What are the appellant’s options when an Examiner’s Answer includes new grounds of rejection?
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.
When an Examiner’s Answer includes new grounds of rejection, the appellant has two main options:
- Reopen prosecution: File a reply under 37 CFR 1.111 within two months of the Examiner’s Answer.
- Maintain the appeal: File a reply brief under 37 CFR 41.41 within two months of the Examiner’s Answer.
The MPEP provides specific guidance: “Accordingly, appellant must within TWO MONTHS from the date of this answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection: (1) Reopen prosecution… (2) Maintain appeal…“
It’s crucial to note that extensions of time under 37 CFR 1.136(a) are not applicable to this two-month period. Failure to respond may result in dismissal of the appeal for the claims subject to the new grounds of rejection.