grounds of rejection section of the answer. See MPEP § 706.02 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. If the notice of appeal or appeal brief identifies fewer than all of the rejected claims as being appealed, the issue will be addressed by the Board of Patent Appeals and Interferences (BPAI) panel. Therefore, the examiner will 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.<
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).
If there is a complete and thorough development of the issues at the time of final rejection, it is possible to save time in preparing the examiner's answer required by 37 CFR 41.39 by copying a rejection from a prior Office action and then pasting the copied rejection into the answer. An examiner's answer should not refer, either directly or indirectly, to any prior Office action without fully restating the point relied on in the answer. Of course, if the examiner feels that some further explanation of the rejection is necessary, he or she should include it in the ground of rejection set forth in the answer. For example, if a rejected claim were amended after the final rejection by adding limitations, the examiner should address the added limitations in the ground of rejection set forth in the answer. The statement of the rejection in the answer must account for the claim as amended and the answer must also include any necessary rebuttal of arguments presented in the appellant's brief.
The examiner should reevaluate his or her 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. **
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 has the right to 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 *>Associate< Commissioner for Patent Examination Policy for final approval.
Briefs must comply with 37 CFR 41.37, and all examiner's answers filed in response to such briefs must comply with the guidelines set forth below.
(A) CONTENT REQUIREMENTS FOR EXAMINER'S ANSWER. The examiner's answer is required to include, under appropriate headings, in the order indicated, the following items:
(1) Real Party in Interest. A statement **>that the examiner has no comment on the statement, or lack of statement, identifying by name the real party in interest in the brief.<
(2) Related Appeals and Interferences. A statement identifying by application, patent, appeal or interference number all other prior and pending appeals, interferences or judicial proceedings known to the examiner which may be related to, directly affect or be directly affected by, or have a bearing on the Board's decision in the pending appeal. Copies of any decisions rendered by a court or the Board in any proceeding identified under this paragraph should be included in the Related proceedings appendix section.
(3) Status of Claims. A **>listing of the claims that are rejected and pending in the application.<
(4) Status of Amendments After Final. A statement **>that the examiner has no comment on the appellant's statement of the status of amendments after final rejection contained in the brief.<
(5) Summary of Claimed Subject Matter. A statement **>that the examiner has no comment on the summary of claimed subject matter contained in the brief.<
(6) Grounds of Rejection to be Reviewed on Appeal. A statement **>that the examiner has no comment on the appellant's statement of the grounds of rejection to be reviewed on appeal. Every ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory actions) 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."<
(7) Claims Appendix. A statement **>that the examiner has no comment on the copy of the appealed claims contained in the Appendix to the appellant's brief.<
(8) Evidence Relied Upon. A listing of the evidence relied on (e.g., patents, publications, admitted prior art), and, in the case of nonpatent references, the relevant page or pages.
(9) Grounds of Rejection. For each ground of rejection maintained by the examiner and each new ground of rejection (if any), an explanation of the ground of rejection.
(a) For each rejection under 35 U.S.C. 112, first paragraph, the examiner's answer, must explain how the first paragraph of 35 U.S.C. 112 is not complied with, including, as appropriate, how the specification and drawings, if any,
(i) do not describe the subject matter defined by each of the rejected claims,
(ii) would not enable any person skilled in the art to make and use the subject matter defined by each of the rejected claims without undue experimentation including a consideration of the undue experimentation factors set forth in MPEP § 2164.01(a), and
(iii) do not set forth the best mode contemplated by the appellant of carrying out his or her invention.
(b) For each rejection under 35 U.S.C. 112, second paragraph, the examiner's answer must explain how the claims do not particularly point out and distinctly claim the subject matter which applicant regards as the invention.
(c) For each rejection under 35 U.S.C. 102, the examiner's answer must explain why the rejected claims are anticipated or not patentable under 35 U.S.C. 102, pointing out where all of the specific limitations recited in the rejected claims are found in the prior art relied upon in the rejection.
(d) For each rejection under 35 U.S.C. 103, the examiner's answer must:
(i) state the ground of rejection and point out where each of the specific limitations recited in the rejected claims is found in the prior art relied on in the rejection,
(ii) identify the differences between the rejected claims and the prior art relied on (i.e., the primary reference), and
(iii) explain why it would have been obvious at the time the invention was made to a person of ordinary skill in the art to have modified the primary reference to arrive at the claimed subject matter.
(e) For each rejection under 35 U.S.C. 102 or 103 where there are questions as to how limitations in the claims correspond to features in the prior art even after the examiner complies with the requirements of paragraphs (c) and (d) of this section, the examiner must compare at least one of the rejected claims feature by feature with the prior art relied on in the rejection. The comparison must align the language of the claim side-by-side with a reference to the specific page, line number, drawing reference number, and quotation from the prior art, as appropriate.
(f) For each rejection, other than those referred to in paragraphs (a) to (e) of this section, the examiner's answer must specifically explain the basis for the particular rejection.
(g) The examiner must prominently identify (e.g., a separate heading with all capitalized letters) any new ground of rejection that has been approved by the TC Director or designee.
(10) Response to Argument. A statement of whether the examiner disagrees with each of the contentions of appellant in the brief with respect to the issues presented and an explanation of the reasons for disagreement with any such contention. The examiner must use headings and subheadings paralleling the headings and subheadings utilized in the appellant's brief.
(11) Related Proceedings Appendix. Copies of any decisions rendered by a court or the Board in any proceeding identified by the examiner in the "Related Appeals and Interferences" section of the answer.
(B) FORM PARAGRAPHS. A form suitable for the examiner's answer is as follows:
¶ 12.149 Examiner's Answer Cover Sheet
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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] appealing from the Office action mailed [6].
Examiner Note:
1. This form paragraph is printed with the USPTO letterhead.
2. In bracket 1, insert the application number of the appealed application.
3. In bracket 2, insert the filing date of the appealed application.
4. In bracket 3, insert the name(s) of the appellant.
5. In bracket 4, insert the name of the registered representative of the appellant.
6. In bracket 5, indicate the date on which the brief was filed, and also indicate if any supplemental appeal brief was filed, as well as the date on which the supplemental appeal brief was filed.
7. In bracket 6, indicate the date on which the Office action being appealed was mailed.
8. Form paragraphs 12.149 to 12.179.01, as appropriate, should be used if the appeal brief was filed on or after September 13, 2004.
**>¶ 12.150.01 Real Party in Interest
(1) Real Party in Interest
The examiner has no comment on the statement, or lack of statement, identifying by name the real party in interest in the brief.
<¶ 12.150.04 Related Appeals and Interferences
(2) Related Appeals and Interferences
Examiner Note:
Follow this form paragraph with form paragraph 12.150.05 or 12.150.06.
¶ 12.150.05 Identification of the Related Appeals and Interferences
The following are the related appeals, interferences, and judicial proceedings known to the examiner which may be related to, directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal:
Examiner Note:
1. Follow this form paragraph with an identification by application, patent, appeal or interference number of all other prior and pending appeals, interferences or judicial proceedings known to the examiner which may be related to, directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal.
2. Include a copy of all court and Board decisions identified in this section in a related proceeding(s) appendix using form paragraphs 12.162 and 12.162.02.
¶ 12.150.06 No Related Appeals and Interferences Identified
The examiner is not aware of any related appeals, interferences, or judicial proceedings which will directly affect or be directly affected by or have a bearing on the Board's decision in the pending appeal.
**>¶ 12.151 Status of Claims
(3) Status of Claims
Examiner Note:
Follow this form paragraph with form paragraph 12.151.01.
¶ 12.151.01 List of Rejected Claims That Are Pending
The following is a list of claims that are rejected and pending in the application: [1].
Examiner Note:
In bracket 1, list all the claims that are rejected and pending in the application, including any claims that are rejected but were omitted from the appellant's listing (if any) of appealed claims in the Notice of Appeal. Do not list claims which are no longer rejected.
¶ 12.152 Status of Amendments After Final
(4) Status of Amendments After Final
Examiner Note:
Follow this form paragraph with form paragraph 12.152.01.
¶ 12.152.01 No Comment on Appellant's Statement of Status of Amendments
The examiner has no comment on the appellant's statement of the status of amendments after final rejection contained in the brief.
¶ 12.153 Summary of Claimed Subject Matter
(5) Summary of Claimed Subject Matter
Examiner Note:
Follow this form paragraph with form paragraph 12.153.01.
¶ 12.153.01 No Comment on Appellant's Statement of the Summary of Claimed Subject Matter
The examiner has no comment on the summary of claimed subject matter contained in the brief.
¶ 12.154 Grounds of Rejection to be Reviewed on Appeal
(6) Grounds of Rejection to be Reviewed on Appeal
Examiner Note:
Follow this form paragraph with form paragraph 12.154.01.
¶ 12.154.01 Examiner's Statement of Grounds of Rejection
The examiner has no comment on the appellant's statement of the grounds of rejection to be reviewed on appeal. Every ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory actions) 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. Use form paragraph 12.154.04 to introduce any new grounds of rejection.
2. Use form paragraph 12.154.05 to withdraw a ground of rejection previously made in the final Office action or last Office action.
<¶ 12.154.04 New Grounds of Rejection - Heading
NEW GROUNDS OF REJECTION
[1]
Examiner Note:
1. Any new ground(s) of rejection in the examiner's answer must be prominently identified (e.g., using this form paragraph) in the following sections of the answer:
(6) Grounds of Rejection to be Reviewed on Appeal (form paragraph 12.154) - use this form paragraph in section (6) of the answer to provide a concise statement of each new ground of rejection presented for review in bracket 1; and
(9) Grounds of Rejection (form paragraph 12.159) - use this form paragraph in section (9) of the answer to set forth the new grounds of rejection.
2. Conclude an examiner's answer raising new grounds of rejection with form paragraph 12.179.01: (1) to notify applicant of the response period and options following the new grounds of rejection; and (2) to include the required approval of the TC Director or his/her designee.
¶ 12.154.05 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:
In bracket 1, insert the grounds of rejection that have been withdrawn.
**>¶ 12.156 Claims Appendix
(7) Claims Appendix
Examiner Note:
Follow this form paragraph with form paragraph 12.156.01 .
¶ 12.156.01 No Comment on Appellant's Claims Appendix
The examiner has no comment on the copy of the appealed claims contained in the Appendix to the appellant's brief.
<¶ 12.157 Evidence Relied Upon
(8) Evidence Relied Upon
Examiner Note:
Follow this form paragraph with either form paragraph 12.157.01 or 12.157.02.
¶ 12.157.01 No Evidence Relied Upon
No evidence is relied upon by the examiner in the rejection of the claims under appeal.
¶ 12.157.02 Listing of Evidence Relied Upon
The following is a listing of the evidence (e.g., patents, publications, Official Notice, and admitted prior art) relied upon in the rejection of claims under appeal.
Examiner Note:
1. Use the following format for providing information on each reference cited:
Number Name Date
2. The following are example formats for listing reference citations:
2,717,847 VERAIN 9-1955
1,345,890 MUTHER (Fed. Rep. of Germany) 7-1963
(Figure 2 labeled as Prior Art in this document)
3. See MPEP § 707.05(e) for additional examples.
¶ 12.159 Grounds of Rejection
(9) Grounds of Rejection
The following ground(s) of rejection are applicable to the appealed claims:
Examiner Note:
1. Explain each ground of rejection maintained by the examiner as provided below:
(i) For each rejection under 35 U.S.C. 112, first paragraph, the Examiner's Answer shall explain how the first paragraph of 35 U.S.C. 112 is not complied with, including, as appropriate, how the specification and drawings, if any, (a) do not describe the subject matter defined by each of the rejected claims, (b) would not enable any person skilled in the art to make and use the subject matter defined by each of the rejected claims, and (c) do not set forth the best mode contemplated by the appellant of carrying out his/her invention.
(ii) For each rejection under 35 U.S.C. 112, second paragraph, the Examiner's Answer shall explain how the claims do not particularly point out and distinctly claim the subject matter which appellant regards as the invention.
(iii) For each rejection under 35 U.S.C. 102, the Examiner's Answer shall explain why the rejected claims are anticipated or not patentable under 35 U.S.C. 102, pointing out where all of the specific limitations recited in the rejected claims are found in the prior art relied upon in the rejection.
(iv) For each rejection under 35 U.S.C. 103, the Examiner's Answer shall state the ground of rejection and point out where each of the specific limitations recited in the rejected claims is found in the prior art relied upon in the rejection, shall identify the differences between the rejected claims and the prior art relied on (i.e., the primary reference) and shall explain why it would have been obvious at the time the invention was made to a person of ordinary skill in the art to have modified the primary reference to arrive at the claimed subject matter
(v) For each rejection under 35 U.S.C. 102 or 103 where there may be questions as to how limitations in the claims correspond to features in the prior art, the examiner, in addition to the requirements of (ii), (iii) and (iv) above, should compare at least one of the rejected claims feature by feature with the prior art relied on in the rejection. The comparison shall align the language of the claim side by side with a reference to the specific page, line number, drawing reference number and quotation from the prior art, as appropriate.
(vi) For each rejection, other than those referred to in paragraphs (i) to (v) for this section, the Examiner's Answer shall specifically explain the basis for the particular rejection.
2. If there are any new grounds of rejection, use form paragraph 12.154.04 to provide a prominent heading and use form paragraph 12.179.01 instead of form paragraph 12.179 to conclude the examiner's answer.
¶ 12.161 Response to Argument
(10) Response to Argument
Examiner Note:
1. 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.
2. 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.
¶ 12.162 Related Proceeding(s) Appendix
(11) Related Proceeding(s) Appendix
Examiner Note:
Follow this form paragraph with either form paragraph 12.162.01 or 12.162.02.
¶ 12.162.01 No Related Proceeding Identified
No decision rendered by a court or the Board is identified by the examiner in the Related Appeals and Interferences section of this examiner's answer.
¶ 12.162.02 Copies Related to Proceeding
Copies of the court or Board decision(s) identified in the Related Appeals and Interferences section of this examiner's answer are provided herein.
¶ 12.179 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]
Examiner Note:
1. In bracket 1, insert initials of the examiner and the date.
2. In bracket 2, insert names of the conferees. The conferees must also place their initials next to their names.
3. In bracket 3, insert correspondence address of record.
4. If the examiner's answer includes a new ground of rejection, use form paragraph 12.179.01 instead of this form paragraph.
¶ 12.179.01 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 (9) 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)(vii) 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 (9) above by signing below:
[2]
Conferees:
[3]
[4]
Examiner Note:
1. In bracket 1, insert initials of the examiner and the date.
2. 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.
3. In bracket 3, insert names of the conferees. The conferees must also place their initials next to their names.
4. In bracket 4, insert correspondence address of record.
**>
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