tag:blogger.com,1999:blog-6733236595417664807.post4211693065773043493..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Board says newly cited reference is not a new ground of rejection since it's in the priority chain of previously used referenceKaren G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger5125tag:blogger.com,1999:blog-6733236595417664807.post-60552660188297541272014-03-06T13:00:02.873-05:002014-03-06T13:00:02.873-05:00Anonymous, but the board's rationale and holdi...Anonymous, but the board's rationale and holding was that ANY CIP is not a new reference, without any exceptions.Jason Taylor in Marylandhttps://www.blogger.com/profile/08227071988359221466noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-80186288292017688182014-02-27T20:06:59.702-05:002014-02-27T20:06:59.702-05:00"However, the correct procedure for Applicant..."However, the correct procedure for Applicant to challenge a new ground not designated as such is to file a Petition under § 1.181. "<br /><br />That is correct. That is also why the board got this one right. The applicant did not properly bring the issue to the office. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-42271869602603266852014-02-07T10:55:08.472-05:002014-02-07T10:55:08.472-05:00The PTAB statement that “If it’s in the priority c...The PTAB statement that “If it’s in the priority chain, it’s not a new ground” is inartfully written and preposterously overbroad. If the Examiner relies on a brand new teaching from a reference in the priority chain, the priority chain would be irrelevant: this would definitely be a new ground of rejection.<br /><br />However, I feel that this case is a much closer call. Dresti is ostensibly not being used to supply a previously missing teaching, but instead as additional evidence that Huang teaches what the Examiner says it teaches. The fact that it is part of Huang’s priority chain simply means that it is relevant to the meaning the appli-cant was trying to convey in Huang. <br /><br />Regardless, you’re right that you should petition in this situation, or at the very least attempt to address the substance, not just a procedural gripe, in your Reply Brief.Michaelnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-44526820076427088832014-02-04T13:07:45.960-05:002014-02-04T13:07:45.960-05:00>only in limited circumstances will the relianc...>only in limited circumstances will the reliance upon a new reference <br />>not be considered a new grounds of rejection. <br />>See discussion within In re Bidermann.<br /><br />Thanks for the pointer to In re Bidermann. Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-29820956062807757282014-02-04T10:06:11.097-05:002014-02-04T10:06:11.097-05:00The Board seems to think that the family relations...<i>The Board seems to think that the family relationship between the actually-relied-upon reference (Huang) and the newly-relied-upon reference (Destri) meant that the Applicant was already on notice. I just don't see what Destri's presence in Huang's chain of priority has to do with notice.</i><br />The Board will go out of its way to say that it isn't a new grounds of rejection. Drestri is a new reference, and only in limited circumstances will the reliance upon a new reference not be considered a new grounds of rejection. See discussion within <i>In re Bidermann</i>.<br /><br />Fighting undesignated new grounds of rejection at both the Examiner's Answer and/or the Decision on Appeal is an issue frequently faced by Appellants. The Examiner (or the Board) recognizes a deficiency in the Examiner's analysis and attempts to bolster this analysis with new facts and/or legal reasoning. There is not inherent problem with either doing this except that must give Appellant a fair opportunity to respond -- which requires that the Examiner either reopen prosecution or the Board designates the Decision as containing a new grounds. Unfortunately, this happens far too infrequently.Anonymousnoreply@blogger.com