Question:
Does the new ground of rejection raised by the Board in an appeal reopen prosecution?
Answer:
The new ground of rejection raised by the Board does not reopen prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection was made includes an affirmance of the examiner’s rejection, the basis of the affirmed rejection is not open to further prosecution.
If the appellant elects to proceed before the examiner with regard to the new rejection, the Board’s affirmance of the examiner’s rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time.
Chapter Details:
The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeal.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1214.01 of the MPEP.  The following is a brief summary of section 1214.01.
1214.01 Procedure Following New Ground of Rejection by Board
This section covers the procedure following a new ground of rejection by the Board. When the Board designates a new ground of rejection under 37 CFR 41.50(b), the appellant, as to each claim so rejected, has the option of reopening prosecution before the examiner by submitting an appropriate amendment and/or new evidence; or requesting rehearing before the Board.
The application will be remanded to the examiner for reconsideration if the appellant submits “an appropriate amendment” of the claims rejected by the Board, “or new evidence relating to the claims so rejected, or both.” Further details on the submission of an amendment or new evidence are detailed in this section.