What are the options for responding to a substitute examiner’s answer after a Board remand?

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 responding to a substitute examiner’s answer after a Board remand, an appellant has two main options according to MPEP § 1211.01:

1. Reopen prosecution: “Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment or submission of affidavits (37 CFR 1.131(a), 37 CFR 1.131(c) or 1.132) or other evidence.”
2. Maintain appeal: “Request that the appeal be maintained by filing a reply brief as provided in 37 CFR 41.41.”

It’s important to note that if a reply brief is accompanied by any amendment, affidavit, or other evidence, it will be treated as a request to reopen prosecution under 37 CFR 41.50(a)(2)(i).