How can I respond to a new ground of rejection in an examiner’s answer?
If the examiner’s answer includes a new ground of rejection, you have the option to respond and reopen prosecution. The MPEP provides the following guidance: “In response to a new ground of rejection made in an examiner’s answer, appellant may file a reply in compliance with 37 CFR 1.111 that addresses the new ground of…
Read MoreWhen is a reply brief required in a patent appeal?
While a reply brief is normally optional, there are specific circumstances where it becomes mandatory. According to MPEP 1208: “In response to the following, however, appellant is required to file either a reply brief to maintain the appeal or a reply under 37 CFR 1.111 to reopen prosecution: If appellant requests that the appeal be…
Read MoreWhat is the time limit for filing a reply brief in a patent appeal?
According to MPEP 1208, an appellant may file a single reply brief “within the later of two months from the date of either the examiner’s answer, or a decision refusing to grant a petition under 37 CFR 1.181 to designate a new ground of rejection in an examiner’s answer.” The MPEP states: “Under 37 CFR…
Read MoreHow does the MPEP address the reliance on fewer than all references in an Examiner’s Answer?
The MPEP 1207.03 provides guidance on how reliance on fewer than all references in support of a rejection in an Examiner’s Answer is treated. Specifically: “Relying on fewer than all references in support of a 35 U.S.C. 103 rejection, but relying on the same teachings. Assuming the rejection is otherwise proper, if the examiner’s answer…
Read MoreWhat is the process for petitioning to designate a new ground of rejection in an examiner’s answer?
The process for petitioning to designate a new ground of rejection in an examiner’s answer is outlined in 37 CFR 41.40. Here are the key points: The petition must be filed within two months from the entry of the examiner’s answer and before filing any reply brief. The petition should be filed under 37 CFR…
Read MoreWhat happens if an appellant doesn’t respond to a new ground of rejection in an examiner’s answer?
If an appellant fails to respond to a new ground of rejection made in an examiner’s answer, there are serious consequences. According to MPEP 1215.03: “If appellant fails to respond to a new ground of rejection made in an examiner’s answer by either filing a reply brief or a reply under 37 CFR 1.111 within…
Read MoreCan new grounds of rejection be introduced in an Examiner’s Answer?
Yes, new grounds of rejection can be introduced in an Examiner’s Answer, but they must follow specific procedures: New grounds of rejection must be prominently identified in the Answer. They require approval from a Technology Center Director or designee. The appellant has specific rights to respond to new grounds of rejection. The MPEP states: “Under…
Read MoreWhat is required for new grounds of rejection in an examiner’s answer?
When an examiner’s answer contains a new ground of rejection, specific requirements must be met. According to MPEP 1207.01: “If the examiner’s answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the…
Read MoreAre interviews allowed after an examiner’s answer is mailed?
Generally, interviews are not permitted after an examiner’s answer is mailed and before the appeal forwarding fee is paid. The MPEP states: “While appellants may desire an interview after mailing of an examiner’s answer and prior to payment of this fee, interviews during this time period are likely to confuse the record on appeal and…
Read MoreCan I file an appeal brief before receiving the examiner’s answer in a patent application?
Yes, you can file an appeal brief before receiving the examiner’s answer in a patent application. In fact, the appeal brief must be filed within the specified time period regardless of whether the examiner’s answer has been issued. According to MPEP 1205.01: “The time for filing an appeal brief is two months from the date…
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