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2677 Examiner's Answer [R-7] - 2600 Optional Inter Partes Reexamination
2677 Examiner's Answer [R-7]
37 CFR 41.69 Examiner's answer.
(a) The primary examiner may, within such time as directed by the Director, furnish a written answer to the owner's and/or requester's appellant brief or respondent brief including, as may be necessary, such explanation of the invention claimed and of the references relied upon, the grounds of rejection, and the reasons for patentability, including grounds for not adopting any proposed rejection. A copy of the answer shall be supplied to the owner and all requesters. If the primary examiner determines that the appeal does not comply with the provisions of §§ 41.61, 41.66, 41.67 and 41.68 or does not relate to an appealable action, the primary examiner shall make such determination of record.
(b) An examiner's answer may not include a new ground of rejection.
(c) An examiner's answer may not include a new determination not to make a proposed rejection of a claim.
(d) Any new ground of rejection, or any new determination not to make a proposed rejection, must be made in an Office action reopening prosecution.
Where the term "brief" is used in this section, it shall refer to any appellant briefs and/or respondent briefs in the reexamination proceeding, unless specific identification of an "appellant brief" or a "respondent brief" is made.
Before preparing an examiner's answer, the examiner should make certain that all amendments approved for entry have in fact been physically entered by the Central Reexamination Unit (CRU). The clerk of the Board will return to the CRU any reexamination proceeding in which approved amendments have not been entered.
The examiner should furnish each party to the reexamination (even a party that has not filed an appellant nor respondent brief) with a comprehensive examiner's answer that provides a written statement in answer to each appellant brief and each respondent brief. The examiner's answer is to be completed by the examiner within two weeks after the appeal conference. After the answer is completed (and signed), the examiner obtains the initials of the appeal conference participants (the conferees) and then forwards the reexamination file with the answer to the **>CRU Supervisory Patent Examiner (SPE) or Technology Center (TC) Quality Assurance Specialist (QAS)<. The *>CRU SPE/TC QAS< reviews the answer, and if the answer is in order, forwards the reexamination file with the answer to the CRU support staff.
The examiner's answer may incorporate from any of the briefs the most accurate and most comprehensive information. It should contain a response to the allegations or arguments made in all of the briefs and should call attention to any errors in an appellant's copy of the claims. If a ground of rejection or reason for patentability is not addressed in the examiner's answer, the proceeding will be remanded by the Board of Appeals and Patent Interferences (Board) to the examiner.
The examiner should report his/her conclusions on any affidavits, declarations, or exhibits that were admitted to the record. Any affidavits or declarations in the file swearing behind a patent should be clearly identified by the examiner as being considered under either 37 CFR 1.131 or 37 CFR 41.154(a). The distinction is important since the Board will usually consider holdings on 37 CFR 1.131 affidavits or declarations but not holdings on 37 CFR 41.154(a) affidavits or declarations in appeal cases.
If the appellant brief fails to respond (in the patent owner's brief) to any or all grounds of rejection or (in the third party requester's brief) to any or all determinations of patentability made by the examiner, or otherwise fails to comply with 37 CFR 41.67(c), the procedure for handling such briefs set forth in MPEP § 2675.02 should be followed. If the respondent brief fails to give reasons for disputing any or all contentions of an appellant that are disputed in the respondent brief, or otherwise fails to comply with 37 CFR 41.68(b), the procedure for handling such briefs is also set forth in MPEP § 2675.02.
It sometimes happens that an examiner will state a position (e.g., reasoning) in the answer in a manner that represents a shift from the position stated in the Right of Appeal Notice (RAN). In such a case, the answer must indicate that the last stated position supersedes the former. Failure to do this confuses the issue since it is not clear exactly what the examiner's ultimate position is.
If there is a complete and thorough development of the issues at the time of the RAN, it is possible to save time in preparing the examiner's answer. Examiners may incorporate in the answer their statement of the grounds of rejection or determinations of patentability merely by reference to the RAN. An examiner's answer should not refer, either directly or indirectly, to more than one prior Office action. Thus, if a statement of the ground of rejection or a determination of patentability set forth in the RAN refers back to a prior action it cannot be incorporated by reference. The page(s) and paragraph(s) of the RAN which it is desired to incorporate by reference should be explicitly identified. If the examiner feels that further explanation is necessary, he/she should include it in the answer. The examiner's answer should also include rebuttal of any and all arguments presented in all of the briefs.
