Is a PTAB decision containing a new ground of rejection considered final?

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.

No, a Patent Trial and Appeal Board (PTAB) decision that includes a new ground of rejection is not considered final. According to MPEP 2681:

A decision which includes a new ground of rejection or a remand will be considered a non-final decision. Until the Board issues a final decision, the parties to the appeal to the Board may not appeal to the U.S. Court of Appeals for the Federal Circuit under 37 CFR 41.81.

This non-final status allows the patent owner to respond to the new ground of rejection by either:

• Reopening prosecution before the examiner
• Requesting a rehearing by the Board

The decision becomes final only after these procedures have been completed or the time for response has expired.