Can relying on a new portion of a reference create a new ground of rejection?
Yes, relying on a new portion of a reference can create a new ground of rejection in patent appeals. The MPEP 1207.03(a) states:
“Factual situations that have been found to constitute a new ground of rejection include… Citing new structure from a prior art reference to support an existing rejection.”
This means that if an examiner cites a different part of a previously used reference to support the rejection, it may be considered a new ground. The key factor is whether this new portion changes the “basic thrust of the rejection.” If it does, and the applicant has not had a fair opportunity to respond to this new interpretation or teaching from the reference, it would constitute a new ground of rejection.
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