Comments on: Avoiding Implications By Silence In A Prosecution History – Part 2 http://patentablydefined.com/2007/04/22/avoiding-implications-by-silence-in-a-prosecution-history-part-2/ A practical patent prosecution blog published by Michael Kondoudis Mon, 23 Apr 2012 10:38:57 +0000 hourly 1 http://wordpress.org/?v=3.3.2 By: Zinnecker http://patentablydefined.com/2007/04/22/avoiding-implications-by-silence-in-a-prosecution-history-part-2/comment-page-1/#comment-9 Zinnecker Fri, 18 May 2007 13:39:56 +0000 http://patentablydefined.com/?p=9#comment-9 First, thanks for taking the time to broadcast your prosecution tips. Patent prosecution could greatly benefit from aspects of an open source development approach. "Thirdly, it is a polite way to “save the argument”..." I'm questioning what "argument" is really being saved here. It's really a record of "lack of agreement"--there's no hint of any substance of an argument. Why not make an actual (if cursory) argument? If the reason is: "...that avoids offending or directly challenging the Examiner, which is almost always in an Applicant’s best interests," do you have any evidence that this has an affect on prosecution. I've often heard this mantra, that you should avoid offending Examiners, and avoid arguing or pointing out errors when the issue is moot (e.g., because you're amending), but I've never had anyone tell me a real cautionary tale. And if you're really worried, as in the example, of being able to count on defending similar language in future prosecution or litigation, isn't it worth the risk to have an actual argument in the record? Zinnecker First, thanks for taking the time to broadcast your prosecution tips. Patent prosecution could greatly benefit from aspects of an open source development approach.

“Thirdly, it is a polite way to “save the argument”…”

I’m questioning what “argument” is really being saved here. It’s really a record of “lack of agreement”–there’s no hint of any substance of an argument. Why not make an actual (if cursory) argument?

If the reason is:
“…that avoids offending or directly challenging the Examiner, which is almost always in an Applicant’s best interests,” do you have any evidence that this has an affect on prosecution. I’ve often heard this mantra, that you should avoid offending Examiners, and avoid arguing or pointing out errors when the issue is moot (e.g., because you’re amending), but I’ve never had anyone tell me a real cautionary tale. And if you’re really worried, as in the example, of being able to count on defending similar language in future prosecution or litigation, isn’t it worth the risk to have an actual argument in the record?

Zinnecker

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