Question #45 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.
45. An examiner’s answer, mailed on January 2, 2003, contains a new ground of rejection in violation of 37 CFR 1.193(a)(2). If an amendment or new evidence is needed to overcome the new ground of rejection, what is the best course of action the appellant should take in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) File a reply brief bringing the new ground of rejection to the attention of the Board of Patent Appeals and Interferences and pointing out that 37 CFR 1.193(a)(2) prohibits entry of the new ground of rejection.
(B) File a timely petition pursuant to 37 CFR 1.181 seeking supervisory review of the examiner’s entry of an impermissible new ground of rejection in the answer, after efforts to persuade the examiner to reopen prosecution or remove the new ground of rejection are unsuccessful.
(C) File a reply brief arguing the merits of the new ground of rejection.
(D) File an amendment or new evidence to overcome the new ground of rejection.
(E) Ignore the new ground of rejection.
ANSWER: (B) is the most correct answer. MPEP § 1208.01 states: “Any allegation that an examiner’s answer contains an impermissible new ground of rejection is waived if not timely (37 CFR 1.181(f)) raised by way of a petition under 37 CFR 1.181(a).” Thus, to avoid waiver of the right to contest the examiner’s action, the appellant must file a timely petition. (A) is incorrect because the question of whether an answer contains a new ground of rejection is a petitionable, not appealable, matter. See MPEP § 1201. (C) is incorrect because an amendment or new evidence is needed to overcome the new ground of rejection and merely presenting arguments will not succeed. (D) is incorrect because the entry of the amendment or evidence is subject to the provisions of 37 CFR §§ 1.116 and 1.195 and there is no assurance that the examiner will approve entry. (E) is incorrect because it will constitute a waiver on the question of whether an impermissible new ground of rejection has been entered.
This is no longer the correct answer because the Examiner’s Answer CAN contain a new ground of rejection, so the appellant can either reopen prosecution with the examiner or file a reply brief (answer C) right?
I would say D is the right answer for a post 2004 question.
Because it works to reopen prosecution (see 1207.04)
C: wont do it, because it is arguing the examiners case, you need to argue against it by filing a reply brief. (the wording is what kills it)
arguing the merits could mean “arguing for” AND “arguing against” so I think the real reason (C) is NOT the most correct is bc the preamble states that “an amendment or new evidence is needed to overcome the new ground of rejection” and you can’t bring any of that into a reply brief.
which brings up my next question: 41.39(b)(1) states that the reply to reopen prosecution can be accompanied by amendments/affidavits/evidence but that they must be relevant to the new ground of rejection. But 1207.03 states that “the reply may also include amendments, evidence, and/or arguments directed to claims not subject to the new ground of rejection or other rejections.”
How do I reconcile those two statements?
I agree with X that the answer is no longer (B), see 1207.03 below. But (C) is worded a little odd: (C) File a reply brief arguing the merits of the new ground of rejection. Or am I just uncomfortable with the word “merits”, I am thinking it should read: (F) File a reply in compliance with 37 CFR 1.111 to request that prosecution be reopened. See (I) and (II) below
1207.03 41.39(a)(2) permitsmailed on or after September 13, 2004. New grounds of rejection in an examiner’s answer are envisioned to be rare, rather than a routine occurrence. For example, where appellant made a new argument for the first time in the appeal brief, the examiner may include a new ground of rejection in an examiner’s answer to address the newly presented argument by adding a secondary reference from the prior art on the record. New grounds of rejection are not limited to only a rejection made in response to an argument presented for the first time in an appeal briefeither reopen prosecution or set forth the new ground of rejection in the answerand § 1207.04. A supplemental examiner’s answer cannot include a new ground of rejection, except when a supplemental answer is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a). See MPEP § 1207.05.
and
…. In response to an examiner’s answer that contains a new ground of rejection, appellant must either file:
(I) a reply in compliance with 37 CFR 1.111 to request that prosecution be reopened; or
(II) a reply brief that addresses each new ground of rejection in compliance with 37 CFR 41.37(c)(1)(vii) to maintain the appeal.