All correspondence with the Board, whether by the examiner or an appellant or respondent, must be on the record. No unpublished decisions which are unavailable to the general public by reason of 35 U.S.C. 122 can be cited by the examiner or the parties.
The examiner should reevaluate his/her position in the light of the arguments presented in the briefs, and should expressly withdraw any rejections or determinations of patentability not adhered to. Such a withdrawal would be a new finding of patentability (determination not to make a rejection) or new ground of rejection, respectively. Pursuant to 37 CFR 41.69(b), an examiner's answer "may not include a new ground of rejection." Pursuant to 37 CFR 41.69(c), an examiner's answer "may not include a new determination not to make a proposed rejection of a claim." Accordingly, prosecution must be reopened for any withdrawal of a rejection or of a determination of patentability. Before issuing the action reopening prosecution, the examiner will consult with the Reexamination Legal Advisor (RLA) to discuss at what point in the prosecution the prosecution should be reopened, and then the examiner will prepare an appropriate Office action. Note that the examiner may withdraw the Action Closing Prosecution (ACP) and reopen prosecution at any time prior to the mailing of the examiner's answer.
If the examiner requests to be present at the oral hearing, the request must be set forth in a separate letter as noted in MPEP § 1209.
MPEP § 1207 - § 1207.05 relate to preparation of examiner's answers on appeal in patent applications and ex parte reexamination proceedings.
All examiner's answers in inter partes reexamination proceedings must comply with the guidelines set forth below.
I. REQUIREMENTS FOR EXAMINER'S ANSWER
The examiner may incorporate from any of the briefs information required for the examiner's answer, as needed to provide accurate and comprehensive information. The examiner's answer must include, in the order indicated, the following items. Again, the term "brief" or "briefs" shall refer to any appellant briefs and/or respondent briefs in the reexamination proceeding, unless specific identification of an "appellant brief" or a "respondent brief" is made.
(A) Real Party in Interest. For each appellant and respondent brief, a statement by the examiner acknowledging the identification by name of the real party in interest.
(B) 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.
(C) Status of Claims. A statement of whether the examiner agrees or disagrees with the statement of the status of claims contained in the briefs. If the examiner disagrees with the statement of the status of claims contained in the briefs, the examiner must set forth a correct statement of the status of all the claims in the proceeding.
(D) Status of Amendments. A statement of whether the examiner agrees or disagrees with the statement of the status of amendments contained in any of the briefs, and an explanation of any disagreement with any of the briefs. If there are no amendments, the examiner shall so state.
(E) Summary of Claimed Subject Matter. A statement of whether the examiner agrees or disagrees with the summary of claimed subject matter contained in the briefs and an explanation of any disagreement.
(F)
(1) Grounds of Rejection to be Reviewed on Appeal. A statement of whether the examiner agrees or disagrees with the statement of the grounds of rejection to be reviewed set forth in the briefs and an explanation of any disagreement. In addition, the examiner must include the following subheadings (*>and state "None" where< appropriate):
(a) "Grounds of Rejection Not On Review" - a listing of all grounds of rejection that have not been withdrawn and have not been presented by an appellant for review in the brief; and
(b) "Non-Appealable Issues" - a listing of any non-appealable issues in the briefs.
(2) Findings of Patentability to be Reviewed on Appeal. A statement of whether the examiner agrees or disagrees with the statement of the findings of patentability to be reviewed set forth in the briefs and an explanation of any disagreement. In addition, the examiner must include the following subheadings (*>and state "None" where< appropriate):
(a) "Findings of Patentability Not On Review" - a listing of all **>findings of patentability< that ** have not been presented by an appellant for review in the brief; and
(b) "Non-Appealable Issues" - a listing of any non-appealable issues >raised by the requester< in the briefs.
(G) Claims Appendix. A statement of whether the copy of the appealed claims contained in the appendix to the appellant briefs is correct, and if any claim is not correct in any of the briefs, a copy of the correct claim.
(H) Evidence Relied Upon. A listing of the evidence relied on (e.g., patents, publications, Official Notice, admitted prior art), and, in the case of nonpatent references, the relevant page or pages. Note that new references cannot be applied in an examiner's answer. 37 CFR 41.69(b). If new references are to be applied, prosecution must be reopened. Also note that both the art relied upon by the examiner in making rejections, and the art relied upon by the third party requester in the proposed rejections, will be listed by the examiner.
