Appeal No. 2006-0281
Application 10/442,950
Linn ‘097 and Seki et al. ‘933.” Since the examiner has formally
added the additional references to the rejection, the examiner
should have indicated the rejection as a new ground of rejection.
As set forth in MPEP § 1207.03 [R-3]
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 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
brief. At the time of preparing the answer to an appeal
brief, the examiner may decide that he or she should
apply a new ground of rejection against some or all of
the appealed claims. In such an instance where a new
ground of rejection is necessary, the examiner should
either reopen prosecution or set forth the new ground
of rejection in the answer. The examiner must obtain
supervisory approval in order to reopen prosecution
after an appeal. See MPEP § 1002.02(d) and § 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.
I. REQUIREMENTS FOR A NEW GROUND OF REJECTION
Any new ground of rejection made by an examiner in an
answer must be:
(A) approved by a Technology Center (TC) Director or
designee; and
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