How does a new interpretation of claims affect grounds of rejection?
A new interpretation of claims can lead to a new ground of rejection in patent appeals. According to MPEP 1207.03(a):
“Factual situations that have been found to constitute a new ground of rejection include… Changing the statutory basis of rejection from one section of the statute to another section… [or] Citing new structure from a prior art reference to support an existing rejection.”
While not explicitly stated, a new interpretation of claims can fall under these categories if it substantially changes the basis of the rejection. For instance, if the new interpretation leads to applying a different statutory basis or requires citing new portions of prior art, it would likely constitute a new ground of rejection. The key is whether the new interpretation changes the “basic thrust of the rejection” in a way that the applicant hasn’t had a fair opportunity to address.
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