The Examiner Answer can be a very important stage of the ex parte appeal process. It is at this stage that Examiners may want to make up for weak Office Action positions and set themselves up for getting affirmed at the Board. Understanding the Examiner incentives and tactical options, however, can give the patent practitioner the upper hand.
The Examiner Answer is technically optional (“The primary examiner may, within such time as may be directed by the Director, furnish a written answer to the appeal brief.” 37 CFR 41.39). Examiners usually prepare them because of the disposal credits that they receive. Outside of this most obvious incentive, Examiners also have an opportunity to present their case most favorably to the Board panel that will decide the case. Sometimes the analysis in the Answer can improperly go out of bounds. Since an appellant only gets 60 days to respond to an Examiner Answer (no extensions), a timely assessment of the Examiner Answer is critical.
Timeline image attributed to Fitch, Even, Tabin & Flannery LLP
One way that Examiners cure deficiencies in their pending rejections is by creeping their arguments closer to the definition of a new ground of rejection (new analysis or evidence described below). It requires a technology center signature to introduce a new rejection at the Examiner Answer stage, which makes formal new rejections unattractive to Examiners. We recently pointed out a growing awareness in the patent bar of improper Examiner Answers that include a new rejection without designating it as new.
There’s a good option for combating such an improper new ground of rejection that has not been so designated: file a Petition to designate the rejection as new and reopen prosecution. 1207.03(b). This petition tolls the 60 day window to respond to the Examiner’s Answer so that a resolution will not affect the ability to proceed with an appeal.
Another technique was very recently blessed by the Federal Circuit in In re Durance, 2017-1486 (Jun 1, 2018). This technique includes directly arguing against an improper new rejection in the Reply Brief–even if this appellant argument had never been argued before. In Durance, the Examiner in the Examiner Answer argued for the first time that there was no structural difference between the claimed invention and the combined teachings of the prior art references, citing a structural identity argument. The appellant challenged the structural-identity rejection in their reply brief, but it was not considered by the Board because of alleged waiver. This was error, the Federal Circuit held.
The Reply Brief, like the Examiner Answer, is also optional. There is not good data on whether filing a reply brief helps improve the chance of succeeding on appeal (although Anticipat is currently ingesting prosecution data to show this). But filing a Reply Brief can help the Board see defects in the Examiner’s case. This includes improper new rejections.
Whether an Examiner Answer includes an improper new rejection depends very much on the facts. The MPEP outlines what constitutes a new ground of rejection. See MPEP 1207.03(a). Here are factual factors for constituting a new ground of rejection.
- Changing the statutory basis of rejection from 35 U.S.C. 102 to 35 U.S.C. 103.
- Changing the statutory basis of rejection from 35 U.S.C. 103 to 35 U.S.C. 102, based on a different teaching.
- Citing new calculations in support of overlapping ranges.
- Citing new structure in support of structural obviousness.
- Pointing to a different portion of the claim to maintain a “new matter” rejection.
In contrast to the above factual situations, no new ground of rejection issue arises when the basic thrust of the rejection remains the same, i.e., an appellant has been given a fair opportunity to react to the rejection. See In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA 1976). Here are factual factors for the rejection not constituting a new ground of rejection.
- Citing a different portion of a reference to elaborate upon that which has been cited previously.
Changing the statutory basis of rejection from 35 U.S.C. 103 to 35 U.S.C. 102, but relying on the same teachings.
Relying on fewer than all references in support of a 35 U.S.C. 103 rejection, but relying on the same teachings.
Changing the order of references in the statement of rejection, but relying on the same teachings of those references.
- Considering, in order to respond to applicant’s arguments, other portions of a reference submitted by the applicant.
A good practice tip is to pay careful attention to arguments in the Examiner Answer. If they are different enough from the arguments on the record, consider pointing this out either in a petition or in a Reply Brief, as appropriate.