How does changing the statutory basis affect grounds of rejection?

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.

Changing the statutory basis of a rejection from one section of the statute to another typically constitutes a new ground of rejection in patent appeals. According to MPEP 1207.03(a):

“Factual situations that have been found to constitute a new ground of rejection include… Changing the statutory basis of rejection from one section of the statute to another section.”

For example, changing a rejection from 35 U.S.C. 102 (anticipation) to 35 U.S.C. 103 (obviousness) would be considered a new ground of rejection. This change alters the fundamental basis of the rejection and requires different evidence and arguments to address, thus giving rise to a new ground that the applicant must have a fair opportunity to address.