United States: Tips For Responding To New Grounds Of Rejection In An Examiner's Answer

Last Updated: December 13 2015
Article by Christina Sperry and Inna Dahlin

Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. After an appellant's filing of a PTAB appeal brief, an examiner may respond with an examiner's answer. 37 C.F.R. §§ 41.37, 41.39. The appellant then has a choice to allow the appeal to proceed to the PTAB or to first respond to the examiner's answer in a reply brief. 37 CFR § 41.41. The examiner is entitled to introduce new grounds of rejection in the examiner's answer, which the appellant may rebut in the reply brief. The USPTO recently issued guidance, "Responding to New Grounds of Rejection in an Examiner's Answer," which we summarize below in addition to providing other related useful tips.

  • Identify the new ground of rejection: As indicated by the USPTO, what constitutes a new ground of rejection is "a highly fact-specific question," and the ultimate criterion is "whether appellants have had fair opportunity to react to the thrust of the rejection." New grounds of rejection are often easily identifiable in the examiner's answer since any evidence applied or cited for the first time in an examiner's answer should be designated, per 37 CFR § 41.39, as a new ground of rejection. A more elusive new ground of rejection is a position or rationale that changes the "basic thrust of the rejection," which the examiner's answer should also identify as a new ground of rejection. The examiner's answer may, however, fail to designate a new ground of rejection as such due to inadvertent oversight and/or another reason. Careful review of all rejections in the examiner's answer, including consideration of the basic thrust of each rejection, is thus prudent practice.

    • Situations that constitute new grounds of rejection: The USPTO provides examples of what will be treated as new grounds of rejection: changing the statutory basis of rejection from § 102 to § 103, changing the statutory basis of rejection from § 103 to § 102 based on a different teaching (e.g., reliance on a different portion of the same reference), citing new calculations in support of overlapping ranges, citing new structure in support of structural obviousness, and pointing to a different portion of the claim to maintain a "new matter" rejection.
    • Situations that do not constitute new grounds of rejection: The USPTO also provides following examples of what will not be treated as new grounds of rejection: citing a different portion of a reference to elaborate upon that which has been cited previously, changing the statutory basis of rejection from § 103 to § 102 but relying on the same teachings, relying on fewer than all references in support of a § 103 rejection, changing the order of references in the statement of rejection but relying on the same teachings of those references, and considering, in order to respond to appellant's arguments, other portions of a reference submitted by the appellant.
  • Know your options for response: An appellant must respond to a new ground of rejection within two months from the date of the examiner's answer. Otherwise, claims subject to the new ground of rejection will be dismissed. Depending on specific circumstances of the case, two options are available to respond to the new grounds of rejection. The first option for response is to request that prosecution be reopened, by filing a reply under 37 CFR § 1.111, with or without amendment or submission of affidavit. The second option is to maintain the appeal by filing a reply brief that addresses each new ground of rejection.
  • Determine whether the examiner properly identified the new ground of rejection: A new ground of rejection in the examiner's answer must be prominently identified in the answer with a subheading "New Grounds of Rejection." If an appellant determines that the answer includes a new ground of rejection that is not so designated, there are again two options to respond. A first option is filing a reply brief responding to the examiner's answer, to maintain the appeal. The second option is filing a petition to the USPTO Director seeking a review of the examiner's failure to designate a rejection as a new ground. The petition should be filed without filing a reply brief, and it will toll the time period for filing a reply brief.
  • Know the effects of filing a petition: If a petition to designate a new ground of rejection in the examiner's answer is granted and prosecution is reopened, the cost of preparing and filing a reply brief can be avoided altogether. If the petition is denied and the appeal is maintained, the appellant will have two months to file a reply brief. Thus, the petition to review the examiner's answer should be filed only if the reopening of prosecution, rather than to maintain the appeal, is a desirable outcome. At the same time, if maintaining the appeal happens to be desired after the petition is filed but before it is decided, a reply brief can be filed, which will be taken as a request to withdraw the petition and to maintain the appeal.
  • Be careful not to inadvertently reopen prosecution: When writing a reply brief with intent to maintain the appeal, remember that no amendments, affidavits, or other evidence tending to prove or disprove the existence of an alleged fact may be submitted in response to a new ground of rejection. Such action will be treated as a request to reopen prosecution regardless of whether or not the reply brief requests the reopening of prosecution. Also note that, according to 37 CFR § 41.30, "evidence" is "something that tends to prove or disprove the existence of an alleged fact" and does not include dictionaries.
  • Know consequences of taking no action: A possible way to react to an undesignated new ground of rejection in the examiner's answer is to take no action, with the appeal simply proceeding to the Board. However, such "no action" action may lead to an undesirable outcome. For example, if a petition to review the examiner's failure to designate a new ground of rejection is not filed, this will be taken as a waiver of any arguments with respect to the examiner's failure. When a reply brief is not filed, the PTAB will only receive the examiner's side of the story for an undesignated new ground of rejection and may thus be more likely to deny patentability of the claims based on the undesignated new ground of rejection.

For more tips to improve your chances of winning a PTAB appeal, visit these prior posts at Global IP Matters: (1) Tips for Writing Effective PTAB Briefs to Help Propel Applicants to PTAB Victory, and (2) Tips for Effectively Organizing PTAB Appeals Brief – Claim Grouping.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Inna Dahlin
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions