What options does an appellant have if a new ground of rejection is designated in an Examiner’s Answer?

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.

When a new ground of rejection is designated in an Examiner’s Answer, the appellant has two options according to MPEP 1207.03:

1. Reopen prosecution: The appellant can request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111 within two months from the mailing of the Examiner’s Answer.
2. Maintain the appeal: The appellant can maintain the appeal by filing a reply brief as set forth in 37 CFR 41.41 within two months from the mailing of the Examiner’s Answer.

The MPEP states: “If appellant elects to maintain the appeal, the appellant must file a reply brief to respond to the new ground of rejection within two months from the date of the examiner’s answer.” This highlights the importance of timely response to the new ground of rejection to preserve the appellant’s rights in the appeal process.