Can an examiner make a new rejection after a common ownership statement disqualifies prior art?
Can an examiner make a new rejection after a common ownership statement disqualifies prior art?
Yes, an examiner can make a new rejection even after a common ownership statement disqualifies previously cited prior art. The MPEP 717.02(c) provides guidance on this situation:
“If the rejection is obviated and the claims are otherwise allowable, the examiner should make the next Office action final with a statement to that effect. If the rejection is obviated and there are still other rejections remaining, the examiner should determine whether the remaining rejections are sufficient to support a first action final rejection. If the remaining rejections are sufficient to support a first action final rejection, the examiner should make the next Office action final with an indication that the disqualified subject matter has been disqualified under 35 U.S.C. 102(b)(2)(C). If the remaining rejections are not sufficient to support a first action final rejection, the examiner should issue a non-final Office action with an indication that the disqualified subject matter has been disqualified under 35 U.S.C. 102(b)(2)(C) and with any new grounds of rejection.”
This means that the examiner has several options depending on the circumstances:
- If no other rejections remain, they can make the next action final and allow the claims.
- If other rejections remain and are sufficient, they can make the next action final while acknowledging the disqualified prior art.
- If other rejections remain but are not sufficient for a final rejection, they can issue a non-final action with new grounds of rejection.
It’s important to note that the examiner can introduce new prior art or rejections as needed, even if the common ownership statement successfully disqualifies previously cited art under AIA 35 U.S.C. 102(b)(2)(C).
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