1214.04 Examiner Reversed in Whole [R-08.2017]
A complete reversal of the examiner’s rejection brings the case up for immediate action by the examiner. If the reversal does not place an application in condition for immediate allowance (e.g., the Board has entered a new ground of rejection under 37 CFR 41.50(b) or the application contains withdrawn claims to a non-elected invention), the examiner should refer to the situations outlined in MPEP § 1214.06 for appropriate guidance.
The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references. This is particularly so where the application or ex parte reexamination proceeding has meanwhile been transferred or assigned to an examiner other than the one who rejected the claims leading to the appeal. The second examiner should give full faith and credit to the prior examiner’s search.
If the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims as to which the examiner was reversed, they should submit the matter to the Technology Center (TC) Director or Central Reexamination Unit (CRU) Director for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection. See MPEP § 1002.02(c) and MPEP § 1214.07. The TC or CRU Director’s approval is placed on the action reopening prosecution.
The examiner may request rehearing of the Board decision. Such a request should normally be made within 2 months of the return of the application to the TC or the reexamination proceeding or reissue application to the CRU.
All requests by the examiner to the Board for rehearing of a decision must be approved by the TC or CRU Director and must also be forwarded to the Office of the Deputy Commissioner for Patent Examination Policy for approval before mailing.
The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised in the answers before the Board and evidence not previously relied upon in the answers are not permitted in the request for rehearing except that the examiner may present a new argument based upon a recent relevant decision of either the Board or a Federal Court.
The request should set a period of 2 months for the appellant to file a reply.
If the request for rehearing is approved by the Office of the Deputy Commissioner for Patent Examination Policy, the TC or CRU will enter the request for rehearing in the electronic file and a copy will be mailed or given to the appellant.