How does a new interpretation of claims affect grounds 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.

A new interpretation of claims can lead to 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… [or] Citing new structure from a prior art reference to support an existing rejection.”

While not explicitly stated, a new interpretation of claims can fall under these categories if it substantially changes the basis of the rejection. For instance, if the new interpretation leads to applying a different statutory basis or requires citing new portions of prior art, it would likely constitute a new ground of rejection. The key is whether the new interpretation changes the “basic thrust of the rejection” in a way that the applicant hasn’t had a fair opportunity to address.