What is the process for petitioning to designate a new ground of rejection in an examiner’s answer?

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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. The process for petitioning to designate a new ground of rejection in an examiner’s answer is outlined in 37 CFR 41.40 . Here are the key points: The petition must be filed within two months from the entry of the examiner’s answer and before filing any reply brief. The petition should be filed under 37 CFR 1.181 to the Director. Failure to file a timely petition waives any arguments that a rejection should be designated as a new ground of rejection. As stated in the MPEP: “ 37 CFR 41.40 sets forth the exclusive procedure for an appellant to request review of the primary examiner’s failure to designate a rejection as a new ground of rejection via a petition to the Director under 37 CFR 1.181 .” Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Requirement for New Ground of Rejection in Answer MPEP 1207.03(b) Prohibited Designate New Ground of Rejection Clearly MPEP 1207.01 Required New Ground of Rejection Based on Amendment or Information Disclosure Statement MPEP 1207.04 Permitted TC Director Approval for New Ground of Rejection MPEP 1207.01 Evidence Must Relate to New Ground of Rejection MPEP 1207 Required Maintain Appeal Through Reply Brief MPEP 1207 Reply Brief Must Address New Grounds of Rejection MPEP 1207.03(c) Permitted Appellant Must File Reply Within Two Months MPEP 1207.03 Required Appellant Must File Reply Brief Addressing Rejections Within Two Months MPEP 1207.05 Required Reply Brief Before Decision Withdraws Petition and Maintains Appeal MPEP 1207.03(b) Other Related FAQs 5 FAQs Collapse What is a new ground of rejection in patent examination? What constitutes a new ground of rejection in patent examination? What are examples of actions that do not co...