What constitutes a new ground of rejection in patent appeals?
A new ground of rejection in patent appeals occurs when the basic thrust of the rejection changes. According to MPEP 1207.03(a), this happens when:
- The examiner relies on new facts or rationales not previously raised to the applicant
- The rejection “changes the statutory basis of rejection from one section of the statute to another section”
- The rejection relies on a different prior art teaching to support an existing rejection
- The examiner applies a new interpretation of the claims to support the rejection
The key factor is whether applicants have had a fair opportunity to react to the thrust of the rejection. As stated in the MPEP, “A position or rationale that changes the “basic thrust of the rejection” will give rise to a new ground of rejection.”
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