What is the examiner’s role after a Board decision with a new ground of rejection?

After a Board decision with a new ground of rejection, the examiner’s role is defined in MPEP 2682 under 37 CFR 41.77(d). The key points are:

• The Board will formally remand the proceeding back to the examiner.
• The examiner will consider the submissions under 37 CFR 41.77(b)(1) (patent owner’s request to reopen) and 37 CFR 41.77(c) (third party requester comments) that were entered by the Board.
• The examiner may only issue a determination under 37 CFR 41.77(d) and may not issue another type of Office action.
• The determination is limited to whether or not the new statutory ground(s) of rejection in the Board decision has been overcome.
• The examiner will explain the reasoning for his or her opinion.

MPEP 2682 states: “Unless an amendment or new evidence not of record at the time of the Board decision is presented, the examiner’s determination may not indicate that the rejection has been overcome.”

To learn more:

• examiner role
• Board decision
• new ground of rejection
• inter partes reexamination
• patent examination