“[M]ere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection.” When the PTO “relies on new facts and rationales not previously raised,” this constitutes a new rejection “to which applicants are entitled to notice and a fair opportunity to respond.”
Background / Facts: The application on appeal here from the PTAB is generally directed to a bone screw with a shank and a U-shaped holding portion for a rod that connects to other bone screws. The claims were rejected by the examiner based on an asserted combination of a square thread in one prior art reference with a device in another prior art reference, under the rationale that there were a limited number of threads that could be used and that a square thread was the most efficient. On appeal, the PTAB affirmed the rejections in view of the two prior art references, but pointed to other factors relating to the avoidance of splaying to show why one skilled in the art would combine them.
Issue(s): Whether the Board made new findings and adopted different reasons to support a new ground of rejection, thus depriving the applicants of both notice and an opportunity to respond.
Holding(s): Yes. “While the examiner in the Examiner’s Answer made a passing reference to splaying in relation to the gaps between the inner and outer threads, the examiner’s rejection neither relied upon nor even noted the avoidance of splaying as a factor. The Board, on the other hand, found new facts as the basis for concluding that the combination of [the two prior art references] would have been obvious.” Further, “[t]he principal reason the examiner combined the references was the efficiency of a square thread. The principal reason the Board affirmed the combination of the references was the avoidance of splaying by using square threads. These are different grounds and form the bases or underpinnings of different rejections.”