What are the options available to an appellant after the Board designates a new ground of rejection?

When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant has three options for each claim so rejected:

• Reopen prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1))
• Request rehearing before the Board (37 CFR 41.50(b)(2))
• File a request for continued examination (RCE)

The MPEP states: “When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant, as to each claim so rejected, has the option of: (A) reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1)); (B) requesting rehearing before the Board (37 CFR 41.50(b)(2)); or (C) filing a request for continued examination in which case the decision by the Board is the law of the case.“

To learn more:

• New Ground of Rejection
• Board of Patent Appeals
• Patent Prosecution
• Appeal Process