Comments on: Q) Smith, Jones & Brown (10.03.42p) http://mypatentbar.com/2010/04/19/q-smith-jones-brown-10-03-42p/ Patent Bar Review and Study Guide Tue, 22 May 2012 00:33:43 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: Sol http://mypatentbar.com/2010/04/19/q-smith-jones-brown-10-03-42p/#comment-37413 Sol Wed, 04 Apr 2012 19:47:54 +0000 http://mypatentbar.com/?p=1826#comment-37413 post KSR, the motivation is still required but not has be to expressly found in a prior art. The examiner still needs to provide the motivation. This is a new ground of rejection but not designated by the Examienr as a new ground of rejection. Under the new rules, the Applicant should petition to desiginate the new ground. After the petition is granted and a new ground is designated, the Applicant can either reopen the prosecution with or without amendment and/or evidence, or maintain the appeal without amendment or evidence. What if the Applicant does not petitioin but go directly to Board? Like said this question. The board will reverse the old rejection over Smith/Jones, and may or may not give a new ground of rejection over Simith/Jones/Brown. Welcome to correct me. post KSR, the motivation is still required but not has be to expressly found in a prior art. The examiner still needs to provide the motivation.

This is a new ground of rejection but not designated by the Examienr as a new ground of rejection. Under the new rules, the Applicant should petition to desiginate the new ground. After the petition is granted and a new ground is designated, the Applicant can either reopen the prosecution with or without amendment and/or evidence, or maintain the appeal without amendment or evidence.

What if the Applicant does not petitioin but go directly to Board? Like said this question. The board will reverse the old rejection over Smith/Jones, and may or may not give a new ground of rejection over Simith/Jones/Brown.

Welcome to correct me.

]]> By: Gary W http://mypatentbar.com/2010/04/19/q-smith-jones-brown-10-03-42p/#comment-35725 Gary W Thu, 22 Mar 2012 02:32:41 +0000 http://mypatentbar.com/?p=1826#comment-35725 Page 1200-26, Section 1(iv): For each rejection under 35 U.S.C. 103, the Examiner’s Answer shall state the ground of rejection and point out where each of the specific limitations recited in the rejected claims is found in the prior art relied upon in the rejection, shall identify the differences between the rejected claims and the prior art relied on (i.e., the primary reference) and shall explain why it would have been obvious at the time the invention was made to a person of ordinary skill in the art to have modified the primary reference to arrive at the claimed subject matter" - the Examiner in this Q did not do so. Page 1200-27, continued, section 2: If there are any new grounds of rejection, use form paragraph 12.154.04 to provide a prominent heading and use form paragraph 12.179.01 instead of form paragraph 12.179 to conclude the examiner’s answer. - the Q does not say anything about a different form, implying that the examiner simply added a footnote without identifying a new ground of rejection. The examiner does not seem to have followed the above instructions in the MPEP. I would say the Board should reverse his rejection. Page 1200-26, Section 1(iv):
For each rejection under 35 U.S.C. 103, the Examiner’s Answer shall state the ground of rejection and point out where each of the specific limitations recited in the rejected claims is found in the prior art relied upon in the rejection, shall identify the differences between the rejected claims and the prior art relied on (i.e., the primary reference) and shall explain why it would have been obvious at the time the invention was made to a person of ordinary skill in the art to have modified the primary reference to arrive at the claimed subject matter”

- the Examiner in this Q did not do so.

Page 1200-27, continued, section 2:
If there are any new grounds of rejection, use form paragraph 12.154.04 to provide a prominent heading and use form paragraph 12.179.01 instead of form paragraph 12.179 to conclude the examiner’s answer.

- the Q does not say anything about a different form, implying that the examiner simply added a footnote without identifying a new ground of rejection.

The examiner does not seem to have followed the above instructions in the MPEP. I would say the Board should reverse his rejection.

]]> By: EZ http://mypatentbar.com/2010/04/19/q-smith-jones-brown-10-03-42p/#comment-32610 EZ Thu, 23 Feb 2012 16:39:10 +0000 http://mypatentbar.com/?p=1826#comment-32610 Also, post KSR, motivation does not seem to be required so the newly cited Brown probably would not constitute a new ground of rejection. The board wouldn't need Brown to rejection. The answer, if based on the new law, would be A. Pls correct me if I am wrong... Also, post KSR, motivation does not seem to be required so the newly cited Brown probably would not constitute a new ground of rejection. The board wouldn’t need Brown to rejection. The answer, if based on the new law, would be A. Pls correct me if I am wrong…

]]> By: Miranda http://mypatentbar.com/2010/04/19/q-smith-jones-brown-10-03-42p/#comment-31110 Miranda Mon, 13 Feb 2012 17:28:37 +0000 http://mypatentbar.com/?p=1826#comment-31110 This is very confusing, can someone explain it to me? I agree that this would constitute a new rejection in the examiner's answer, but since it seems the appellant waived his right to address the new rejection by not filing a petition/reopening prosecution/filing a reply brief, wouldn't the examiner dismiss the appeal as to the claims subject to the new rejection? This is very confusing, can someone explain it to me?
I agree that this would constitute a new rejection in the examiner’s answer, but since it seems the appellant waived his right to address the new rejection by not filing a petition/reopening prosecution/filing a reply brief, wouldn’t the examiner dismiss the appeal as to the claims subject to the new rejection?

]]> By: Bigbadvoododaddy http://mypatentbar.com/2010/04/19/q-smith-jones-brown-10-03-42p/#comment-13247 Bigbadvoododaddy Mon, 11 Jul 2011 05:01:34 +0000 http://mypatentbar.com/?p=1826#comment-13247 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. In this case it is not the same thrust, because it is not obvious over the two listed refs The following applies A new prior art reference >applied or< 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 1207.03 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.
In this case it is not the same thrust, because it is not obvious over the two listed refs

The following applies
A new prior art reference >applied or< 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
1207.03

]]> By: D http://mypatentbar.com/2010/04/19/q-smith-jones-brown-10-03-42p/#comment-7824 D Sun, 20 Feb 2011 01:55:27 +0000 http://mypatentbar.com/?p=1826#comment-7824 Anyone have an update on this? It does not seem that the changes to the MPEP are meant to cover this situation. The new 1207.03 seems to be for situations where an examiner needs to submit a new ground of rejection in the answer due to changes by the applicant. In this case, the examiner simply made a mistake by not including Brown. The MPEP says in 1207.03 that the new ground does not HAVE to be because of a new argument by applicant, but it seems to imply that if the new ground is not a response to new applicant information, the examiner should reopen prosection. Anyone have an update on this? It does not seem that the changes to the MPEP are meant to cover this situation. The new 1207.03 seems to be for situations where an examiner needs to submit a new ground of rejection in the answer due to changes by the applicant. In this case, the examiner simply made a mistake by not including Brown. The MPEP says in 1207.03 that the new ground does not HAVE to be because of a new argument by applicant, but it seems to imply that if the new ground is not a response to new applicant information, the examiner should reopen prosection.

]]> By: Phirebird http://mypatentbar.com/2010/04/19/q-smith-jones-brown-10-03-42p/#comment-3755 Phirebird Mon, 30 Aug 2010 17:30:06 +0000 http://mypatentbar.com/?p=1826#comment-3755 Has the answer changed to (B) in accordance with the new MPEP? "1207.03 41.39(a)(2) permitsmailed on or after September 13, 2004." Or is (C) still correct because the question never affirmatively stated that the Examiner properly entered the new ground of rejection by getting prior supervisory approval, and on the basis of the vague condition that new grounds in Examiners' Answers should be a rare occurrence? Has the answer changed to (B) in accordance with the new MPEP?
“1207.03 41.39(a)(2) permitsmailed on or after September 13, 2004.”

Or is (C) still correct because the question never affirmatively stated that the Examiner properly entered the new ground of rejection by getting prior supervisory approval, and on the basis of the vague condition that new grounds in Examiners’ Answers should be a rare occurrence?

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