MPEP § 1213.02 — New Grounds of Rejection by Board (Annotated Rules)
§1213.02 New Grounds of Rejection by Board
This page consolidates and annotates all enforceable requirements under MPEP § 1213.02, 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.
New Grounds of Rejection by Board
This section addresses New Grounds of Rejection by Board. Primary authority: 37 CFR 41.50(b) and 37 CFR 41.50. Contains: 1 requirement, 2 guidance statements, 2 permissions, and 1 other statement.
Key Rules
Board Decision Types
Under 37 CFR 41.50(b), the Board may, in its decision, make a new rejection of one or more of any of the claims pending in the case, including claims which have been allowed by the examiner. When the Board exercises its authority to make a new ground of rejection it must also designate that rejection as a new ground of rejection.
The Board’s reversal of a rejection should not be interpreted as an instruction to the Examiner to allow the claims so rejected. See MPEP § 1214.04 for further discussion of the procedure following a reversal of the examiner’s decision. The Board’s primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims. Further, since the exercise of authority under 37 CFR 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion.
The Board’s reversal of a rejection should not be interpreted as an instruction to the Examiner to allow the claims so rejected. See MPEP § 1214.04 for further discussion of the procedure following a reversal of the examiner’s decision. The Board’s primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims. Further, since the exercise of authority under 37 CFR 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion.
New Ground of Rejection by Board
Under 37 CFR 41.50(b), the Board may, in its decision, make a new rejection of one or more of any of the claims pending in the case, including claims which have been allowed by the examiner. When the Board exercises its authority to make a new ground of rejection it must also designate that rejection as a new ground of rejection.
See MPEP § 1214.01 for the procedure following a new ground of rejection under 37 CFR 41.50(b).
Board Decision
The Board’s reversal of a rejection should not be interpreted as an instruction to the Examiner to allow the claims so rejected. See MPEP § 1214.04 for further discussion of the procedure following a reversal of the examiner’s decision. The Board’s primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims. Further, since the exercise of authority under 37 CFR 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion.
PTAB Jurisdiction
While the Board is authorized to reject allowed claims, this authorization is not intended as an instruction to the Board to examine every allowed claim in every appealed application. It is, rather, intended to give the Board express authority to act when it becomes apparent, during the consideration of rejected claims, that one or more allowed claims may be subject to rejection on either the same or on different grounds from those applied against the rejected claims.
Citations
| Primary topic | Citation |
|---|---|
| Board Decision Board Decision Types New Ground of Rejection by Board | 37 CFR § 41.50(b) |
| New Ground of Rejection by Board | MPEP § 1214.01 |
| Board Decision Board Decision Types | MPEP § 1214.04 |
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 § 1213.02 — New Grounds of Rejection by Board
Source: USPTO1213.02 New Grounds of Rejection by Board [R-11.2013]
37 CFR 41.50 Decisions and other actions by the Board.
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- (b) New ground of rejection. Should the Board have knowledge of
any grounds not involved in the appeal for rejecting any pending claim, it may
include in its opinion a statement to that effect with its reasons for so
holding, and designate such a statement as a new ground of rejection of the
claim. A new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review. When the Board enters such a non-final
decision, the appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
- (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.
- (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
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- (f) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.
Under 37 CFR 41.50(b), the Board may, in its decision, make a new rejection of one or more of any of the claims pending in the case, including claims which have been allowed by the examiner. When the Board exercises its authority to make a new ground of rejection it must also designate that rejection as a new ground of rejection.
The Board’s reversal of a rejection should not be interpreted as an instruction to the Examiner to allow the claims so rejected. See MPEP § 1214.04 for further discussion of the procedure following a reversal of the examiner’s decision. The Board’s primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims. Further, since the exercise of authority under 37 CFR 41.50(b) is discretionary, no inference should be drawn from a failure to exercise that discretion.
While the Board is authorized to reject allowed claims, this authorization is not intended as an instruction to the Board to examine every allowed claim in every appealed application. It is, rather, intended to give the Board express authority to act when it becomes apparent, during the consideration of rejected claims, that one or more allowed claims may be subject to rejection on either the same or on different grounds from those applied against the rejected claims.
See MPEP § 1214.01 for the procedure following a new ground of rejection under 37 CFR 41.50(b).