Correction to above, should read:
1207.03 New Ground of Rejection in Examiner’s Answer
37 CFR 41.39(a)(2) permits the entry of a new ground of rejection in an examiner’s answer mailed on or after September …
The examiner’s answer was mailed on January 2, 2003….so the answer is still B because that is before September 13, 2004…right??
I agree B would still be correct. I don’t really know how you would know that is the correct answer though because the current MPEP revision doesn’t state that you could petition prior to September 13, 2004. Personally, I am going to answer every repeat I see just as the Exam Explanations provided by the USPTO does. I get the feeling they aren’t diligently modifying the Prometric Exam to reflect these subtle changes. When you consider the large number of questions in the question pool it’s not surprising.
I agree with the original analysis – B is the MOST correct answer.
MPEP 1207 03 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)(vii) to maintain the appeal.
Clearly, merely ARGUING (answer C) in reply brief is INSUFFICIENT.
I think you are wrong. There is no distinct difference between addressing a new ground of rejection and arguing a new ground of rejection.
I think you are wrong. There is no distinct difference between addressing a new ground of rejection and arguing a new ground of rejection. Not mention that new grounds of rejection are no longer “impermissible” as stated in answer B.
A new ground of rejection is permissable now.
Wenabby is right. Ff the examiner desginates a new ground of rejection, you can do two things:
“appellant must within two months from the date of the examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:
(1)Reopen prosecution. …”with or without amendment or submission of affidavits … or other evidence.
(2)Maintain appeal. …filing a reply brief …Such a reply brief must address each new ground of rejection ….may NOT be accompanied by any amendment, affidavit or other evidence.” (AND watch out!!!) “If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.”
My understaning (might be inaccurate but the point is):
“address” means argue with or without affidavits or other evidence
“argue” means argue without affidavits or other evidence
Then let’s go back to the question. The spirit of B is kind of there in light of the new rules. However, you don’t need try to persuade the exmainer to reopen the prosecution to bring new amendments or evidece (which is NEEDED! as stated in the question). You are entitled to do so! No need petition either to remove the new ground, because the Examiner is permitted to give a new ground rejection.
C is not correct because the question said you need to bring amendment or other evidence. so you have to reopen the prosecution. Arguement alone without needed amendment or other evidence will fail. why? sorry, because the question said so explicitly.
In the end, no correct answer to the question. But what is correct way to proceed? reopen the prosecuton with amendments or other evidence. Hope they would add this new choice soon.
By the way, what if the examiner gives a new ground of rejection without designating as a new ground of rejection? Sneaky Examiner? Then you are entilted to reopen, and maintain the appeal will fail because you cannot bring the needed amendments or other evidence. Now the way to go ahead is to petition to desginate the new ground and then you get your entitled rights to reopen. While petitioning, the time limit is tolled. You don’t need to worry about any deadline.
type for the last point
Then you are NOT entilted to reopen, and maintain the appeal will fail because you cannot bring the needed amendments or other evidence.
(D) File an amendment or new evidence to overcome the new ground of rejection.
D could be the best choice now IF “amendment” means “a reply”
so it is a reply (in compliance with 37 CFR 1.111) to request that prosecution be reopened.
In real practice, amendment is the syno of reply.
The question was “if an AMENDMENT is needed to overcome the new ground of rejection, what can appellant do?”
We know the Appellant has two options: 1) reopen prosecution or 2) file a reply brief.
A reply brief will not allow him to file amendments that overcome rejections so obviously he must try to reopen prosecution by filing a petition. When prosecution is reopened, he can file an amendment with the examiner and argue it back at that level and hopefully overcome the new ground of rejection.
So, B is the answer…..although I know a lot of us try to make this a lot more complicated than it needs to be.
Sol is always helpful, thanks a lot.
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