What should be included in a reply brief addressing a new ground of rejection?
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.
When filing a reply brief to address a new ground of rejection, MPEP 1207.03(c) outlines specific requirements:
- Identification page: Include appellant’s name(s), application number, filing date, invention title, examiner’s name and art unit, and the title “Reply Brief”.
- Argument page(s): Address each new ground of rejection in compliance with 37 CFR 41.37(c)(1)(vii).
The reply brief must follow the requirements of 37 CFR 41.37(c) and 41.41. It’s important to note:
“The reply brief may include new arguments responsive to the designated new grounds of rejection. Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the appeal, unless good cause is shown.”