MPEP § 1207.03(c) — Appellant’s Reply to New Grounds of Rejection (Annotated Rules)
§1207.03(c) Appellant's Reply to New Grounds of Rejection
This page consolidates and annotates all enforceable requirements under MPEP § 1207.03(c), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Appellant's Reply to New Grounds of Rejection
This section addresses Appellant's Reply to New Grounds of Rejection. Primary authority: 37 CFR 41.39(b), 37 CFR 41.40, and 37 CFR 41.39. Contains: 3 requirements, 1 guidance statement, 2 permissions, and 6 other statements.
Key Rules
New Ground of Rejection in Answer
The provisions of 37 CFR 41.39(b) apply only to rejections that are designated as new grounds of rejection in the examiner's answer. If appellant believes there is an undesignated new ground of rejection, review is by way of the procedure established in 37 CFR 41.40.
If appellant requests that prosecution be reopened, the appellant must file a reply that addresses each new ground of rejection set forth in the examiner’s answer in compliance with 37 CFR 1.111 within two months from the mailing of the examiner’s answer. The reply may also include amendments, evidence, and/or arguments directed to claims not subject to the new ground of rejection or other rejections. If there is an after-final amendment (or affidavit or other evidence) that was not entered, appellant may include such amendment (or affidavit or other evidence) in the reply to the examiner’s answer.
If appellant requests that prosecution be reopened, the appellant must file a reply that addresses each new ground of rejection set forth in the examiner’s answer in compliance with 37 CFR 1.111 within two months from the mailing of the examiner’s answer. The reply may also include amendments, evidence, and/or arguments directed to claims not subject to the new ground of rejection or other rejections. If there is an after-final amendment (or affidavit or other evidence) that was not entered, appellant may include such amendment (or affidavit or other evidence) in the reply to the examiner’s answer.
If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, the examiner should provide a time period for appellant to complete the reply pursuant to 37 CFR 1.135(c). See MPEP § 714.03. If the reply is not bona fide (e.g., does not address the new ground of rejection) and the two-month time period has expired, examiner must sua sponte dismiss the appeal. See subsection “III. Failure to Reply to a New Ground of Rejection” below.
If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, the examiner should provide a time period for appellant to complete the reply pursuant to 37 CFR 1.135(c). See MPEP § 714.03. If the reply is not bona fide (e.g., does not address the new ground of rejection) and the two-month time period has expired, examiner must sua sponte dismiss the appeal. See subsection “III. Failure to Reply to a New Ground of Rejection” below.
Once appellant files a reply in compliance with 37 CFR 1.111 in response to an examiner’s answer that contains a new ground of rejection, the examiner must reopen prosecution by entering and considering the reply. The examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
The reply brief may include new arguments responsive to the designated new grounds of rejection. Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the appeal, unless good cause is shown.
As specified in 37 CFR 41.35, jurisdiction over the proceeding passes to the Board on filing of a reply brief or the expiration of time to file a reply brief. Therefore, examiners will not normally make determinations as to the sufficiency of a reply to a new ground of rejection.
If appellant fails to timely file a reply under 37 CFR 1.111 or a reply brief in response to an examiner’s answer that contains a new ground of rejection, the appeal will be sua sponte dismissed as to the claims subject to the new ground of rejection. If all of the claims under appeal are subject to the new ground of rejection, the entire appeal will be dismissed.
If appellant fails to timely file a reply under 37 CFR 1.111 or a reply brief in response to an examiner’s answer that contains a new ground of rejection, the appeal will be sua sponte dismissed as to the claims subject to the new ground of rejection. If all of the claims under appeal are subject to the new ground of rejection, the entire appeal will be dismissed.
Examiner's Answer Content
The provisions of 37 CFR 41.39(b) apply only to rejections that are designated as new grounds of rejection in the examiner's answer. If appellant believes there is an undesignated new ground of rejection, review is by way of the procedure established in 37 CFR 41.40.
