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,…

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What 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…

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How 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…

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What 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…

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What 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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