Can an examiner reopen prosecution after issuing an examiner’s answer?
Yes, an examiner can reopen prosecution after issuing an examiner’s answer, but it is a rare occurrence and requires specific approval. According to MPEP 2679: “In a very rare situation, where the examiner finds that it is essential to address a rebuttal brief, the examiner must reopen prosecution. In order to reopen prosecution after an…
Read MoreWhat are the options for responding to a substitute examiner’s answer after a Board remand?
When responding to a substitute examiner’s answer after a Board remand, an appellant has two main options according to MPEP § 1211.01: Reopen prosecution: “Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment or submission of affidavits (37 CFR 1.131(a), 37 CFR 1.131(c) or…
Read MoreWhat happens if an appellant chooses to reopen prosecution after a new ground of rejection?
If an appellant chooses to reopen prosecution after the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection, the process is as follows, according to MPEP 1213.02: The appellant submits an amendment to the rejected claims, new evidence, or both. The case is remanded to the examiner for reconsideration. The new ground…
Read MoreWhat options does an appellant have when faced with a new ground of rejection?
When the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection, the appellant has two options according to MPEP 1213.02: Reopen prosecution: The appellant can submit an amendment to the rejected claims or new evidence, or both, and have the examiner reconsider the case. Request rehearing: The appellant can request that the…
Read MoreWhat happens when the Board remands a case for further consideration of a rejection?
When the Board remands a case for further consideration of a rejection, the examiner may write a substitute examiner’s answer. According to MPEP § 1211.01, “A substitute examiner’s answer written in response to a remand by the Board for consideration of a rejection pursuant to 37 CFR 41.50(a)(1) may set forth a new ground of…
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,…
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