What should be included in a request for rehearing after a new ground of rejection?
When requesting a rehearing after the Patent Trial and Appeal Board (PTAB) issues a new ground of rejection, the appellant must address specific points in their request. According to MPEP 1213.02, the request for rehearing should include: An address of the new ground of rejection A statement with particularity of the points believed to have…
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…
Read MoreHow does the Board handle affidavits submitted with a request for rehearing?
The Board of Patent Appeals and Interferences (BPAI) generally does not remand affidavits or declarations submitted with a request for rehearing of its decision, unless a rejection has been made under 37 CFR 41.50(b). MPEP § 1211.03 states: “It is not the custom of the Board to remand affidavits or declarations offered in connection with…
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