MPEP 1200 Flashcards
The examiner repeats the rejection of claims 1-10 as being “unpatentable over Smith in view of Jones.” The examiner additionally cites a patent to Brown that was necessary to provide motivation for combining the teachings of Smith and Jones. The examiner does not list Brown in the statement of the rejection. Appellant timely appeals to the PTAB, and files a proper appeal brief. The examiner files an examiner’s answer addressing the rejection of claims 1-10 under 35 USC 103 as being unpatentable over Smith in view of Jones, and cites Brown in the argument as providing motivation to combine Smith and Jones.
In accordance with the patent laws, rules and procedures as related in the MPEP, what will be the most proper decision of the Board?
The Board will reverse the rejection based on Smith and Jones only.
MPEP § 1207.03. If the claimed invention is rendered obvious by Smith in view of Jones and Brown, the statement of rejection must include all three references. Reliance on Brown to support the rejection is a different rejection from a rejection relying only on Smith in view of Jones.
In accordance with MPEP § 1208.01, the Board will not consider the teachings of Brown because Brown was used to support the rejection, but was not listed in the statement of the rejection. As
In accordance with the patent laws, rules and procedures as related in the MPEP, which claim(s) must the Board consider separately on the merits?
MPEP § 1205.02, under the heading “Appeal Brief Content”. The Board considers the claims as grouped and argued in Applicant’s Brief.
