(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]