(I) Grounds of Rejection. For each ground of rejection maintained by the examiner applicable to the appealed claims, an explanation of the ground of rejection.
(1) 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,
(a) do not describe the subject matter defined by each of the rejected claims, and
(b) 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).
(2) 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.
(3) 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.
(4) For each rejection under 35 U.S.C. 103, the examiner's answer must:
(a) 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,
(b) identify the differences between the rejected claims and the prior art relied on (i.e., the primary reference), and
(c) 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.
(5) 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 art even after the examiner complies with the requirements of paragraphs (I)(3) and (4) above, the examiner must compare at least one of the rejected claims feature-by-feature with the art relied upon in the rejection. The comparison shall align the language of the claim side-by-side with a reference to the specific page or column, line number, drawing reference number, and quotation from the reference, as appropriate.
(6) For each rejection, other than those referred to in paragraphs (I)(1) to (I)(5), the examiner's answer must specifically explain the basis for the particular rejection.
(J) Determinations of Patentability. For each determination of patentability, i.e., each determination of inapplicability of a proposed rejection to the appealed claims, a clear explanation of the determination.
(1) For each determination of inapplicability of a proposed rejection of the appealed claims 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 complied with, including, as appropriate, how the specification and drawings, if any, do describe the subject matter defined by each of the proposed-for-rejection claims, and/or would in fact enable a person skilled in the art to make and use the subject matter defined by each of the proposed-for-rejection claims without undue experimentation.
(2) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 112, second paragraph; the examiner's answer must explain how the claims do particularly point out and distinctly claim the subject matter which "applicant" regards as the invention.
(3) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 102; the examiner's answer must explain why the proposed-for-rejection claims are not anticipated and why they are patentable under 35 U.S.C. 102, pointing out which limitations recited in the patentable claims are not found in the art relied upon by the third party requester for the proposed rejection.
(4) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 103; the examiner's answer must point out which limitations recited in the proposed-for-rejection claims are not found in the art relied upon by the third party requester for the proposed rejection, shall identify the difference between the claims and the art relied upon by the third party requester and must explain why the claimed subject matter is patentable over the art relied on by the third party requester. If the third party requester's proposed rejection is based upon a combination of references, the examiner's answer must explain the rationale for not making the combination.
(5) For each rejection proposed under 35 U.S.C. 102 or 103 where there are questions as to how limitations in the claims define over features in the art even after the examiner complies with the requirements of paragraphs (J)(3) and (J)(4) above, the examiner must compare at least one of the proposed-for-rejection claims feature-by-feature with the art relied on in the proposed rejection. The comparison must align the language of the claim side-by-side with a reference to the specific page or column, line number, drawing reference number, and quotation from the reference, as appropriate.
(6) For each determination of inapplicability of a proposed rejection, other than those referred to in paragraphs (J)(1) to (J)(5), the examiner's answer must specifically explain why there is insufficient basis for making that particular proposed rejection.
(K) No New Ground of Rejection or New Finding of Patentability. The examiner's answer must provide an explicit statement that it does not contain any new ground of rejection, and it does not contain any new finding of patentability (i.e., no new determination of inapplicability of a proposed rejection). This statement will serve as a reminder to the examiner that if a new ground of rejection or new finding of patentability is made, prosecution must be reopened. It will also provide appropriate notification to parties that no new ground of rejection or new finding of patentability was made.
(L) Response to Argument. A statement of whether the examiner disagrees with each of the contentions of appellants and respondents in their briefs with respect to the issues presented, and an explanation of the reasons for disagreement with any such contentions. If any ground of rejection or inapplicability of proposed rejection is not argued and responded to by the appropriate party, the examiner must point out each claim affected.
(M) 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.
(N) Period for Providing a Rebuttal Brief. The examiner will set forth the period for the appropriate appellant party, or appellant parties, to file a rebuttal brief after the examiner's answer, and that no further papers will be permitted subsequent to the rebuttal brief.
II. PROCESSING OF COMPLETED ANSWER
When the examiner's answer is complete, the examiner will sign it. On the examiner's answer, each conferee who was present at the appeal conference will place his/her initials below the signature of the examiner who prepared the answer. Thus: "John Smith (conferee)" should be typed, and "JS" should be initialed. (The initialing by the conferee does not necessarily indicate concurrence with the position taken in the examiner's answer.)
