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1208 Examiner's Answer - 1200 Appeal
1208 Examiner's Answer
37 CFR 1.193 Examiner's answer and reply brief.
(a)
(1) The primary examiner may, within such time as may be directed by the Commissioner, furnish a written statement in answer to appellant's brief including such explanation of the invention claimed and of the references and grounds of rejection as may be necessary, supplying a copy to appellant. If the primary examiner finds that the appeal is not regular in form or does not relate to an appealable action, the primary examiner shall so state.
(2) An examiner's answer must not include a new ground of rejection, but if an amendment under § 1.116 proposes to add or amend one or more claims and appellant was advised that the amendment under § 1.116 would be entered for purposes of appeal and which individual rejection(s) set forth in the action from which the appeal was taken would be used to reject the added or amended claim(s), then the appeal brief must address the rejection(s) of the claim(s) added or amended by the amendment under § 1.116 as appellant was so advised and the examiner's answer may include the rejection(s) of the claim(s) added or amended by the amendment under § 1.116 as appellant was so advised. The filing of an amendment under § 1.116 which is entered for purposes of appeal represents appellant's consent that when so advised any appeal proceed on those claim(s) added or amended by the amendment under § 1.116 subject to any rejection set forth in the action from which the appeal was taken.
(b)
(1) Appellant may file a reply brief to an examiner's answer or a supplemental examiner's answer within two months from the date of such examiner's answer or supplemental examiner's answer. See § 1.136(b) for extensions of time for filing a reply brief in a patent application and § 1.550(c) for extensions of time for filing a reply brief in a reexamination proceeding. The primary examiner must either acknowledge receipt and entry of the reply brief or withdraw the final rejection and reopen prosecution to respond to the reply brief. A supplemental examiner's answer is not permitted, unless the application has been remanded by the Board of Patent Appeals and Interferences for such purpose.
(2) Where prosecution is reopened by the primary examiner after an appeal or reply brief has been filed, appellant must exercise one of the following two options to avoid abandonment of the application:
(i) File a reply under § 1.111, if the Office action is not final, or a reply under § 1.113, if the Office action is final; or
(ii) Request reinstatement of the appeal. If reinstatement of the appeal is requested, such request must be accompanied by a supplemental appeal brief, but no new amendments, affidavits ( §§ 1.130, 1.131 or 1.132) or other evidence are permitted.
APPEAL CONFERENCE
An appeal conference is mandatory in all cases in which an acceptable brief (MPEP § 1206) has been filed. However, 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.
The participants of the appeal conference should include (1) the examiner charged with preparation of the examiner's answer, (2) a supervisory patent examiner (SPE), and (3) another examiner, known as a conferee, having sufficient experience to be of assistance in the consideration of the merits of the issues on appeal. During the appeal conference, consideration should be given to the possibility of dropping cumulative art rejections and eliminating technical rejections of doubtful value.
The examiner responsible for preparing the examiner's answer should weigh the arguments of the other examiners presented during the appeal conference. If it is determined that the rejection(s) should be maintained, the examiner responsible for preparing the examiner's answer will prepare the examiner's answer.
On the examiner's answer, below the primary examiner's signature, the word "Conferees:" should be included, followed by the typed or printed names of the other two appeal conference participants. These two appeal conference participants must place their initials next to their name. This will make the record clear that an appeal conference has been held.
Upon receipt of the appeal case by the Board of Patent Appeals and Interferences (Board), the Board should review the application prior to assigning an appeal number to determine whether an appeal conference has been held. If the examiner's answer does not contain the appropriate indication that an appeal conference has been held (i.e., including the names of the conferees and identifying themselves as the conferees along with their initials), the Board should return the application directly to the appropriate Technology Center (TC) Director for corrective action. This return procedure by the Board should not be considered as a remand of the application. This procedure applies to all examiner's answers received by the Board on or after November 1, 2000.
Before preparing the answer, the examiner should make certain that all amendments approved for entry have in fact been physically entered. The Clerk of the Board will return to the TC any application in which approved amendments have not been entered.
