What are the options if a petition to designate a new ground of rejection is not granted?

If a petition to designate a new ground of rejection is not granted, the following options are available:

• The appeal is maintained.
• The appellant is given a two-month time period to file a single reply brief under 37 CFR 41.41.
• Jurisdiction passes to the Patent Trial and Appeal Board (PTAB) upon filing of the reply brief or expiration of the two-month period, whichever is earlier.

The MPEP states: “A decision refusing to grant a petition will provide a two-month time period in which appellant may file only a single reply brief under 37 CFR 41.40.”

It’s important to note that if a reply brief is filed within two months of the examiner’s answer but before a decision on the petition, it will be treated as a request to withdraw the petition and maintain the appeal.

To learn more:

• denied petition
• new ground of rejection
• reply brief
• patent appeal