Ninth Edition of the MPEP, Revision 10.2019, Last Revised in June 2020
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1215.03 Partial Withdrawal [R-11.2013]
If an appellant wishes to remove claims from consideration on appeal, the appellant must submit an amendment to cancel the claims from the application. See 37 CFR 41.31(c) and 41.33. An appellant may, of course, choose not to present arguments or rely upon particular evidence as to certain claim rejections; however, such arguments and evidence are waived for purposes of the appeal and the Board may summarily sustain any grounds of rejections not argued. See MPEP §§ 1205.02 and 1214.05.
If appellant fails to respond to a new ground of rejection made in an examiner’s answer by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the examiner’s answer, the appeal will be sua sponte dismissed by the Board as to the claims subject to the new ground of rejection.
Similarly, if appellant fails to respond to a substitute examiner’s answer that is written in response to a remand by the Board for further consideration of a rejection under 37 CFR 41.50(a) by either filing a reply brief or a reply under 37 CFR 1.111 within 2 months from the mailing of the substitute examiner's answer, the appeal will sua sponte dismissed by the Board as to the claims subject to the rejection for which the Board has remanded the proceeding. Such substitute examiner’s answer may also include a new ground of rejection.