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 the examiner’s answer points to portions of that same reference to counter the argument, then the rejection does not constitute a new ground of rejection.”
This principle is based on the court’s decision in In re Hedges, where the Solicitor responded to the applicant’s “teaching away” argument by pointing to other portions of the same references cited by the applicant. The court held that this did not constitute a new ground of rejection, stating:
“The Solicitor has done no more than search the references of record for disclosures pertinent to the same arguments for which [applicant] cited the references.”
The key factor is that the examiner is using the applicant’s own submitted reference to counter their arguments, rather than introducing entirely new evidence or rationales.
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