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

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 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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.