What options does an applicant have when faced with a new ground of rejection in an Examiner’s Answer?
What options does an applicant have when faced with a new ground of rejection in an Examiner’s Answer? When an applicant encounters a new ground of rejection in an Examiner’s Answer, they have two main options as outlined in MPEP 1207.03: Request reopening of prosecution: The applicant can file a reply under 37 CFR 1.111…
Read MoreWhat options does an appellant have if a new ground of rejection is designated in an Examiner’s Answer?
When a new ground of rejection is designated in an Examiner’s Answer, the appellant has two options according to MPEP 1207.03: Reopen prosecution: The appellant can request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111 within two months from the mailing of the Examiner’s Answer. Maintain the…
Read MoreCan amendments be submitted with a reply brief in response to a new ground of rejection?
No, amendments cannot be submitted with a reply brief in response to a new ground of rejection. According to MPEP 1207.03(c): “A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is…
Read MoreWhat is the impact of amendments under 37 CFR 1.116 or 41.33 on new grounds of rejection?
Amendments submitted under 37 CFR 1.116 or 41.33 can affect whether a rejection in an examiner’s answer is considered a new ground of rejection. According to MPEP 1207.03(a): If: An amendment under 37 CFR 1.116 or 41.33 proposes to add or amend one or more claims; The applicant was advised (through an advisory action) that…
Read MoreWhat happens if an appellant files both an amendment and a request for rehearing in response to a new ground of rejection?
When an appellant files both an amendment (or new evidence) and a request for rehearing in response to a new ground of rejection, the treatment depends on whether this is done for all or only some of the rejected claims. The MPEP provides guidance on this situation: “If an appellant files an appropriate amendment or…
Read MoreWhat are examples of actions that do not constitute a new ground of rejection in an Examiner’s Answer?
According to MPEP 1207.03, the following actions do not constitute a new ground of rejection in an Examiner’s Answer: Pointing out where an appellant’s arguments are not persuasive Responding to new arguments raised in the appeal brief Relying on a different portion of a reference to elaborate upon that which has been cited previously Changing…
Read MoreCan an examiner make a rejection final after a first Office action on the merits?
Generally, an examiner cannot make a rejection final after a first Office action on the merits. However, there are exceptions to this rule. According to MPEP 706.07: ‘Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated…
Read MoreWhat is the procedure for withdrawing a final rejection to apply a new ground of rejection?
Withdrawing a final rejection to apply a new ground of rejection is a specific procedure outlined in MPEP 706.07(e). The manual states: “Although it is permissible to withdraw a final rejection for the purpose of entering a new ground of rejection, this practice is to be limited to situations where a new reference either fully…
Read MoreWhat constitutes a new ground of rejection in patent examination?
While MPEP 706.07(e) discusses the withdrawal of final rejections to apply new grounds of rejection, it refers to MPEP § 1207.03 for a detailed discussion of what constitutes a new ground of rejection. The manual states: “See MPEP § 1207.03 for a discussion of what may constitute a new ground of rejection.” Generally, a new…
Read MoreWhat should an examiner do if applicant’s arguments are persuasive but a new ground of rejection is necessary?
When an examiner finds an applicant’s arguments persuasive but determines that a new ground of rejection is necessary, they should follow a specific procedure. As outlined in MPEP 707.07(f): If applicant’s arguments are persuasive and the examiner determines that the previous rejection should be withdrawn but that, upon further consideration, a new ground of rejection…
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