What are the consequences of introducing a new ground of rejection in an Examiner’s Answer?
What are the consequences of introducing a new ground of rejection in an Examiner’s Answer?
Introducing a new ground of rejection in an Examiner’s Answer can have significant procedural consequences:
- Reopening of prosecution: If the examiner designates a rejection as a new ground, prosecution must be reopened, allowing the applicant to submit a reply under 37 CFR 1.111.
- Remand to examiner: If the examiner fails to designate a rejection as a new ground when it should have been, the Board may remand the application to the examiner.
- Petition opportunity: The applicant can file a petition under 37 CFR 1.181 if they believe a new ground of rejection was improperly designated (or not designated) by the examiner.
As stated in MPEP 1207.03: “If the examiner’s answer contains a rejection designated as a new ground of rejection, appellant must 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) Request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111; or (2) Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41.”
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