MPEP § 1207 — MPEP § 1207
Current through: 2022-07-01

1207-Examiner’s Answer 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1200 

 Section 1207 
 

 
 
 
 
 
 1207 Examiner’s Answer [R-11.2013]

 
 37 CFR 41.39 Examiner’s answer. 

 
 (a) Content of examiner's answer. The primary examiner may, within
 such time as may be directed by the Director, furnish a written answer to the
 appeal brief.
 
 (1) An examiner's answer is deemed to incorporate all
 of the grounds of rejection set forth in the Office action from which the
 appeal is taken (as modified by any advisory action and pre-appeal brief
 conference decision), unless the examiner's answer expressly indicates that
 a ground of rejection has been withdrawn.
 

 (2) An examiner's answer may include a new ground of
 rejection. For purposes of the examiner's answer, any rejection that relies
 upon any Evidence not relied upon in the Office action from which the appeal
 is taken (as modified by any advisory action) shall be designated by the
 primary examiner as a new ground of rejection. The examiner must obtain the
 approval of the Director to furnish an answer that includes a new ground of
 rejection.
 

 
 

 (b) Appellant's response to new ground of rejection. If an
 examiner’s answer contains a rejection designated as a new ground of rejection,
 appellant must within two months from the date of the examiner’s answer exercise
 one of the following two options to avoid sua sponte dismissal of the appeal as to
 the claims subject to the new ground of rejection:
 
 (1) Reopen prosecution. Request that prosecution be reopened
 before the primary examiner by filing a reply under § 1.111 
 of this title with or without amendment or submission of affidavits (§§
 1.130 , 1.131 or
 1.132 of this of this title) or other Evidence. Any
 amendment or submission of affidavits or other Evidence must be relevant to
 the new ground of rejection. A request that complies with this paragraph
 will be entered and the application or the patent under ex
 parte reexamination will be reconsidered by the examiner under
 the provisions of § 1.112 of this title. Any
 request that prosecution be reopened under this paragraph will be treated as
 a request to withdraw the appeal.
 

 (2) Maintain appeal. Request that the appeal be maintained by
 filing a reply brief as set forth in § 41.41 . Such a reply
 brief must address as set forth in § 41.37(c)(1)(iv) each new
 ground of rejection and should follow the other requirements of a brief as
 set forth in § 41.37(c) . A reply brief
 may not be accompanied by any amendment, affidavit (§§ 1.130 ,
 1.131 or 1.132 of this of this
 title) or other Evidence. If a reply brief filed pursuant to this section is
 accompanied by any amendment, affidavit or other Evidence, it shall be
 treated as a request that prosecution be reopened before the primary
 examiner under paragraph (b)(1) of this section.
 

 
 

 (c) Extensions of time. Extensions of time under §
 1.136(a) of this title for patent applications are not
 applicable to the time period set forth in this section. See § 1.136(b) of
 this title for extensions of time to reply for patent applications and §
 1.550(c) of this title for extensions of time to reply for
 ex parte reexamination proceedings.
 

 
 

 After an appeal brief under 37 CFR 41.37 has been filed and the
 examiner has considered the issues on appeal, the examiner may:
 

 
 (A) reopen prosecution to enter a new ground of rejection with approval
 from the supervisory patent examiner (see MPEP § 1207.04 );
 

 (B) allow the application if the examiner determines that the rejections
 have been overcome and no new ground of rejection is appropriate; or
 

 (C) maintain the appeal by conducting an appeal conference
 ( MPEP §
 1207.01 ) and drafting an examiner’s answer
 ( MPEP §
 1207.02 ). 
 

 
 
 1207.01 Appeal Conference [R-10.2019]

 An appeal conference is mandatory in all cases in which an acceptable
 brief ( MPEP §
 1205 ) has been filed. However, if the examiner charged with
 the responsibility of preparing the examiner’s answer reaches a conclusion that the
 appeal should not go forward and the supervisory patent examiner (SPE) approves, then no
 appeal conference is necessary. In this case, the examiner may reopen prosecution and
 issue another Office action or may prepare a notice of allowability if appropriate. See
 MPEP §
 1207.04 . In circumstances where a notice of allowability is
 prepared, it may be appropriate to include reasons for allowance. See
 MPEP §
 1302.14 .
 

 The participants of the appeal conference should include (1) the
 examiner charged with preparation of the examiner’s answer, (2) a supervisory patent
 examiner (SPE), and (3) another examiner, known as a conferee, having sufficient
 experience to be of assistance in the consideration of the merits of the issues on
 appeal. During the appeal conference, consideration should be given to the possibility
 of dropping cumulative art rejections and eliminating technical rejections of doubtful
 value.
 

 The examiner responsible for preparing the examiner’s answer should
 weigh the arguments of the other examiners presented during the appeal conference. If it
 is determined that the rejection(s) should be maintained, the examiner responsible for
 preparing the examiner’s answer will prepare the examiner’s answer.
 

 On the examiner’s answer, below the primary examiner’s signature, the
 word “Conferees:” should be included, followed by the typed or printed names of the
 other two appeal conference participants. These two appeal conference participants must
 place their initials next to their name. This will make the record clear that an appeal
 conference has been held. If the examiner's answer contains a new ground of rejection,
 it must clearly designate the rejection as a new ground of rejection. 37 CFR 41.39 
 specifies that new grounds of rejection must be approved by the Director - i.e.,
 Director of the USPTO. This authority has been delegated to the Technology Center (TC)
 Directors or their designee(s). The answer must also include the signature of a
 Technology Center (TC) Director or designee to indicate that they approve the new ground
 of rejection. See MPEP §
 1207.03 and form paragraph 12.279.01 

 The Patent Appeal Center will review the examiner’s
 answer to determine whether there is an indication that an appeal conference has been
 held. If the examiner’s answer does not contain the appropriate indication that an
 appeal conference has been held (i.e., including the names of the conferees and
 identifying themselves as the conferees along with their initials), the Patent Appeal
 Center may return the application to the examiner for corrective action.
 

 

 
 1207.02 Contents of Examiner’s Answer [R-07.2022]

 Examiner’s answers may be returned for correction by the
 Patent Appeal Center if they do not comply with the guidelines set forth below. 
 

 
 (A) The examiner’s answer should include, under
 appropriate headings, in the order indicated, the following items: 
 
 (1) Grounds of Rejection to be Reviewed on Appeal. 
 

 

 A statement that every ground of rejection
 set forth in the Office action from which the appeal is taken (as modified
 by any advisory action and pre-appeal brief conference decision) is being
 maintained by the examiner except for the grounds of rejection (if any)
 listed under the subheading “WITHDRAWN REJECTIONS.” 
 

 
 

 

 The examiner must treat all pending, rejected
 claims as being on appeal, and must maintain all of the rejections set forth
 in the Office action from which the appeal is taken, unless appellant has
 overcome the rejection (e.g., by submitting persuasive arguments, an
 acceptable terminal disclaimer, or evidence). In situations where the
 appellant makes a request to hold a rejection in abeyance or did not present
 any argument on a rejection in the appeal brief, the examiner should
 maintain the rejection in the examiner’s answer. 
 

 
 Withdrawn Rejections – Under the subheading
 “WITHDRAWN REJECTIONS,” the examiner should list any grounds of
 rejection that are being withdrawn (e.g., those that have been
 overcome by appellant.)
 

 New Grounds of Rejection – Under the subheading
 “NEW GROUNDS OF REJECTION,” the examiner must set forth any new
 grounds of rejection. An examiner’s answer that contains a new ground
 of rejection must be approved and signed by the Director (or their
 designee). For each new ground of rejection, a complete explanation
 supporting the rejection must be provided with a proper reference to
 the applicable statute, prior art references relied upon, and the
 claim numbers of the claims that are subject to the rejection in the
 examiner’s answer.
 

 
 

 (2) Response to Argument. A statement of whether the examiner
 disagrees with each of the arguments of appellant in the brief with respect
 to the issues presented and an explanation of the reasons for disagreement
 with any such argument. The examiner must use headings and subheadings
 paralleling the headings and subheadings utilized in the appellant’s
 brief.
 

 
 

 
 The examiner should furnish the appellant with a written statement in
 answer to the appellant’s brief within 2 months after the receipt of the brief by the
 examiner. While 37 CFR
 41.39(a) states the examiner
 
 "may"
 
 
 furnish a written answer, current
 procedures do not permit an appeal to proceed to the Board without an examiner's answer.
 The mailing date of the examiner's answer begins 1) the period for filing a reply brief,
 which in turn transfers jurisdiction to the Board as described in 37 CFR 41.35(a) ;
 2) the time for appellants to request for an oral hearing as described in
 37 CFR
 41.47(b) ; and 3) the time period for the payment of the appeal
 forwarding fee unless a petition was filed under 37 CFR 1.181 to designate a new
 ground of rejection in the examiner's answer. See 37 CFR
 41.45(a) . In the event that the final rejection fully addresses
 the arguments in the appeal brief, the examiner should complete an examiner's answer
 with a typical 
 "Grounds of Rejection to be Reviewed on
 Appeal"
 
 
 section and a simplified 
 "Response to
 Arguments"
 
 
 section that simply refers to the appropriate portion
 of the final rejection.
 

 Before preparing the answer, the examiner should make
 certain that each after-final amendment or evidence has been indicated as being entered
 or not-entered and an advisory action has been entered for each after-final amendment or
 evidence to notify the appellant of the entry or non-entry. The Board may remand to the
 examiner any application in which an after-final amendment or evidence has not been
 indicated as entered or not-entered and acted upon in an advisory action.
 

 The examiner should treat affidavits, declarations, or exhibits filed
 with the notice of appeal in accordance with 37 CFR 1.116 . If an affidavit,
 declaration, or exhibit was refused entry in the Record under 37 CFR 1.116 or
 prohibited by 37 CFR
 41.33 , the examiner should not comment on it in the examiner’s
 answer. Likewise, it would be improper for appellant to rely on an affidavit,
 declaration, or exhibit, which was not entered, in an appeal brief. If appellant has
 grounds for challenging the non-entry of an affidavit, declaration, or exhibit, they
 should file a timely petition under 37 CFR 1.181 seeking supervisory
 review of the non-entry. Any affidavits or declarations in the file swearing behind a
 reference should be clearly identified by the examiner as being considered under
 37 CFR
 1.131 . 
 

