An Examiner can make both 102/103 rejections. When shouldn’t he make both?
Q) 102 and 103 Rejections
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Patent Bar Review and Study Guide
An Examiner can make both 102/103 rejections. When shouldn’t he make both?
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ANSWER: When cumulative (see 700). Does anyone have the section or can anyone clarify? This answer is from the forum.
Know that an Examiner can make both 102/103 rejections. When shouldn’t he make both? ANSWER – when cumulative (see 700)
FROM MPEP 706.02
Prior art rejections should ordinarily be confined strictly to the best available art. Exceptions may properly be made, for example, where:
(A) the propriety of a 35 U.S.C. 102 or 103 rejection depends on a particular interpretation of a claim;
(B) a claim is met only in terms by a reference which does not disclose the inventive concept involved; or
(C) the most pertinent reference seems likely to be antedated by a 37 CFR 1.131 affidavit or declaration.
Such rejections should be backed up by the best other art rejections available. Merely cumulative rejections, i.e., those which would clearly fall if the primary rejection were not sustained, should be avoided.
See also MPEP § 707.05.