Examiner's Answer

[radjo]

Ok here is the situation.

1) final office action from the Examiner
2) submitted response
3) Advisory action from the Examiner
4) Filed the Appeal Brief
5) The examiner responded with new ground of rejection (101) in the Examiner's Answer and gave option of either to reopen the prosecution or to maintain the Appeal
6) We reopened the prosecution since new ground of rejection needed amendment
7) The Examiner gave another final office action
8)we again submitted response
9) again advisory action from the examiner
10) we again submitted the Appeal Brief

Now here is the fun

11) got another Examiner's Answer where the Examiner says new ground of rejection (actually there is none).  I understand new ground of rejection must be approved by technology center director but it has not been.  The Examiner again gives us option of either reopening the prosecution or to maintain the appeal. Can he do that??

Now i am confused what has the Examiner in hi mind. There is no new ground of rejection.  should i file reply brief pointing that there is no new ground of rejection?

Thanks,
Rad

[klaviernista]

There are several possibilities.  The examiner could simply be misusing a form on the PTO's database.  OR, he could be genuinely confused as to whether a new ground of rejection exists (e.g., he changed some words but not the substance of the rejection).  OR, there might be a new ground of rejection, but the basis of the new ground is nuanced and you might be missing it.

Is the examiner allowing you to reopen prosecution without filing an RCE?  If so, that suggests to me that either: 1) you are dealing with a very junior examiner who doesn't know what he/she is doing; or 2) the examiner or his/her SPE s not confident in their grounds of rejection.

Regardless, my suggestion is to call the examiner and ask him to clarify the basis of the new ground of rejection.  If it's a mistake, I would file a response to examiner's answer (and the required interview summary), noting that the new ground of rejection is in error.

As to whether, as a general rule, a practitioner should respond to an examiner's answer, my answer is "YES . . . and no."  I typically always respond to examiner's answers, simply because I don't want the examiner to have the last word, and so that there is no possibility that the examiner raised arguments that were not addressed on appeal.  But in cases of examiner error, it sometimes comes down to a cost/benefit analysis.  I.e., how much it would cost for you to draft and file the response, versus how much benefit is likely obtained from filing that response.  If the examiner made a min ior error that was obvious on its face, there is probably little benefit to be  gleaned from ffiling a response solely to correct that error.  But in your case, the examiner is alleging that there is a new ground of rejection, which may (however unlikely) confuse the board that there is an outsrtanding rejection/argument that has not been addressed by the applicant on appeal.  APersonally I think taking the time to correct that error/misrepresentation is worth it on appeal, if for no other reason than you avoid the possibility of distracting the board with extraneous issues.

[khazzah]

got another Examiner's Answer where the Examiner says new ground of rejection (actually there is none).  I understand new ground of rejection must be approved by technology center director but it has not been.  The Examiner again gives us option of either reopening the prosecution or to maintain the appeal. Can he do that??

The rules are clear on what happens when the Answer states there is a new ground: you must maintain the appeal by filing a reply brief OR you must reopen prosecution (withdraw the appeal) by filing a response.

I don't think the fact that the Examiner didn't comply with the TC signature requirement relieves you of this duty. If you want to fight it, you can file a Petition challenging the propriety of the New Ground -- but you must do this *in addition* to reply brief / response.

Is the examiner allowing you to reopen prosecution without filing an RCE?  If so, that suggests to me that either: 1) you are dealing with a very junior examiner who doesn't know what he/she is doing; or 2) the examiner or his/her SPE s not confident in their grounds of rejection.

The way I read the rule for New Grounds in an Answer (37 CFR >41.39(a)(2)), it's definitely a Response that doesn't require an RCE.

Which is only fair, right? He issued a new ground because the arguments in your brief convinced him.

I've appealed many cases and gotten pros reopened a fair number of times -- but never with a New Ground of Rejection in an Answer. What I see is always the Examiner re-opening pros on his own. I actually prefer the New Grounds in an Answer, because it gives me the right to maintain the appeal if his new grounds are also weak.

In some of my cases where the Examiner re-opened pros after my Appeal Brief, I've "effectively" maintained the appeal by simply refiling a Notice of Appeal plus a brand new Brief with new arguments addressing the new rejections. This strategy saves me paying another round of fees for Notice+Brief.

[klaviernista]

The rules are clear on what happens when the Answer states there is a new ground: you must maintain the appeal by filing a reply brief OR you must reopen prosecution (withdraw the appeal) by filing a response.

You are of course correct, Karen. Thank you for catching my mistake. My prior post should be considered clear evidence as to why I should not answer patent prosecution questions off the cuff when I have had only 4 hours sleep in the past two nights and my morning coffee has not yet had its desired effect. 

New ground of rejection in an examiner's answer = applicant must respond.

General error in an examiner's answer on the other hand -> cost benefit analysis as stated in my prior post.