ANSWER
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 and should call attention to any errors in appellant's copy of the claims. If any rejection is withdrawn, the withdrawal should be clearly stated in the examiner's answer under "Issues." Grounds of rejection not argued in the examiner's answer are usually treated as having been dropped, but may be considered by the Board if it desires to do so. The examiner should treat affidavits, declarations, or exhibits filed with or after the notice of appeal in accordance with 37 CFR 1.195. If an affidavit, declaration, or exhibit was refused entry under 37 CFR 1.195, 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 refused entry, 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 patent should be clearly identified by the examiner as being considered under either 37 CFR 1.131 or 37 CFR 1.608(b).
If the brief fails to address any or all grounds of rejection advanced by the examiner, or comply with 37 CFR 1.192(c), the indicated procedure for handling such briefs set forth in MPEP § 1206 under "Review of Brief by Examiner" should be followed.
Because of the practice of the U.S. Patent and Trademark 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 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). See 37 CFR 1.193(a)(2) and MPEP § 1208.01. It is important to note that if more than a mere reference to one or more individual rejections set forth in the final rejection is necessary to explain how the added or amended claims would be rejected, then the amendment should not be entered because it raises new issues requiring further consideration and/or search. Furthermore, the mere fact that an amendment under 37 CFR 1.116 could fall within the operation of 37 CFR 1.193(a)(2) does not mean that the amendment must be entered by the examiner. That is, the provisions of 37 CFR 1.116 (and not 37 CFR 1.193(a)(2)) control as to whether an amendment under 37 CFR 1.116 is entitled to entry.
It also frequently happens that an examiner will state a position in the answer in a manner that represents a shift from the position stated in the final rejection without indicating that the last stated position supersedes the former. Such a situation confuses the issue and likewise poses difficulties for the Board 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 final rejection, it is possible to save time in preparing the examiner's answer required by 37 CFR 1.193 by taking any of the following steps:
(A) Examiners may incorporate in the answer their statement of the grounds of rejection merely by reference to the final rejection (or a single other action on which it is based, MPEP § 706.07). Only those statements of grounds of rejection appearing in a single prior action may be incorporated by reference. An examiner's answer should not refer, either directly or indirectly, to more than one prior Office action. Statements of grounds of rejection appearing in actions other than the aforementioned single prior action should be quoted in the answer. The page and paragraph of the final action or other single prior action which it is desired to incorporate by reference should be explicitly identified. Of course, if the examiner feels that some further explanation of the rejection is necessary, he or she should include it in the answer but ordinarily he or she may avoid another recital of the issues and another elaboration of the grounds of rejection. The answer should also include any necessary rebuttal of arguments presented in the appellant's brief if the final action does not adequately meet the arguments.
(B) If the appellant fails to describe the invention, as required by 37 CFR 1.192, the examiner is not required to provide these omissions under 37 CFR 1.192(d). The examiner should, however, clarify the description and explanation in the answer if he or she feels it necessary to present properly and effectively his or her case to the Board.
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, especially if the rejection was made in an action which is incorporated by reference. This should be done even though any rejection not repeated and discussed in the answer may be taken by the Board as having been withdrawn. Ex parte Emm, 118 USPQ 180 (Bd. App. 1957).
A new ground of rejection is no longer permitted in an examiner's answer. For a discussion of what constitutes a new ground of rejection, see MPEP § 1208.01. If a new ground of rejection is necessary, prosecution must be reopened. The examiner must obtain approval from the supervisory patent examiner prior to reopening prosecution after an appeal. See MPEP § 1002.02(d).
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.
When files are forwarded, soft copies and prints of references therein should remain in the file wrapper.
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 Deputy Commissioner for Patent Examination Policy for final approval.
Briefs must comply with 37 CFR 1.192, and all examiner's answers filed in response to such briefs must comply with the guidelines set forth below.
(A) 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 acknowledging the identification of the real party in financial interest or indicating that the party named in the caption of the brief is the real party in interest, or if the brief contains a proper heading but no real party in interest is identified, a statement that it is presumed that the party named in the caption of the brief is the real party in interest. While the examiner will make this presumption, the Board has discretion to require an explicit statement on this item from appellant.
(2) Related Appeals and Interferences. A statement acknowledging appellant's identification of related cases which will directly affect or be directly affected by or have a bearing on the decision in the pending appeal, or if the appellant sets forth the required heading but does not identify any related appeals or interferences, a statement that it is presumed that there are none. While the examiner will make this presumption, the Board has discretion to require an explicit statement on this item from appellant.