 If a document being relied upon by the examiner in support of a
 rejection is in a language other than English, a translation must be obtained so that
 the record is clear as to the precise facts the examiner is relying upon in support of
 the rejection. The translation may be a machine translation or an English equivalent of
 the non-English document. See MPEP § 2120 for reliance upon abstracts
 and foreign language documents in support of a rejection.
 

 Examiners are not required to make any determination whether fewer than
 all of the rejected claims are identified by the appellant as being appealed. The Board
 will presume that all of the rejected claims are on appeal except for any claims
 subsequently canceled by an amendment filed by appellant. Therefore, the examiner will
 treat all pending, rejected claims as being on appeal, and maintain all of the
 rejections set forth in the Office action from which the appeal is taken, unless
 appellant has overcome the rejection (e.g., by submitting persuasive arguments, an
 acceptable terminal disclaimer, or evidence). In situations where the appellant makes a
 request to hold a rejection in abeyance or did not present any argument on a rejection
 in the appeal brief, the examiner should maintain the rejection in the examiner’s answer
 and should identify that the appellant has not argued the rejection in the appeal brief.
 In the instance where the appellant has failed to argue a non-statutory double patenting
 rejection or requested such rejection be held in abeyance, the examiner may use FP
 12.278 . 
 

 Because of the practice of the Office in entering amendments after
 final action under justifiable circumstances for purposes of appeal, many cases coming
 before the Board for consideration contain claims which are not the claims treated in
 the examiner’s final rejection. They are either entirely new claims or amended versions
 of the finally rejected claims or both. Where an amendment under 37 CFR 1.116 or
 41.33 would be entered for appeal purposes, the examiner must
 identify (in an advisory action) how one or more individual rejections set forth in the
 final rejection would be used to reject the added or amended claim(s). 
 

 The examiner should reevaluate their position in the light of the
 arguments presented in the brief, and should expressly withdraw any rejections not
 adhered to in the “WITHDRAWN REJECTIONS” subsection of the examiner’s answer. If the
 examiner withdraws all of the rejections of an independent claim that was previously
 under rejection while still maintaining the rejections of other claims, then the answer
 should note the change of status of the claim(s). The answer should also include changes
 to the status of dependent claims should all rejections of a dependent claim be
 withdrawn. If the examiner withdraws all rejections to a dependent claim, while
 maintaining the rejection of the independent claim from which the claim depends, the
 applicant may file an amendment pursuant to 37 CFR 41.33(b)(2) rewriting the
 claims in independent form. If the rejection of the independent claim is affirmed on
 appeal, the amendment to rewrite the claim in independent form under 37 CFR 41.33(b)(2) 
 must be presented prior to the expiration of the time period set forth in
 37 CFR
 90.3 . See MPEP §§ 1214.06 and
 1214.07 . 
 

 A new ground of rejection is permitted in an examiner’s answer. See
 MPEP §
 1207.03 . If reopening of prosecution is necessary, the
 examiner must obtain approval from the supervisory patent examiner prior to reopening
 prosecution after an appeal. See MPEP § 1002.02(d) and
 §
 1207.04 .
 

 All correspondence with the Board, whether by the examiner or the
 appellant, must be on the record. No unpublished decisions which are unavailable to the
 general public by reason of 35 U.S.C. 122(a) can be cited by the
 examiner or the appellant except that either the examiner or the appellant may cite an
 unpublished decision in an application having common ownership with the application on
 appeal.
 

 If an examiner’s answer is believed to contain a new interpretation or
 application of the existing patent law, the examiner’s answer, application file, and an
 explanatory memorandum should be forwarded to the TC Director for consideration. See
 MPEP §
 1003 . If approved by the TC Director, the examiner’s answer
 should be forwarded to the Office of the Deputy Commissioner for Patent Examination
 Policy for final approval.
 

 
 (B) FORM PARAGRAPHS. A form suitable for the examiner’s answer is as
 follows:
 

 
 ¶ 12.249 Examiner’s Answer Cover Sheet

 BEFORE THE PATENT TRIAL AND APPEAL
 BOARD 
 

 Application Number: [1] 

 Filing Date: [2] 

 Appellant(s): [3] 

 __________________

 [4] 

 For Appellant

 EXAMINER’S ANSWER

 This is in response to the appeal brief filed [5] .
 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. This form paragraph is printed
 with the USPTO letterhead.
 

 3. In bracket 1, insert the
 application number of the appealed application.
 

 4. In bracket 2, insert the filing
 date of the appealed application.
 

 5. In bracket 3, insert the name(s)
 of the appellant.
 

 6. In bracket 4, insert the name of
 the registered representative of the appellant.
 

 7. In bracket 5, indicate the date
 on which the brief was filed.
 
 
 

 ¶ 12.254 Grounds of Rejection to be Reviewed on Appeal

 (1) Grounds of Rejection to be Reviewed on Appeal 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. Follow this form paragraph with
 form paragraph 12.254.01 or 12.254.02 . 
 
 
 

 ¶ 12.254.01 Statement of Grounds of Rejection, not modified

 Every ground of rejection set forth in
 the Office action dated [1] from which the appeal is taken is being maintained by
 the examiner except for the grounds of rejection (if any) listed under the subheading
 “WITHDRAWN REJECTIONS.” New grounds of rejection (if any) are provided under the subheading
 “NEW GROUNDS OF REJECTION.”
 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. In bracket 1, insert the mailing
 date of the Office action from which the appeal is being taken.
 

 3. Use form paragraph
 12.255 to
 restate the grounds of rejection and supporting rationale for each rejection involved in
 the appeal, when needed.
 

 4. Use form paragraph
 12.256 to
 introduce any new grounds of rejection.
 

 5. Use form paragraph
 12.257 to
 withdraw a ground of rejection previously made in the final Office action or last Office
 action.
 

 6. Use this form paragraph when
 there was no modification made to the grounds of rejection in an advisory action or
 pre-appeal conference decision.
 
 
 

 ¶ 12.254.02 Statement of Grounds of Rejection, modified

 The ground(s) of rejection set forth in
 the Office action dated [1] from which the appeal is taken have been modified by
 the [2] dated [3] . A list of rejections withdrawn by the examiner
 (if any) is included under the subheading “WITHDRAWN REJECTIONS.” New grounds of rejection (if
 any) are provided under the subheading “NEW GROUNDS OF REJECTION.”
 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. In bracket 1, insert the mailing
 date of the Office action from which the appeal is being taken.
 

 3. In bracket 2, insert --advisory
 action-- and/or --pre-appeal brief conference decision--.
 

 4. In bracket 3, insert the mailing
 date of the advisory action and/or pre-appeal brief conference
 decision--.
 

 5. Use form paragraph
 12.255 to
 restate the grounds of rejection and supporting rationale for each rejection involved in
 the appeal, when needed.
 

 6. Use form paragraph
 12.256 to
 introduce any new grounds of rejection.
 

 7. Use form paragraph
 12.257 to
 withdraw a ground of rejection previously made in the final Office action or last Office
 action.
 

 8. Use this form paragraph when the
 grounds of rejection were modified in an advisory action or pre-appeal brief conference
 decision.
 
 
 

 ¶ 12.255 Restatement of Rejection

 The following ground(s) of rejection
 are applicable to the appealed claims.
 

 [1] 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. Precede this form paragraph with
 either 12.254.01 or 12.254.02 .
 

 3. Use this form paragraph to
 optionally include a statement of rejection and/or supporting rationale for every ground
 of rejection involved in the appeal.
 

 4. Only use this form paragraph
 when the restatement of the rejection does not include any new ground(s) of
 rejection.
 

 5. In bracket 1, explain each
 ground of rejection maintained by the examiner.
 
 
 

 ¶ 12.256 New Grounds of Rejection - Heading

 
 NEW GROUNDS OF REJECTION 

 
 [1] 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. Any new ground(s) of rejection
 in the examiner’s answer must be prominently identified (e.g., using this form
 paragraph).
 

 3. Provide a concise statement of
 each new ground of rejection presented for review in bracket 1; and
 

 4. Conclude an examiner’s answer raising new grounds of rejection with
 form paragraph 12.279.01 : (1) to notify applicant of the reply period
 and options following the new grounds of rejection; and (2) to include the required
 approval of the TC Director or the TC Director's designee.
 
 
 

 ¶ 12.257 Withdrawn Rejections

 WITHDRAWN REJECTIONS 

 The following grounds of rejection are
 not presented for review on appeal because they have been withdrawn by the examiner.
 [1] .
 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. In bracket 1, insert the grounds
 of rejection that have been withdrawn.
 
 
 

 ¶ 12.261 Response to Argument

 (2) Response to Argument 

 Examiner Note:

 1. For use if the notice of appeal was filed on or after
 January 23, 2012.
 

 2. If an issue raised by appellant
 was fully responded to under the 
 "Grounds of
 Rejection to be Reviewed on Appeal"
 
 
 portion, no additional response
 is required here.
 

 3. If an issue has been raised by
 appellant that was not fully responded to under 
 "Grounds of Rejection to be Reviewed on Appeal,"
 
 
 a full response
 must be provided after this form paragraph.
 

 

 ¶ 12.278 Warning in Examiner's Answer containing NSDP rejection not
 argued
 

 This appeal includes a rejection of claims [1] which are
 rejected on the ground of non-statutory double patenting. This rejection was not addressed in
 the appellant's appeal brief. Should the Board either summarily affirm or not reach the
 rejection and the appellant should fail to overcome the rejection with a properly filed
 terminal disclaimer prior to seeking judicial review either by an appeal to the U.S. Court of
 Appeals for the Federal Circuit ( 35 U.S.C. 141 ) or by civil action in the
 U.S. District Court for the Eastern District of Virginia ( 35 U.S.C. 145 ) the
 appeal may be dismissed by the Court for lack of jurisdiction because the claims on appeal are
 subject to the non-statutory double patenting rejection. Alternatively, the Court may
 summarily affirm the non-statutory double patenting rejection without considering other
 grounds of rejection challenged on the appeal.
 

