How does responding to applicant’s arguments with new reference portions affect the grounds of rejection?
Responding to an applicant’s arguments by citing different portions of a reference submitted by the applicant does not necessarily constitute a new ground of rejection. According to MPEP 1207.03(a): “If an applicant submits a new reference to argue, for example, that the prior art ‘teaches away’ from the claimed invention (see MPEP § 2145), and…
Read MoreHow 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 should be included in a request for rehearing after a new ground of rejection?
When requesting a rehearing after the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection, the appellant must address specific points in their request. According to MPEP 1213.02, the request for rehearing should include: An address of the new ground of rejection A statement with particularity of the points believed to have…
Read MoreWhat happens if an appellant chooses to reopen prosecution after a new ground of rejection?
If an appellant chooses to reopen prosecution after the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection, the process is as follows, according to MPEP 1213.02: The appellant submits an amendment to the rejected claims, new evidence, or both. The case is remanded to the examiner for reconsideration. The new ground…
Read MoreHow does removing references from a 35 U.S.C. 103 rejection affect the grounds of rejection?
Removing one or more references from a 35 U.S.C. 103 rejection does not necessarily constitute a new ground of rejection. According to MPEP 1207.03(a): “If the examiner’s answer removes one or more references from the statement of rejection under 35 U.S.C. 103, and relies on the same teachings of the remaining references to support the…
Read MoreCan the Patent Trial and Appeal Board reject claims that were previously allowed by the examiner?
Yes, the Patent Trial and Appeal Board (PTAB) has the authority to reject claims that were previously allowed by the examiner. According to MPEP 1213.02: “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…
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 options does an appellant have when faced with a new ground of rejection?
When the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection, the appellant has two options according to MPEP 1213.02: Reopen prosecution: The appellant can submit an amendment to the rejected claims or new evidence, or both, and have the examiner reconsider the case. Request rehearing: The appellant can request that the…
Read MoreWhat are the options if a petition to designate a new ground of rejection is not granted?
If a petition to designate a new ground of rejection is not granted, the following options are available: The appeal is maintained. The appellant is given a two-month time period to file a single reply brief under 37 CFR 41.41. Jurisdiction passes to the Patent Trial and Appeal Board (PTAB) upon filing of the reply…
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