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Code of Federal Regulations (Last Updated: May 6, 2024) |
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Title 37 - Patents, Trademarks, and Copyrights |
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Chapter I - United States Patent and Trademark Office, Department of Commerce |
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SubChapter A - General |
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Part 1 - Rules of Practice in Patent Cases |
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Subpart H - Inter Partes Reexamination of Patents That Issued From an Original Application Filed in the United States on or After November 29, 1999 |
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Appeal to the Board of Patent Appeals and Interferences in Inter Partes Reexamination |
§ 1.969 - Examiner's answer in inter partes reexamination.
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(a) The primary examiner in an
inter partes reexamination appeal may, within such time as directed by the Director, furnish a written statement in answer to the patent owner's and/or third party requester's appellant brief or respondent brief including, as may be necessary, such explanation of the invention claimed and of the references, the grounds of rejection, and the reasons for patentability, including grounds for not adopting a proposed rejection. A copy of the answer shall be supplied to all parties to the reexamination proceeding. If the primary examiner finds that the appeal is not regular in form or does not relate to an appealable action, he or she shall so state.(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.