Can relying on a new portion of a reference create a new ground 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.

Yes, relying on a new portion of a reference can create a new ground of rejection in patent appeals. The MPEP 1207.03(a) states:

“Factual situations that have been found to constitute a new ground of rejection include… Citing new structure from a prior art reference to support an existing rejection.”

This means that if an examiner cites a different part of a previously used reference to support the rejection, it may be considered a new ground. The key factor is whether this new portion changes the “basic thrust of the rejection.” If it does, and the applicant has not had a fair opportunity to respond to this new interpretation or teaching from the reference, it would constitute a new ground of rejection.