What are examples of actions that do not constitute a new ground of rejection in an Examiner’s Answer?
According to MPEP 1207.03, the following actions do not constitute a new ground of rejection in an Examiner’s Answer:
- Pointing out where an appellant’s arguments are not persuasive
- Responding to new arguments raised in the appeal brief
- Relying on a different portion of a reference to elaborate upon that which has been cited previously
- Changing the formatting of the rejection (e.g., from claim-by-claim to a single-paragraph rejection)
The MPEP states: “It is not a new ground of rejection, for example, to rely on a different portion of a reference which goes no farther than, and merely elaborates upon, what is taught in the previously cited portion of that reference.” This clarifies that providing additional details from the same reference does not constitute a new ground of rejection.
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