The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s brief. A new ground as used in this subsection includes both a new ground that would not be proper in an examiner’s answer as described in MPEP § 1207.03, subsection II and a new ground that would be proper (with appropriate supervisory approval) as described in MPEP § 1207.03, subsection III. In deciding whether to reopen prosecution or to add a new ground of rejection to an examiner’s answer where proper under MPEP § 1207.03 et seq., examiners and their supervisors should consider the degree to which the rejection previously of record is being changed, any previous reopenings after appeal brief, and the overall pendency of the application. The Office action containing a new ground of rejection may be made final if the new ground of rejection was (A) necessitated by amendment, or (B) based on information presented in an information disclosure statement under 37 CFR 1.97(c) where no statement under 37 CFR 1.97(e) was filed. See MPEP § 706.07(a). Ordinarily any after final amendment or affidavit or other evidence that was not entered before must be entered and considered on the merits as part of the action reopening prosecution. Where more than one after final amendments that conflict with each other were filed, e.g., the same claim is replaced by more than one amendment with new proposed claims of differing scope, than the first amendment should be entered and the subsequent amendments should not be entered.
Form paragraph 12.239 may be used when reopening prosecution:
¶ 12.239 Reopening of Prosecution After Appeal Brief
In view of the  filed on , PROSECUTION IS HEREBY REOPENED.  set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
- 1. For use if the notice of appeal was filed on or after January 23, 2012.
- 2. In bracket 1, insert –appeal brief– or –amended appeal brief–.
- 3. In bracket 2, insert the date on which the brief was filed.
- 4. In bracket 3, insert –A new ground of rejection is– or –New grounds of rejection are–.
- 5. In bracket 4, insert the SPE’s signature. Approval of the SPE is required to reopen prosecution after an appeal. See MPEP §§ 1002.02(d) and 1207.04.
- 6. Use this form paragraph to reopen prosecution in order to make a new ground of rejection of claims. The Office action following a reopening of prosecution may be made final if all new grounds of rejection were either (A) necessitated by amendment or (B) based on information presented in an information disclosure statement under 37 CFR 1.97(c) where no statement under 37 CFR 1.97(e) was filed. See MPEP § 706.07(a).
After reopening of prosecution, appellant must exercise one of the following options to avoid abandonment of the application:
- (A) file a reply under 37 CFR 1.111, if the Office action is non-final;
- (B) file a reply under 37 CFR 1.113, if the Office action is final; or
- (C) initiate a new appeal by filing a new notice of appeal under 37 CFR 41.31.
If appellant elects to continue prosecution and prosecution was reopened prior to a decision on the merits by the Board, the fee paid for the notice of appeal, appeal brief (if applicable), forwarding an appeal to the Board (if applicable) and request for oral hearing (if applicable) will be applied to a later appeal on the same application. If, however, the appeal fees set forth in 37 CFR 41.20 have increased since they were previously paid, applicant must pay the difference between the increased fees and the amount previously paid. If appellant elects to initiate a new appeal by filing a notice of appeal, appellant must file a complete new brief in compliance with 37 CFR 41.37 within two months from the filing of the new notice of appeal. See MPEP § 1204.01 for more information on reinstatement of an appeal.