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1208.03 Reply Brief - 1200 Appeal
1208.03 Reply Brief
37 CFR 1.193 Examiner's answer and reply brief.
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(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.
Under 37 CFR 1.193(b)(1), appellant may file a reply brief as a matter of right within 2 months from the mailing date of the examiner's answer or supplemental examiner's answer. Extensions of time to file the reply brief may be granted pursuant to 37 CFR 1.136(b) or 1.550(c). The primary examiner must then either: (A) acknowledge receipt and entry of the reply brief by using form paragraph 12.47 on form PTOL-90; or (B) reopen prosecution to respond to the reply brief. See MPEP § 1208.02. A supplemental examiner's answer is not permitted unless the application has been remanded by the Board for such purpose.
Amendments, affidavits, and/or other evidence must be submitted in papers separate from the reply brief, and the entry of such papers is subject to the provisions of 37 CFR 1.116 and 37 CFR 1.195. A paper that contains an amendment (or evidence) is not a reply brief within the meaning of 37 CFR 1.193(b). Such a paper will not be entitled to entry simply because it is characterized as a reply brief.
While 37 CFR 1.193(b)(1) prohibits a supplemental examiner's answer (in the absence of a remand from the Board of Patent Appeals and Interference for such purpose), an examiner may (with supervisory patent examiner approval) respond to a reply brief by reopening prosecution. The acknowledgment of receipt and entry of a reply brief under 37 CFR 1.193(b)(1) is an indication by the examiner that no further response by the examiner is deemed necessary. Thus, a remand by the Board of Patent Appeals and Interference under 37 CFR 1.193(b)(1) in an application containing an acknowledgment of receipt and entry of a reply brief under 37 CFR 1.193(b)(1) for the express purpose of a response by the examiner to the reply brief (a supplemental examiner's answer) should rarely, if ever, be necessary.
It should also be noted that an indication of a change in status of claims (e.g., that certain rejections have been withdrawn as a result of the reply brief) is not a supplemental examiner's answer and is of course permitted. Such an indication of a change in status of claims may be made on form PTOL-90.
For procedure where prosecution is reopened after a reply brief has been filed, see MPEP § 1208.02.
Form paragraph 12.47 may be used to acknowledge receipt and entry of a reply brief.
¶ 12.47 Acknowledgment of Reply Brief
Application No. [1]
Art Unit [2]
The reply brief filed [3] has been entered and considered. The application has been forwarded to the Board of Patent Appeals and Interferences for decision on the appeal.
Examiner Note
1. This form paragraph is to be printed on a blank page for attachment to a PTOL-90 or PTO-90C.
2. If an amendment, an affidavit and/or a declaration has/have been filed with the reply brief, the examiner must notify the appellant in writing whether it has been entered. Unless the amendment, affidavit, and/or declaration place(s) the application in condition for allowance, entry should not be permitted. See 37 CFR 1.116 and 37 CFR 1.195. This is particularly important since 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. See 37 CFR 1.193(b)(1).
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