What are the options available to an appellant after the Board designates a new ground of rejection?
When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant has three options for each claim so rejected: Reopen prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1)) Request rehearing before the Board (37 CFR 41.50(b)(2)) File a request for continued examination (RCE) The…
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 relying on a new portion of a reference create a new ground of rejection?
Yes, relying on a new portion of a reference can create a new ground of rejection in patent appeals. The MPEP 1207.03(a) states: “Factual situations that have been found to constitute a new ground of rejection include… Citing new structure from a prior art reference to support an existing rejection.” This means that if an…
Read MoreHow does a new interpretation of claims affect grounds of rejection?
A new interpretation of claims can lead to a new ground of rejection in patent appeals. According to MPEP 1207.03(a): “Factual situations that have been found to constitute a new ground of rejection include… Changing the statutory basis of rejection from one section of the statute to another section… [or] Citing new structure from a…
Read MoreWhat is a new ground of rejection by the Patent Trial and Appeal Board?
A new ground of rejection by the Patent Trial and Appeal Board (PTAB) is a rejection of a claim that was not previously involved in the appeal. According to MPEP 1213.02, the Board may include such a rejection in its opinion if it “have knowledge of any grounds not involved in the appeal for rejecting…
Read MoreWhat constitutes a “new ground of rejection” in a patent examiner’s answer?
Determining what constitutes a “new ground of rejection” is a highly fact-specific question. According to MPEP 1207.03(a), the ultimate criterion is “whether appellants have had fair opportunity to react to the thrust of the rejection.” Some examples of new grounds of rejection include: Changing the statutory basis of rejection from 35 U.S.C. 102 to 35…
Read MoreWhat constitutes a new ground of rejection in patent appeals?
A new ground of rejection in patent appeals occurs when the basic thrust of the rejection changes. According to MPEP 1207.03(a), this happens when: The examiner relies on new facts or rationales not previously raised to the applicant The rejection “changes the statutory basis of rejection from one section of the statute to another section”…
Read MoreAre extensions of time available for responding to a new ground of rejection by the PTAB?
Extensions of time for responding to a new ground of rejection by the Patent Trial and Appeal Board (PTAB) are not automatically available. According to MPEP 1213.02: “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…
Read MoreWhen might the Director remand a case for a new ground of rejection?
The Director may remand a case for consideration of a new ground of rejection when there has been a change in the law that necessitates such action. MPEP 1211 provides an example: “For example, the Director may remand a case for consideration of a new ground of rejection pursuant to 37 CFR 41.35(c) where there…
Read MoreWhat should be included in a reply brief addressing a new ground of rejection?
When filing a reply brief to address a new ground of rejection, MPEP 1207.03(c) outlines specific requirements: Identification page: Include appellant’s name(s), application number, filing date, invention title, examiner’s name and art unit, and the title “Reply Brief”. Argument page(s): Address each new ground of rejection in compliance with 37 CFR 41.37(c)(1)(vii). The reply brief…
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