 Examiner Note:
 
 1. For use when claims are subject to the non-statutory double
 patenting rejection that has not been argued in the appeal brief.
 

 2. In bracket 1, insert the claim numbers of the claims subject to
 the non-statutory double patenting rejection.
 
 
 

 ¶ 12.279 Conclusion to Examiner’s Answer, No New Grounds of
 Rejection
 

 For the above reasons, it is believed
 that the rejections should be sustained.
 

 Respectfully
 submitted,
 

 [1] 

 Conferees:

 [2] 

 [3] 

 Requirement to pay appeal forwarding fee . In order to avoid dismissal of the
 instant appeal in any application or ex parte reexamination proceeding,
 37 CFR
 41.45 requires payment of an appeal forwarding fee within the time
 permitted by 37
 CFR 41.45(a) , unless appellant had timely paid the fee for filing a
 brief required by 37 CFR
 41.20(b) in effect on March 18, 2013. 
 

 Examiner Note:

 1. For use if the notice of appeal was filed on or
 after January 23, 2012. 
 

 2. In bracket 1, insert initials of
 the examiner and the date.
 

 3. In bracket 2, insert names of
 the conferees. The conferees must also place their initials next to their
 names.
 

 4. In bracket 3, insert
 correspondence address of record.
 

 5. If the examiner’s answer
 includes a new ground of rejection, use form paragraph 12.279.01 instead of this form
 paragraph.
 

 

 ¶ 12.279.01 Conclusion to Examiner’s Answer Raising New Grounds of
 Rejection
 

 For the above reasons, it is believed
 that the rejections should be sustained.
 

 This examiner’s answer contains a new
 ground of rejection set forth in section (1) above.
 Accordingly, appellant must within TWO MONTHS from the date of this answer
 exercise one of the following two options to avoid sua sponte dismissal of the appeal as to
 the claims subject to the new ground of rejection:
 

 (1) Reopen prosecution .
 Request that prosecution be reopened before the primary examiner by filing a reply under
 37 CFR
 1.111 with or without amendment, affidavit or other evidence. Any
 amendment, affidavit or other evidence must be relevant to the new grounds of rejection. A
 request that complies with 37 CFR 41.39(b)(1) will be entered and considered. Any request that
 prosecution be reopened will be treated as a request to withdraw the appeal.
 

 (2) Maintain appeal .
 Request that the appeal be maintained by filing a reply brief as set forth in
 37 CFR
 41.41 . Such a reply brief must address each new ground of rejection as
 set forth in 37 CFR
 41.37(c)(1) and should be in compliance with the other requirements of
 37 CFR
 41.37(c) . If a reply brief filed pursuant to 37 CFR 41.39(b)(2) is
 accompanied by any amendment, affidavit or other evidence, it shall be treated as a request
 that prosecution be reopened before the primary examiner under 37 CFR 41.39(b)(1) . 
 

 Extensions of time under
 37 CFR
 1.136(a) are not applicable to the TWO MONTH time period set forth
 above. See 37 CFR
 1.136(b) for extensions of time to reply for patent applications and
 37 CFR
 1.550(c) for extensions of time to reply for ex parte 
 reexamination proceedings.
 

 Respectfully
 submitted,
 

 [1] 

 A Technology Center Director or designee must personally approve the new ground(s) of
 rejection set forth in section (1) above by signing below: 

 [2] 

 Conferees:

 [3] 

 [4] 

 Requirement to pay appeal forwarding fee . In order to avoid dismissal of the
 instant appeal in any application or ex parte reexamination proceeding,
 37 CFR
 41.45 requires payment of an appeal forwarding fee within the time
 permitted by 37
 CFR 41.45(a) , unless appellant had timely paid the fee for filing a
 brief required by 37 CFR
 41.20(b) in effect on March 18, 2013. 
 

 Examiner Note:

 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. In bracket 1, insert initials
 of the examiner and the date.
 

 3. In bracket 2, insert TC
 Director’s or designee’s signature. All new grounds of rejection must be approved by a TC
 Director or designee. 
 

 4. In bracket 3, insert names of
 the conferees. The conferees must also place their initials next to their
 names.
 

 5. In bracket 4, insert
 correspondence address of record.
 

 

 ¶ 12.279.02 Dismissal Following New Ground(s) of Rejection in Examiner’s
 Answer
 

 Appellant failed to timely respond to
 the examiner’s answer mailed on [1] that included a new ground of rejection.
 Under 37 CFR
 41.39(b) , if an examiner’s answer contains a rejection designated as a
 new ground of rejection, appellant must, within two months from the date of the examiner’s
 answer, file either: (1) a request that prosecution be reopened by filing a reply under
 37 CFR
 1.111 ; or (2) a request that the appeal be maintained by filing a reply
 brief under 37 CFR
 41.41 , addressing each new ground of rejection, to avoid sua sponte
 dismissal of the appeal as to the claims subject to the new ground of rejection. In view of
 appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the
 time period required by 37
 CFR 41.39 , the appeal as to claims [2] is dismissed, and these
 claims are canceled .
 

 Only claims [3] remain in
 the application. The appeal continues as to these remaining claims. The application will be
 forwarded to the Board after mailing of this communication.
 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. In bracket 1, insert the mailing
 date of the examiner’s answer.
 

 3. In bracket 2, insert the claim
 numbers of the claims subject to the new ground of rejection.
 

 4. In bracket 3, insert the claim
 numbers of the claims that are not subject to the new ground of
 rejection.
 
 
 

 

 
 1207.03 New Ground of Rejection in Examiner’s Answer [R-10.2019]

 37 CFR
 41.39(a)(2) permits the entry of a new ground of rejection in an
 examiner’s answer. 37
 CFR 41.39 further specifies that new grounds of rejection must be
 approved by the Director – i.e., the Director of the USPTO. This
 authority has been delegated to the Technology Center (TC) Directors or their
 designee(s). The answer must also include the signature of a Technology Center (TC)
 Director or designee to indicate that he or she approves the new ground of rejection. 
 

 At the time of preparing the answer to an appeal brief,
 the examiner may decide that they should apply a new ground of rejection against some or
 all of the pending claims. In such an instance where a new ground of rejection is
 necessary, the examiner should either reopen prosecution or set forth the new ground of
 rejection in the answer. The examiner must obtain supervisory approval in order to
 reopen prosecution after an appeal. See MPEP §§ 1002.02(d) and
 1207.04 . 
 

 I. REQUIREMENTS FOR A NEW GROUND OF REJECTION Any new ground of rejection made by an examiner in an answer must
 be:
 

 
 (A) approved by a Technology Center (TC) Director or designee;
 and
 

 (B) prominently identified in the 
 "Grounds of
 Rejection to be Reviewed on Appeal"
 
 
 section under the
 subheading 
 "New Grounds of Rejection"
 
 
 of
 the answer (see MPEP § 1207.02 ). The examiner may use form paragraph
 12.256 . 
 

 
 The examiner’s answer must provide appellant a two-month time period
 for reply. The examiner may use form paragraph 12.279.01 to notify appellant of
 the period for reply and to include the approval of the TC Director or designee. In
 response to an examiner’s answer that contains a new ground of rejection, appellant
 must either file: 
 

 
 (A) a reply in compliance with 37 CFR 1.111 to request
 that prosecution be reopened; or 
 

 (B) a reply brief that addresses each new ground of rejection in
 compliance with 37 CFR 41.37(c)(1)(iv) to
 maintain the appeal.
 

 
 Appellant must file the reply or reply brief within two months from
 the date of the examiner’s answer to avoid sua sponte dismissal of
 the appeal as to the claims subject to the new ground of rejection. See
 37 CFR
 41.39(b) and subsection “V. APPELLANT’S REPLY TO NEW GROUNDS OF
 REJECTION” below. 
 

 II. SITUATIONS WHERE NEW GROUNDS OF REJECTION ARE NOT PERMISSIBLE A new ground of rejection would not be permitted to reject a
 previously allowed or objected to claim even if the new ground of rejection would
 rely upon evidence already of Record. In this instance, rather than making a new
 ground of rejection in an examiner’s answer, if the basis for the new ground of
 rejection was approved by a supervisory patent examiner as currently set forth in
 MPEP §
 1207.04 , the examiner would reopen prosecution.
 

 III. DESIGNATION AS A NEW GROUND OF REJECTION IN AN EXAMINER'S ANSWER If Evidence (such as a new prior art reference, but not
 including a newly relied upon dictionary definition) is applied or cited for the
 first time in an examiner’s answer, then 37 CFR 41.39(a)(2) requires that
 the rejection be designated as a new ground of rejection. If the citation of a new
 prior art reference is necessary to support a rejection, it must be included in the
 statement of rejection, which would be considered to introduce a new ground of
 rejection. Even if the prior art reference is cited to support the rejection in a
 minor capacity, it should be positively included in the statement of rejection and be
 designated as a new ground of rejection. In re Hoch, 428 F.2d
 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). See MPEP § 2144.03 for
 guidance on the citation of a new reference to support Official Notice taken in
 Office actions made prior to an examiner’s answer. 
 

 See 37 CFR 41.30 and
 MPEP
 § 1204.04 for a detailed discussion of what constitutes
 "evidence" for the purposes of appeal.
 

