What type of rejections can be presented upon appeal according to the Board?

The rationale behind selecting that particular type of rejection is grounded in the rules governing the appeals process in patent law. During an appeal to the Board of Patent Appeals and Interferences (BPAI), applicants are generally limited to addressing the rejections that were made by the Examiner in the prosecution phase. However, there is a specific allowance for the introduction of new grounds of rejection by the Examiner in their answer to the applicant's appeal brief.

This mechanism is critical because it provides a structured opportunity for the Examiner to clarify or expand upon their rationale, potentially introducing additional issues not previously discussed in the prosecution record. It allows the applicant to respond to these new grounds before the Board makes a final decision.

In contrast, some other options incorrectly suggest limitations that are not aligned with the established processes. For example, only allowing rejections presented in the initial filing would hinder the dynamic nature of the dialogue between the applicant and the Examiner, which is fundamental in refining the claims and establishing their patentability. Stating that all rejections regardless of type can be presented fails to adhere to the standards that prioritize orderly and focused discussions regarding the rejections at hand. Lastly, limiting the rejections to those based solely on procedural issues ignores the substantive grounds that often inform the patentability