How should patent examiners handle new grounds of rejection?

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.

Patent examiners must carefully consider how to handle new grounds of rejection during the examination process. According to MPEP 706:

“The examiner should never lose sight of the fact that in every case the applicant is entitled to a full and fair hearing, and that a clear issue between applicant and examiner should be developed, if possible, before appeal.”

This means that examiners should:

• Introduce new grounds of rejection as early as possible in prosecution
• Provide a clear explanation of the new rejection
• Allow the applicant an opportunity to respond
• Consider making the next action final if the new ground of rejection was necessitated by the applicant’s amendment or based on information submitted in an IDS

If a new ground of rejection is introduced in a final Office action, the applicant may be entitled to reopen prosecution or file a request for continued examination (RCE) to address the new issues.