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.
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.
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.
Any new ground of rejection made by an examiner in an answer must be:
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:
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.
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.
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).
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.
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.
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)).
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).
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.
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.
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:
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.
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.
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.
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).
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).
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.
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).
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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).
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).
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):
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.
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.