The reply brief may include new arguments responsive to the designated new grounds of rejection. Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the appeal, unless good cause is shown.
Three-Month Issue Fee Period
The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. See 37 CFR 41.39(c).
Abandonment – Insufficient Reply
If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, the examiner should provide a time period for appellant to complete the reply pursuant to 37 CFR 1.135(c). See MPEP § 714.03. If the reply is not bona fide (e.g., does not address the new ground of rejection) and the two-month time period has expired, examiner must sua sponte dismiss the appeal. See subsection “III. Failure to Reply to a New Ground of Rejection” below.
Amendments Adding New Matter
Once appellant files a reply in compliance with 37 CFR 1.111 in response to an examiner’s answer that contains a new ground of rejection, the examiner must reopen prosecution by entering and considering the reply. The examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
Appeal Brief Timing
If appellant requests that the appeal be maintained, the appellant must file a reply brief that addresses each new ground of rejection set forth in the answer in compliance with 37 CFR 41.37(c)(1)(vii) within two months from the mailing of the answer. The reply brief should include the following items, with each item starting on a separate page, so as to follow the other requirements of a brief as set forth in 37 CFR 41.37(c):
- (1) Identification page setting forth the appellant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (i.e., Reply Brief);
- (2) Argument page(s).
Reply Brief Filing
Unless the Board remands the appeal under 37 CFR 41.50(a)(1) for further action by the examiner, the examiner may not answer the reply brief. Jurisdiction passes to the Board immediately on filing of a reply brief or expiration of the period to do so.
Jurisdiction Transfer to Board
Unless the Board remands the appeal under 37 CFR 41.50(a)(1) for further action by the examiner, the examiner may not answer the reply brief. Jurisdiction passes to the Board immediately on filing of a reply brief or expiration of the period to do so.
PTAB Jurisdiction
If the appeal is dismissed by the Board, the examiner should follow the procedure set forth in MPEP § 1215.
Citations
| Primary topic | Citation |
|---|---|
| Amendments Adding New Matter New Ground of Rejection in Answer | 37 CFR § 1.111 |
| Abandonment – Insufficient Reply New Ground of Rejection in Answer | 37 CFR § 1.135(c) |
| Three-Month Issue Fee Period | 37 CFR § 1.136(a) |
| Three-Month Issue Fee Period | 37 CFR § 1.136(b) |
| Amendments Adding New Matter New Ground of Rejection in Answer | 37 CFR § 1.17(p) |
| Three-Month Issue Fee Period | 37 CFR § 1.550(c) |
| Amendments Adding New Matter New Ground of Rejection in Answer | 37 CFR § 1.97(c) |
| New Ground of Rejection in Answer | 37 CFR § 41.35 |
| Appeal Brief Timing | 37 CFR § 41.37(c) |
| Appeal Brief Timing | 37 CFR § 41.37(c)(1)(vii) |
| Examiner's Answer Content New Ground of Rejection in Answer | 37 CFR § 41.39(b) |
| – | 37 CFR § 41.39(b)(1) |
| Three-Month Issue Fee Period | 37 CFR § 41.39(c) |
| Examiner's Answer Content New Ground of Rejection in Answer | 37 CFR § 41.40 |
| – | 37 CFR § 41.41 |
| Jurisdiction Transfer to Board Reply Brief Filing | 37 CFR § 41.50(a)(1) |
| PTAB Jurisdiction | MPEP § 1215 |
| Amendments Adding New Matter New Ground of Rejection in Answer | MPEP § 706.07(a) |
| Abandonment – Insufficient Reply New Ground of Rejection in Answer | MPEP § 714.03 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 1207.03(c) — Appellant’s Reply to New Grounds of Rejection
Source: USPTO1207.03(c) Appellant’s Reply to New Grounds of Rejection [R-08.2017]
37 CFR 41.39 Examiner’s answer.
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- (b) Appellant’s response to new ground of rejection. If an
examiner’s answer contains a rejection designated as a new ground of
rejection, appellant must within two months from the date of the examiner’s
answer exercise one of the following two options to avoid sua sponte
dismissal of the appeal as to the claims subject to the new ground of
rejection:
- (1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
- (2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address as set forth in § 41.37(c)(1)(iv) each new ground of rejection and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.
