How does citing a different portion of a reference affect the grounds of rejection?
Citing a different portion of a reference does not always constitute a new ground of rejection. According to MPEP 1207.03(a):
“If the examiner’s answer cites a different portion of an applied reference which goes no farther than, and merely elaborates upon, what is taught in the previously cited portion of that reference, then the rejection does not constitute a new ground of rejection.”
This principle is illustrated in the case of In re DBC, where the Board cited a specific example from a reference instead of the abstract cited by the examiner. The court held that this did not constitute a new ground of rejection because “the example in the translation goes no farther than, and merely elaborates upon, what is taught by the abstract.”
However, if the newly cited portion of the reference introduces new teachings or rationales not previously considered, it may constitute a new ground of rejection, requiring designation as such to ensure the appellant has a fair opportunity to respond.
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