 A position or rationale that changes the
 
 "basic thrust of the rejection"
 
 
 will also
 give rise to a new ground of rejection. In re Kronig, 539 F.2d
 1300, 1303, 190 USPQ 425, 427 (CCPA 1976). A rejection relying on the same statutory
 basis and same prior art references, may nevertheless raise a new ground of
 rejection, when the rejection relies on new facts or rationales not previously
 raised. See In re Leithem, 661 F.3d 1316, 100 USPQ2d 1155 (Fed.
 Cir. 2011); Rambus v. Rea, 731 F.3d 1248, 108 USPQ2d 1400 (Fed.
 Cir. 2013) (the inclusion of a new motivation to combine prior art references did not
 merely elaborate on the examiner’s findings with “more detail”). However, the
 examiner need not use identical language in both the examiner’s answer and the Office
 action from which the appeal is taken to avoid triggering a new ground of rejection.
 It is not a new ground of rejection, for example, if the examiner’s answer responds
 to appellant’s arguments using different language, or restates the reasoning of the
 rejection in a different way, so long as the 
 "basic thrust of the
 rejection"
 
 
 is the same. In re Kronig, 539
 F.2d at 1303, 190 USPQ at 427; see also In re Jung, 637 F.3d 1356,
 1364–65, 98 USPQ2d 1174, 1180 (Fed. Cir. 2001) (additional explanation responding to
 arguments offered for the first time 
 "did not change the
 rejection"
 
 
 and appellant had fair opportunity to respond);
 In re Noznick, 391 F.2d 946, 949, 157 USPQ 266, 269 (CCPA 1968)
 (no new ground of rejection made when 
 "explaining to appellants
 why their arguments were ineffective to overcome the rejection made by the
 examiner"
 
 
 ); In re Krammes, 314 F.2d 813,
 817, 137 USPQ 60, 63 (CCPA 1963) (
 "It is well established that
 mere difference in form of expression of the reasons for finding claims
 unpatentable or unobvious over the references does not amount to reliance on a
 different ground of rejection."
 
 
 (citations omitted));
 In re Cowles, 156 F.2d 551, 555, 70 USPQ 419, 422 (CCPA 1946)
 (holding that the use of "different language" does not necessarily trigger a new
 ground of rejection).
 

 
 1207.03(a) Determining Whether a Ground of Rejection is
 New [R-08.2017]
 
 I. SITUATIONS WHERE A GROUND OF REJECTION IS NEW The following examples are intended to provide
 guidance as to what constitutes a new ground of rejection in an examiner’s answer.
 What constitutes a 
 "new ground of
 rejection"
 
 
 is a highly fact-specific question. See, e.g.,
 Kronig, 539 F.2d at 1303, 190 USPQ at 427 (finding new
 ground entered based upon 
 "facts of this
 case"
 
 
 and declining to find other cases controlling given
 
 "the distinctive facts at bar"
 
 
 );
 In re Ahlert, 424 F.2d 1088, 1092, 165 USPQ 418, 421 (CCPA
 1970) (
 "[l]ooking at the facts of this case, we are constrained
 to hold"
 
 
 that a new ground was entered). If a situation
 arises that does not fall neatly within any of the following examples, it is
 recommended that the examiner identify the example below that is most analogous to
 the situation at hand, keeping in mind that 
 "the ultimate
 criterion of whether a rejection is considered ‘new’ * * * is whether
 appellants have had fair opportunity to react to the thrust of the
 rejection."
 
 
 Kronig, 539 F.2d at 1302, 190 USPQ at 426.
 

 Factual Situations That Constitute a New Ground of
 Rejection 
 1. Changing the statutory basis of rejection from 35 U.S.C. 102 to
 35 U.S.C. 103. 
 

 

 If the examiner’s answer changes the
 statutory basis of the rejection from 35 U.S.C. 102 to 35 U.S.C. 103,
 then the rejection should be designated as a new ground of rejection. For
 example, in In re Hughes, 345 F.2d 184, 145 USPQ 467
 (CCPA 1965), the Board affirmed an examiner’s rejection under 35 U.S.C.
 102 over a single reference. On appeal, the Solicitor argued that the
 Board’s decision should be sustained under 35 U.S.C. 103 over that same
 reference. The court declined to sustain the rejection under 35 U.S.C.
 103, holding that a change in the statutory basis of rejection would
 constitute a new ground of rejection, and observed that
 
 "the issues arising under the two sections [35
 U.S.C. 102 and 103] may be vastly different, and may call for the
 production and introduction of quite different types of
 evidence."
 
 
 Hughes, 345 F.2d at 186–87, 145 USPQ at 469.
 

 

 2. Changing the statutory basis of rejection from 35 U.S.C. 103 to
 35 U.S.C. 102, based on a different teaching. 
 

 

 If the examiner’s answer changes the
 statutory basis of the rejection from 35 U.S.C. 103 to 35 U.S.C. 102, and
 relies on a different portion of a reference which goes beyond the scope
 of the portion that was previously relied upon, then the rejection should
 be designated as a new ground of rejection. For example, in In
 re Echerd, 471 F.2d 632, 176 USPQ 321 (CCPA 1973), the
 examiner rejected the claims under 35 U.S.C. 103 over a combination of
 two references. The Board then changed the ground of rejection to 35
 U.S.C. 102 over one of those references, relying on a different portion
 of that reference for some claim limitations, and asserted that the
 remaining claim limitations were inherently present in that reference.
 The court held that the Board’s affirmance constituted a new ground of
 rejection. Echerd, 471 F.2d at 635, 176 USPQ at 323
 (
 "[A]ppellants should have been accorded an
 opportunity to present rebuttal evidence as to the new assumptions of
 inherent characteristics. * * *"
 
 
 (citation
 omitted)).
 

 

 3. Citing new calculations in support of overlapping ranges.
 
 

 

 If a claim reciting a range is rejected as
 anticipated or obvious based on prior art that falls within or overlaps
 with the claimed range (see MPEP §§ 2131.03 and
 2144.05 ), and the rejection is based upon
 range values identified and calculated for the first time in the
 examiner’s answer, then the rejection should be designated as a new
 ground of rejection. For example, in In re Kumar, 418
 F.3d 1361, 76 USPQ2d 1048 (Fed. Cir. 2005), the examiner rejected the
 claims under 35 U.S.C. 103 based on overlapping ranges of particle sizes
 and size distributions. The Board affirmed the rejection, but included in
 its decision an identification of specific values in the prior art and an
 appendix containing calculations to support the prima
 facie case of obviousness. The court held the Board’s
 reliance upon those values to constitute a new ground of rejection,
 stating that 
 "the Board found facts not found by the
 examiner regarding the differences between the prior art and the
 claimed invention, which in fairness required an opportunity for
 response."
 
 
 Kumar, 418 F.3d at 1368, 76 USPQ2d at 1052 (citation
 omitted).
 

 

 4. Citing new structure in support of structural
 obviousness. 
 

 

 If, in support of an obviousness
 rejection based on close structural similarity (see MPEP §
 2144.09 ), the examiner’s answer relies on a
 different structure than the one on which the examiner previously relied,
 then the rejection should be designated as a new ground of rejection. For
 example, in In re Wiechert, 370 F.2d 927, 152 USPQ 247
 (CCPA 1967), the examiner rejected claims to a chemical composition under
 35 U.S.C. 103 based on the composition’s structural similarity to a prior
 art compound disclosed in a reference. The Board affirmed the rejection
 under 35 U.S.C. 103 over that same reference, but did so based on a
 different compound than the one the examiner cited. The court held that
 the Board’s decision constituted a new ground of rejection, stating,
 
 "Under such circumstances, we conclude that when a
 rejection is factually based on an entirely different portion of an
 existing reference the appellant should be afforded an opportunity to
 make a showing of unobviousness vis-a-vis such portion of the
 reference."
 
 
 Wiechert, 370 F.2d at 933, 152 USPQ at 252.
 

 

 5. Pointing to a different portion of the claim to maintain a
 
 "new matter"
 
 
 rejection.
 
 

 

 If, in support of a claim rejection under
 35 U.S.C. 112 based on new matter (see
 MPEP §
 2163.06 ), a different feature or aspect of the
 rejected claim is believed to constitute new matter, then the rejection
 should be designated as a new ground of rejection. For example, in
 In re Waymouth, 486 F.2d 1058, 179 USPQ 627 (CCPA
 1973), the claims included the limitation 
 "said sodium
 iodide * * * present in amount of at least 0.17 mg./cc. of said arc
 tube volume."
 
 
 The examiner’s rejection stated that
 the claimed 
 "sodium iodide"
 
 
 
 constituted new matter because the specification was alleged only to
 disclose 
 "sodium."
 
 
 The Board
 affirmed the rejection, but did so on a 
 "wholly
 different basis,"
 
 
 namely, that the specification
 failed to disclose the claimed 
 "0.17
 mg./cc."
 
 
 volume limitation.
 Waymouth, 486 F.2d at 1060, 179 USPQ at 629. The
 court held that the Board’s rationale constituted a new ground of
 rejection, 
 "necessitating different responses by
 appellants."
 
 
 Id. at 1061, 179 USPQ at 629.
 

 

 II. SITUATIONS THAT ARE NOT CONSIDERED NEW GROUNDS OF REJECTION There is no new ground of rejection when the basic thrust of the
 rejection remains the same such that an appellant has been given a fair
 opportunity to react to the rejection. See In re Kronig, 539
 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA 1976). Where the statutory basis
 for the rejection remains the same, and the evidence relied upon in support of the
 rejection remains the same, a change in the discussion of, or rationale in support
 of, the rejection does not necessarily constitute a new ground of rejection.
 Id. at 1303, 190 USPQ at 427 (reliance upon fewer references
 in affirming a rejection under 35 U.S.C. 103 does not
 constitute a new ground of rejection). 
 

 In addition, if:

 
 (A) an amendment under 37 CFR 1.116 [or
 41.33 ] proposes to add or amend one or more claims;
 
 

 (B) appellant was advised (through an advisory action) that the
 amendment would be entered for purposes of appeal; and 
 

 (C) the advisory action indicates which individual rejection(s)
 set forth in the action from which appeal has been taken would be used to
 reject the added or amended claims, then
 

 (1) the appeal brief must address the rejection(s) of the added
 or amended claim(s) and 
 

 (2) the examiner’s answer may include the rejection(s) of the
 added or amended claims. Such rejection(s) made in the examiner’s answer
 would not be considered as a new ground of rejection.
 

