What happens if a patent owner doesn’t respond to a new ground of rejection?
If a patent owner does not respond to a new ground of rejection issued by the Board, the consequences are outlined in MPEP 2682:
If the patent owner does not request, or does not properly request, rehearing or reopening of prosecution in accordance with 37 CFR 41.77(b), the Board may terminate the appeal proceeding as to the claim(s) rejected pursuant to 37 CFR 41.77(b) and designate the decision as to any remaining claims final for purposes of judicial review.
This means that if the patent owner fails to take action within the specified time period (usually one month from the Board’s decision), they risk losing their right to contest the new ground of rejection. The Board’s decision may become final for the affected claims, limiting the patent owner’s options to seeking judicial review for any remaining claims.
To learn more: