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1208.01 Prohibition Against Entry of New Ground of Rejection in Examiner's Answer - 1200 Appeal
1208.01 Prohibition Against Entry of New Ground of Rejection in Examiner's Answer
37 CFR 1.193(a)(2) prohibits the entry of a new ground of rejection in an examiner's answer. At the time of preparing the answer to an appeal brief, however, the examiner may decide that he or she should apply a new ground of rejection against some or all of the appealed claims. In such an instance where a new ground of rejection is necessary, the examiner should reopen prosecution. The examiner must obtain supervisory approval in order to reopen prosecution after an appeal. See MPEP § 1002.02(d).
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. See In re Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA 1976). 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. Id. at 1303, 190 USPQ at 427 (reliance upon fewer references in affirming a rejection under 35 U.S.C. 103 does not constitute a new ground of rejection).
37 CFR 1.193(a)(2) also provides that if:
(A) an amendment under 37 CFR 1.116 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.
The filing of such an amendment represents appellant's consent to proceed with the appeal process. For example, when an amendment under 37 CFR 1.116 cancels a claim (the "canceled claim") and incorporates its limitations into the claim upon which it depends or rewrites the claim as a new independent claim (the "appealed claim"), the appealed claim contains the limitations of the canceled claim (i.e., the only difference between the appealed claim and the canceled claim is the claim number). In such situations, the appellant has been given a fair opportunity to react to the ground of rejection (albeit to a claim having a different claim number). Thus, such a rejection does not constitute a "new ground of rejection" within the meaning of 37 CFR 1.193(a)(2).
The phrase "individual rejections" in 37 CFR 1.193(a)(2) addresses situations such as the following: the action contains a rejection of claim 1 under 35 U.S.C. 102 on the basis of Reference A, a rejection of claim 2 (which depends upon claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of Reference B and a rejection of claim 3 (which depends upon claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of Reference C. In this situation, the action contains the following "individual rejections": (1) 35 U.S.C. 102 on the basis of Reference A; (2) 35 U.S.C. 103 on the basis of Reference A in view of Reference B; and (3) 35 U.S.C. 103 on the basis of Reference A in view of Reference C. The action, however, does not contain any rejection on the basis of A in view of B and C. If an amendment under 37 CFR 1.116 proposes to combine the limitations of claims 1 and 2 together into new claim 4 (or add the limitations of claim 2 to claim 1), 37 CFR 1.193(a)(2) would authorize a rejection of claim 4 (or amended claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of Reference B, provided the applicant was advised that this rejection would be applied to claim 4 (or amended claim 1). Likewise, if an amendment under 37 CFR 1.116 proposes to combine the limitations of claims 1 and 3 together into new claim 4 (or add the limitations of claim 3 to claim 1), 37 CFR 1.193(a)(2) would authorize a rejection of claim 4 (or amended claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of Reference C, provided the applicant was advised that this rejection would be applied to claim 4 (or amended claim 1). If, however, an amendment under 37 CFR 1.116 proposes to combine the limitations of claims 1, 2, and 3 together into new claim 4 (or add the limitations of claims 2 and 3 to claim 1), 37 CFR 1.193(a)(2) would not authorize a rejection of claim 4 (or amended claim 1) under 35 U.S.C. 103 on the basis of Reference A in view of Reference B and Reference C, even if the applicant is advised that this rejection would be applied to claim 4 (or amended claim 1). Of course, as a claim including the limitations of both claim 2 and claim 3 is a newly proposed claim in the application raising a new issue (i.e., a new ground of rejection), such an amendment under 37 CFR 1.116 may properly be refused entry as raising new issues.
It must be emphasized that amended 37 CFR 1.193(a)(2) does not change the existing practice with respect to amendment after final rejection practice ( 37 CFR 1.116). The fact that 37 CFR 1.193(a)(2) would authorize the rejection in an examiner's answer of a claim sought to be added or amended in an amendment under 37 CFR 1.116 has no effect on whether the amendment under 37 CFR 1.116 is entitled to entry. The provisions of 37 CFR 1.116 control whether an amendment under 37 CFR 1.116 is entitled to entry; the provisions of 37 CFR 1.193(a)(2) control the rejections to which a claim added or amended in an amendment under 37 CFR 1.116 may be subject in an examiner's answer.
A new prior art reference cited for the first time in an examiner's answer generally will constitute a new ground 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. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n. 3 (CCPA 1970). However, where a newly cited reference is added merely as evidence of the prior well known statement made by the examiner, the citation of the reference in the examiner's answer would not constitute a new ground of rejection within the meaning of 37 CFR 1.192(a)(2). See also MPEP § 2144.03.
Any allegation that an examiner's answer contains an impermissible new ground of rejection is waived if not timely ( 37 CFR 1.181(f)) raised by way of a petition under 37 CFR 1.181(a).
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