(3) Status of Claims. A statement of whether the examiner agrees or disagrees with the statement of the status of claims contained in the brief and a correct statement of the status of all the claims pending or cancelled, if necessary. If the examiner considers that some or all of the finally rejected claims are allowable, see MPEP § 1208.02.
(4) Status of Amendments. A statement of whether the examiner disagrees with the statement of the status of amendments contained in the brief, and an explanation of any disagreement.
(5) Summary of Invention. A statement of whether the examiner disagrees with the summary of invention contained in the brief, an explanation of why the examiner disagrees, and a correct summary of invention, if necessary.
(6) Issues. A statement of whether the examiner disagrees with the statement of the issues in the brief and an explanation of why the examiner disagrees, including:
(a) identification of any issues which are petitionable rather than appealable, and
(b) identification of any issues or grounds of rejection on appeal which the examiner no longer considers applicable.
(7) Grouping of Claims. A statement of whether the examiner disagrees with any statement in the brief that certain claims do not stand or fall together, and, if the examiner disagrees, an explanation as to why those claims are not separately patentable.
(8) Claims Appealed. A statement of whether the copy of the appealed claims contained in the appendix to the brief is correct and, if not, a correct copy of any incorrect claim.
(9) References of Record. A listing of the references of record relied on, and, in the case of nonpatent references, the relevant page or pages.
(10) Grounds of Rejection. For each ground of rejection applicable to the appealed claims, an explanation of the ground of rejection, or reference to a final rejection or other single prior action for a clear exposition of the rejection.
(a) For each rejection under 35 U.S.C. 112, first paragraph, the examiner's answer, or the single prior action, 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,
(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, and (c) 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, or single prior action, shall 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, or single prior action, 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.
(d) For each rejection under 35 U.S.C. 103, the examiner's answer, or single prior action, shall:
(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 any difference between the rejected claims and the prior art relied on, and
(iii) explain how and why the claimed subject matter is rendered unpatentable over the prior art. If the rejection is based upon a combination of references, the examiner's answer, or single prior action, shall explain the rationale for making the combination.
(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 shall 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.
(f) For each rejection, other than those referred to in paragraphs (a) to (e) of this section, the examiner's answer, or single prior action, shall specifically explain the basis for the particular rejection.
(11) 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. If any ground of rejection is not argued and replied to by appellant, the response shall point out each claim affected.
(B) FORM PARAGRAPHS. A form suitable for the examiner's answer is as follows:
¶ 12.49 Examiner's Answer Cover Sheet
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Paper No. [1]
Application Number: [2]
Filing Date: [3]
Appellant(s): [4]
__________________
[5]
For Appellant
EXAMINER'S ANSWER
This is in response to the appeal brief filed [6].
Examiner Note
1. This form paragraph includes the USPTO Letterhead and should be used only if typing your own action. Answers prepared in draft form for typing by a typist should use form paragraph 12.50.
2. In bracket 1, insert the Paper No. of the examiner's answer.
3. In bracket 2, insert the application number of the appealed application.
4. In bracket 3, insert the filing date of the appealed application.
5. In bracket 4, insert the name(s) of the appellant.
6. In bracket 5, insert the name of the registered representative of the appellant.
7. In bracket 6, 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.
8. Form paragraph 12.50 should NOT follow use of this form paragraph as it is already incorporated herein.
¶ 12.50 Heading For Examiner's Answer
This is in response to the brief on appeal filed [1].
Examiner Note
1. Use this form paragraph only when having the Examiner's Answer prepared without using form paragraph 12.49.
2. In bracket 1, 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.
¶ 12.50.01 Real Party in Interest
(1) Real Party in Interest
Examiner Note
Follow this form paragraph with form paragraph 12.50.02 or 12.50.03.
¶ 12.50.02 Acknowledgment of Appellant's Identification of a Real Party in Interest in the Brief
A statement identifying the real party in interest is contained in the brief.
¶ 12.50.03 No Identification of a Real Party in Interest in the Brief
The brief does not contain a statement identifying the Real Party in Interest. Therefore, it is presumed that the party named in the caption of the brief is the Real Party in Interest, i.e., the owner at the time the brief was filed. The Board, however, may exercise its discretion to require an explicit statement as to the Real Party in Interest.
¶ 12.50.04 Related Appeals and Interferences
(2) Related Appeals and Interferences
Examiner Note
Follow this form paragraph with form paragraph 12.50.05 or 12.50.06.
