How can a patent owner request reopening of prosecution after a new ground of rejection?

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.

To request reopening of prosecution after a new ground of rejection, the patent owner must:

• File a response within one month of the Board’s decision (extensions available under 37 CFR 1.956)
• Submit an appropriate amendment of the newly rejected claim(s) and/or new evidence relating to the new ground(s) of rejection

According to MPEP 2682, “Under 37 CFR 41.77(b)(1), the patent owner may amend the claims involved, or substitute new claims to avoid the art or reasons stated by the Board.” The patent owner may also submit evidence relating to the new rejection(s).

It’s important to note that the reopening is limited to the subject matter of the new rejection. As stated in MPEP 2682, “Any amendment or new evidence not directed to that subject matter to which the new rejection was applied will be refused entry and will not be considered.”