Law - Response To New Ground of Rejection By Board

During the appeal process, the Board of Patent Appeals and Interferences may find a new ground (reason) for rejecting a claim that was previously rejected on a different ground by the Examiner. In this situation, the appellant has two options: he/she can file a request for reconsideration by the Board or (2) he/she can submit an amendment and/or showing of facts to the Examiner. If a request for reconsideration is filed, the applicant waives his or her right to further prosecution before the Examiner. A request for reconsideration must be filed within 1 month of the mailing date of the Board's decision. A submission of an amendment or a showing of facts must be filed within 2 months of the date of mailing of the Board's decision, unless a different period for response is set in the Board's decision.

The position of the USPTO on this issue is described in the following section(s) of the Manual of Patent Examining Procedure (MPEP):

MPEP 1214.01 - Procedure Following New Ground of Rejection by Board
MPEP 1214.03 - Reconsideration

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