The clerical staff will make a copy of the examiner's answer for the patent owner and for the third party requester(s). The clerical staff should attach form PTOL-2070 to the copy of the answer to be mailed to the third party requester by the CRU.
The examiner must prepare the examiner's answer, ensure that the clerical processing is done, and forward the case to the *>CRU SPE/TC QAS< no later than two weeks from the date of the appeal conference (unless otherwise authorized by the CRU Director or a Reexamination Legal Advisor (RLA) of the Office of Patent Legal Administration (OPLA)). The examiner's answer is reviewed by the *>CRU SPE/TC QAS< and the case is forwarded to the RLA within three days of the *>CRU SPE's/TC QAS's< receipt of the case from the examiner.
If an examiner's answer is believed to contain a new interpretation or application of the existing patent law, the examiner's answer, the case file, and an explanatory memorandum should be forwarded to the CRU Director for consideration. See MPEP § 1003 which applies to the CRU Director as it does to TC Directors. If approved by the CRU Director, the examiner's answer should be forwarded by the *>CRU SPE/TC QAS< to the RLA for final approval, prior to mailing the examiner's answer.
III. FORM PARAGRAPHS
The following form paragraphs may be used to prepare an examiner's answer in an inter partes reexamination proceeding:
¶ 26.50 Heading for Examiner's AnswerEXAMINER'S ANSWER
This is in response to the following appellant (and respondent) brief(s) on appeal: [1]
Examiner Note:
In bracket 1, identify for each brief (a) the party (patent owner or third party requester), (b) the type of brief (appellant or respondent), and (c) the date it was filed. Where there is one third party requester (the usual situation), indicate "third party requester"; where there are two or more third party requesters (a merged proceeding), indicate "third party requester" followed by the name of the third party requester (e.g., "third party requester Smith" or "third party requester XYZ Corporation").
¶ 26.50.01 Real Party in Interest(1) Real Party in Interest
Examiner Note:
Follow this paragraph with one or more of form paragraphs 26.50.02 and/or 26.50.03.
¶ 26.50.02 Acknowledgment of Identification of a Real Party in Interest in a BriefA statement identifying the real party in interest is contained in [1] brief(s).
Examiner Note:
In bracket 1, identify the brief or briefs containing a statement identifying the real party in interest. For example, "the appellant third party requester Jones" or "the appellant patent owner and the respondent third party requester Smith" or "all of the" can be used where appropriate.
¶ 26.50.03 No Identification of a Real Party in Interest in the BriefsIn the present appeal, [1] brief(s) does/do not contain a statement identifying the real party in interest. It is presumed that the party named in the caption of the brief(s) is the real party in interest at the time the brief was filed. The Board of Patent Appeals and Interferences, however, may subsequently exercise its discretion to require an explicit statement as to the real party in interest.
Examiner Note:
In bracket 1, identify the brief or briefs not containing a statement identifying the real party in interest. For example, "the appellant third party requester Jones" or "the appellant patent owner and the respondent third party requester Smith" or "all of the" can be used where appropriate.
¶ 26.50.04 Related Appeals and Interferences(2) Related appeals and interferences
Examiner Note:
Follow this p aragraph with form paragraph 26.50.05 or 26.50.06.
¶ 26.50.05 Identification of the Related Appeals and InterferencesThe 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 26.61.01 and 26.61.03.
¶ 26.50.06 No Related Appeals and Interferences IdentifiedThe 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.
¶ 26.51 Status of Claims(3) Status of claims
Examiner Note:
Follow form paragraph 26.51 with one or more of form paragraphs 26.51.01 and/or 26.51.02.
¶ 26.51.01 Agreement With Statement of Status of ClaimsThe statement of the status of claims contained in the [1] brief(s) is correct.
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the correct status of the claims. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. Use form paragraph 26.51.02 where there is a disagreement with the statement of status of the claims stated in the brief(s).
¶ 26.51.02 Disagreement With Statement of Status of Claims Stated in BriefsThe statement of the status of claims contained in the [1] briefs is incorrect. [2].
A correct statement of the status of the claims is as follows: [3]
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect statement of the status of the claims. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. In bracket 2, identify the area of disagreement with each brief and the reasons for the disagreement.
