Can new grounds of rejection be introduced in an Examiner’s Answer?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Yes, new grounds of rejection can be introduced in an Examiner’s Answer, but they must follow specific procedures: New grounds of rejection must be prominently identified in the Answer. They require approval from a Technology Center Director or designee. The appellant has specific rights to respond to new grounds of rejection. The MPEP states: “ Under the subheading ‘NEW GROUNDS OF REJECTION,’ the examiner must set forth any new grounds of rejection. ” Additionally, “ An examiner’s answer that contains a new ground of rejection must be approved and signed by the Director (or their designee). “ Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Designate New Ground of Rejection Clearly MPEP 1207.01 Required Approval Required for New Grounds of Rejection MPEP 1207.01 Required Examiner Must Set Forth New Ground in Answer MPEP 1207.03 Recommended Requirement for New Ground of Rejection in Answer MPEP 1207.03(b) Prohibited New Ground of Rejection Based on Amendment or Information Disclosure Statement MPEP 1207.04 Permitted TC Director Approval for New Ground of Rejection MPEP 1207.01 Director Approval Required for New Grounds of Rejection MPEP 1207.01 Required Evidence Must Relate to New Ground of Rejection MPEP 1207 Required Requirement for Responding to New Grounds of Rejection Without Petition MPEP 1207.03(b) Recommended Examiner Must Not Introduce New Grounds Unless Necessitated MPEP 1207.05 Permitted Other Related FAQs 5 FAQs Collapse What is a new ground of rejection in patent examination? What constitutes a new ground of rejection in patent examination? What are examples of actions that do not constitute a new ground of rejection in an Examiner&#8217;s Answer? Ca...