What actions can an examiner take if the Board affirms some rejections but reverses others?

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 the Board affirms some rejections but reverses others in a patent application, the examiner has several options. According to MPEP 1214, the examiner should take one of the following actions:

1. Allow the application: If the affirmed rejection(s) can be overcome by an examiner’s amendment, the examiner may allow the application after obtaining approval from the applicant.
2. Issue a new Office action: The examiner may issue a new non-final Office action addressing the claims that remain rejected and indicating the claims that are now allowable.
3. Reopen prosecution: In rare cases, with the approval of the TC Director, the examiner may reopen prosecution to enter a new ground of rejection.

The MPEP states:

“The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references.”

This means that any new action should be based on the existing record unless there are extraordinary circumstances justifying a new search or rejection.