How does the USPTO define a ‘new ground of rejection’ in an Examiner’s Answer?
This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.
How does the USPTO define a ‘new ground of rejection’ in an Examiner’s Answer?
The USPTO defines a ‘new ground of rejection’ in an Examiner’s Answer based on whether the applicant has had a fair opportunity to react to the thrust of the rejection. According to MPEP 1207.03:
“A position or rationale that changes the “basic thrust of the rejection” will also give rise to a new ground of rejection. A rejection relying on the same statutory basis and same prior art references, may nevertheless raise a new ground of rejection, when the rejection relies on new facts or rationales not previously raised.”
Key factors in determining if a rejection is a new ground include:
- Use of different prior art references
- Reliance on different portions of the same reference
- New arguments or rationales for combining references
- Changing the statutory basis of the rejection
The determination is made on a case-by-case basis, considering whether the applicant has been given a fair opportunity to react to the rejection’s thrust.