Federal Register, Volume 75, Number 219, November 15, 2010, Pages 69571-69850 Page: 69,838
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Federal Register/Vol. 75, No. 219/Monday, November 15, 2010/Proposed Rules
should be a rare occurrence, the Office
determined that the option to enter a
new ground of rejection in an
examiner's answer should be retained in
the proposed rule for those situations in
which new evidence comes to light later
in the prosecution. The proposed rule
codifies the Office's standing procedure
that requires supervisory approval of
each new ground of rejection.
The Office received some comments
suggesting to allow appellants the
option of reopening prosecution
regardless of whether or not an
examiner designates a rejection as
containing a new ground. The Office
received a further comment requesting
the Office provide further guidance as to
what constitutes a new ground of
rejection.
An appellant always has the option to
reopen prosecution after filing a notice
of appeal, by filing a request for
continued examination (RCE) during the
pendency of the application, but under
the proposed rule the Office would
allow appellant to reopen prosecution
without having to file an RCE only if the
examiner's answer is designated as
containing a new ground of rejection.
Proposed new Bd.R. 41.40, discussed
infra, delineates the process by which
appellant can seek review of the
primary examiner's failure to designate
a rejection as a new ground of rejection
should appellant feel that the
examiner's answer contains a new
ground of rejection that has not been
designated as such.
The following discussion provides
guidance to appellants and examiners as
to the Office's view of what constitutes
a new ground of rejection. This
discussion is limited for "purposes of
the examiner's answer," as per Proposed
Bd.R. 41.39(a)(2). This discussion does
not apply to final rejections under Rule
1.113. The reason for this distinction is
that Rule 1.116 affords applicants the
opportunity to submit rebuttal evidence
after a final rejection but before or on
the same date of filing a notice of
appeal. An appellant's ability to
introduce new evidence after the filing
of an appeal is more limited under Bd.R.
41.33(d) and proposed Bd.R. 41.33(d)
than it is prior to the appeal. Thus,
applicants are able to present rebuttal
evidence in response to a final rejection,
while they are not permitted to do so in
response to an examiner's answer on
appeal, unless an answer is designated
as containing a new ground of rejection.
If new evidence (such as a new prior
art reference) is applied or cited for the
first time in an examiner's answer, then
Proposed Bd.R. 41.39(a)(2) requires that
the rejection be designated as a newground of rejection. If the citation of a
new prior art reference is necessary to
support a rejection, it must be included
in the statement of rejection, which
would be considered to introduce a new
ground of rejection. Even if the prior art
reference is cited to support the
rejection in a minor capacity, it should
be positively included in the statement
of rejection and be designated as a new
ground of rejection. In re Hoch, 428 F.2d
1341, 1342 n.3 (CCPA 1970).
Relying on new evidence, however, is
not the only way to trigger a new ground
of rejection in an examiner's answer. A
"position or rationale new to the
proceedings"-even if based on
evidence previously of record-may
give rise to a new ground of rejection.
In re De Blauwe, 736 F.2d 699, 706 n.9
(Fed. Cir. 1984) (stating that where the
Office advances "a position or rationale
new to the proceedings, an applicant
must be afforded an opportunity to
respond to that position or rationale by
submission of contradicting evidence"
(citing In re Eynde, 480 F.2d 1364
(CCPA 1973))).
To avoid triggering a new ground of
rejection in an examiner's answer, the
examiner is not required to use identical
language in both the examiner's answer
and the Office action from which the
appeal is taken. It is not a new ground
of rejection, for example, if the
examiner's answer responds to
appellant's arguments using different
language, or restates the reasoning of the
rejection in a different way, so long as
the evidence relied upon is the same
and the "basic thrust of the rejection" is
the same. In re Kronig, 539 F.2d 1300,
1303 (CCPA 1976); see also In re
Noznick, 391 F.2d 946, 949 (CCPA
1968) (no new ground of rejection made
when "explaining to appellants why
their arguments were ineffective to
overcome the rejection made by the
examiner"); In re Krammes, 314 F.2d
813, 817 (CCPA 1963) ("It is well
established that mere difference in form
of expression of the reasons for finding
claims unpatentable or unobvious over
the references does not amount to
reliance on a different ground of
rejection." (citation omitted)); In re
Cowles, 156 F.2d 551, 1241 (CCPA 1946)
(holding that the use of "different
language" does not necessarily trigger a
new ground of rejection).
The following examples are intended
to provide guidance as to what
constitutes a new ground of rejection in
an examiner's answer. What constitutes
a "new ground of rejection" is a highly
fact-specific question. See, e.g., Kronig,
539 F.2d at 1303 (finding new ground
entered based upon "facts of this case"
and rejecting other cases as controllinggiven "distinctive facts at bar"); In re
Ahlert, 424 F.2d 1088, 1092 (CCPA
1970) ("[l]ooking at the facts of this case,
we are constrained to hold" that a new
ground was entered). If a situation arises
that does not fall neatly within any of
the following examples, it is
recommended that the examiner
identify the example below that is most
analogous to the situation at hand,
keeping in mind that "the ultimate
criterion of whether a rejection is
considered 'new' * * * is whether
appellants have had fair opportunity to
react to the thrust of the rejection."
Kronig, 539 F.2d at 1302.
Factual Situations That Constitute a
New Ground of Rejection
1. Changing the statutory basis of
rejection from 102 to 103. If the
examiner's answer changes the statutory
basis of the rejection from 102 to 103,
then the rejection should be designated
as a new ground of rejection. For
example, in In re Hughes, 345 F.2d 184
(CCPA 1965), the Board affirmed an
examiner's rejection under 102 over a
single reference. On appeal, the
Solicitor argued that the Board's
decision should be sustained under
103 over that same reference. The
court declined to sustain the rejection
under 103, holding that a change in
the statutory basis of rejection would
constitute a new ground of rejection,
and observed that "the issues arising
under the two sections [ 102 and 103]
may be vastly different, and may call for
the production and introduction of quite
different types of evidence." Hughes,
345 F.2d at 186-87. See also In re
Moore, 444 F.2d 572 (CCPA 1971)
(holding the Board's decision contained
a new ground of rejection, wherein the
examiner rejected the claims under
102 based on applicant's failure to
show prior discovery of utility, and
wherein the Board affirmed the rejection
based on obviousness of that utility
under 103).
2. Changing the statutory basis of
rejection from 103 to 102, based on
a different teaching. If the examiner's
answer changes the statutory basis of
the rejection from 103 to 102, and
relies on a different portion of a
reference which goes beyond the scope
of the portion that was previously relied
upon, then the rejection should be
designated as a new ground of rejection.
For example, in In re Echerd, 471 F.2d
632, 635 (CCPA 1973), the examiner
rejected the claims under 103 over a
combination of two references. The
Board then changed the ground of
rejection to 102 over one of those
references, relying on a different portion
of that reference for some claimlimitations, and asserted that the
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United States. Office of the Federal Register. Federal Register, Volume 75, Number 219, November 15, 2010, Pages 69571-69850, periodical, November 15, 2010; Washington D.C.. (https://digital.library.unt.edu/ark:/67531/metadc52800/m1/274/: accessed April 23, 2024), University of North Texas Libraries, UNT Digital Library, https://digital.library.unt.edu; crediting UNT Libraries Government Documents Department.