C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 41—PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD › Subpart B—Ex Parte Appeals

37 C.F.R. § 41.40

Tolling of time period to file a reply brief

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(a) Timing. Any request to seek review of the primary examiner's failure to designate a rejection as a new ground of rejection in an examiner's answer must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner's answer and before the filing of any reply brief. Failure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection.

(b) Petition granted and prosecution reopened. A decision granting a petition under § 1.181 to designate a new ground of rejection in an examiner's answer will provide a two-month time period in which appellant must file a reply under § 1.111 of this title to reopen the prosecution before the primary examiner. On failure to timely file a reply under § 1.111, the appeal will stand dismissed.

(c) Petition not granted and appeal maintained. A decision refusing to grant a petition under § 1.181 of this title to designate a new ground of rejection in an examiner's answer will provide a two-month time period in which appellant may file only a single reply brief under § 41.41.

(d) Withdrawal of petition and appeal maintained. If a reply brief under § 41.41 is filed within two months from the date of the examiner's answer and on or after the filing of a petition under § 1.181 to designate a new ground of rejection in an examiner's answer, but before a decision on the petition, the reply brief will be treated as a request to withdraw the petition and to maintain the appeal.

(e) Extensions of time. Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time period set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.

[76 FR 72298, Nov. 22, 2011]
Notes of Decisions
Cited in 2 cases, 2015–2016 · leading case: Hyatt v. United States Pat. & Trademark Off., 110 F. Supp. 3d 644 (E.D. Va. 2015).
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Hyatt v. United States Pat. & Trademark Off., 110 F. Supp. 3d 644 (E.D. Va. 2015). “114 , (ii) if appellant reopens prosecution pursuant to 37 C.F.R. § 41.40 (b), or (iii) in response to a new ground of rejection by the examiner pursuant to 37 C.”
In Re: Anderson, 662 F. App'x 958 (Fed. Cir. 2016). “The Director then dismissed Anderson’s petition pursuant to 37 C.F.R. § 41.40 (d), which provides that a reply brief filed after the filing of a petition under § 1.”
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