Can new grounds of rejection be proposed in a respondent brief?
No, new grounds of rejection cannot be proposed in a respondent brief during an inter partes reexamination appeal. The MPEP explicitly states in reference to 37 CFR 41.68(b)(1)(vi):
“No new ground of rejection can be proposed by a requester respondent.”
This limitation ensures that the scope of the appeal remains focused on the issues raised in the appellant’s brief and the examiner’s original rejections. Respondents must limit their arguments to addressing the contentions made by the appellant and supporting the examiner’s position.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2675.01 - Respondent Brief,
Patent Law,
Patent Procedure