Can an examiner’s answer include new grounds of rejection?
No, an examiner’s answer cannot include new grounds of rejection in an inter partes reexamination proceeding. This is explicitly stated in MPEP 2677, which cites 37 CFR 41.69(b): “An examiner’s answer may not include a new ground of rejection.”
If the examiner determines that a new ground of rejection is necessary, they must reopen prosecution by issuing a new Office action. The MPEP states:
“Accordingly, prosecution must be reopened for any withdrawal of a rejection or of a determination of patentability. Before issuing the action reopening prosecution, the examiner will consult with his or her CRU SPRS to discuss at what point in the prosecution the prosecution should be reopened, and then the examiner will prepare an appropriate Office action.”
This ensures that the parties have a fair opportunity to respond to any new rejections before the appeal process continues.
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