How does the MPEP address the reliance on fewer than all references in an Examiner’s Answer?
The MPEP 1207.03 provides guidance on how reliance on fewer than all references in support of a rejection in an Examiner’s Answer is treated. Specifically:
“Relying on fewer than all references in support of a 35 U.S.C. 103 rejection, but relying on the same teachings. Assuming the rejection is otherwise proper, if the examiner’s answer removes one or more references from the statement of rejection under 35 U.S.C. 103, and relies on the same teachings of the remaining references to support the 35 U.S.C. 103 rejection, then the rejection does not constitute a new ground of rejection.”
This means that an examiner can rely on fewer references in the Answer than in the Office action without introducing a new ground of rejection, as long as the teachings relied upon remain the same. This approach allows examiners to streamline their rejections without necessarily changing the substance of the rejection.
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