What are the options available to an appellant after the Board designates a new ground 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.

When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant has three options for each claim so rejected:

• Reopen prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1))
• Request rehearing before the Board (37 CFR 41.50(b)(2))
• File a request for continued examination (RCE)

The MPEP states: “When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant, as to each claim so rejected, has the option of: (A) reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence (37 CFR 41.50(b)(1)); (B) requesting rehearing before the Board (37 CFR 41.50(b)(2)); or (C) filing a request for continued examination in which case the decision by the Board is the law of the case.“