Can amendments be submitted with a reply brief in response to a new ground of rejection?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. No, amendments cannot be submitted with a reply brief in response to a new ground of rejection. According to MPEP 1207.03(c) : “A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.” This means that if you attempt to submit amendments or evidence with your reply brief, it will automatically be treated as a request to reopen prosecution rather than a continuation of the appeal. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Request to Reopen Prosecution Treats as Appeal Withdrawal MPEP 1207 Request to Reopen Prosecution Before Primary Examiner MPEP 1207 Requirement for New Ground of Rejection in Answer MPEP 1207.03(b) Prohibited Request to Reopen Prosecution After Board Remand MPEP 1207.05 New Ground of Rejection Based on Amendment or Information Disclosure Statement MPEP 1207.04 Permitted Request to Withdraw Appeal Treated as Reopening MPEP 1207.05 Request to Reopen Prosecution Treated as Withdrawal of Appeal MPEP 1211.01 Designate New Ground of Rejection Clearly MPEP 1207.01 Required Option to Reopen Prosecution for New Grounds of Rejection MPEP 1207 Evidence Must Relate to New Ground of Rejection MPEP 1207 Required Other Related FAQs 5 FAQs Collapse What happens if an appellant fails to reply to a new ground of rejection? What should be included in a reply brief addressing a new ground of rejection? What are the options for responding to a new gr...