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1207    Examiner’s Answer

MPEP SECTION SUMMARY After an appeal brief has been filed and the examiner has considered the issues on appeal, the examiner may: reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner; allow the application if the examiner determines that the rejections have been overcome and no new ground of rejection is appropriate; or maintain the appeal by conducting an appeal conference and drafting an examiner’s answer.

 

MPEP SECTION SUMMARY An appeal conference is mandatory in all cases in which an acceptable brief has been filed. If the examiner charged with the responsibility of preparing the examiner’s answer reaches a conclusion that the appeal should not go forward and the supervisory patent examiner (SPE) approves, then no appeal conference is necessary and the examiner may reopen prosecution and issue another Office action or may prepare a notice of allowability.

MPEP SECTION SUMMARY The examiner’s answer should include, under appropriate headings, in the order indicated, the following items: (1) Grounds of Rejection to be Reviewed on Appeal. Withdrawn Rejections New Grounds of Rejection (2) Response to Argument.

MPEP SECTION SUMMARY A new ground of rejection is permitted in an examiner’s answer. In such an instance where a new ground of rejection is necessary, the examiner should either reopen prosecution or set forth the new ground of rejection in the answer. This section further covers new grounds of rejections including the requirements, situations where it is not permissible, and designation as a new ground of rejection in an examiner's answer.

An examiner’s answer containing a new ground of rejection must be signed by a Technology Center Director or their designee.

I.   REQUIREMENTS FOR A NEW GROUND OF REJECTION

The examiner’s answer must provide appellant a two-month time period for reply.

In response to an examiner’s answer that contains a new ground of rejection, appellant must either file:

• a reply in compliance with 37 CFR 1.111 to request that prosecution be reopened; or
• a reply brief that addresses each new ground of rejection to maintain the appeal.

Appellant must file the reply or reply brief within two months from the date of the examiner’s answer to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection.

II.   SITUATIONS WHERE NEW GROUNDS OF REJECTION ARE NOT PERMISSIBLE

A new ground of rejection would not be permitted to reject a previously allowed or objected to claim even if the new ground of rejection would rely upon evidence already of Record.

III.   DESIGNATION AS A NEW GROUND OF REJECTION IN AN EXAMINER'S ANSWER

If Evidence (such as a new prior art reference, but not including a newly relied upon dictionary definition) is applied or cited for the first time in an examiner’s answer, then the rejection will be designated as a new ground of rejection.

• If the citation of a new prior art reference is necessary to support a rejection, it must be included in the statement of rejection, which would be considered to introduce a new ground of rejection.
• Even if the prior art reference is cited to support the rejection in a minor capacity, it should be positively included in the statement of rejection and be designated as a new ground of rejection.

A position or rationale that changes the "basic thrust of the rejection" will also give rise to a new ground of rejection.

• However, the examiner need not use identical language in both the examiner’s answer and the Office action from which the appeal is taken to avoid triggering a new ground of rejection.

1207.03(a)   Determining Whether a Ground of Rejection is New

MPEP SECTION SUMMARY This section covers the topic of determining whether a ground of rejection is new. Examples are included. Essentially, there is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection.

I.   SITUATIONS WHERE A GROUND OF REJECTION IS NEW

The following examples are intended to provide guidance as to what constitutes a new ground of rejection in an examiner’s answer. What constitutes a "new ground of rejection" is a highly fact-specific question.

II.   SITUATIONS THAT ARE NOT CONSIDERED NEW GROUNDS OF REJECTION

There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection.

Where the statutory basis for the rejection remains the same, and the evidence relied upon in support of the rejection remains the same, a change in the discussion of, or rationale in support of, the rejection does not necessarily constitute a new ground of rejection.

In addition, if:

• an amendment under 37 CFR 1.116 [or 41.33] proposes to add or amend one or more claims;
• appellant was advised (through an advisory action) that the amendment would be entered for purposes of appeal; and
• the advisory action indicates which individual rejection(s) set forth in the action from which appeal has been taken would be used to reject the added or amended claims, then
  • the appeal brief must address the rejection(s) of the added or amended claim(s) and
  • the examiner’s answer may include the rejection(s) of the added or amended claims. Such rejection(s) made in the examiner’s answer would not be considered as a new ground of rejection.

1207.03(b)   Petition to Designate a New Ground of Rejection and to Reopen Prosecution

MPEP SECTION SUMMARY This section covers the petition to designate a new ground of rejection and to reopen prosecution. 37 CFR 41.40 sets forth the exclusive procedure for an appellant to request review of the primary examiner’s failure to designate a rejection as a new ground of rejection via a petition to the Director under 37 CFR 1.181. This procedure should be used if an appellant feels an answer includes a new ground of rejection that has not been designated as such and wishes to reopen prosecution so that new amendments or evidence may be submitted in response to the rejection.

Appellant cannot request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection.

If the petition is granted, appellant may present amendment, evidence, and/or arguments in the reply that are directed to other rejections that are not new grounds of rejection.

• On the other hand, if the Office refuses to grant a petition under 37 CFR 1.181 requesting designation as a new ground of rejection under 37 CFR 41.40, the appeal will be maintained.

A petition requesting designation as a new ground of rejection must be filed within two months from the entry of the examiner’s answer and prior to the filing of a reply brief.

Any reply brief that is filed within two months from the date of the examiner’s answer, but before a decision on the petition, will be treated as a request to withdraw the petition and to maintain the appeal.

1207.03(c)   Appellant's Reply to New Grounds of Rejection

MPEP SECTION SUMMARY This section discusses the appellant's reply to new grounds of rejection. 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) for ex parte reexamination proceedings.

I.   REQUEST THAT PROSECUTION BE REOPENED BY FILING A REPLY

If appellant requests that prosecution be reopened, the appellant must file a reply that addresses each new ground of rejection set forth in the examiner’s answer within two months from the mailing of the examiner’s answer.

• The reply may also include amendments, evidence, and/or arguments directed to claims not subject to the new ground of rejection or other rejections.
• If there is an after-final amendment (or affidavit or other evidence) that was not entered, appellant may include such amendment (or affidavit or other evidence) in the reply to the examiner’s answer.

II.   REQUEST THAT THE APPEAL BE MAINTAINED BY FILING A REPLY BRIEF

If appellant requests that the appeal be maintained, the appellant must file a reply brief that addresses each new ground of rejection set forth in the answer within two months from the mailing of the answer.

The reply brief should include the following items, with each item starting on a separate page, so as to follow the other requirements of a brief:

• Identification page setting forth the appellant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (i.e., Reply Brief);
• Argument page(s).

III.   FAILURE TO REPLY TO A NEW GROUND OF REJECTION

Jurisdiction over the proceeding passes to the Board on filing of a reply brief or the expiration of time to file a reply brief.

If appellant fails to timely file a reply under 37 CFR 1.111 or a reply brief in response to an examiner’s answer that contains a new ground of rejection, the appeal will be sua sponte dismissed as to the claims subject to the new ground of rejection.

• If all of the claims under appeal are subject to the new ground of rejection, the entire appeal will be dismissed.
  
  

MPEP SECTION SUMMARY This section covers the reopening of prosecution after appeal. The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s brief. A new ground as used in this subsection includes both a new ground that would not be proper in an examiner's answer, and a new ground that would be proper (with appropriate supervisory approval). Further details are presented.

The Office action containing a new ground of rejection may be made final if the new ground of rejection was

• necessitated by amendment, or
• based on information presented in an information disclosure statement where no statement under 37 CFR 1.97(e) was filed.

Ordinarily any after final amendment or affidavit or other evidence that was not entered before must be entered and considered on the merits as part of the action reopening prosecution.

• Where more than one after final amendments that conflict with each other were filed, e.g., the same claim is replaced by more than one amendment with new proposed claims of differing scope, than the first amendment should be entered and the subsequent amendments should not be entered.
  
