What are the options for responding to a new ground of rejection in an examiner’s answer?

According to MPEP 1207.03(c), an appellant has two options when responding to a new ground of rejection in an examiner’s answer:

1. Reopen prosecution: File a reply under 37 CFR 1.111 with or without amendment or submission of affidavits or other evidence. This request will be treated as a request to withdraw the appeal.
2. Maintain appeal: File a reply brief addressing the new ground of rejection as set forth in 37 CFR 41.37(c)(1)(iv).

The MPEP states: “If an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must within two months from the date of the examiner’s 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.“

To learn more:

• new ground of rejection
• examiner’s answer
• appeal
• patent prosecution