What is required for new grounds of rejection in an examiner’s answer?
When an examiner’s answer contains a new ground of rejection, specific requirements must be met. According to MPEP 1207.01: “If the examiner’s answer contains a new ground of rejection, it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 specifies that new grounds of rejection must be approved by the…
Read MoreWhat are the appellant’s options when an Examiner’s Answer includes new grounds of rejection?
When an Examiner’s Answer includes new grounds of rejection, the appellant has two main options: Reopen prosecution: File a reply under 37 CFR 1.111 within two months of the Examiner’s Answer. Maintain the appeal: File a reply brief under 37 CFR 41.41 within two months of the Examiner’s Answer. The MPEP provides specific guidance: “Accordingly,…
Read MoreHow should patent examiners handle new grounds of rejection?
How should patent examiners handle new grounds of rejection? Patent examiners must carefully consider how to handle new grounds of rejection during the examination process. According to MPEP 706: “The examiner should never lose sight of the fact that in every case the applicant is entitled to a full and fair hearing, and that a…
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