How are rejections under both pre-AIA 35 U.S.C. 102 and 103 formulated?
In certain situations, an examiner may need to make a rejection under both pre-AIA 35 U.S.C. 102 and 103. Form paragraph 7.27.fti is provided for this purpose:
Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102 ([2]) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over [3].
However, the MPEP cautions: This form paragraph is NOT intended to be commonly used as a substitute for a rejection under pre-AIA 35 U.S.C. 102. In other words, a single rejection under either pre-AIA 35 U.S.C. 102 or pre-AIA 35 U.S.C. 103(a) should be made whenever possible using appropriate form paragraphs 7.15.fti to 7.19.fti, 7.21.fti and 7.22.fti.
The MPEP provides specific examples of when this form paragraph might be appropriate, such as when the interpretation of the claim(s) is in dispute or when the reference discloses all limitations except a property or function that the examiner cannot determine is inherently possessed by the reference.
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