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1207.03 < New Ground of Rejection in Examiner's Answer [R-3] - 1200 Appeal
1207.03 < New Ground of Rejection in Examiner's Answer [R-3]
37 CFR **>41.39(a)(2) permits< the entry of a new ground of rejection in an examiner's answer >mailed on or after September 13, 2004. New grounds of rejection in an examiner's answer are envisioned to be rare, rather than a routine occurrence. For example, where appellant made a new argument for the first time in the appeal brief, the examiner may include a new ground of rejection in an examiner's answer to address the newly presented argument by adding a secondary reference from the prior art on the record. New grounds of rejection are not limited to only a rejection made in response to an argument presented for the first time in an appeal brief<. At the time of preparing the answer to an appeal brief, * the examiner may decide that he or she should apply a new ground of rejection against some or all of the appealed 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. A supplemental examiner's answer cannot include a new ground of rejection, except when a supplemental answer is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a). See MPEP § 1207.05.
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 and the "Grounds of Rejection" section of the answer (see MPEP § 1207.02). The examiner may use form paragraph 12.154.04.
The examiner's answer must provide appellant a two-month time period for reply. The examiner may use form paragraph 12.179.01 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)(vii) 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. In addition, if an appellant has clearly set forth an argument in a previous reply during prosecution of the application and the examiner has failed to address that argument, the examiner would not be permitted to add a new ground of rejection in the examiner's answer to respond to that argument but would be permitted to reopen prosecution, if appropriate. New grounds of rejection cannot be made in a supplemental examiner's answer unless it is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a).
III. SITUATIONS THAT ARE NOT CONSIDERED AS 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, former< 37 CFR 1.193(a)(2) also *>provided< that 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<.
A new prior art reference >applied or< cited for the first time in an examiner's answer generally will constitute 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. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n. 3 (CCPA 1970). **>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.
**>IV. REQUEST FOR DESIGNATION AS NEW GROUND OF REJECTION
Appellant cannot request to reopen prosecution pursuant to 37 CFR 41.39(b) if the examiner's answer does not have a new ground of rejection under 37 CFR 41.39. If appellant believes that an examiner's answer contains a new ground of rejection not identified as such, appellant may file a petition under 37 CFR 1.181(a) within two months from the mailing of the examiner's answer requesting that a ground of rejection set forth in the answer be designated as a new ground of rejection. Any such petition must set forth a detailed explanation as to why the ground of rejection set forth in the answer constitutes a new ground of rejection. Any allegation that an examiner's answer contains a new ground of rejection not identified as such is waived if not timely raised (i.e., by filing the petition within two months of the answer) by way of a petition under 37 CFR 1.181(a). The filing of a petition under 37 CFR 1.181 does not toll any time period running. If appellant wishes to present arguments to address the rejection in the examiner's answer, appellant must file a reply brief to the examiner's answer within two months from the mailing date of the examiner's answer. If the TC Director or designee decides that the rejection is considered a new ground of rejection and approves the new ground of rejection, the examiner would be required to send a corrected examiner's answer that identifies the rejection as a new ground of rejection and includes the approval of the TC Director or designee. The appellant may then file either a request that prosecution be reopened by filing a reply under 37 CFR 1.111, or a request that the appeal be maintained by filing a reply brief or resubmitting the previously-filed reply brief, within two months from the mailing of the corrected answer. If the TC Director or designee agrees with the examiner that the rejection is not a new ground of rejection, the examiner would not be required to send a corrected examiner's answer.
V. APPELLANT'S REPLY TO NEW GROUNDS OF REJECTION
37 CFR 41.39(b) provides that:
if an examiner's answer contains 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 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 each new ground of rejection as set forth in § 41.37(c)(1)(vii) 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 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 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).
A. 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 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 30-day or 1 month time period, whichever is longer, 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 as to the claims subject to the new ground of rejection. See subsection "C. 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).
B. 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) Status of claims page(s);
(3) Grounds of rejection to be reviewed on appeal page(s); and
(4) Argument page(s).
The reply brief can also be a substitute brief replacing the original brief by responding to both the new ground of rejection and all other grounds of rejection covered in the original brief. In such an instance, the reply brief must meet all the 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 would be treated as a request that prosecution be reopened under 37 CFR 41.39(b)(1).
The examiner may provide a supplemental examiner's answer (with TC Director or designee approval) to respond to any new issue raised in the reply brief. The supplemental examiner's answer responding to a reply brief cannot include any new grounds of rejection. See MPEP § 1207.05. In response to the supplemental examiner's answer, the appellant may file another reply brief under 37 CFR 41.41 within 2 months from the mailing of the supplemental examiner's answer. 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. Appellant cannot request that prosecution be reopened pursuant to 37 CFR 41.39(b) at that time.
C. Failure To 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. The examiner should follow the procedure set forth in MPEP § 1215 to dismiss the appeal. For example, if there is no allowed claim in the application, the application would be abandoned when the two-month time expired.
If only some of the claims under appeal are subject to the new ground of 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 examiner must:
(1) Cancel the claims subject to the new ground of rejection; and
(2) Notify the appellant that the appeal as to the claims subject to the new ground of rejection is dismissed and those claims are canceled.
Examiner may use form paragraph 12.179.02 to dismiss the claims subject to the new ground of rejection.
¶ 12.179.02 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 mailed on [1]. 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. In bracket 1, insert the mailing date of the examiner's answer.
2. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
3. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.
<*>
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