Can an Appellant request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection?
No, an appellant cannot request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection.
The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers appeals.
The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
This question and answer comes from section 1207.03(b) of the MPEP. The following is a brief summary of section 1207.03(b).
1207.03(b) Petition to Designate a New Ground of Rejection and to Reopen Prosecution
This section covers the petition to designate a new ground of rejection and to reopen prosecution. 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.
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.