 
 The filing of such an amendment represents appellant’s consent to
 proceed with the appeal process. For example, when an amendment under
 37 CFR
 1.116 or 41.33 cancels a claim (the
 “canceled claim”) and incorporates its limitations into the claim upon which it
 depends or rewrites the claim as a new independent claim (the “appealed claim”),
 the appealed claim contains the limitations of the canceled claim (i.e., the only
 difference between the appealed claim and the canceled claim is the claim number).
 In such situations, the appellant has been given a fair opportunity to react to
 the ground of rejection (albeit to a claim having a different claim number). Thus,
 such a rejection does not constitute a “new ground of rejection” within the
 meaning of 37
 CFR 41.39 .
 

 The phrase “individual rejections” addresses situations such as
 the following: the action contains a rejection of claim 1 under 35 U.S.C.
 102 on the basis of Reference A, a rejection of claim 2
 (which depends upon claim 1) under 35 U.S.C. 103 on the basis of
 Reference A in view of Reference B and a rejection of claim 3 (which depends upon
 claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of
 Reference C. In this situation, the action contains the following “individual
 rejections”: (1) 35 U.S.C. 102 on the basis of Reference A; (2)
 35 U.S.C.
 103 on the basis of Reference A in view of Reference B; and
 (3) 35 U.S.C.
 103 on the basis of Reference A in view of Reference C. The
 action, however, does not contain any rejection on the basis of A in view of B and
 C. If an amendment under 37 CFR 1.116 or
 41.33 proposes to combine the limitations of claims 1 and 2
 together into amended claim 1 and cancels claim 2, a rejection of amended claim 1
 under 35 U.S.C.
 103 on the basis of Reference A in view of Reference B would
 be appropriate and would not be considered a new ground of rejection within the
 meaning of 37
 CFR 41.39 , provided the applicant was advised that this
 rejection would be applied to amended claim 1 in an advisory action. Furthermore,
 since claim 3 (which depends upon claim 1) would include the limitations of the
 original claims 1, 2, and 3, a rejection of amended claim 3 (amended by the
 amendment to original claim 1) under 35 U.S.C. 103 on the basis of
 Reference A in view of Reference B and Reference C may be appropriate and would
 not be considered a new ground of rejection within the meaning of
 37 CFR
 41.39 , provided applicant was advised that this rejection
 would be applied to amended claim 3 in the advisory action. Of course, as amended
 claim 3 includes the limitations of the original claims 1, 2, and 3, amended claim
 3 is a newly proposed claim in the application raising a new issue (i.e., a new
 ground of rejection), and such an amendment under 37 CFR 1.116 
 or 41.33 may properly be refused entry as raising a new
 issue.
 

 It must be emphasized that 37 CFR 41.39(a)(2) does not
 change the existing practice with respect to amendment after final rejection
 practice ( 37 CFR
 1.116 ). The fact that 37 CFR 41.39(a)(2) would
 authorize the rejection in an examiner’s answer of a claim sought to be added or
 amended in an amendment under 37 CFR 1.116 or
 41.33 has no effect on whether the amendment under
 37 CFR
 1.116 or 41.33 is entitled to entry.
 The provisions of 37 CFR 1.116 or 41.33 control
 whether an amendment under 37 CFR 1.116 or
 41.33 is entitled to entry; the provisions of
 37 CFR
 41.39(a)(2) permits a new ground of rejection to be included
 in an answer against a claim added or amended in an amendment under
 37 CFR
 1.116 or 41.33 . 
 

 Where a newly cited reference is added merely as evidence of the
 prior statement made by the examiner as to what is 
 "well-known"
 
 
 in the art which was
 challenged for the first time in the appeal brief, the citation of the reference
 in the examiner’s answer would not ordinarily constitute a new ground of rejection
 within the meaning of 37 CFR 41.39(a)(2) . See also
 MPEP §
 2144.03 .
 

 Factual Situations That Do Not Constitute a New Ground of
 Rejection 
 

 1. Citing a different portion of a reference to elaborate upon that
 which has been cited previously. 
 

 

 If the examiner’s answer cites a
 different portion of an applied reference which goes no farther than, and
 merely elaborates upon, what is taught in the previously cited portion of
 that reference, then the rejection does not constitute a new ground of
 rejection. For example, in In re DBC, 545 F.3d 1373,
 89 USPQ2d 1123 (Fed. Cir. 2008), the examiner rejected the claims under
 35 U.S.C. 103 over a combination of references, including the English
 translation of the abstract for a Japanese patent. The examiner cited the
 English abstract for two claim limitations: (1) Mangosteen rind, and (2)
 fruit or vegetable juice. The Board affirmed the rejection under 35
 U.S.C. 103 over the same references, but instead of citing the abstract,
 the Board cited an Example on page 16 of the English translation of the
 Japanese reference, which was not before the examiner.
 DBC, 545 F.3d at 1381, 89 USPQ2d at 1129.
 Importantly, the Board cited the Example for the same two claim
 limitations taught in the abstract, and the Example merely elaborated
 upon the medicinal qualities of the mangosteen rind (which medicinal
 qualities were not claimed) and taught orange juice as the preferred
 fruit juice (while the claim merely recited fruit or vegetable juice).
 Hence, the Example merely provided a more specific disclosure of the same
 two generic limitations that were fully taught by the abstract. The court
 held that this did not constitute a new ground of rejection because
 
 "the example in the translation goes no farther
 than, and merely elaborates upon, what is taught by the
 abstract."
 
 
 DBC, 545 F.3d at 1382 n.5, 89 USPQ2d at 1130 n.5.
 

 

 2. Changing the statutory basis of rejection from 35 U.S.C. 103 to
 35 U.S.C. 102, but relying on the same teachings. 
 

 

 If the examiner’s answer changes the
 statutory basis of the rejection from 35 U.S.C. 103 to 35 U.S.C. 102, and
 relies on the same teachings of the remaining reference to support the 35
 U.S.C. 102 rejection, then the rejection does not constitute a new ground
 of rejection. For example, in In re May, 574 F.2d
 1082, 197 USPQ 601 (CCPA 1978), a claim directed to a genus of chemical
 compounds was rejected under 35 U.S.C. 103 over a combination of
 references. The primary reference disclosed a species that fell within
 the claimed genus. Both the examiner and the Board cited the species to
 reject the claim under 35 U.S.C. 103. The court affirmed the rejection,
 but did so under 35 U.S.C. 102, stating that 
 "lack of
 novelty is the epitome of obviousness."
 
 
 May, 574 F.2d at 1089, 197 USPQ at 607 (citing
 In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641,
 644 (CCPA 1974)). Because the court relied on the same prior art species
 as both the examiner and Board, the court held that this did not
 constitute a new ground of rejection. May, 574 F.2d at
 1089, 197 USPQ at 607.
 

 

 3. Relying on fewer than all references in support of a 35 U.S.C.
 103 rejection, but relying on the same teachings. 
 

 

 If the examiner’s answer removes one or
 more references from the statement of rejection under 35 U.S.C. 103, and
 relies on the same teachings of the remaining references to support the
 35 U.S.C. 103 rejection, then the rejection does not constitute a new
 ground of rejection. For example, in In re Kronig, 539
 F.2d 1300, 1302, 190 USPQ 425, 427 (CCPA 1976), the examiner rejected the
 claims under 35 U.S.C. 103 over four references. The Board affirmed the
 rejection under 35 U.S.C. 103, but limited its discussion to three of the
 references applied by the examiner. Id. The Board
 relied upon the references for the same teachings as did the examiner.
 The court held that this did not constitute a new ground of rejection.
 Kronig, 539 F.2d at 1303, 190 USPQ at 427
 (
 "Having compared the rationale of the rejection
 advanced by the examiner and the board on this record, we are
 convinced that the basic thrust of the rejection at the examiner and
 board level was the same."
 
 
 ). See also In
 re Bush, 296 F.2d 491, 495–96, 131 USPQ 263, 266-67 (CCPA
 1961) (Examiner rejected claims 28 and 29 under 35 U.S.C. 103 based upon
 
 "Whitney in view of Harth;"
 
 
 
 Board did not enter new ground of rejection by relying only on
 Whitney).
 

 

 4. Changing the order of references in the statement of rejection,
 but relying on the same teachings of those references. 
 

 

 If the examiner’s answer changes the
 order of references in the statement of rejection under 35 U.S.C. 103,
 and relies on the same teachings of those references to support the 35
 U.S.C. 103 rejection, then the rejection does not constitute a new ground
 of rejection. For example, in In re Cowles, 156 F.2d
 551, 552, 70 USPQ 419, 420 (CCPA 1946), the examiner rejected the claims
 under 35 U.S.C. 103 over 
 "Foret in view of either
 Preleuthner or Seyfried."
 
 
 The Board affirmed the
 rejection under 35 U.S.C. 103, but styled the statement of rejection as
 to some of the rejected claims as 
 "Seyfried in view of
 Foret,"
 
 
 but relied on the same teachings of
 Seyfried and Foret on which the examiner relied. The court held that this
 did not constitute a new ground of rejection. Cowles, 
 156 F.2d at 554, 70 USPQ at 421-22. See also In re
 Krammes, 314 F.2d 813, 816– 17, 137 USPQ 60, 63 (CCPA 1963)
 (holding that a different 
 "order of combining the
 references"
 
 
 did not constitute a new ground of
 rejection because each reference was cited for the
 
 "same teaching"
 
 
 previously
 cited).
 

 

 5. Considering, in order to respond to applicant’s arguments, other
 portions of a reference submitted by the applicant. 
 

 

 If an applicant submits a new reference
 to argue, for example, that the prior art 
 "teaches
 away"
 
 
 from the claimed invention (see
 MPEP §
 2145 ), and the examiner’s answer points to
 portions of that same reference to counter the argument, then the
 rejection does not constitute a new ground of rejection. In In
 re Hedges, 783 F.2d 1038, 228 USPQ 685 (Fed. Cir. 1986), the
 claimed invention was directed to a process for sulfonating diphenyl
 sulfone at a temperature above 127° C. Id. at 1039, 228 USPQ at 685. The
 examiner rejected the claims under 35 U.S.C. 103 over a single reference.
 The applicant submitted three additional references as evidence that the
 prior art teaches away from performing sulfonation above 127° C, citing
 portions of those references which taught lower temperature reactions.
 The Board affirmed the rejection, finding the applicant’s evidence
 unpersuasive. On appeal, the Solicitor responded to the applicant’s
 
 "teaching away"
 
 
 argument by
 pointing to other portions of those same references which, contrary to
 applicant’s argument, disclosed reactions occurring above 127° C. The
 court held that this did not constitute a new ground of rejection because
 
 "[t]he Solicitor has done no more than search the
 references of record for disclosures pertinent to the same arguments
 for which [applicant] cited the references."
 
