How can an appellant respond to new grounds of rejection in an Examiner’s Answer?
When an Examiner’s Answer contains new grounds of rejection, the appellant has two options to respond within two months from the date of the Examiner’s Answer. According to MPEP § 2275, these options are: Reopen prosecution: The appellant can request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR…
Read MoreCan new grounds of rejection be proposed in a respondent brief?
No, new grounds of rejection cannot be proposed in a respondent brief during an inter partes reexamination appeal. The MPEP explicitly states in reference to 37 CFR 41.68(b)(1)(vi): “No new ground of rejection can be proposed by a requester respondent.” This limitation ensures that the scope of the appeal remains focused on the issues raised…
Read MoreHow does an examiner handle new grounds of rejection in inter partes reexamination?
In inter partes reexamination, examiners must carefully consider how to handle new grounds of rejection. According to MPEP 2671.01: “An action will not normally close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.” This means that:…
Read MoreCan an examiner’s answer include new grounds of rejection?
No, an examiner’s answer cannot include new grounds of rejection in an inter partes reexamination proceeding. This is explicitly stated in MPEP 2677, which cites 37 CFR 41.69(b): “An examiner’s answer may not include a new ground of rejection.” If the examiner determines that a new ground of rejection is necessary, they must reopen prosecution…
Read MoreCan new grounds of rejection be introduced in an examiner’s answer during ex parte reexamination?
Yes, new grounds of rejection can be introduced in an examiner’s answer during ex parte reexamination. According to MPEP 2273: “The examiner may, however, include in the examiner’s answer a new ground of rejection, in which case appellant would have the right to amend the claims, or take other appropriate action under 37 CFR 41.39(a)(2).”…
Read MoreHow does the Board handle new grounds of rejection in inter partes reexamination appeals?
How does the Board handle new grounds of rejection in inter partes reexamination appeals? In inter partes reexamination appeals, the Board has the authority to issue new grounds of rejection. According to MPEP 2674: “The Board may also issue new grounds of rejection under 37 CFR 41.77(b). For example, the Board might state the following:…
Read MoreWhen can an examiner reopen prosecution after an appeal brief has been filed?
An examiner can reopen prosecution after an appeal brief has been filed to enter a new ground of rejection, but only with approval from the supervisory patent examiner. According to MPEP 1207.04: “The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s…
Read MoreCan a Supervisory Patent Examiner approve reopening prosecution after an appeal brief has been filed?
Yes, a Supervisory Patent Examiner has the authority to approve reopening prosecution after an appeal brief has been filed. This is specifically mentioned in the MPEP: “Approval of reopening prosecution after the filing of an appeal brief in order to incorporate any new ground of rejection, MPEP § 1207.04.” This provision allows for the introduction…
Read MoreHow does the Board handle new grounds of rejection?
When the Patent Trial and Appeal Board issues a new ground of rejection, specific procedures must be followed. According to MPEP 1213: See MPEP § 1214.01 concerning the procedure following a new ground of rejection by the Board under 37 CFR 41.50(b). Key points about new grounds of rejection by the Board: The Board has…
Read MoreCan new grounds of rejection be introduced in an Examiner’s Answer?
Yes, new grounds of rejection can be introduced in an Examiner’s Answer, but they must follow specific procedures: New grounds of rejection must be prominently identified in the Answer. They require approval from a Technology Center Director or designee. The appellant has specific rights to respond to new grounds of rejection. The MPEP states: “Under…
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