Can an applicant prevent the examiner from reopening prosecution after an appeal brief is filed?

An applicant cannot directly prevent an examiner from reopening prosecution after an appeal brief is filed. However, there are certain limitations and potential actions an applicant can take:

• Limited circumstances: Examiners should only reopen prosecution in specific situations, as outlined in MPEP 1207.04.
• Petition option: If the applicant believes the reopening is improper, they can file a petition under 37 CFR 1.181.
• Examiner’s Answer limitation: Once the Examiner’s Answer is mailed, prosecution should not be reopened unless an amendment under 37 CFR 41.33 necessitates it.

The MPEP states: “The institution of a new ground of rejection that is not necessitated by any amendment to the claims must be approved by the supervisory patent examiner (SPE) with reasons recorded in the file.” This requirement helps ensure that reopening prosecution is done only when necessary.

To learn more:

• patent appeal
• reopening prosecution
• applicant rights
• petition process