How does the USPTO define a ‘new ground of rejection’ in an Examiner’s Answer?
How does the USPTO define a ‘new ground of rejection’ in an Examiner’s Answer?
The USPTO defines a ‘new ground of rejection’ in an Examiner’s Answer based on whether the applicant has had a fair opportunity to react to the thrust of the rejection. According to MPEP 1207.03:
“A position or rationale that changes the “basic thrust of the rejection” will also give rise to a new ground of rejection. A rejection relying on the same statutory basis and same prior art references, may nevertheless raise a new ground of rejection, when the rejection relies on new facts or rationales not previously raised.”
Key factors in determining if a rejection is a new ground include:
- Use of different prior art references
- Reliance on different portions of the same reference
- New arguments or rationales for combining references
- Changing the statutory basis of the rejection
The determination is made on a case-by-case basis, considering whether the applicant has been given a fair opportunity to react to the rejection’s thrust.
To learn more: