¶ 26.59.01 Findings of Patentability
(11) Findings of Patentability
The following findings of patentability, i.e., determinations of inapplicability of a proposed rejection, are applicable to the appealed claims.
[1]
Examiner Note:
In bracket 1, explain each determination of inapplicability of a proposed rejection, or refer to the RAN if it clearly and completely sets forth the determination of inapplicability of a proposed rejection and complies with appropriate paragraphs i-vi below:
(i) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 112, first paragraph; the examiner’s answer shall explain how the first paragraph of 35 U.S.C. 112 is complied with, including, as appropriate, how the specification and drawings, if any, (a) do describe the subject matter defined by each of the claims proposed for rejection, and/or (b) would in fact enable any person skilled in the art to make and use the subject matter defined by each of the claims proposed for rejection without undue experimentation.
(ii) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 112, second paragraph; the examiner’s answer shall explain how the claims do particularly point out and distinctly claim the subject matter which "applicant" regards as the invention.
(iii) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 102; the examiner’s answer shall explain why the claims proposed for rejection are not anticipated and patentable under 35 U.S.C. 102, pointing out which limitations recited in the claims proposed for rejection are not found in the prior art relied upon in the proposed rejection.
(iv) For each determination of inapplicability of a proposed rejection of the appealed claims under 35 U.S.C. 103; the examiner’s answer shall point out which limitations recited in the patentable claims are not found in the prior art relied upon in the proposed rejection, shall identify the difference between the patentable claims and the prior art relied upon by the third party requester and shall explain why the claimed subject matter is patentable over the prior art relied on by the third party requester. If the third party requester’s proposed rejection is based upon a combination of references, the examiner’s answer shall explain the rationale for not making the combination.
(v) For each third party requester proposed rejection under 35 U.S.C. 102 or 103 where there are questions as to how limitations in the claims define over features in the prior art even after the examiner complies with the requirements of (iii) and (iv) above, the examiner shall compare at least one of the claims proposed for rejection feature-by-feature with the prior art relied on in the proposed rejection. The comparison shall align the language of the claim side-by-side with a reference to the specific page or column, line number, drawing reference number, and quotation from the reference, as appropriate.
(vi) For each determination of inapplicability of a proposed rejection, other than those referred to in paragraphs (i) to (v) of this section, the examiner’s answer shall specifically explain why there is insufficient basis for making the particular proposed rejection.