[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2008]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR41.39]

[Page 394-395]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
  CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF 
                                COMMERCE
 
PART 41_PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES--Table of Contents
 
                       Subpart B_Ex Parte Appeals
 
Sec. 41.39  Examiner's answer.

    (a)(1) The primary examiner may, within such time as may be directed 
by the Director, furnish a written answer to the appeal brief including 
such explanation of the invention claimed and of the references relied 
upon and grounds of rejection as may be necessary, supplying a copy to 
appellant. If the primary examiner determines that the appeal does not 
comply with the provisions of Sec. Sec. 41.31 and 41.37 or does not 
relate to an appealable action, the primary examiner shall make such 
determination of record.
    (2) An examiner's answer may include a new ground of rejection.
    (b) 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 Sec. 1.111 of this title 
with or without amendment or submission of affidavits (Sec. Sec. 1.130, 
1.131 or 1.132 of this 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 Sec. 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 Sec. 41.41. Such a reply brief must 
address each new ground of rejection as set forth in Sec. 
41.37(c)(1)(vii) and should follow the other requirements of a brief as 
set forth in Sec. 41.37(c). A reply brief may not be accompanied by any 
amendment, affidavit (Sec. Sec. 1.130, 1.131 or 1.132 of this 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 under Sec. 1.136(a) of this title for patent 
applications are not applicable to the time period set forth in this 
section. See Sec. 1.136(b) of this title for extensions of time to 
reply for patent applications and Sec. 1.550(c) of this title for 
extensions of time to reply for ex parte reexamination proceedings.

[[Page 395]]


    Effective Date Note: At 73 FR 32975, June 10, 2008, Sec. 41.39 was 
revised, effective December 10, 2008. For the convenience of the user, 
the revised text is set forth as follows:


 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
  CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF 
                                COMMERCE
 
PART 41_PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES--Table of Contents
 
                       Subpart B_Ex Parte Appeals
 
Sec. 41.39  Examiner's answer.

    (a) Answer. If the examiner determines that the appeal should go 
forward, then within such time and manner as may be established by the 
Director the examiner shall enter an examiner's answer responding to the 
appeal brief.
    (b) No new ground of rejection. An examiner's answer shall not 
include a new ground of rejection.