What happens when the Board makes a new rejection under 37 CFR 41.50(b)?

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 the Board makes a new rejection under 37 CFR 41.50(b), the appellant has two options:

1. Elect to proceed before the examiner:
• The Board’s affirmance is treated as non-final.
• Appellant must amend the newly rejected claims or submit new evidence, or both.
• Prosecution reopens before the examiner.
2. Request rehearing of the new rejection:
• Must be filed within 2 months from the Board’s decision.
• Includes rehearing of both the new rejection and the affirmance.

The MPEP states: If the appellant elects to proceed before the examiner with regard to the new rejection (see MPEP § 1214.01, subsection I., the Board’s affirmance will be treated as nonfinal, and no request for rehearing of the affirmance need be filed at that time.