3. For bracket 3, see form paragraphs 12.151.03 - 12.151.10 for the type of material that should be included. Remember that a "final rejection" is not made in a reexamination. Thus, use "Action Closing Prosecution" and "Right of Appeal Notice" where each is appropriate.
¶ 26.52 Status of Amendments(4) Status of Amendments After Action Closing Prosecution
Examiner Note:
Identify status of all amendments submitted after Action Closing Prosecution. Use one or more of form paragraphs 26.52.01 - 26.52.05, if appropriate.
¶ 26.52.01 Agreement With Statement of the Status of Amendments After Action Closing ProsecutionThe statement of the status of amendments after Action Closing Prosecution contained in the [1] brief(s) is correct.
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the correct statement of the status of amendments after Action Closing Prosecution. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. Use form paragraph 26.52.02 where there is a disagreement with the statement of the status of the amendments after ACP stated in the brief(s).
¶ 26.52.02 Disagreement With Statement of the Status of Amendments After Action Closing Prosecution Stated in BriefsThe statement of the status of amendments after Action Closing Prosecution contained in the [1] brief(s) is incorrect. [2]
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect statement of the status of amendments after Action Closing Prosecution. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. In bracket 2, identify the area of disagreement with each brief and the reasons for the disagreement.
¶ 26.52.03 Amendment After Action Closing Prosecution EnteredThe amendment after Action Closing Prosecution filed on [1] has been entered.
Examiner Note:
In bracket 1, insert the date of any entered amendment.
¶ 26.52.04 Amendment After Action Closing Prosecution Not EnteredThe amendment after Action Closing Prosecution filed on [1] has not been entered.
Examiner Note:
In bracket 1, insert the date of any amendment denied entry.
¶ 26.52.05 No Amendment After Action Closing ProsecutionNo amendment after Action Closing Prosecution has been filed.
¶ 26.53 Summary of Claimed Subject Matter(5) Summary of Claimed Subject Matter
Examiner Note:
Follow form paragraph 26.53 with either form paragraphs 26.53.01 or 26.53.02.
¶ 26.53.01 Agreement With the Summary of Claimed Subject Matter in Brief(s)The summary of claimed subject matter contained in the [1] brief(s) is correct.
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect summary of claimed subject matter. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. Use form paragraph 26.53.02 where there is disagreement as to the summary.
¶ 26.53.02 Disagreement With the Summary of Claimed Subject Matter in Brief(s)The summary of claimed subject matter contained in the [1] brief(s) is deficient because [2].
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect summary of invention. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. In bracket 2, explain the deficiency of the summary of claimed subject matter. Include a correct summary of the invention if necessary for a clear understanding of the claimed invention.
¶ 26.54 Grounds of Rejection to be Reviewed on Appeal(6) Grounds of Rejection to be Reviewed on Appeal
Examiner Note:
Follow form paragraph 26.54 with form paragraph 26.54.01 or 26.54.02.
¶ 26.54.01 Agreement With Statement of the Grounds of Rejection on AppealThe statement of the grounds of rejection contained in the [1] brief(s) is correct.
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the correct statement of the grounds of rejection on appeal. For example, "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. Follow this form paragraph with form paragraph 26.54.011 if there are grounds of rejection that have not been withdrawn and that have not been presented by an appellant for review.
3. Follow this form paragraph with form paragraph 26.54.012 to list any non-appealable issues in the brief(s).
4. Use form paragraph 26.54.02 where there is disagreement as to the statement of the grounds of rejection on appeal.
¶ 26.54.011 Grounds of Rejection Not on ReviewGROUNDS OF REJECTION NOT ON REVIEW
The following grounds of rejection have not been withdrawn by the examiner, and they have not been presented by an appellant for review. [1].
Examiner Note:
In bracket 1, identify each ground of rejection that has not been withdrawn and has not been presented by an appellant for review.
¶ 26.54.012 Nonappealable Issue in BriefNON-APPEALABLE ISSUE(S)
The [1] brief presents arguments relating to [2]. This issue relates to petitionable subject matter under 37 CFR 1.181 and not to appealable subject matter. See MPEP § 1002 and § 1201.
Examiner Note:
1. In bracket 1, identify the brief containing the petitionable issues. For example, "appellant third party requester Jones" or "appellant patent owner" can be used where appropriate.
