How does the MPEP address the reliance on fewer than all references in an Examiner’s Answer?
The MPEP 1207.03 provides guidance on how reliance on fewer than all references in support of a rejection in an Examiner’s Answer is treated. Specifically: “Relying on fewer than all references in support of a 35 U.S.C. 103 rejection, but relying on the same teachings. Assuming the rejection is otherwise proper, if the examiner’s answer…
Read MoreWhat options does an appellant have if a new ground of rejection is designated in an Examiner’s Answer?
When a new ground of rejection is designated in an Examiner’s Answer, the appellant has two options according to MPEP 1207.03: Reopen prosecution: The appellant can request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111 within two months from the mailing of the Examiner’s Answer. Maintain the…
Read MoreWhat are examples of actions that do not constitute a new ground of rejection in an Examiner’s Answer?
According to MPEP 1207.03, the following actions do not constitute a new ground of rejection in an Examiner’s Answer: Pointing out where an appellant’s arguments are not persuasive Responding to new arguments raised in the appeal brief Relying on a different portion of a reference to elaborate upon that which has been cited previously Changing…
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