[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: 37CFR41.69]

[Page 405]
 
              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 C_Inter Partes Appeals
 
Sec. 41.69  Examiner's answer.

    (a) The primary examiner may, within such time as directed by the 
Director, furnish a written answer to the owner's and/or requester's 
appellant brief or respondent brief including, as may be necessary, such 
explanation of the invention claimed and of the references relied upon, 
the grounds of rejection, and the reasons for patentability, including 
grounds for not adopting any proposed rejection. A copy of the answer 
shall be supplied to the owner and all requesters. If the primary 
examiner determines that the appeal does not comply with the provisions 
of Sec. Sec. 41.61, 41.66, 41.67 and 41.68 or does not relate to an 
appealable action, the primary examiner shall make such determination of 
record.
    (b) An examiner's answer may not include a new ground of rejection.
    (c) An examiner's answer may not include a new determination not to 
make a proposed rejection of a claim.
    (d) Any new ground of rejection, or any new determination not to 
make a proposed rejection, must be made in an Office action reopening 
prosecution.