What happens if an appeal brief doesn’t address all grounds of rejection?
If an appeal brief fails to address all grounds of rejection stated by the examiner, it can have serious consequences. According to MPEP 1205.02:
“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”
This means that failing to address a ground of rejection in the appeal brief is essentially giving up the right to challenge that rejection. The Board of Patent Appeals and Interferences (BPAI) may uphold the rejection without further consideration. It’s crucial for appellants to thoroughly address all grounds of rejection in their appeal brief to maintain their right to challenge these rejections.
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