How should an examiner address new arguments or evidence in an examiner’s answer?
In an inter partes reexamination proceeding, examiners are not permitted to introduce new grounds of rejection or new findings of patentability in an examiner’s answer. According to MPEP 2677, the examiner’s answer must include an explicit statement that:
“It does not contain any new ground of rejection, and it does not contain any new finding of patentability (i.e., no new determination of inapplicability of a proposed rejection).”
If the examiner determines that new arguments or evidence necessitate a new ground of rejection or a new finding of patentability, they must reopen prosecution by issuing a new Office action. The MPEP states:
“If the examiner feels that further explanation is necessary, he/she should include it in the answer. The examiner’s answer should also include rebuttal of any and all arguments presented in all of the briefs.”
Therefore, examiners should address new arguments within the context of the existing rejections and findings, without introducing new grounds or findings. If substantial new issues arise, the proper course is to reopen prosecution rather than addressing them in the examiner’s answer.
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