What are the consequences of requesting a rehearing instead of filing an amendment in response to a new ground of rejection?
When an appellant chooses to request a rehearing under 37 CFR 41.50(b)(2) instead of filing an amendment or new evidence under 37 CFR 41.50(b)(1), there are significant consequences. The MPEP outlines these consequences:
“By proceeding in this manner, the appellant waives their right to further prosecution before the examiner. In re Greenfield, 40 F.2d 775, 5 USPQ 474 (CCPA 1930).“
This waiver has specific implications:
- The appellant cannot later choose to reopen prosecution before the examiner.
- The right to amend claims under 37 CFR 41.50(b)(1) is waived.
- The appellant retains only a limited right to rewrite dependent claims not subject to the new grounds of rejection into independent form.
The MPEP further states: “A request for rehearing accompanied by an appropriate amendment of the claims rejected by the Board, and/or by new evidence, does not constitute a proper request for rehearing under 37 CFR 41.50(b)(2), and will be treated as a submission under 37 CFR 41.50(b)(1).“
It’s crucial for appellants to carefully consider their options and the potential consequences before deciding to request a rehearing instead of filing an amendment.
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