What is the procedure if an appellant believes a new argument is raised in the examiner’s answer?

If an appellant believes a new argument is raised in the examiner’s answer, they have two main options:

1. File a petition under 37 CFR 1.181 to designate the new argument as a new ground of rejection.
2. Address the new argument directly in the reply brief without filing a petition.

The MPEP clarifies: “If appellant wishes to submit only arguments, the filing of a petition under 37 CFR 1.181 is not necessary because appellant may submit arguments in a reply brief if they are responsive to arguments the examiner raised for the first time in the examiner’s answer.”

This is supported by 37 CFR 41.41(b)(2) and the Federal Circuit decision in In re Timothy D. Durance et al., which concluded that “existing regulations and guidance did not require party to first petition under 37 CFR 1.181 to have a new argument in the Answer designated as a new ground of rejection to permit responding thereto in a reply brief filed under 37 CFR 41.41(b)(2)”.

To learn more:

• new argument
• examiner’s answer
• reply brief
• petition