What is a new ground of rejection by the Patent Trial and Appeal Board?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs 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. A new ground of rejection by the Patent Trial and Appeal Board (PTAB) is a rejection of a claim that was not previously involved in the appeal. According to MPEP 1213.02 , the Board may include such a rejection in its opinion if it “have knowledge of any grounds not involved in the appeal for rejecting any pending claim.” The MPEP states: “Should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, and designate such a statement as a new ground of rejection of the claim.” It’s important to note that a new ground of rejection is not considered final for judicial review. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Board May Add New Grounds for Rejecting Claims MPEP 1213 Prohibited Procedure for New Grounds of Rejection by Board MPEP 1213.02 Procedure for New Ground of Rejection by Board MPEP 1214.06 Prohibited Procedure for New Grounds of Rejection by Board MPEP 1213 Request for Rehearing of New Ground of Rejection MPEP 1213 Remand Final Decision for Judicial Review MPEP 1213 Permitted Procedure for New Ground of Rejection by Board MPEP 1214.01 New Ground of Rejection by Board Does Not Reverse Adverse Determination MPEP 2731 Remand Decision Not Final for Review MPEP 1213 Prohibited Remand Not Final for Review MPEP 1213 Other Related FAQs 5 FAQs Collapse Are extensions of time available for responding to a new ground of rejection by the PTAB? What options does an appellant have when faced with a new ground of rejection? Can the Patent Trial and Appeal Board reject claims that were previously allowed by the examiner? What happe...