What are the consequences of requesting a rehearing instead of filing an amendment in response to a new ground of rejection?
When an appellant chooses to request a rehearing under 37 CFR 41.50(b)(2) instead of filing an amendment or new evidence under 37 CFR 41.50(b)(1), there are significant consequences. The MPEP outlines these consequences: “By proceeding in this manner, the appellant waives their right to further prosecution before the examiner. In re Greenfield, 40 F.2d 775,…
Read MoreWhat are the consequences of introducing a new ground of rejection in an Examiner’s Answer?
What are the consequences of introducing a new ground of rejection in an Examiner’s Answer? Introducing a new ground of rejection in an Examiner’s Answer can have significant procedural consequences: Reopening of prosecution: If the examiner designates a rejection as a new ground, prosecution must be reopened, allowing the applicant to submit a reply under…
Read MoreWhat happens if a petition to designate a new ground of rejection is granted?
If a petition to designate a new ground of rejection is granted, the following occurs: The appellant is given a two-month time period to file a reply under 37 CFR 1.111 to reopen prosecution before the primary examiner. No corrected examiner’s answer is provided. The appellant may present amendments, evidence, and/or arguments directed to other…
Read MoreWhat happens if an appellant fails to reply to a new ground of rejection?
According to MPEP 1207.03(c), if an appellant fails to timely respond to a new ground of rejection, the consequences are severe: “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…
Read MoreHow does citing a different portion of a reference affect the grounds of rejection?
Citing a different portion of a reference does not always constitute a new ground of rejection. According to MPEP 1207.03(a): “If the examiner’s answer cites a different portion of an applied reference which goes no farther than, and merely elaborates upon, what is taught in the previously cited portion of that reference, then the rejection…
Read MoreWhen does changing the statutory basis of rejection not constitute a new ground?
Changing the statutory basis of rejection does not always constitute a new ground of rejection. According to MPEP 1207.03(a), there are situations where such changes are not considered new grounds: 1. Changing from 35 U.S.C. 103 to 35 U.S.C. 102, but relying on the same teachings: “If the examiner’s answer changes the statutory basis of…
Read MoreHow does changing the order of references in a 35 U.S.C. 103 rejection affect the grounds of rejection?
Changing the order of references in 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 changes the order of references in the statement of rejection under 35 U.S.C. 103, and relies on the same teachings of those references to support the 35…
Read MoreWhat is the significance of the “basic thrust of the rejection” in determining new grounds of rejection?
The concept of the “basic thrust of the rejection” is crucial in determining whether a rejection constitutes a new ground of rejection. According to MPEP 1207.03(a): “There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react…
Read MoreWhat is the “basic thrust of the rejection” in patent appeals?
The “basic thrust of the rejection” is a crucial concept in determining whether a new ground of rejection has been introduced in patent appeals. According to MPEP 1207.03(a): “A position or rationale that changes the “basic thrust of the rejection” will give rise to a new ground of rejection.” The basic thrust of the rejection…
Read MoreWhat constitutes an “appropriate amendment” when responding to a new ground of rejection by the Board?
An “appropriate amendment” in response to a new ground of rejection by the Board is one that addresses the specific issues raised in the new rejection. The MPEP provides guidance on what constitutes an appropriate amendment: “An amendment is ‘appropriate’ under the rule if it amends one or more of the claims rejected, or substitutes…
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