  

MPEP SECTION SUMMARY This section covers a substitute examiner's answer. After receipt of a reply brief in compliance with 37 CFR 41.41, jurisdiction over the appeal passes to the Board. The Board may remand the appeal to the examiner to furnish a substitute examiner’s answer responsive to the remand. This section covers a substitute examiner's answer responding to a remand for further consideration of rejection and a substitute examiner's answer responding to a remand that is not for further consideration of rejection.

In response to a substitute examiner’s answer that is written in response to a remand by the Board for further consideration of a rejection, appellant must either file:

• a reply under 37 CFR 1.111 to request that prosecution be reopened; or
• a reply brief to request that the appeal be maintained, within two months from the mailing of the substitute examiner’s answer, to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding.

Examiner may include a new ground of rejection in the substitute examiner’s answer responding to a remand by the Board for further consideration of a rejection.

I.   SUBSTITUTE EXAMINER’S ANSWER RESPONDING TO A REMAND FOR FURTHER CONSIDERATION OF REJECTION

The examiner may provide a substitute examiner’s answer in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a).

• Appellant must respond to such substitute examiner’s answer and has the option to request that prosecution be reopened.

A.   Appellant’s Reply

If a substitute examiner’s answer is written in response to a remand by the Board for further consideration of a rejection pursuant to 37 CFR 41.50(a)(2), the appellant must, within two months of the date of the substitute 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 rejection for which the Board has remanded the proceeding:

• (i) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment or submission of affidavits or other evidence. Any amendment or submission of affidavits or other evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner’s answer. Any request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) will be treated as a request to withdraw the appeal.
• (ii) Maintain appeal. Request that the appeal be maintained by filing a reply brief. If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the examiner under 37 CFR 41.50(a)(2)(i).

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) for ex parte reexamination proceedings.

1.   Request That Prosecution Be Reopened by Filing a Reply

If appellant requests that prosecution be reopened, the appellant must file a reply that addresses each ground of rejection set forth in the substitute examiner’s answer within two months from the mailing of the substitute examiner’s answer.

Once appellant files a reply in response to a substitute examiner’s answer responding to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a), the examiner must reopen prosecution by entering and considering the reply.

• Examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee.
  
  

2.   Request That the Appeal Be Maintained by Filing a Reply Brief

If appellant requests that the appeal be maintained, the appellant must file a reply brief to address each grounds of rejection set forth in the substitute examiner’s answer within two months from the mailing of the substitute examiner's answer.

• The reply brief must also be in compliance with requirements set forth in 37 CFR 41.41 (e.g., it cannot include any new amendment or affidavit).
• If the reply brief is accompanied by an amendment, affidavit or other evidence, it will be treated as a request that prosecution be reopened before the examiner.

B.   Failure To Reply to a Substitute Examiner’s Answer Under 37 CFR 41.50(a)

If appellant fails to timely file a reply under 37 CFR 1.111 or a reply brief in response to a substitute examiner’s answer that was written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a), the appeal will be sua sponte dismissed as to the claims subject to the rejection for which the Board has remanded the proceeding.

• As jurisdiction passes to the Board at the expiration of time to file a reply brief, the Board will prepare and mail the dismissal.
• If all of the claims under appeal are subject to the rejection, the entire appeal will be dismissed.

For example, if there is no allowed claim in the application, the application would be abandoned when the two-month time period has expired.

• If only some of the claims under appeal are subject to the rejection, the dismissal of the appeal as to those claims operates as an authorization to cancel those claims and the appeal continues as to the remaining claims. The Board will render a decision in due course.

II.   SUBSTITUTE EXAMINER’S ANSWER RESPONDING TO A REMAND THAT IS NOT FOR FURTHER CONSIDERATION OF REJECTION

The Director of the USPTO may remand an appeal to the examiner.

• The Board may remand an application to the examiner for a reason that is not for further consideration of a rejection, such as to consider an information disclosure statement filed before jurisdiction over the appeal transferred to the Board, a reply brief that raised new issues that were not considered by the examiner, an amendment, or an affidavit.

Consideration of any Information Disclosure Statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board’s jurisdiction ends.

 

» 1208 Reply Briefs and Fee for Forwarding Appeal