Should an examiner conduct a new search after a complete reversal by the PTAB?
No, an examiner should not conduct a new search after a complete reversal by the Patent Trial and Appeal Board (PTAB). The MPEP explicitly states:
“The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references.”
This guidance is particularly important when the application has been transferred to a different examiner. The MPEP further emphasizes:
“This is particularly so where the application or ex parte reexamination proceeding has meanwhile been transferred or assigned to an examiner other than the one who rejected the claims leading to the appeal. The second examiner should give full faith and credit to the prior examiner’s search.”
Examiners are expected to respect the PTAB’s decision and the prior examiner’s work, focusing on moving the application forward based on the existing record.
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