 
 Hedges, 783 F.2d at 1039–40, 228 USPQ at 686.
 

 

 
 

 
 1207.03(b) Petition to Designate a New Ground of
 Rejection and to Reopen Prosecution [R-10.2019]
 

 
 37 CFR 41.40 Tolling of time period to file a reply brief. 

 
 (a) Timing. Any request to seek review of the primary
 examiner's failure to designate a rejection as a new ground of rejection in
 an examiner's answer must be by way of a petition to the Director under §
 1.181 of this title filed within two months from the
 entry of the examiner's answer and before the filing of any reply brief.
 Failure of appellant to timely file such a petition will constitute a waiver
 of any arguments that a rejection must be designated as a new ground of
 rejection.
 

 (b) Petition granted and prosecution reopened. A decision
 granting a petition under § 1.181 to designate a new
 ground of rejection in an examiner's answer will provide a two-month time
 period in which appellant must file a reply under § 1.111 
 of this title to reopen the prosecution before the primary examiner. On
 failure to timely file a reply under § 1.111 , the appeal will
 stand dismissed.
 

 (c) Petition not granted and appeal maintained. A decision
 refusing to grant a petition under § 1.181 of this title to
 designate a new ground of rejection in an examiner's answer will provide a
 two-month time period in which appellant may file only a single reply brief
 under § 41.41 .
 

 (d) Withdrawal of petition and appeal maintained. If a reply
 brief under § 41.41 is filed within
 two months from the date of the examiner's answer and on or after the filing
 of a petition under § 1.181 to designate a new
 ground of rejection in an examiner's answer, but before a decision on the
 petition, the reply brief will be treated as a request to withdraw the
 petition and to maintain the appeal.
 

 (e) Extensions of time. Extensions of time under §
 1.136(a) of this title for patent applications are
 not applicable to the time period set forth in this section. See §
 1.136(b) of this title for extensions of time to
 reply for patent applications and § 1.550(c) of this title
 for extensions of time to reply for ex parte 
 reexamination proceedings.
 

 
 

 Appellant cannot request to reopen prosecution pursuant to
 37 CFR
 41.39(b) if the examiner’s answer does not have a rejection
 that is designated as a new ground of rejection. 
 

 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 .
 The petition requesting designation as a new ground of rejection must be filed within
 two months from the entry of the examiner’s answer and prior to the filing of any
 reply brief. This procedure should be used if an appellant feels an answer includes a
 new ground of rejection that has not been designated as such and wishes to reopen
 prosecution so that new amendments or evidence may be submitted in response to the
 rejection. However, 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. See 37 CFR
 41.41(b)(2) and In re Timothy D. Durance et
 al., 891 F.3d 991, 998, 127 USPQ2d 1141, 1147 (Fed. Cir. 2018)
 (concluding that the Answer contained a new argument and 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) ). 
 

 The authority to decide petitions under
 37 CFR
 41.40 is delegated to the TC Director or designee. A decision
 granting a petition under 37 CFR 41.40 will provide a
 two-month time period in which appellant must file a reply under 37 CFR 1.111 to
 avoid the dismissal of the appeal. No corrected examiner’s answer will be
 provided.
 

 If the petition is granted, appellant may present
 amendment, evidence, and/or arguments in the reply under 37 CFR 1.111 
 that are directed to other rejections that are not new grounds of rejection. An
 after-final amendment or evidence that was previously refused entry is not
 automatically entered. Appellant may include such amendment or evidence in the reply.
 Upon filing of the reply, the prosecution will be reopened and the examiner will
 consider the reply. The examiner may make the next Office action final (if
 appropriate). See MPEP
 § 706.07(a) . 
 

 On the other hand, if the Office refuses to grant a
 petition under 37
 CFR 1.181 requesting designation as a new ground of rejection
 under 37
 CFR 41.40 , the appeal will be maintained. A decision refusing
 to grant a petition will provide a two-month time period in which appellant may file
 only a single reply brief under 37 CFR 41.40 . The jurisdiction
 will pass to the Board upon the filing of a reply brief or the expiration of the
 two-month time period, whichever is earlier. See 37 CFR 41.35(a) . 
 

 Any reply brief that is filed within two months from
 the date of the examiner’s answer, but before a decision on the petition, will be
 treated as a request to withdraw the petition and to maintain the appeal. No decision
 on the petition will be provided. Jurisdiction will pass to the Board upon the filing
 of the reply brief. See 37 CFR 41.35(a) . 
 

 The time periods set forth in 37 CFR
 41.40 are not extendable under 37 CFR
 1.136(a) , but are extendable under 37 CFR 1.136(b) 
 for patent applications and 37 CFR 1.550(c) for ex
 parte reexamination proceedings. See 37 CFR
 41.40(e) . 
 

 

 
 1207.03(c) Appellant's Reply to New Grounds of
 Rejection [R-08.2017]
 

 
 37 CFR 41.39 Examiner’s answer. 

 *****

 
 (b) Appellant's response to new ground of rejection. If an
 examiner’s answer contains a rejection designated as a new ground of
 rejection, appellant must within two months from the date of the examiner’s
 answer exercise one of the following two options to avoid sua sponte
 dismissal of the appeal as to the claims subject to the new ground of
 rejection:
 
 (1) Reopen prosecution. Request that prosecution be
 reopened before the primary examiner by filing a reply under §
 1.111 of this title with or without amendment
 or submission of affidavits (§§ 1.130 ,
 1.131 or
 1.132 of this of this title) or other Evidence.
 Any amendment or submission of affidavits or other Evidence must be
 relevant to the new ground of rejection. A request that complies with
 this paragraph will be entered and the application or the patent under
 ex parte reexamination will be reconsidered by
 the examiner under the provisions of § 1.112 of this title. Any request that
 prosecution be reopened under this paragraph will be treated as a
 request to withdraw the appeal.
 

 (2) Maintain appeal. Request that the appeal be
 maintained by filing a reply brief as set forth in § 41.41 . Such a reply brief must address as set
 forth in § 41.37(c)(1)(iv) 
 each new ground of rejection and should follow the other requirements
 of a brief as set forth in § 41.37(c) . A reply
 brief may not be accompanied by any amendment, affidavit (§§
 1.130 , 1.131 or
 1.132 of this of this title) or other Evidence.
 If a reply brief filed pursuant to this section is accompanied by any
 amendment, affidavit or other Evidence, it shall be treated as a
 request that prosecution be reopened before the primary examiner under
 paragraph (b)(1) of this section.
 

 
 

 
 *****

 

 The provisions of 37 CFR 41.39(b) apply only to
 rejections that are designated as new grounds of rejection in the examiner's answer.
 If appellant believes there is an undesignated new ground of rejection, review is by
 way of the procedure established in 37 CFR 41.40 .
 

 The two month time period for reply is not extendable under
 37 CFR
 1.136(a) , but is extendable under 37 CFR 1.136(b) 
 for patent applications and 37 CFR 1.550(c) for ex
 parte reexamination proceedings. See 37 CFR 41.39(c) . 
 

 I. REQUEST THAT PROSECUTION BE REOPENED BY FILING A REPLY If appellant requests that prosecution be reopened, the appellant
 must file a reply that addresses each new ground of rejection set forth in the
 examiner’s answer in compliance with 37 CFR 1.111 within two months
 from the mailing of the examiner’s answer. The reply may also include amendments,
 evidence, and/or arguments directed to claims not subject to the new ground of
 rejection or other rejections. If there is an after-final amendment (or affidavit
 or other evidence) that was not entered, appellant may include such amendment (or
 affidavit or other evidence) in the reply to the examiner’s answer.
 

 If the reply is not fully responsive to the new ground of
 rejection, but the reply is bona fide, the examiner should
 provide a time period for appellant to complete the reply pursuant to
 37 CFR
 1.135(c) . See MPEP § 714.03 . If the reply is
 not bona fide (e.g., does not address the new ground of
 rejection) and the two-month time period has expired, examiner must sua
 sponte dismiss the appeal. See subsection “III. Failure to Reply to a
 New Ground of Rejection” below. 
 

 Once appellant files a reply in compliance with 37 CFR 1.111 
 in response to an examiner’s answer that contains a new ground of rejection, the
 examiner must reopen prosecution by entering and considering the reply. The
 examiner may make the next Office action final unless the examiner introduces a
 new ground of rejection that is neither necessitated by the applicant’s amendment
 of the claims nor based on information submitted in an information disclosure
 statement filed during the period set forth in 37 CFR 1.97(c) with the fee
 set forth in 37 CFR 1.17(p) . See
 MPEP §
 706.07(a) .
 

 II. REQUEST THAT THE APPEAL BE MAINTAINED BY FILING A REPLY BRIEF If appellant requests that the appeal be maintained, the
 appellant must file a reply brief that addresses each new ground of rejection set
 forth in the answer in compliance with 37 CFR 41.37(c)(1)(vii) within
 two months from the mailing of the answer. The reply brief should include the
 following items, with each item starting on a separate page, so as to follow the
 other requirements of a brief as set forth in 37 CFR 41.37(c) : 
 

 
 (1) Identification page setting forth the appellant’s name(s),
 the application number, the filing date of the application, the title of the
 invention, the name of the examiner, the art unit of the examiner and the
 title of the paper (i.e., Reply Brief);
 

 (2) Argument page(s).

 
 The reply brief must also be in compliance with requirements set
 forth in 37 CFR
 41.41 , e.g., it cannot include any new amendment or
 affidavit. If the reply brief is accompanied by any amendment or evidence, it will
 be treated as a request that prosecution be reopened under 37 CFR
 41.39(b)(1) assuming the answer contained a rejection
 designated as a new ground.
 

 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.
 