¶ 12.50.05 Acknowledgment of Appellant's Statement Identifying the Related Appeals and Interferences
A statement identifying the related appeals and interferences which will directly affect or be directly affected by or have a bearing on the decision in the pending appeal is contained in the brief.
¶ 12.50.06 No Related Appeals and Interferences Identified
The brief does not contain a statement identifying the related appeals and interferences which will directly affect or be directly affected by or have a bearing on the decision in the pending appeal. Therefore, it is presumed that there are none. The Board may, however, exercise its discretion to require an explicit statement as to the existence of any related appeals and interferences.
¶ 12.51 Status of Claims
(3) Status of Claims
Examiner Note
Follow this form paragraph with one or more of form paragraphs 12.51.01 to 12.51.10.
¶ 12.51.01 Agreement With Statement of Status of Claims
The statement of the status of claims contained in the brief is correct.
¶ 12.51.02 Disagreement With Statement of Status of Claims
The statement of the status of claims contained in the brief is incorrect. A correct statement of the status of the claims is as follows:
Examiner Note
1. Indicate the area of disagreement and the reasons for the disagreement.
2. One or more of form paragraphs 12.51.03 to 12.51.10 must follow this paragraph.
¶ 12.51.03 Claims On Appeal
This appeal involves claim [1].
Examiner Note
1. In bracket 1, all the claims still on appeal should be specified. Do not list claims which are no longer rejected.
2. Also use form paragraphs 12.51.04 to 12.51.06 when appropriate to clarify the status of the claims on appeal that were incorrectly listed in the brief.
¶ 12.51.04 Status of Claims on Appeal - Substituted
Claim [1] been substituted for the finally rejected claims.
Examiner Note
All substituted claims on appeal must be identified if the brief incorrectly lists any substituted claims. In bracket 1, insert the claim number(s) corresponding to the substitute claims, followed by --has-- or --have--, as appropriate.
¶ 12.51.05 Status of Claims on Appeal - Amended
Claim [1] been amended subsequent to the final rejection.
Examiner Note
All claims amended after final rejection must be identified if the brief incorrectly lists any claims amended after final rejection. In bracket 1, identify the claim number(s) corresponding to the claim(s) which have been amended, followed by --has-- or --have--, as appropriate.
¶ 12.51.07 Claims Allowed
Claim [1] allowed.
Examiner Note
All allowed claims must be identified if the brief incorrectly lists any allowed claims.
¶ 12.51.08 Claims Objected To
Claim [1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Examiner Note
All objected to claims must be identified if the brief incorrectly lists any claims objected to.
¶ 12.51.09 Claims Withdrawn From Consideration
Claim [1] withdrawn from consideration as not directed to the elected [2].
Examiner Note
All withdrawn claims must be identified if the brief incorrectly lists any withdrawn claims.
¶ 12.51.10 Claims Canceled
Claim [1] been canceled.
Examiner Note
All canceled claims must be identified if the brief incorrectly lists any canceled claims.
¶ 12.52 Status of Amendments After Final
(4) Status of Amendments After Final
Examiner Note
Identify status of all amendments submitted after final rejection. Use one or more of form paragraphs 12.52.01 to 12.52.04, if appropriate.
¶ 12.52.01 Agreement With Appellant's Statement of the Status of Amendments After Final
The appellant's statement of the status of amendments after final rejection contained in the brief is correct.
¶ 12.52.02 Disagreement With Appellant's Statement of the Status of Amendments After Final
The appellant's statement of the status of amendments after final rejection contained in the brief is incorrect.
Examiner Note
Form paragraphs 12.52.03 and/or 12.52.04 must follow this form paragraph to explain the reasons for disagreeing with appellant's statement of the status of the amendments.
¶ 12.52.03 Amendment After Final Entered
The amendment after final rejection filed on [1] has been entered.
Examiner Note
1. In bracket 1, insert the filing date of any entered after final amendment.
2. Use this form paragraph for each after final amendment which has been entered.
¶ 12.52.04 Amendment After Final Not Entered
The amendment after final rejection filed on [1] has not been entered.
Examiner Note
1. In bracket 1, insert the date of any after final amendment denied entry.
2. Use this form paragraph for each after final amendment which has been denied entry.
¶ 12.52.05 No Amendments After Final
No amendment after final has been filed.
