When does changing the statutory basis of rejection not constitute a new ground?
Changing the statutory basis of rejection does not always constitute a new ground of rejection. According to MPEP 1207.03(a), there are situations where such changes are not considered new grounds:
1. Changing from 35 U.S.C. 103 to 35 U.S.C. 102, but relying on the same teachings:
“If the examiner’s answer changes the statutory basis of the rejection from 35 U.S.C. 103 to 35 U.S.C. 102, and relies on the same teachings of the remaining reference to support the 35 U.S.C. 102 rejection, then the rejection does not constitute a new ground of rejection.”
This principle is based on the court’s decision in In re May, where the court stated that “lack of novelty is the epitome of obviousness.”
2. Changing from 35 U.S.C. 102 to 35 U.S.C. 103, but relying on the same teachings:
While not explicitly stated in this section, the same principle would apply when changing from 102 to 103 if the same teachings are relied upon.
The key factor is whether the “basic thrust of the rejection” remains the same, giving appellants a fair opportunity to respond to the rejection.
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