What should be included in a reply brief addressing a new ground of rejection?
When filing a reply brief to address a new ground of rejection, MPEP 1207.03(c) outlines specific requirements: Identification page: Include appellant’s name(s), application number, filing date, invention title, examiner’s name and art unit, and the title “Reply Brief”. Argument page(s): Address each new ground of rejection in compliance with 37 CFR 41.37(c)(1)(vii). The reply brief…
Read MoreWhen does the Board of Patent Appeals and Interferences gain jurisdiction over an appeal?
The Board of Patent Appeals and Interferences (BPAI) gains jurisdiction over an appeal when: A reply brief is filed under 37 CFR 41.41, or The time to file such a reply brief expires, whichever occurs earlier. This is specified in 37 CFR 41.35(a), which states: “Jurisdiction over the proceeding passes to the Board upon the…
Read MoreWhat are examples of Board remands that are not for further consideration of a rejection?
MPEP § 1211.01 provides two examples of situations where the Board may remand a case for examiner action that is not for further consideration of a rejection: A remand to consider an Information Disclosure Statement A remand for the examiner to consider a reply brief In these cases, 37 CFR 41.50(a)(2) does not apply. 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 MoreWhat options does an appellant have if a new ground of rejection is designated in an Examiner’s Answer?
When a new ground of rejection is designated in an Examiner’s Answer, the appellant has two options according to MPEP 1207.03: Reopen prosecution: The appellant can request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111 within two months from the mailing of the Examiner’s Answer. Maintain the…
Read MoreCan amendments be submitted with a reply brief in response to a new ground of rejection?
No, amendments cannot be submitted with a reply brief in response to a new ground of rejection. According to MPEP 1207.03(c): “A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is…
Read MoreWhat happens after a reply brief is filed in a patent appeal?
Once a reply brief is filed, the jurisdiction of the appeal passes to the Patent Trial and Appeal Board (PTAB). According to MPEP 1208: “After receipt of a reply brief under 37 CFR 41.41, jurisdiction over the appeal passes to the Board. Normally, the examiner does not need to acknowledge the reply brief and will…
Read MoreWhat happens if a supplemental amendment is filed after the reply brief in an application on appeal?
According to MPEP 714.03(a), if a supplemental amendment is filed after the reply brief in an application on appeal, the examiner must respond to the supplemental amendment: If a supplemental amendment is filed after the reply brief in an application on appeal, the examiner must respond to the supplemental amendment. The examiner’s response can take…
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