When an applicant appeals an Examiner's rejection, the applicant is bound to the record as it exists at the time of the appeal, meaning that generally no further substantive claim amendments are allowed, nor is further evidence allowed as a matter of right. At the same time then, it is only fair that the Examiner not be allowed to change the rejection in the Examiner's Answer. Yet, often, Examiners give additional explanation and details that do effectively change the basic thrust of the rejection.

The rules allow the Examiner to enter a new ground of rejection in an Answer, but require that the Examiner designate it as such. 37 CFR 41.39(a)(2), MPEP 1207.03. The rule states that while such action is permissible, the Examiner should either reopen prosecution or set forth the new ground of rejection in the Answer. Further, if the Examiner designates the new ground of rejection in the Answer, the applicant then has the option to re-open prosecution, or continue with the appeal and file a reply to maintain the appeal.

However, in many cases the Examiner effectively presents new grounds of rejection without designating them as such, denying the applicant the right to re-open prosecution without having to file an RCE. The rules governing whether a new ground actually exists are explained in MPEP 1207.03(a). The MPEP give several examples and explains that the issue:

... 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.

So what do you do if you think you have a situation with a new ground not designated as such? The answer is you accept it an address the issue as best as possible in a reply brief, or petition.

The petition falls under 1.181 and is explained in MPEP 1207.03(b). To see how applicants fared in such petitions, we filed a FOIA request with the USPTO asking for the results of all such petitions over a 2 year period. The first interesting result of this request was that not many applicants petition in this situation, but when they do it is generally difficult to win (more on the statistics in future posts). One successful petition is illustrated in SN 13/483,015. Here, the Office agreed with the applicant that the Examiner's answer included a new ground of rejection when the Examiner's supporting rationale for why the reference showed the limitations of claim 1 changed. Specifically, the Office agreed with the applicant that the Examiner, for the first time in the Answer, presented a new argument citing a new teaching in the primary reference and thus changed the basic thrust of the rejection.

An interesting aside is that the deadline to file a reply brief is non-extendable as a matter of right, unlike almost every other paper an applicant files in response to a rejection (the application has 2 months to file a reply to the Answer). However, the filing of a petition alleging a new ground of rejection tolls the deadline. Thus, it could be that many of the petitions in this situation are filed in dubious circumstances with the goal of merely extending the deadline. 

So, when you feel that you have a new ground of rejection in an answer not designated as such, consider a petition to preserve your right to re-open prosecution and have new amendments or evidence entered without the cost of an RCE.