MPEP 1207.04 may be incorrectly interpreted to allow an examiner to re-open prosecution after appeal as final (under 37 CFR 1.113). In fact, we have experienced this on at least 4 occasions, generally with the sloppiest and/or laziest examiners.
37 CFR 41.37 sets forth the requirements for appeal briefs. Thereafter comes rule 41.39, which says the examiner "may" file an answer. If the examiner does file an answer, and if it raises a new grounds of rejection, the examiner is required to allow the applicant to re-open under 37 CFR 1.111 (non-final). This is a scenario in which an examiner may wish to supplement otherwise sound rejections with one or more further rejections.
However, if the examiner re-opens directly, without filing an answer -- constructively "answering" by withdrawing the previous grounds of rejection and raising new ones -- some examiners believe they can re-open under 37 CFR 1.113 (final). This makes no sense and is not clearly set forth as improper in the MPEP as it should be.
Raising new grounds of rejection after appeal, whether by answer or directly re-opening from the examiner side, necessarily leads to 37 CFR 1.111 based at least on 37 CFR 41.39(b)(1).
(b) Appellant's response to new ground of rejection. If an examiner's answer contains a rejection designated as a new ground of rejection, appellant must within two months from the date of the examiner's answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:
(1) Reopen prosecution . Request that prosecution be reopened before the primary examiner by filing a reply under § 1.111 of this title with or without amendment or submission of affidavits (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. Any amendment or submission of affidavits or other Evidence must be relevant to the new ground of rejection. A request that complies with this paragraph will be entered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under the provisions of § 1.112 of this title. Any request that prosecution be reopened under this paragraph will be treated as a request to withdraw the appeal.
(2) Maintain appeal . Request that the appeal be maintained by filing a reply brief as set forth in § 41.41. Such a reply brief must address as set forth in § 41.37(c)(1)(iv) each new ground of rejection and should follow the other requirements of a brief as set forth in § 41.37(c). A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is accompanied by any amendment, affidavit or other Evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under paragraph (b)(1) of this section.
It cannot be that an applicant has to pay for an appeal, then immediately for an RCE because his successful brief has overcome all grounds of rejection by argument.
Any revision of the MPEP in this regard should clearly set this forth to end abuse by unscrupulous examiners.