How 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:…

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Can 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…

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Can 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).”…

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Can 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…

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How 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…

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