Comments on: Avoiding Implications By Silence In A Prosecution History – Part 1 http://patentablydefined.com/2007/04/16/avoiding-an-implication-that-the-only-meritorius-arguments-are-those-presented/ A practical patent prosecution blog published by Michael Kondoudis Wed, 25 Jan 2012 17:32:27 +0000 hourly 1 http://wordpress.org/?v=3.3.1 By: mike http://patentablydefined.com/2007/04/16/avoiding-an-implication-that-the-only-meritorius-arguments-are-those-presented/comment-page-1/#comment-441 mike Tue, 07 Aug 2007 21:07:49 +0000 http://patentablydefined.com/?p=7#comment-441 Thank you for your comment. You are not incorrect, IF you make that unnecessary presumption. I invite you to revisit this post without presuming that claims 11-20 are related to any of claims 1-10. For example, claims 11-20 may depend from a hypothetical independent claim 21. Also, keep in mind that a primary purpose of this paragraph is to politely explain to an Examiner why an Applicant has declined take patentable subject matter, which some Examiners tend to view as a slight. Thank you for your comment. You are not incorrect, IF you make that unnecessary presumption. I invite you to revisit this post without presuming that claims 11-20 are related to any of claims 1-10. For example, claims 11-20 may depend from a hypothetical independent claim 21. Also, keep in mind that a primary purpose of this paragraph is to politely explain to an Examiner why an Applicant has declined take patentable subject matter, which some Examiners tend to view as a slight.

]]> By: Confused scotus http://patentablydefined.com/2007/04/16/avoiding-an-implication-that-the-only-meritorius-arguments-are-those-presented/comment-page-1/#comment-264 Confused scotus Fri, 03 Aug 2007 05:11:51 +0000 http://patentablydefined.com/?p=7#comment-264 Your suggested exemplary paragraph: Applicant acknowledges with appreciation the indication that claims 1-10 are allowed and that claims 11-20 recite patentable subject matter and would be allowable if rewritten in independent form to include all of the features of their respective base claims and any intervening claims. By the present Amendment, Applicant has not amended any of allowed claims 1-10. Accordingly, Applicant respectfully submits that claims 1-10 should remain allowed. Also, Applicant has respectfully maintained claims 11-20 in dependent form because it is believed that their respective base claims patentably define over the cited art, for at least the reasons discussed herein. If claims 1-10 are allowed, and 11-20 are in dependent form (presumably based on any of 1-10), then 11-20 are necessarily also allowed. The Examiner's objection is in error, as there is no need to consider re-writing claims 11-20 into independent form to secure their allowance. For this same reason, it is not clear why the suggested exemplary paragraph is needed. Your suggested exemplary paragraph: Applicant acknowledges with appreciation the indication that claims 1-10 are allowed and that claims 11-20 recite patentable subject matter and would be allowable if rewritten in independent form to include all of the features of their respective base claims and any intervening claims. By the present Amendment, Applicant has not amended any of allowed claims 1-10. Accordingly, Applicant respectfully submits that claims 1-10 should remain allowed. Also, Applicant has respectfully maintained claims 11-20 in dependent form because it is believed that their respective base claims patentably define over the cited art, for at least the reasons discussed herein.

If claims 1-10 are allowed, and 11-20 are in dependent form (presumably based on any of 1-10), then 11-20 are necessarily also allowed. The Examiner’s objection is in error, as there is no need to consider re-writing claims 11-20 into independent form to secure their allowance. For this same reason, it is not clear why the suggested exemplary paragraph is needed.

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