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, 07 Feb 2012 03:15:12 +0000 http://wordpress.org/?v=2.9.2 hourly 1 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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