How does responding to applicant’s arguments with new reference portions affect the grounds of rejection?
Responding to an applicant’s arguments by citing different portions of a reference submitted by the applicant does not necessarily constitute a new ground of rejection. According to MPEP 1207.03(a): “If an applicant submits a new reference to argue, for example, that the prior art ‘teaches away’ from the claimed invention (see MPEP § 2145), and…
Read MoreHow does removing references from a 35 U.S.C. 103 rejection affect the grounds of rejection?
Removing one or more references from 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 removes one or more references from the statement of rejection under 35 U.S.C. 103, and relies on the same teachings of the remaining references to support the…
Read MoreWhat constitutes a “new ground of rejection” in a patent examiner’s answer?
Determining what constitutes a “new ground of rejection” is a highly fact-specific question. According to MPEP 1207.03(a), the ultimate criterion is “whether appellants have had fair opportunity to react to the thrust of the rejection.” Some examples of new grounds of rejection include: Changing the statutory basis of rejection from 35 U.S.C. 102 to 35…
Read MoreHow does citing a different portion of a reference affect the grounds of rejection?
Citing a different portion of a reference does not always constitute a new ground of rejection. According to MPEP 1207.03(a): “If the examiner’s answer cites a different portion of an applied reference which goes no farther than, and merely elaborates upon, what is taught in the previously cited portion of that reference, then the rejection…
Read MoreWhen does changing the statutory basis of rejection not constitute a new ground?
Changing the statutory basis of rejection does not always constitute a new ground of rejection. According to MPEP 1207.03(a), there are situations where such changes are not considered new grounds: 1. Changing from 35 U.S.C. 103 to 35 U.S.C. 102, but relying on the same teachings: “If the examiner’s answer changes the statutory basis of…
Read MoreHow 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…
Read MoreWhat is the significance of the “basic thrust of the rejection” in determining new grounds of rejection?
The concept of the “basic thrust of the rejection” is crucial in determining whether a rejection constitutes a new ground of rejection. According to MPEP 1207.03(a): “There is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react…
Read MoreWhat is the impact of amendments under 37 CFR 1.116 or 41.33 on new grounds of rejection?
Amendments submitted under 37 CFR 1.116 or 41.33 can affect whether a rejection in an examiner’s answer is considered a new ground of rejection. According to MPEP 1207.03(a): If: An amendment under 37 CFR 1.116 or 41.33 proposes to add or amend one or more claims; The applicant was advised (through an advisory action) that…
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