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2679 Office Treatment of Rebuttal Brief [Added R-2] - 2600 Optional Inter Partes Reexamination
2679 Office Treatment of Rebuttal Brief [Added R-2]
When a rebuttal brief is received in response to an examiner's answer, it is entered by the Central Reexamination Unit (CRU). The reexamination case file is retained in the CRU until all potential rebuttal briefs are submitted and entered, or the time for filing a rebuttal brief has expired. The case file is then forwarded to the examiner, who will then review the submission(s) and consult with the Reexamination Legal Advisor (RLA) of the CRU. If the examiner determines that the rebuttal brief (A) does not clearly identify each issue raised in the examiner's answer or in the respondent brief of an opposing party (and point out where the issue was raised in those papers), or (B) is not limited to the issues raised in the examiner's answer or the respondent brief; the examiner may refuse entry of the rebuttal brief. If entry is approved, the examiner will issue a notification letter to that effect. If entry is refused, the examiner will issue a notification letter that appellant is given a nonextendable period of one month to correct the defect in the rebuttal brief by filing an amended rebuttal brief. If the amended rebuttal brief filed in response to the examiner's letter does not overcome all the reasons for noncompliance with 37 CFR 1.971(a) stated in the examiner's letter, appellant will be so notified, but will not be given a second opportunity to file an amended rebuttal brief. That appellant's amended rebuttal brief will not be considered. 37 CFR 1.971(b). The examiner's notification letter will be mailed from the CRU.
After all rebuttal briefs and amended rebuttal briefs (where appellant is given an opportunity to correct a defective original rebuttal brief) have been received and the appropriate notification letters mailed, or the time for filing such briefs has expired, the proceeding will be forwarded by the CRU to the Board of Patent Appeals and Interferences.
In a very rare situation, where the examiner finds that it is essential to address a rebuttal brief, the examiner must reopen prosecution. In order to reopen prosecution after an examiner's answer, the Technology Center (TC) Director must approve the same in writing, at the end of the action that reopens prosecution.
Form paragraphs 26.65 and 26.65.01 may be used to notify the parties of receipt and entry of the rebuttal brief(s).
¶ 26.65 Acknowledgment of Rebuttal Brief
The rebuttal brief filed [1] by [2] has been entered.
Examiner Note
1. Use a separate form paragraph 26.65 for each rebuttal brief that is received.
2. In bracket 1, insert the date the rebuttal brief was filed.
3. In bracket 2, insert the party that filed the rebuttal brief.
¶ 26.65.01 No Further Response
No further response by the examiner is appropriate. Any further reply/comments by any party will be not be considered, and may be returned to the party that submitted it. The reexamination proceeding is being forwarded to the Board of Patent Appeals and Interferences for decision on the appeal(s).
Form paragraph 26.66 may be used to notify the parties of receipt of the rebuttal brief(s) that are defective.
¶ 26.66 Defective Rebuttal Brief-Opportunity to Correct
A 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 rebuttal brief of Appellant [1] is defective because [2].
Appellant [3] is given a period of ONE MONTH from the mailing date of this examiner's answer within which to file an amended rebuttal brief in response to this letter. Prosecution otherwise remains closed. The time for filing the amended rebuttal brief may not be extended.
If the amended rebuttal brief filed in response to the this letter does not remedy the defect or raises a new one, appellant will be so notified, but will not be given a second opportunity to file an amended rebuttal brief.
Examiner Note
1. In brackets 1 and 3, insert the "patent owner" or the appropriate third party requester. Where there is one third party requester (the usual situation) insert "third party requester"; where there are two or more third party requesters (a merged proceeding), insert "third party requester" followed by the name of the third party requester (e.g., "third party requester Smith" or "third party requester XYZ Corporation").
2. This form paragraph is to be used once for each appellant filing a defective original rebuttal brief, to provide notification thereof.
3. For an appellant filing a defective amended rebuttal brief, use form paragraph 26.66.01.
Form paragraph 26.66.01 may be used to notify the appellant that the amended rebuttal brief is defective.
¶ 26.66.01 Defective Amended Rebuttal Brief-No Opportunity to Correct
A 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 amended rebuttal brief of Appellant [1] is defective because [2].
The original and amended rebuttal briefs have been placed in the file but will not be considered. There is no opportunity to file a second amended rebuttal brief, and any such submission will be returned.
Examiner Note
1. In bracket 1, insert the "patent owner" or the appropriate third party requester. Where there is one third party requester (the usual situation) insert "third party requester"; where there are two or more third party requesters (a merged proceeding), insert "third party requester" followed by the name of the requester (e.g.,"third party requester Smith" or "third party requester XYZ Corporation").
2. This form paragraph is to be used once for each defective amended rebuttal brief, to provide notification thereof. The notification letter should conclude with form paragraph 26.66.02, unless such is inappropriate for some reason.
3. For an appellant filing a defective original rebuttal brief, use form paragraph 26.66.
Form paragraph 26.66.02 may be used to notify the parties that the proceeding is being forwarded to the Board of Appeals and Interferences for decision on the appeal(s).
¶ 26.66.02 Forward to the Board for Decision
The reexamination proceeding is being forwarded to the Board of Patent Appeals and Interferences for decision on the appeal(s).
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