What happens if a petition to designate a new ground of rejection is granted?

If a petition to designate a new ground of rejection is granted, the following occurs:

• The appellant is given a two-month time period to file a reply under 37 CFR 1.111 to reopen prosecution before the primary examiner.
• No corrected examiner’s answer is provided.
• The appellant may present amendments, evidence, and/or arguments directed to other rejections that are not new grounds of rejection.
• Previously refused after-final amendments or evidence are not automatically entered but may be included in the reply.

The MPEP states: “If the petition is granted, appellant may present amendment, evidence, and/or arguments in the reply under 37 CFR 1.111 that are directed to other rejections that are not new grounds of rejection.”

After the reply is filed, the examiner will consider it and may make the next Office action final if appropriate, as per MPEP § 706.07(a).

To learn more:

• new ground of rejection
• granted petition
• reopened prosecution
• patent appeal