2. When more than one brief has a petitionable issue, this form paragraph should be used for each of these briefs.
¶ 26.54.02 Disagreement With Statement of the Grounds of Rejection on AppealThe [1] brief(s) does/do not provide a correct statement of the grounds of rejection to be reviewed on appeal. [2] The grounds of rejection to be reviewed on appeal are as follows: [3].
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect statement of the grounds of rejection on appeal.
2. In bracket 2, indicate the area of disagreement and the reasons for the disagreement.
3. In bracket 3 set forth the correct statement of the grounds of rejection on appeal.
¶ 26.55 Findings of Patentability to be Reviewed on Appeal(7) Findings of Patentability to be Reviewed on Appeal
Examiner Note:
Follow form paragraph 26.55 with form paragraph 26.55.01 or 26.55.02.
¶ 26.55.01 Agreement With Statement of the Findings of Patentability on AppealThe statement of the findings of patentability contained in the [1] brief(s) is correct.
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the correct statement of the findings of patentability on appeal. For example "appellant third party requester Jones" or "appellant patent owner and respondent third party requester Smith" can be used where appropriate.
2. Follow this form paragraph with form paragraph 26.55.011 if there are findings of patentability that have not been withdrawn and that have not been presented by an appellant for review.
3. Form paragraph 26.54.012 may be used to list any non-appealable issues in the brief(s).
4. Use form paragraph 26.55.02 where there is disagreement as to the statement of the findings of patentability on appeal.
¶ 26.55.011 Findings of Patentability Not on ReviewFINDINGS OF PATENTABILITY NOT ON REVIEW
The following grounds of rejection have not been withdrawn by the examiner, and they have not been presented by an appellant for review. [1].
Examiner Note:
1. In bracket 1, identify each ground of rejection that has not been withdrawn and has not been presented by an appellant for review.
¶ 26.55.02 Disagreement With Statement of the Findings of Patentability on AppealThe [1] brief(s) does/do not provide a correct statement of the findings of patentability to be reviewed on appeal. [2] The findings of patentability to be reviewed on appeal are as follows: [3].
Examiner Note:
1. In bracket 1, identify the brief or briefs containing the incorrect statement of the findings patentability on appeal.
2. In bracket 2, indicate the area of disagreement and reasons for the disagreement.
3. In bracket 3, set forth the correct statement of the patentability to be reviewed on appeal.
¶ 26.56 Claims Appendix(8) Claims Appendix
Examiner Note:
Follow form paragraph 26.56 with form paragraphs 26.56.01,
26.56.02, and/or 26.56.03, as is appropriate.
¶ 26.56.01 Copy of the Appealed Claims in the Appendix of Appellant Brief is CorrectThe copy of the appealed claims [1] is contained in the Appendix to the appellant brief of [2] is correct.
Examiner Note:
1. In bracket 1, identify the claims appealed found in the appellant brief.
2. In bracket 2, identify the appellant brief containing the claims appealed. For example, "third party requester," "third party requester Smith" or "patent owner" can be used where appropriate.
3. This paragraph is for appellant briefs; not for respondent briefs.
4. Where there is more than one appellant brief, the patent examiner may choose any appellant brief that has a correct copy of claims appealed. The examiner may use this form paragraph more than once, as needed to set forth each claim or group of claims appealed by the appellants. Where a claim is correct in one appellant brief but is incorrect in another appellant brief, the examiner will draw a diagonal line in pencil through the incorrect claim in the Appendix of the incorrect appellant brief, and place the date, the word "Incorrect," and the examiner's initials in the margin.
¶ 26.56.02 Copy of the Appealed Claims in the Appendix of Appellant Brief is Substantially CorrectA substantially correct copy of the appealed claim(s) is contained in the Appendix of the appellant brief of [1]. Claim(s) [2] appear on pages [3] of the appendix contain minor errors. The minor errors are as follows: [4]
Examiner Note:
1. Use this paragraph where all appellant briefs contain errors in the claim(s) but at least one appellant brief is substantially correct and contains only minor errors.
2. In bracket 1, identify the appellant brief containing the substantially correct copy of the appealed claims. For example, "third party requester Smith" or "patent owner" can be used where appropriate.
3. In bracket 2, indicate the claim or claims with the minor errors.
4. In bracket 3, identify the page(s) in the Appendix where the substantially correct appealed claims appear.
5. In bracket 4, indicate the nature of the errors.
6. This paragraph is for appellant briefs; not for respondent briefs.
7. Where there is more than one appellant brief having the same claim recited incorrectly but at least one appellant brief is substantially correct and contains only minor errors, the examiner can apply the present form paragraph to the brief that has only minor errors in the appealed claim. If the application is still a paper file, the examiner should draw a diagonal line in pencil through the incorrect claim in any other (incorrect) appellant brief, and place the date, the word "Incorrect," and the examiner's initials in the margin.
¶ 26.56.03 Copy of the Appealed Claims in the Appendix Contains Substantial ErrorsClaim(s) [1] contain(s) substantial errors as presented in the Appendix to all the appellant briefs. Accordingly, claim(s) [2] is/are correctly written in the Appendix to the examiner's answer.
Examiner Note:
1. This form paragraph is used where all appellants fail to include a correct copy of an appealed claim or claims in the Appendix to the brief.
2. Attach a correct copy of the claims incorrect in all the appellant briefs as an Appendix to the examiner's answer; and if the application is still a paper file, draw a diagonal line in pencil through the incorrect claim in the Appendix of each appellant's appeal brief, and place the date, the word "Incorrect," and the examiner's initials in the margin.
3. In brackets 1 and 2, identify the claims that contain substantial errors.
4. Rather than using this form paragraph, if the errors in the claim(s) are significant, appellant(s) should be required to submit a corrected brief (amended brief). Where the brief includes arguments based upon the incorrect version of the claims (i.e., argument directed toward the errors in the claims), a corrected brief should always be required.
¶ 26.57 Evidence Relied Upon - Heading(9) Evidence Relied Upon
Examiner Note:
Follow form paragraph 26.57 with one or more of form paragraphs 26.57.01 - 26.57.03.
¶ 26.57.01 No Evidence Relied Upon in the Examiner's AnswerNo evidence is relied upon by the examiner in this appeal.
¶ 26.57.02 Listing of the Evidence Relied Upon by ExaminerThe following is a listing of the evidence (e.g., patents, publications, official notice, and admitted prior art) relied upon by the examiner 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 VARIAN 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.
¶ 26.57.03 Listing of the Art of Record Relied Upon by RequesterThe following is a listing of the evidence relied upon by the third party requester(s) in the proposed rejection of claims which were not made by the examiner, and are now 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 VARIAN 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.
¶ 26.59 Grounds of Rejection(10) Grounds of rejection
The following ground(s) of rejection are applicable to the appealed claims. [1].
Examiner Note:
In bracket 1, explain each ground of rejection clearly and completely as set forth in the appropriate paragraphs i-vi below:
(i) For each rejection under 35 U.S.C. 112, first paragraph, the examiner's answer shall explain why 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, and/or (b) would not enable a 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).
(ii) For each rejection under 35 U.S.C. 112, second paragraph, the examiner's answer shall explain why the claims do not particularly point out and distinctly claim the subject matter which "applicant" 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 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 on in the rejection, shall identify any difference 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 (iii) and (iv) above, shall compare at least one of the rejected claims feature-by-feature with the prior art relied upon in the rejection. The comparison shall align the language of the claim side-by-side with a reference to the specific page or column, line number, drawing reference number and quotation from the reference, as appropriate.
(vi) For each rejection, other than those referred to in paragraphs (i) to (v) of this section, the examiner's answer shall specifically explain the basis for the particular rejection.
¶ 26.59.01 Findings of Patentability(11) Findings of Patentability
The following findings of patentability, i.e., determinations of inapplicability of a proposed rejection, are applicable to the appealed claims.
[1]
Examiner Note:
In bracket 1, explain each determination of inapplicability of a proposed rejection, or refer to the RAN if it clearly and completely sets forth the determination of inapplicability of a proposed rejection and complies with appropriate paragraphs i-vi below:
(i) For each determination of inapplicability of a proposed rejection of the appealed claims 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 complied with, including, as appropriate, how the specification and drawings, if any, (a) do describe the subject matter defined by each of the claims proposed for rejection, and/or (b) would in fact enable any person skilled in the art to make and use the subject matter defined by each of the claims proposed for rejection without undue experimentation.
