What happens if an appellant files both an amendment and a request for rehearing in response to a new ground of rejection?
When an appellant files both an amendment (or new evidence) and a request for rehearing in response to a new ground of rejection, the treatment depends on whether this is done for all or only some of the rejected claims. The MPEP provides guidance on this situation:
“If an appellant files an appropriate amendment or new evidence (see paragraph I below) as to less than all of the claims rejected by the Board under 37 CFR 41.50(b), and a request for rehearing (see paragraph II below) as to the remainder of the claims so rejected, the examiner will not consider the claims for which rehearing was requested. The request for rehearing will be considered by the Board after prosecution before the examiner with respect to the first group of claims is terminated.“
Additionally, the MPEP states: “Argument as to any of the claims rejected by the Board which is not accompanied by an appropriate amendment or new evidence as to those claims will be treated as a request for rehearing as to those claims.“
It’s important to note that a request for rehearing accompanied by an amendment is not considered a proper request under 37 CFR 41.50(b)(2) and will be treated as a submission under 37 CFR 41.50(b)(1).
To learn more: