Monday, August 29, 2011
Applicant requests BPAI rehearing and receives new Office Action because Request introduced new evidence
Takeaway: In Ex parte O'Neill, the Board "procedurally reversed" the Examiner's obviousness rejections and instead entered a new ground of rejection for indefiniteness. The Applicant filed a Request for Rehearing by the BPAI under § 41.50(b)(2). The Request included arguments against the new indefiniteness rejection and was accompanied by an expert declaration under § 1.132 to "provide evidentiary support" for these new arguments. However, the BPAI did not act on the Request. Instead, the Examiner responded by issuing a non-final Office Action which included the Board-entered indefiniteness rejection as well as the previously-entered obviousness rejection. The Office Action noted that a Rehearing by the BPAI was not appropriate, since a Rehearing is limited to the same record, while the Applicant had submitted new evidence.
My two cents: The rules which cover post-appeal processing (37 CFR § 41.50) are complicated, so you should read them carefully when you get a BPAI decision back. A Rehearing by the BPAI is strictly limited to the existing record — unless the Board enters a new ground of rejection, in which case arguments against the new rejection are allowed. But new evidence supporting those arguments is not allowed in a Rehearing.