What happens if an appellant chooses to reopen prosecution after a new ground of rejection?

If an appellant chooses to reopen prosecution after the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection, the process is as follows, according to MPEP 1213.02:

1. The appellant submits an amendment to the rejected claims, new evidence, or both.
2. The case is remanded to the examiner for reconsideration.
3. The new ground of rejection is binding on the examiner unless the amendment or new evidence overcomes it.
4. If the examiner maintains the rejection, the appellant may appeal to the Board again.

The MPEP states:

“The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.”

This process allows the appellant to address the new ground of rejection directly with the examiner before potentially returning to the Board.

To learn more:

• PTAB
• new ground of rejection
• reopen prosecution
• patent appeal
• examiner reconsideration