 Unless the Board remands the appeal under 37 CFR
 41.50(a)(1) for further action by the examiner, the examiner
 may not answer the reply brief. Jurisdiction passes to the Board immediately on
 filing of a reply brief or expiration of the period to do so.
 

 III. FAILURE TO REPLY TO A NEW GROUND OF REJECTION As specified in 37 CFR 41.35 , jurisdiction
 over the proceeding passes to the Board on filing of a reply brief or the
 expiration of time to file a reply brief. Therefore, examiners will not normally
 make determinations as to the sufficiency of a reply to a new ground of
 rejection.
 

 If appellant fails to timely file a reply under 37 CFR 1.111 
 or a reply brief in response to an examiner’s answer that contains a new ground of
 rejection, the appeal will be sua sponte dismissed as to the
 claims subject to the new ground of rejection. If all of the claims under appeal
 are subject to the new ground of rejection, the entire appeal will be
 dismissed.
 

 If the appeal is dismissed by the Board, the
 examiner should follow the procedure set forth in MPEP § 1215 .
 
 

 

 

 
 1207.04 Reopening of Prosecution After Appeal [R-11.2013]

 The examiner may, with approval from the supervisory patent examiner,
 reopen prosecution to enter a new ground of rejection in response to appellant’s brief.
 A new ground as used in this subsection includes both a new ground that would not be
 proper in an examiner's answer as described in MPEP § 1207.03 , subsection II and a new
 ground that would be proper (with appropriate supervisory approval) as described in
 MPEP §
 1207.03 , subsection III. In deciding whether to reopen
 prosecution or to add a new ground of rejection to an examiner's answer where proper
 under MPEP §
 1207.03 et seq., examiners and their supervisors should
 consider the degree to which the rejection previously of record is being changed, any
 previous reopenings after appeal brief, and the overall pendency of the application. The
 Office action containing a new ground of rejection may be made final if the new ground
 of rejection was (A) necessitated by amendment, or (B) based on information presented in
 an information disclosure statement under 37 CFR 1.97(c) where no statement
 under 37 CFR
 1.97(e) was filed. See MPEP § 706.07(a) . Ordinarily any after
 final amendment or affidavit or other evidence that was not entered before must be
 entered and considered on the merits as part of the action reopening prosecution. Where
 more than one after final amendments that conflict with each other were filed, e.g., the
 same claim is replaced by more than one amendment with new proposed claims of differing
 scope, than the first amendment should be entered and the subsequent amendments should
 not be entered.
 

 Form paragraph 12.239 may be used when reopening prosecution:
 

 ¶ 12.239 Reopening of Prosecution After Appeal Brief

 In view of the [1] filed
 on [2] , PROSECUTION IS HEREBY REOPENED. [3] set forth
 below.
 

 To avoid abandonment of the
 application, appellant must exercise one of the following two options:
 

 (1) file a reply under
 37 CFR
 1.111 (if this Office action is non-final) or a reply under
 37 CFR
 1.113 (if this Office action is final); or,
 

 (2) initiate a new appeal by filing a
 notice of appeal under 37
 CFR 41.31 followed by an appeal brief under 37 CFR 41.37 . The
 previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal.
 If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since
 they were previously paid, then appellant must pay the difference between the increased fees
 and the amount previously paid.
 

 A Supervisory Patent Examiner (SPE)
 has approved of reopening prosecution by signing below:
 

 [4] 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. In bracket 1, insert --appeal
 brief-- or --amended appeal brief--.
 

 3. In bracket 2, insert the date on
 which the brief was filed.
 

 4. In bracket 3, insert --A new
 ground of rejection is-- or --New grounds of rejection are--.
 

 5. In bracket 4, insert the SPE’s
 signature. Approval of the SPE is required to reopen prosecution after an appeal. See
 MPEP §§
 1002.02(d) and 1207.04 .
 

 6. Use this form paragraph to
 reopen prosecution in order to make a new ground of rejection of claims. The Office
 action following a reopening of prosecution may be made final if all new grounds of
 rejection were either (A) necessitated by amendment or (B) based on information
 presented in an information disclosure statement under 37 CFR 1.97(c) 
 where no statement under 37 CFR 1.97(e) was filed. See
 MPEP §
 706.07(a) .
 
 
 

 After reopening of prosecution, appellant must exercise one of the
 following options to avoid abandonment of the application: 
 

 
 (A) file a reply under 37 CFR 1.111 , if the Office
 action is non-final; 
 

 (B) file a reply under 37 CFR 1.113 , if the Office
 action is final; or 
 

 (C) initiate a new appeal by filing a new notice of appeal under
 37 CFR
 41.31 . 
 

 
 If appellant elects to continue prosecution and prosecution was
 reopened prior to a decision on the merits by the Board, the fee paid for the notice of
 appeal, appeal brief (if applicable), forwarding an appeal to the Board (if applicable)
 and request for oral hearing (if applicable) will be applied to a later appeal on the
 same application. If, however, the appeal fees set forth in 37 CFR 41.20 have
 increased since they were previously paid, applicant must pay the difference between the
 increased fees and the amount previously paid. If appellant elects to initiate a new
 appeal by filing a notice of appeal, appellant must file a complete new brief in
 compliance with 37 CFR
 41.37 within two months from the filing of the new notice of
 appeal. See MPEP §
 1204.01 for more information on reinstatement of an
 appeal.
 

 

 
 1207.05 Substitute Examiner’s Answer [R-11.2013]

 After receipt of a reply brief in compliance with
 37 CFR
 41.41 , jurisdiction over the appeal passes to the Board. Normally,
 the examiner does not need to acknowledge the reply brief and will not have an
 opportunity for further comment prior to a decision by the Board. However, the Board may
 remand the appeal to the examiner to furnish a substitute examiner’s answer responsive
 to the remand.
 

 
 37 CFR 41.50 Decisions and other actions by the Board. 

 
 (a)
 
 (1) Affirmance and reversal. The Board, in its decision,
 may affirm or reverse the decision of the examiner in whole or in part on
 the grounds and on the claims specified by the examiner. The affirmance
 of the rejection of a claim on any of the grounds specified constitutes a
 general affirmance of the decision of the examiner on that claim, except
 as to any ground specifically reversed. The Board may also remand an
 application to the examiner.
 

 (2) If a substitute examiner's answer is written in
 response to a remand by the Board for further consideration of a
 rejection pursuant to paragraph (a)(1) of this section, the appellant
 must within two months from the date of the substitute examiner's answer
 exercise one of the following two options to avoid sua sponte dismissal
 of the appeal as to the claims subject to the rejection for which the
 Board has remanded the proceeding:
 
 (i) Reopen prosecution. Request that prosecution be
 reopened before the examiner by filing a reply under §
 1.111 of this
 title with or without amendment or submission of affidavits (§§
 1.130 ,
 1.131 or
 1.132 of this
 title) or other Evidence. Any amendment or submission of affidavits
 or other Evidence must be relevant to the issues set forth in the
 remand or raised in the substitute examiner's answer. A request
 that complies with this paragraph (a) will be entered and the
 application or the patent under ex parte 
 reexamination will be reconsidered by the examiner under the
 provisions of § 1.112 of this
 title. Any request that prosecution be reopened under this
 paragraph will be treated as a request to withdraw the appeal.
 

 (ii) Maintain appeal. Request that the appeal be
 maintained by filing a reply brief as provided in §
 41.41 . If such
 a reply brief is accompanied by any amendment, affidavit or other
 Evidence, it shall be treated as a request that prosecution be
 reopened before the examiner under paragraph (a)(2)(i) of this
 section.
 

 
 

 
 

 
 *****

 

 The examiner may only furnish a substitute examiner’s answer in
 response to a remand.
 

 In response to a substitute examiner’s answer that is
 written in response to a remand by the Board for further consideration of a rejection,
 appellant must either file: (1) a reply under 37 CFR 1.111 to request that
 prosecution be reopened; or (2) a reply brief to request that the appeal be maintained,
 within two months from the mailing of the substitute examiner’s answer, to avoid
 sua sponte dismissal of the appeal as to the claims subject to the
 rejection for which the Board has remanded the proceeding. Examiner may include a new
 ground of rejection in the substitute examiner’s answer responding to a remand by the
 Board for further consideration of a rejection. See MPEP § 1207.03 . 
 

 I. SUBSTITUTE EXAMINER’S ANSWER RESPONDING TO A REMAND FOR FURTHER CONSIDERATION
 OF REJECTION The examiner may provide a substitute examiner’s answer in response
 to a remand by the Board for further consideration of a rejection under
 37 CFR
 41.50(a) . Appellant must respond to such substitute examiner’s
 answer and has the option to request that prosecution be reopened. A substitute
 examiner’s answer written in response to a remand by the Board for further
 consideration of a rejection pursuant to 37 CFR 41.50(a)(2) may set forth
 a new ground of rejection. Any new ground of rejection made in such a substitute
 examiner’s answer must comply with the requirements set forth in
 MPEP §
 1207.03 . The examiner may use form paragraph
 12.285 
 in preparing the substitute examiner’s answer responding a remand by the Board for
 further consideration of a rejection.
 

 ¶ 12.285 Substitute Examiner’s Answer - On Remand FOR FURTHER
 CONSIDERATION OF A REJECTION
 

 Pursuant to the remand under
 37 CFR
 41.50(a)(1) by the Patent Trial and Appeal Board on [1] for further consideration of a rejection , a substitute Examiner’s Answer under
 37 CFR
 41.50(a)(2) is set forth below: [2] .
 

 The appellant must within TWO
 MONTHS from the date of the substitute examiner’s answer exercise one of the
 following two options to avoid sua sponte dismissal of the appeal as to the claims subject to
 the rejection for which the Board has remanded the proceeding:
 

 (1) Reopen prosecution .
 Request that prosecution be reopened before the examiner by filing a reply under
 37 CFR
 1.111 with or without amendment, affidavit, or other evidence. Any
 amendment, affidavit, or other evidence must be relevant to the issues set forth in the remand
 or raised in the substitute examiner’s answer. Any request that prosecution be reopened will
 be treated as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i) .
 