¶ 12.53 Summary of Invention
(5) Summary of Invention
Examiner Note
Follow this form paragraph with either of form paragraphs 12.53.01 or 12.53.02.
¶ 12.53.01 Agreement With the Summary of Invention
The summary of invention contained in the brief is correct.
¶ 12.53.02 Disagreement With the Summary of Invention
The summary of invention contained in the brief is deficient because [1].
Examiner Note
In bracket 1, explain the deficiency of the appellant's summary of the invention. Include a correct summary of the invention if necessary for a clear understanding of the claimed invention.
¶ 12.54 Issues
(6) Issues
Examiner Note
Follow this form paragraph with form paragraphs 12.54.01, 12.54.02, or 12.54.03.
¶ 12.54.01 Agreement With Appellant's Statement of the Issues
The appellant's statement of the issues in the brief is correct.
¶ 12.54.02 Disagreement With Appellant's Statement of the Issues
The appellant's statement of the issues in the brief is substantially correct. The changes are as follows: [1]
Examiner Note
In bracket 1, explain the changes with respect to the appellant's statement of the issues in the brief including:
(i) an identification of any issues which are petitionable rather than appealable, and/or
(ii) an identification of any issues or grounds of rejection on appeal which the examiner no longer considers applicable, and/or
(iii) any change not covered in (i) or (ii).
¶ 12.54.03 Non-Appealable Issue in Brief
Appellant's brief presents arguments relating to [1]. This issue relates to petitionable subject matter under 37 CFR 1.181 and not to appealable subject matter. See MPEP § 1002 and § 1201.
¶ 12.55 Grouping of Claims
(7) Grouping of Claims
Examiner Note
Follow this form paragraph with either form paragraph 12.55.01, 12.55.02 or 12.55.04 for each grouping of claims (i.e., each ground of rejection which appellant contests).
¶ 12.55.01 No Statement and Reasons in Brief That Claims Do Not Stand or Fall Together
The rejection of claims [1] stand or fall together because appellant's brief does not include a statement that this grouping of claims does not stand or fall together and reasons in support thereof. See 37 CFR 1.192(c)(7).
Examiner Note
1. Use this form paragraph for each grouping of claims (i.e., ground of rejection which appellant contests) wherein the brief includes neither a statement that a grouping of claims does not stand or fall together nor reasons in support thereof.
2. If the brief includes a statement that a grouping of claims does not stand or fall together but does not provide reasons, as set forth in 37 CFR 1.192(c)(7), notify appellant of the non-compliance using form paragraphs 12.69, 12.69.01 and 12.78.
¶ 12.55.02 No Agreement With Brief Why Claims Do Not Stand or Fall Together
The appellant's statement in the brief that certain claims do not stand or fall together is not agreed with because [1].
Examiner Note
In bracket 1, explain why the claim grouping listed in the brief is not agreed with by the examiner and why, if appropriate, e.g., the claims as listed by the appellant are not separately patentable.
¶ 12.55.04 Brief Gives Reasons Why Claims Do Not Stand or Fall Together
Appellant's brief includes a statement that claims [1] do not stand or fall together and provides reasons as set forth in 37 CFR 1.192(c)(7) and (c)(8).
¶ 12.56 Claims Appealed
(8) Claims Appealed
Examiner Note
Follow this form paragraph with form paragraph 12.56.01, 12.56.02 or 12.56.03.
¶ 12.56.01 Copy of the Appealed Claims in Appendix Is Correct
The copy of the appealed claims contained in the Appendix to the brief is correct.
¶ 12.56.02 Copy of the Appealed Claims in Appendix Is Substantially Correct
A substantially correct copy of appealed claim [1] appears on page [2] of the Appendix to the appellant's brief. The minor errors are as follows: [3]
Examiner Note
1. In bracket 1, indicate the claim or claims with small errors.
2. In bracket 3, indicate the nature of the errors.
¶ 12.56.03 Copy of the Appealed Claims in Appendix Contain Substantial Errors
Claim [1] contain(s) substantial errors as presented in the Appendix to the brief. Accordingly, claim [2] correctly written in the Appendix to the Examiner's Answer.
