37 C.F.R. 41.40 Tolling of time period to file a reply brief.

1. (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.
2. (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.
3. (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.
4. (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.
5. (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.

Appellant cannot request to reopen prosecution pursuant to 37 CFR 41.39(b) if the examiner’s answer does not have a rejection that is designated as a new ground of rejection.

37 CFR 41.40 sets forth the exclusive procedure for an appellant to request review of the primary examiner’s failure to designate a rejection as a new ground of rejection via a petition to the Director under 37 CFR 1.181. The petition requesting designation as a new ground of rejection must be filed within two months from the entry of the examiner’s answer and prior to the filing of any reply brief. This procedure should be used if an appellant feels an answer includes a new ground of rejection that has not been designated as such and wishes to reopen prosecution so that new amendments or evidence may be submitted in response to the rejection. However, if appellant wishes to submit only arguments, the filing of a petition under 37 CFR 1.181 is not necessary because appellant may submit arguments in a reply brief if they are responsive to arguments the examiner raised for the first time in the examiner’s answer. See 37 CFR 41.41(b)(2) and In re Timothy D. Durance et al., 891 F.3d 991, 998, 127 USPQ2d 1141, 1147 (Fed. Cir. 2018) (concluding that the Answer contained a new argument and that existing regulations and guidance did not require party to first petition under 37 CFR 1.181 to have a new argument in the Answer designated as a new ground of rejection to permit responding thereto in a reply brief filed under 37 CFR 41.41(b)(2) ).

The authority to decide petitions under 37 CFR 41.40 is delegated to the TC Director or designee. A decision granting a petition under 37 CFR 41.40 will provide a two-month time period in which appellant must file a reply under 37 CFR 1.111 to avoid the dismissal of the appeal. No corrected examiner’s answer will be provided.

If the petition is granted, appellant may present amendment, evidence, and/or arguments in the reply under 37 CFR 1.111 that are directed to other rejections that are not new grounds of rejection. An after-final amendment or evidence that was previously refused entry is not automatically entered. Appellant may include such amendment or evidence in the reply. Upon filing of the reply, the prosecution will be reopened and the examiner will consider the reply. The examiner may make the next Office action final (if appropriate). See MPEP § 706.07(a).

On the other hand, if the Office refuses to grant a petition under 37 CFR 1.181 requesting designation as a new ground of rejection under 37 CFR 41.40, the appeal will be maintained. A decision refusing to grant a petition will provide a two-month time period in which appellant may file only a single reply brief under 37 CFR 41.40. The jurisdiction will pass to the Board upon the filing of a reply brief or the expiration of the two-month time period, whichever is earlier. See 37 CFR 41.35(a).

Any reply brief that is filed within two months from the date of the examiner’s answer, but before a decision on the petition, will be treated as a request to withdraw the petition and to maintain the appeal. No decision on the petition will be provided. Jurisdiction will pass to the Board upon the filing of the reply brief. See 37 CFR 41.35(a).

The time periods set forth in 37 CFR 41.40 are not extendable under 37 CFR 1.136(a), but are extendable under 37 CFR 1.136(b) for patent applications and 37 CFR 1.550(c) for ex parte reexamination proceedings. See 37 CFR 41.40(e).