How does an examiner handle new grounds of rejection in inter partes reexamination?

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.

In inter partes reexamination, examiners must carefully consider how to handle new grounds of rejection. According to MPEP 2671.01:

“An action will not normally close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.”

This means that:

• If a new ground of rejection is introduced that wasn’t necessitated by an amendment, the examiner will typically issue a non-ACP Office action.
• This approach allows the patent owner to maintain their full right to amend the claims in response to the new rejection.
• The examiner’s goal is to clearly define the issues before closing prosecution.

However, there is an exception to this rule. The MPEP notes that “For an exception where the patent owner submits an IDS, see MPEP § 2671.02.” This suggests that new grounds of rejection based on newly submitted prior art by the patent owner may be treated differently.