Examiner Note
1. Appellant should include a correct copy of all appealed claims in the Appendix to the brief. See 37 CFR 1.192(c)(9).
2. Attach a correct copy of any incorrect claims as an Appendix to the Examiner's Answer and draw a diagonal line in pencil through the incorrect claim in the Appendix of the appellant's appeal brief.
3. Rather than using this form paragraph, if the errors in the claim(s) are significant, appellant should be required to submit a corrected brief using form paragraphs 12.69, 12.77 and 12.78, as well as any other paragraphs 12.70 to 12.76 as may be appropriate. Where the brief includes arguments directed toward the errors, a corrected brief should always be required.
¶ 12.57 Prior Art of Record
(9) Prior Art of Record
Examiner Note
Follow this form paragraph with either form paragraph 12.57.01 or 12.57.02.
¶ 12.57.01 No Prior Art Relied Upon
No prior art is relied upon by the examiner in the rejection of the claims under appeal.
¶ 12.57.02 Listing of the Prior Art of Record Relied Upon
The following is a listing of the prior art of record 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.
¶ 12.59 Grounds of Rejection
(10) Grounds of Rejection
The following ground(s) of rejection are applicable to the appealed claims:
Examiner Note
Explain each ground of rejection or refer to the single prior Office action which clearly sets forth the rejection and complies with appropriate paragraphs i - vi below:
(i) For each rejection under 35 U.S.C. 112, first paragraph, the Examiner's Answer or a single prior action, 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 or single prior action, 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 or single prior action, 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 or single prior action, 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 any difference between the rejected claims and the prior art relied on and shall explain how the claimed subject matter is rendered unpatentable over the prior art. If the rejection is based upon a combination of references, the Examiner's Answer, or single prior action, shall explain the rationale for making the combination.
(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, or single prior action, shall specifically explain the basis for the particular rejection.
(i) For each rejection under 35 U.S.C. 112, first paragraph, the Examiner's Answer or a single prior action, 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 or single prior action, 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 or single prior action, 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 or single prior action, 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 any difference between the rejected claims and the prior art relied on and shall explain how the claimed subject matter is rendered unpatentable over the prior art. If the rejection is based upon a combination of references, the Examiner's Answer, or single prior action, shall explain the rationale for making the combination.
(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, or single prior action, shall specifically explain the basis for the particular rejection.
¶ 12.59.01 Reference to Rejection in Prior Office Action
Claim [1] rejected under 35 U.S.C. [2]. This rejection is fully set forth in prior Office action, Paper No. [3].
Examiner Note
1. In bracket 1, insert the claims subject to this ground of rejection.
2. In bracket 2, insert the section of 35 U.S.C. under which the claims are rejected.
3. In bracket 3, insert the Paper No. of the Office action in which the rejection is set forth in detail.
¶ 12.61 Response to Argument
(11) Response to Argument
Examiner Note
1. If an issue raised by appellant was fully responded to under the "Grounds of Rejection" 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," a full response must be provided after this form paragraph.
¶ 12.63 Request to Present Oral Arguments
The 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 appellant and the primary examiner intends to present an oral argument.
2. If appellant's request for an oral hearing has been made before or with the brief, this form paragraph may be included at the end of the Examiner's Answer.
3. If appellant's request for an oral hearing has been made after the Examiner's Answer, this form paragraph may be included in an acknowledgment of reply brief (see form paragraph 12.47), or in a separate letter on a form PTOL-90.
¶ 12.79 Examiner's Answer, Conclusion
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.
For a case having a patentability report, see MPEP § 705.01(a).
If the examiner requests an oral hearing, the request should appear in the last paragraph of the examiner's answer. See the "Participation by Examiner" discussion in MPEP § 1209.
Up to two examiners are permitted to attend any one hearing as observers, where the case is related to the examiners' field of technology. Such attendance by examiners is considered to be desirable for the experience and educational benefits to the examiners.
If the appellant has requested an oral hearing, and the examiner wishes to attend as an observer, the examiner should include a statement that he/she will attend the hearing: (A) as the last paragraph of the examiner's answer, if appellant's request for an oral hearing has been made before or with the brief, or (B) in an acknowledgement of the reply brief or in a separate letter on form PTOL-90, if appellant's request for an oral hearing has been made after the examiner's answer. Also, the examiner should make a notation "Examiner will attend (but not participate in) hearing" on the face of the file wrapper below the box for the examiner's name.
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