How 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 35 U.S.C. 103 rejection, then the rejection does not constitute a new ground of rejection.”
This principle is based on the court’s decision in In re Kronig, where the Board affirmed a rejection under 35 U.S.C. 103 but relied on fewer references than the examiner. The court held that this did not constitute a new ground of rejection, stating:
“Having compared the rationale of the rejection advanced by the examiner and the board on this record, we are convinced that the basic thrust of the rejection at the examiner and board level was the same.”
The key factor is whether the rejection relies on the same teachings and maintains the same basic thrust, even if fewer references are cited. If so, it does not constitute a new ground of rejection.
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