*****
The provisions of 37 CFR 41.39(b) apply only to rejections that are designated as new grounds of rejection in the examiner’s answer. If appellant believes there is an undesignated new ground of rejection, review is by way of the procedure established in 37 CFR 41.40.
The two month time period for reply is not extendable under 37 CFR 1.136(a), but is extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. See 37 CFR 41.39(c).
I. REQUEST THAT PROSECUTION BE REOPENED BY FILING A REPLYIf appellant requests that prosecution be reopened, the appellant must file a reply that addresses each new ground of rejection set forth in the examiner’s answer in compliance with 37 CFR 1.111 within two months from the mailing of the examiner’s answer. The reply may also include amendments, evidence, and/or arguments directed to claims not subject to the new ground of rejection or other rejections. If there is an after-final amendment (or affidavit or other evidence) that was not entered, appellant may include such amendment (or affidavit or other evidence) in the reply to the examiner’s answer.
If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, the examiner should provide a time period for appellant to complete the reply pursuant to 37 CFR 1.135(c). See MPEP § 714.03. If the reply is not bona fide (e.g., does not address the new ground of rejection) and the two-month time period has expired, examiner must sua sponte dismiss the appeal. See subsection “III. Failure to Reply to a New Ground of Rejection” below.
Once appellant files a reply in compliance with 37 CFR 1.111 in response to an examiner’s answer that contains a new ground of rejection, the examiner must reopen prosecution by entering and considering the reply. The examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP § 706.07(a).
II. REQUEST THAT THE APPEAL BE MAINTAINED BY FILING A REPLY BRIEFIf appellant requests that the appeal be maintained, the appellant must file a reply brief that addresses each new ground of rejection set forth in the answer in compliance with 37 CFR 41.37(c)(1)(vii) within two months from the mailing of the answer. The reply brief should include the following items, with each item starting on a separate page, so as to follow the other requirements of a brief as set forth in 37 CFR 41.37(c):
- (1) Identification page setting forth the appellant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner and the title of the paper (i.e., Reply Brief);
- (2) Argument page(s).
The reply brief must also be in compliance with requirements set forth in 37 CFR 41.41, e.g., it cannot include any new amendment or affidavit. If the reply brief is accompanied by any amendment or evidence, it will be treated as a request that prosecution be reopened under 37 CFR 41.39(b)(1) assuming the answer contained a rejection designated as a new ground.
The reply brief may include new arguments responsive to the designated new grounds of rejection. Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the appeal, unless good cause is shown.
Unless the Board remands the appeal under 37 CFR 41.50(a)(1) for further action by the examiner, the examiner may not answer the reply brief. Jurisdiction passes to the Board immediately on filing of a reply brief or expiration of the period to do so.
III. FAILURE TO REPLY TO A NEW GROUND OF REJECTIONAs specified in 37 CFR 41.35, jurisdiction over the proceeding passes to the Board on filing of a reply brief or the expiration of time to file a reply brief. Therefore, examiners will not normally make determinations as to the sufficiency of a reply to a new ground of rejection.
If appellant fails to timely file a reply under 37 CFR 1.111 or a reply brief in response to an examiner’s answer that contains a new ground of rejection, the appeal will be sua sponte dismissed as to the claims subject to the new ground of rejection. If all of the claims under appeal are subject to the new ground of rejection, the entire appeal will be dismissed.
If the appeal is dismissed by the Board, the examiner should follow the procedure set forth in MPEP § 1215.