Legal Definitions - examiner's answer

The examiner's answer is a formal document filed by a patent examiner during the appeal process for a patent application. When an inventor or company appeals a patent examiner's decision to reject their application, they submit an "appeal brief" outlining their arguments against the rejection.

In response, the examiner drafts and files an "examiner's answer." This document serves to:

• Rebut the arguments presented by the applicant in their appeal brief.
• Defend the examiner's original decision to reject the patent application.
• Provide a detailed explanation of the legal and factual basis for the rejection, often referencing specific sections of patent law and prior art (existing inventions or publications).

The examiner's answer is submitted to the Board of Patent Appeals and Interferences (now primarily the Patent Trial and Appeal Board), which reviews both the applicant's appeal brief and the examiner's answer before making a final decision on the patentability of the invention.

Here are some examples of when an examiner's answer would be filed:

• Example 1: Novelty and Obviousness Rejection

  An inventor applies for a patent on a new type of self-cleaning solar panel. The patent examiner rejects the application, arguing that the cleaning mechanism is too similar to existing technologies and therefore lacks novelty or is obvious. The inventor then files an appeal brief, presenting detailed arguments and evidence to demonstrate the unique and non-obvious aspects of their invention. In response, the examiner drafts an examiner's answer, meticulously explaining why, despite the inventor's arguments, the claimed invention still falls short of the legal requirements for novelty and non-obviousness, citing specific prior art patents or publications to support their position.

• Example 2: Insufficient Disclosure Rejection

  A biotechnology company seeks a patent for a complex genetic sequencing method. The examiner rejects the application, stating that the written description does not provide enough detail for someone skilled in the field to reproduce the method (a common ground for rejection known as "lack of enablement"). The company files an appeal brief, providing additional technical data and expert declarations to prove that their disclosure is sufficient. The examiner then submits an examiner's answer, reiterating their concerns about the clarity and completeness of the original patent application and explaining why the new information in the appeal brief still does not adequately address the enablement requirement under patent law.

• Example 3: Claim Scope Rejection

  An inventor develops a unique algorithm for optimizing traffic flow in smart cities. The patent examiner rejects several of the inventor's claims, asserting that they are too broad and encompass methods already known or are not clearly defined. The inventor files an appeal brief, arguing that their claims are precisely worded and distinct from any prior art. The examiner subsequently prepares an examiner's answer to counter these arguments, pointing to specific phrases within the claims and comparing them to existing patents or scientific literature to demonstrate why the claims, as currently written, are still unpatentable due to their overly broad scope or lack of specificity.