What should an examiner do if they know of references that could lead to rejection after a PTAB reversal?
If an examiner has specific knowledge of references that could lead to rejection of claims after a Patent Trial and Appeal Board (PTAB) reversal, they should not immediately reject the claims. Instead, the MPEP outlines a specific procedure:
“If the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims as to which the examiner was reversed, they should submit the matter to the Technology Center (TC) Director or Central Reexamination Unit (CRU) Director for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection.”
This process ensures that reopening prosecution after a PTAB decision is carefully considered and authorized at a higher level. The examiner must obtain approval from the TC or CRU Director, and this approval must be documented on the action reopening prosecution.
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