What options does an applicant have when faced with a new ground of rejection in an Examiner’s Answer?

What options does an applicant have when faced with a new ground of rejection in an Examiner’s Answer?

When an applicant encounters a new ground of rejection in an Examiner’s Answer, they have two main options as outlined in MPEP 1207.03:

1. Request reopening of prosecution: The applicant can file a reply under 37 CFR 1.111 to request that prosecution be reopened before the primary examiner. This allows the applicant to introduce new evidence and arguments to address the new ground of rejection.
2. Maintain the appeal: The applicant can file a reply brief as set forth in 37 CFR 41.41 to maintain the appeal. In this case, the applicant must address the new ground of rejection in the reply brief.

Additionally, if the applicant believes that a rejection has been incorrectly designated (or not designated) as a new ground of rejection, they have the option to:

• File a petition under 37 CFR 1.181 to have the designation reviewed by the Director.

It’s crucial for applicants to choose their response carefully, as failure to properly respond to a new ground of rejection can result in the dismissal of the appeal for the affected claims.

To learn more:

• new ground of rejection
• Examiner’s Answer
• applicant options
• patent appeal