37 CFR 41.39 — Examiner’s answer
Ninth Edition, Revision 01.2024
- (a)
Content of examiner’s answer. The primary examiner
may, within such time as may be directed by the Director, furnish a
written answer to the appeal brief.
- (1) An examiner’s answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory action and pre‑appeal brief conference decision), unless the examiner’s answer expressly indicates that a ground of rejection has been withdrawn.
- (2) An examiner’s answer may include a new ground of rejection. For purposes of the examiner’s answer, any rejection that relies upon any Evidence not relied upon in the Office action from which the appeal is taken (as modified by any advisory action) shall be designated by the primary examiner as a new ground of rejection. The examiner must obtain the approval of the Director to furnish an answer that includes a new ground of rejection.
- (b)
Appellant’s response to new ground of rejection. If
an examiner’s answer contains a rejection designated as a new ground
of rejection, appellant must within two months from the date of the
examiner’s answer exercise one of the following two options to avoid
sua sponte dismissal of the appeal as to the claims subject to the new
ground of rejection:
- (1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130 , 1.131 or 1.132 of this of this [ sic] title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
- (2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in § 41.41 . Such a reply brief must address as set forth in § 41.37(c)(1)(iv) each new ground of rejection and should follow the other requirements of a brief as set forth in § 41.37(c) . A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130 , 1.131 or 1.132 of this of this [ sic] title) or other Evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.
- (c) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (a) revised, heading added to (b) introductory text, (b)(1) first two sentences revised, (b)(2) second, third and fourth sentences revised, and heading added to para.(c), 76 FR 72270, Nov. 22, 2011, effective Jan. 23, 2012]
Cited authority
- 37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action
- 37 CFR 1.130 Affidavit or declaration of attribution or prior public disclosure under the Leahy-Smith America Invents Act
- 37 CFR 1.131 Affidavit or declaration of prior invention or to disqualify commonly owned patent or published application as prior art
- 37 CFR 1.132 Affidavits or declarations traversing rejections or objections
- 37 CFR 1.112 Reconsideration before final action
- 37 CFR 41.41 Reply brief
- 37 CFR 41.37 Appeal brief
- 37 CFR 1.136 Extensions of time
- 37 CFR 1.550 Conduct of ex parte reexamination proceedings
Cited by
- 1204.04 Official Record on Appeal
- 1205.01 Time for Filing Appeal Brief
- 1205.02 Appeal Brief Content
- 1206 Amendments and Affidavits or Other Evidence Filed With or After Appeal
- 1207.01 Appeal Conference
- 1207.02 Contents of Examiner’s Answer
- 1207.03 New Ground of Rejection in Examiner’s Answer
- 1207.03(a) Determining Whether a Ground of Rejection is New
- 1207.03(b) Petition to Designate a New Ground of Rejection and to Reopen Prosecution
- 1207.03(c) Appellant's Reply to New Grounds of Rejection
- 1208 Reply Briefs and Fee for Forwarding Appeal
- 1210 Actions Subsequent to Examiner’s Answer but Before Board’s Decision
- 1215.04 Dismissal of Appeal
- 2275 Examiner’s Answer
- 2720 Applications Filed Between June 8, 1995, and May 28, 2000
- 2730 Applications Filed on or After May 29, 2000; Grounds for Adjustment
- 2731 Period of Adjustment
- 37 CFR 1.701 Extension of patent term due to examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000)
- 37 CFR 1.703 Period of adjustment of patent term due to examination delay
- 37 CFR 41.33 Amendments and affidavits or other Evidence after appeal
- 37 CFR 41.35 Jurisdiction over appeal