37 CFR 41.39(a)(2) permits the entry of a new ground of rejection in an examiner’s answer.
At the time of preparing the answer to an appeal brief, the examiner may decide that they should apply a new ground of rejection against some or all of the pending 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.
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 under the subheading “New Grounds of Rejection” of the answer (see MPEP § 1207.02). The examiner may use form paragraph 12.256.
The examiner’s answer must provide appellant a two-month time period for reply. The examiner may use form paragraph 12.279.01 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)(iv) 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.
III. DESIGNATION AS A NEW GROUND OF REJECTION IN AN EXAMINER’S ANSWER
The following discussion is for the limited “purposes of the examiner’s answer,” as per 37 CFR 41.39(a)(2). This discussion does not apply to new grounds of rejection made in final rejections under 37 CFR 1.113. The reason for this distinction is that 37 CFR 1.116 affords applicants the opportunity to submit rebuttal evidence after a final rejection but on or before the date of filing a notice of appeal. An appellant’s ability to introduce new evidence after the filing of an appeal is more limited under 37 CFR 41.33(d) than it is prior to the appeal. Thus, applicants are able to present rebuttal evidence in response to a final rejection, while they are not permitted to do so in response to an examiner’s answer on appeal, unless an answer is designated as containing a new ground of rejection.
If Evidence (such as a new prior art reference, but not including a newly relied upon dictionary definition) is applied or cited for the first time in an examiner’s answer, then 37 CFR 41.39(a)(2) requires that the rejection be designated as 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 and be designated as a new ground of rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). See MPEP § 2144.03 for guidance on the citation of a new reference to support Official Notice taken in Office actions made prior to an examiner’s answer.
A position or rationale that changes the “basic thrust of the rejection” will also give rise to a new ground of rejection. In re Kronig, 539 F.2d 1300, 1303, 190 USPQ 425, 427 (CCPA 1976). A rejection relying on the same statutory basis and same prior art references, may nevertheless raise a new ground of rejection, when the rejection relies on new facts or rationales not previously raised. See In re Leithem, 661 F.3d 1316, 100 USPQ2d 1155 (Fed. Cir. 2011); Rambus v. Rea, 731 F.3d 1248, 108 USPQ2d 1400 (Fed. Cir. 2013) (the inclusion of a new motivation to combine prior art references did not merely elaborate on the examiner’s findings with “more detail”). However, the examiner need not use identical language in both the examiner’s answer and the Office action from which the appeal is taken to avoid triggering a new ground of rejection. It is not a new ground of rejection, for example, if the examiner’s answer responds to appellant’s arguments using different language, or restates the reasoning of the rejection in a different way, so long as the “basic thrust of the rejection” is the same. In re Kronig, 539 F.2d at 1303, 190 USPQ at 427; see also In re Jung, 637 F.3d 1356, 1364–65, 98 USPQ2d 1174, 1180 (Fed. Cir. 2001) (additional explanation responding to arguments offered for the first time “did not change the rejection” and appellant had fair opportunity to respond); In re Noznick, 391 F.2d 946, 949, 157 USPQ 266, 269 (CCPA 1968) (no new ground of rejection made when “explaining to appellants why their arguments were ineffective to overcome the rejection made by the examiner” ); In re Krammes, 314 F.2d 813, 817, 137 USPQ 60, 63 (CCPA 1963) ( “It is well established that mere difference in form of expression of the reasons for finding claims unpatentable or unobvious over the references does not amount to reliance on a different ground of rejection.” (citations omitted)); In re Cowles, 156 F.2d 551, 555, 70 USPQ 419, 422 (CCPA 1946) (holding that the use of “different language” does not necessarily trigger a new ground of rejection).