 (2) Maintain appeal .
 Request that the appeal be maintained by filing a reply brief as set forth in
 37 CFR
 41.41 . If such a reply brief is accompanied by any amendment, affidavit
 or other evidence, it shall be treated as a request that prosecution be reopened under
 37 CFR
 41.50(a)(2)(i) . See 37 CFR 41.50(a)(2)(ii) .
 

 Extensions of time under
 37 CFR
 1.136(a) are not applicable to the TWO MONTH time period
 set forth above. See 37 CFR
 1.136(b) for extensions of time to reply for patent applications and
 37 CFR
 1.550(c) for extensions of time to reply for ex parte 
 reexamination proceedings.
 

 A Technology Center Director or designee has approved this substitute examiner’s answer
 by signing below: 

 [3] 

 Examiner Note:
 
 1. For use if the notice of appeal was filed on or
 after January 23, 2012.
 

 2. In bracket 1, insert the date of
 the remand.
 

 3. In bracket 2, provide reasons
 supporting the rejections set forth in the substitute Examiner’s
 Answer.
 

 4. In bracket 3, insert the TC
 Director’s or designee’s signature. A TC Director or designee must approve every
 substitute examiner’s answer.
 
 
 
 A. Appellant’s Reply If a substitute examiner’s answer is written in response to a
 remand by the Board for further consideration of a rejection pursuant to
 37 CFR
 41.50(a)(2) , the appellant must, within two months of the
 date of the substitute examiner's answer, exercise one of the following two
 options to avoid sua sponte dismissal of the appeal as to the
 claims subject to the rejection for which the Board has remanded the
 proceeding:
 

 
 (i) Reopen prosecution. Request that prosecution be reopened
 before the examiner by filing a reply under 37 CFR
 1.111 with or without amendment or submission of
 affidavits ( 37 CFR 1.130 ,
 1.131 or 1.132 ) or other
 evidence. Any amendment or submission of affidavits or other evidence must
 be relevant to the issues set forth in the remand or raised in the
 substitute examiner’s answer. A request that complies with 37 CFR
 41.50(a)(2)(i) will be entered and the application or
 the patent under ex parte reexamination will be reconsidered by the examiner under the
 provisions of 37 CFR 1.112 . Any
 request that prosecution be reopened under 37 CFR
 41.50(a)(2)(i) will be treated as a request to
 withdraw the appeal.
 

 (ii) Maintain appeal. Request that the appeal be maintained by
 filing a reply brief as provided in 37 CFR 41.41 . If such a
 reply brief is accompanied by any amendment, affidavit or other evidence, it
 shall be treated as a request that prosecution be reopened before the
 examiner under 37 CFR
 41.50(a)(2)(i) .
 

 
 The two month time period for reply is not extendable under
 37 CFR
 1.136(a) , but is extendable under 37 CFR
 1.136(b) for patent applications and 37 CFR
 1.550(c) for ex parte reexamination
 proceedings.
 

 1. Request That Prosecution Be Reopened by Filing a Reply If appellant requests that prosecution be reopened, the
 appellant must file a reply that addresses each ground of rejection set forth
 in the substitute examiner’s answer in compliance with 37 CFR
 1.111 within two months from the mailing of the
 substitute examiner’s answer. The reply may also include amendments, evidence,
 and/or arguments directed to claims not subject to the ground of rejection set
 forth in the substitute examiner's answer or other rejections. If there is
 after-final amendment (or affidavit or other evidence) that was not entered,
 appellant may include such amendment in the reply to the substitute examiner’s
 answer.
 

 If the reply is not fully responsive to the ground of
 rejection set forth in the substitute examiner’s answer, but the reply is
 bona fide, the examiner should provide a time period for
 appellant to complete the reply pursuant to 37 CFR 1.135(c) . If the
 reply is not bona fide (e.g., does not address the ground of
 rejection) and the two-month time period has expired, the examiner must
 sua sponte dismiss the appeal as to the claims subject to
 the rejection for which the Board has remanded the case.
 

 Once appellant files a reply in compliance with
 37 CFR
 1.111 in response to a substitute examiner’s answer
 responding to a remand by the Board for further consideration of a rejection
 under 37 CFR
 41.50(a) , the examiner must reopen prosecution by
 entering and considering the reply. Examiner may make the next Office action
 final unless the examiner introduces a new ground of rejection that is neither
 necessitated by the applicant’s amendment of the claims nor based on
 information submitted in an information disclosure statement filed during the
 period set forth in 37 CFR 1.97(c) with the fee
 set forth in 37 CFR 1.17(p) . See
 MPEP §
 706.07(a) .
 

 2. Request That the Appeal Be Maintained by Filing a Reply Brief If appellant requests that the appeal be maintained, the
 appellant must file a reply brief to address each grounds of rejection set
 forth in the substitute examiner’s answer in compliance with 37 CFR
 41.37(c)(1)(iv) within two months from the mailing of the
 substitute examiner's answer. The reply brief must also be in compliance with
 requirements set forth in 37 CFR 41.41 (e.g., it
 cannot include any new amendment or affidavit). If the reply brief is
 accompanied by an amendment, affidavit or other evidence, it will be treated as
 a request that prosecution be reopened before the examiner. 
 

 B. Failure To Reply to a Substitute Examiner’s Answer Under 37 CFR
 41.50(a) If appellant fails to timely file a reply under 37 CFR 1.111 
 or a reply brief in response to a substitute examiner’s answer that was written in
 response to a remand by the Board for further consideration of a rejection under
 37 CFR
 41.50(a) , the appeal will be sua sponte 
 dismissed as to the claims subject to the rejection for which the Board has
 remanded the proceeding. As jurisdiction passes to the Board at the expiration of
 time to file a reply brief, the Board will prepare and mail the dismissal. If all
 of the claims under appeal are subject to the rejection, the entire appeal will be
 dismissed. The examiner should follow the procedure set forth in
 MPEP §
 1215 after the appeal is dismissed. For example, if
 there is no allowed claim in the application, the application would be abandoned
 when the two-month time period has expired.
 

 If only some of the claims under appeal are subject to the
 rejection, the dismissal of the appeal as to those claims operates as an
 authorization to cancel those claims and the appeal continues as to the remaining
 claims. The Board will render a decision in due course. 
 

 II. SUBSTITUTE EXAMINER’S ANSWER RESPONDING TO A REMAND THAT IS NOT FOR FURTHER
 CONSIDERATION OF REJECTION The Director of the USPTO may remand an appeal to the examiner. See
 37 CFR
 41.35(c) . The Board may remand an application to the examiner
 for a reason that is not for further consideration of a rejection, such as to
 consider an information disclosure statement filed before jurisdiction over the
 appeal transferred to the Board under 37 CFR 41.35(d) , a reply brief
 that raised new issues that were not considered by the examiner, an amendment, or an
 affidavit. See MPEP §
 1211 . Consideration of any Information Disclosure Statement
 or petition filed while the Board possesses jurisdiction over the proceeding will be
 held in abeyance until the Board’s jurisdiction ends. The examiner may provide a
 substitute examiner’s answer in response to the remand. Appellant may respond by
 filing a reply brief within two months from the mailing of the substitute answer.
 Appellant does not have the option to request that prosecution be reopened pursuant
 to 37 CFR
 41.50(a) unless the remand by the Board is for further
 consideration of a rejection under 37 CFR 41.50(a) .
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1201-Introduction 

 1202-Composition of Board 

 1203-Administrative Handling 

 1204-Notice of Appeal 
 1204.01-Reinstatement of Appeal 

 1204.02-Pre-Appeal Brief Review Request and Conference Pilot Program 

 1204.03-Interviews After Notice of Appeal 

 1204.04-Official Record on Appeal 

 
 

 1205-Appeal Brief 
 1205.01-Time for Filing Appeal Brief 

 1205.02-Appeal Brief Content 

 1205.03-Non-Compliant Appeal Brief and Amended Brief 

 
 

 1206-Amendments and Affidavits or Other Evidence Filed With or After Appeal 

 1207-Examiner’s Answer 
 1207.01-Appeal Conference 

 1207.02-Contents of Examiner’s Answer 

 1207.03-New Ground of Rejection in Examiner’s Answer 
 1207.03(a)-Determining Whether a Ground of Rejection is New 

 1207.03(b)-Petition to Designate a New Ground of Rejection and to Reopen Prosecution 

 1207.03(c)-Appellant's Reply to New Grounds of Rejection 

 
 

 1207.04-Reopening of Prosecution After Appeal 

 1207.05-Substitute Examiner’s Answer 

 
 

 1208-Reply Briefs and Fee for Forwarding Appeal 
 1208.01-Fee for Forwarding an Appeal to the Board 

 
 

 1209-Oral Hearing 

 1210-Actions Subsequent to Examiner’s Answer but Before Board’s Decision 

 1211-Remand by Director or Board 
 1211.01-Remand by Board for Further Consideration of Rejection 

 1211.02-Remand To Consider Amendment 

 1211.03-Remand To Consider Affidavits or Declarations 

 1211.04-Remand by Board for Further Search 

 
 

 1212-Board Requires Appellant to Address Matter 

 1213-Decision by Board 
 1213.01-[Reserved] 

 1213.02-New Grounds of Rejection by Board 

 1213.03-Publication of and Public Access to Board Decision 

 
 

 1214-Procedure Following Decision by Board 
 1214.01-Procedure Following New Ground of Rejection by Board 

 1214.02-[Reserved] 

 1214.03-Rehearing 

 1214.04-Examiner Reversed in Whole 

 1214.05-Cancellation of Claims Not Appealed 

 1214.06-Examiner Sustained in Whole or in Part; Claims Require Action 

 1214.07-Reopening of Prosecution 

 
 

 1215-Withdrawal or Dismissal of Appeal 
 1215.01-Withdrawal of Appeal 

 1215.02-Claims Standing Allowed 

 1215.03-Partial Withdrawal 

 1215.04-Dismissal of Appeal 

 
 

 1216-Judicial Review 
 1216.01-Appeals to the U.S. Court of Appeals for the Federal Circuit 

 1216.02-Civil Suits Under 35 U.S.C. 145 and 146 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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