How does changing the statutory basis affect grounds of rejection?
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.
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