List two situations that are not considered new grounds of rejection?
Where the statutory basis for the rejection remains the same, and the evidence relied upon in support of the rejection remains the same, a change in the discussion of, or rationale in support of, the rejection does not necessarily constitute a new ground of rejection.
In addition, if:
- (A) an amendment under 37 CFR 1.116 [or41.33] proposes to add or amend one or more claims;
- (B) appellant was advised (through an advisory action) that the amendment would be entered for purposes of appeal; and
- (C) the advisory action indicates which individual rejection(s) set forth in the action from which appeal has been taken would be used to reject the added or amended claims, then
- (1) the appeal brief must address the rejection(s)of the added or amended claim(s) and
- (2) the examiner’s answer may include the rejection(s) of the added or amended claims. Such rejection(s) made in the examiner’s answer would not be considered as a new ground of rejection.
The answer to this question can be found in chapter 1200 of the MPEP. This chapter covers Appeal.
The answer is from the 9th Edition, Revision 10.2019. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
This question and answer comes from section 1207.03(a) of the MPEP. The following is a brief summary of section 1207.03(a).
1207.03(a) Determining Whether a Ground of Rejection is New
This section covers the topic of determining whether a ground of rejection is new. Examples are included. Essentially, there is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant has been given a fair opportunity to react to the rejection.