How does changing the order of references in a 35 U.S.C. 103 rejection affect the grounds of rejection?
Changing the order of references in a 35 U.S.C. 103 rejection does not necessarily constitute a new ground of rejection. According to MPEP 1207.03(a):
“If the examiner’s answer changes the order of references in the statement of rejection under 35 U.S.C. 103, and relies on the same teachings of those references to support the 35 U.S.C. 103 rejection, then the rejection does not constitute a new ground of rejection.”
This principle is based on court decisions such as In re Cowles, where the Board changed the order of references in the rejection statement but relied on the same teachings. The court held that this did not constitute a new ground of rejection.
Similarly, in In re Krammes, the court held that a different “order of combining the references” did not constitute a new ground of rejection because each reference was cited for the “same teaching” previously cited.
The key factor is whether the rejection relies on the same teachings and maintains the same basic thrust, even if the order of references is changed. If so, it does not constitute a new ground of rejection.
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