MPEP Q & A 202: Components of Examiner’s Answer in an Appeal

mpep-podcast-800

Question:

What should an examiner’s answer in an appeal include?

Answer:

An examiner’s answer should include, under appropriate headings, in the order indicated, the following items:

(1) Grounds of Rejection to be Reviewed on Appeal.

A statement that every ground 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decision) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.”

The examiner must treat all pending, rejected claims as being on appeal, and must maintain all of the rejections set forth in the Office action from which the appeal is taken, unless appellant has overcome the rejection (e.g., by submitting persuasive arguments, an acceptable terminal disclaimer, or evidence). In situations where the appellant makes a request to hold a rejection in abeyance or did not present any argument on a rejection in the appeal brief, the examiner should maintain the rejection in the examiner’s answer.

This section must also include New Grounds of Rejection – Under the subheading “NEW GROUNDS OF REJECTION,” the examiner must set forth any new grounds of rejection. An examiner’s answer that contains a new ground of rejection must be approved and signed by the Director (or their designee). For each new ground of rejection, a complete explanation supporting the rejection must be provided with a proper reference to the applicable statute, prior art references relied upon, and the claim numbers of the claims that are subject to the rejection in the examiner’s answer.

(2) Response to Argument.

A statement of whether the examiner disagrees with each of the arguments of appellant in the brief with respect to the issues presented and an explanation of the reasons for disagreement with any such argument. The examiner must use headings and subheadings paralleling the headings and subheadings utilized in the appellant’s brief.

Chapter Details:

The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeals.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1207.02 of the MPEP.  The following is a brief summary of section 1207.02.

1207.02 Contents of Examiner’s Answer

The examiner’s answer should include, under appropriate headings, in the order indicated, the following items:

The examiner’s answer should include, under appropriate headings, in the order indicated, the following items:

(1) Grounds of Rejection to be Reviewed on Appeal.

  • Withdrawn Rejections
  • New Grounds of Rejection

(2) Response to Argument.