(ii) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 112, second paragraph; the examiner's answer shall explain how the claims do particularly point out and distinctly claim the subject matter which "applicant" regards as the invention.
(iii) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 102; the examiner's answer shall explain why the claims proposed for rejection are not anticipated and patentable under 35 U.S.C. 102, pointing out which limitations recited in the claims proposed for rejection are not found in the prior art relied upon in the proposed rejection.
(iv) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 103; the examiner's answer shall point out which limitations recited in the patentable claims are not found in the prior art relied upon in the proposed rejection, shall identify the difference between the patentable claims and the prior art relied upon by the third party requester and shall explain why the claimed subject matter is patentable over the prior art relied on by the third party requester. If the third party requester's proposed rejection is based upon a combination of references, the examiner's answer shall explain the rationale for not making the combination.
(v) For each third party requester proposed rejection under 35 U.S.C. 102 or 103 where there are questions as to how limitations in the claims define over features in the prior art even after the examiner complies with the requirements of (iii) and (iv) above, the examiner shall compare at least one of the claims proposed for rejection feature-by-feature with the prior art relied on in the proposed rejection. The comparison shall align the language of the claim side-by-side with a reference to the specific page or column, line number, drawing reference number, and quotation from the reference, as appropriate.
(vi) For each determination of inapplicability of a proposed rejection, other than those referred to in paragraphs (i) to (v) of this section, the examiner's answer shall specifically explain why there is insufficient basis for making the particular proposed rejection.
¶ 26.60 No New Ground of Rejection; No New Finding of Patentability(12) No new ground of rejection; no new finding of patentability
This examiner's answer does not contain any new ground of rejection. This examiner's answer does not contain any new finding of patentability (i.e., no new determination of inapplicability of a proposed rejection).
Examiner Note:
An examiner's answer may not include a new ground of rejection. See 37 CFR 41.69(b). An examiner's answer also may not include a new determination not to make a proposed rejection. See 37 CFR 41.69(c). If a new ground of rejection or new determination not to make a proposed rejection is made, prosecution must be reopened. See 37 CFR 41.69(d). See also MPEP § 2677.
¶ 26.61 Response to Argument(13) Response to argument
Examiner Note:
A statement of whether the examiner disagrees with each of the contentions of appellants and respondents in their briefs with respect to the issues presented, and an explanation of the reasons for disagreement with any such contentions. If any ground of rejection or inapplicability of proposed rejection is not argued and responded to by the appropriate party, the examiner shall point out each claim affected.
¶ 26.61.01 Related Proceeding(s) Appendix(14) Related Proceeding(s) Appendix
Examiner Note:
Follow form paragraph with either form paragraph 26.62.01 or 26.62.02.
¶ 26.61.02 No Related Proceeding IdentifiedNo 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.
¶ 26.61.03 Copies Related to ProceedingCopies of the court or Board decision(s) identified in the Related Appeals and Interferences section of this examiner's answer are provided herein.
¶ 26.62 Notification Regarding Rebuttal Brief(15) Period for providing a Rebuttal Brief
Appellant(s) is/are given a period of ONE MONTH from the mailing date of this examiner's answer within which to file a rebuttal brief in response to the examiner's answer. Prosecution otherwise remains closed.
The rebuttal brief of the patent owner may be directed to the examiner's answer and/or any respondent brief. The rebuttal brief of the third party requester(s) may be directed to the examiner's answer and/or the respondent brief of the patent owner. The rebuttal brief must (1) clearly identify each issue, and (2) point out where the issue was raised in the examiner's answer and/or in the respondent brief. In addition, the rebuttal brief must be limited to issues raised in the examiner's answer or in the respondent brief.
The time for filing the rebuttal brief may not be extended. No further submission (other than the rebuttal brief(s)) will be considered, and any such submission will be treated in accordance with 37 CFR 1.939.
¶ 26.63 Request to Present Oral ArgumentsThe examiner requests the opportunity to present arguments at the oral hearing.
Examiner Note:
1. Use this form paragraph only if:
an oral hearing has been requested by a party to the appeal; and
the primary examiner intends to present an oral argument.
2. This form paragraph must be included as a separate letter on a form PTOL-90. See MPEP § 1209.
¶ 26.64 Examiner's Answer, Conclusion(16) Conclusion
For the above reasons, it is believed that the rejections and/or findings of patentability discussed above should be sustained.
Respectfully submitted,
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