Can new grounds of rejection be introduced in an examiner’s answer during ex parte reexamination?

Yes, new grounds of rejection can be introduced in an examiner’s answer during ex parte reexamination. According to MPEP 2273:

“The examiner may, however, include in the examiner’s answer a new ground of rejection, in which case appellant would have the right to amend the claims, or take other appropriate action under 37 CFR 41.39(a)(2).”

If a new ground of rejection is introduced:

• The appellant has the right to file a reply under 37 CFR 41.39(a).
• The appellant may request that prosecution be reopened before the examiner by filing a reply under 37 CFR 41.39(a)(2).
• The appellant may file a reply brief as set forth in 37 CFR 41.41 to address the new ground of rejection.

It’s important to note that the introduction of new grounds of rejection in the examiner’s answer is at the discretion of the examiner and should be done judiciously.

To learn more:

• ex parte reexamination
• examiner’s answer
• new grounds of rejection