How should the examiner treat a request to reopen prosecution under § 41.39(b)(1) that is accompanied by a non-responsive reply?
If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, examiner should provide a 30-day or 1-month time period, whichever is longer, for appellant to complete the reply pursuant to § 1.135(c). If the reply is non-bona fide (e.g., does not address the new ground of rejection by presenting a new argument or amended claims), examiner must sua sponte dismiss the appeal as to the claims subject to the new ground of rejection if the two month time period to reply to the examiner’s answer has expired. The examiner should notify the appellant that they have the balance of any remaining time period to correct the non-bona fide reply. Extensions of time under § 1.136(a) are not applicable. 37 CFR 41.39(c). It would be improper for the examiner to sua sponte dismiss the appeal until the time period for reply has expired. F4. If an examiner indicates in the advisory action that the amendment after final rejection will be entered for purposes of appeal, and
Related Questions
- Can the Office deny a request to reopen prosecution under § 41.39(b)(1) when appellant files a reply in compliance with § 1.111 in response to a new ground of rejection in an examiner’s answer?
- When may an appellant request that prosecution be reopened pursuant to § 41.50(a)(2) in response to a supplemental examiner’s answer?
- How should the examiner treat a request to reopen prosecution under § 41.39(b)(1) that is accompanied by a non-responsive reply?
