What actions can an examiner take if the Board affirms some rejections but reverses others?

When the Board affirms some rejections but reverses others in a patent application, the examiner has several options. According to MPEP 1214, the examiner should take one of the following actions:

1. Allow the application: If the affirmed rejection(s) can be overcome by an examiner’s amendment, the examiner may allow the application after obtaining approval from the applicant.
2. Issue a new Office action: The examiner may issue a new non-final Office action addressing the claims that remain rejected and indicating the claims that are now allowable.
3. Reopen prosecution: In rare cases, with the approval of the TC Director, the examiner may reopen prosecution to enter a new ground of rejection.

The MPEP states:

“The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references.”

This means that any new action should be based on the existing record unless there are extraordinary circumstances justifying a new search or rejection.

To learn more:

• Board decision
• partial reversal
• examiner action
• patent application