How can an appellant respond to new grounds of rejection in an Examiner’s Answer?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

When an Examiner’s Answer contains new grounds of rejection, the appellant has two options to respond within two months from the date of the Examiner’s Answer. According to MPEP § 2275, these options are:

1. Reopen prosecution: The appellant can request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111. This may include amendments or submission of affidavits or other evidence relevant to the new ground of rejection.
2. Maintain appeal: The appellant can request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41. The reply brief must address each new ground of rejection and follow the requirements of 37 CFR 41.37(c).

It’s important to note that if a reply brief is accompanied by any amendment, affidavit, or other evidence, it will be treated as a request to reopen prosecution.