Can an examiner issue a new rejection of previously patentable claims in inter partes reexamination?
Yes, an examiner can issue a new rejection of previously patentable claims in inter partes reexamination under certain circumstances. The MPEP states: “It should be noted that even in a situation where there has been no patent owner response, the examiner is always free to issue a supplemental Office action providing a new rejection of…
Read MoreHow does an examiner request withdrawal of an application from issue for new rejections?
When an examiner discovers new grounds for rejection after an application has been allowed, they must follow a specific procedure to request withdrawal from issue. According to MPEP 1308.01: “When a new rejection is discovered, which obviously is applicable to one or more of the allowed claims in an application in issue, a memorandum is…
Read MoreWhat actions does an examiner take after an application is withdrawn from issue?
Once an application has been withdrawn from issue due to new grounds for rejection, the examiner must take specific actions. According to MPEP 1308.01: “After the TC Director has withdrawn the application from issue, the examiner will prepare an Office action stating that the application has been withdrawn from issue, citing any new reference(s), and…
Read MoreWhat happens when the Board makes a new rejection under 37 CFR 41.50(b)?
When the Board makes a new rejection under 37 CFR 41.50(b), the appellant has two options: Elect to proceed before the examiner: The Board’s affirmance is treated as non-final. Appellant must amend the newly rejected claims or submit new evidence, or both. Prosecution reopens before the examiner. Request rehearing of the new rejection: Must be…
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