This week’s entry is a presentation of several form paragraphs I often suggest to fellow associates in response to not uncommon circumstances that arise in prosecution. These paragraphs are specific and nuanced and reflect lessons learned in litigation.
Requesting the Return of a Form PTO-1449 from an IDS
Initially, Applicant respectfully requests the return of the Form PTO-1449 included with the Information Disclosure Statement IDS) filed January 1, 2007, marked to confirm the Office’s consideration of the information submitted in that IDS. A copy of that form is enclosed herewith for the Office’s convenience.
1. The inclusion of a copy of the Form PTO-1449 is an artifact from the days before electronic filing and is now discretionary.
2. The form listing each item of information being submitted in an IDS is actually named a FORM PTO-1449, not a “Form 1449,” a “PTO Form-1449,” or an “IDS Form.”
3. The paragraph requests confirmation of the Office’s consideration of the submitted infomation, never implying that the information has not been considered.
Amending a Claim Per An Examiner Suggestion
The Office Action objected to claim 1 on formal grounds. In response, Applicant has amended claim 1 in the manner kindly suggested by the Examiner.
Favorable consideration is respectfully requested.
Discussing Claims That Have Been Objected To Only For Depending From Rejected Base Claims
Initially, Applicant acknowledges with appreciation the indications that claims 2-5 and 6-9 recite patentable subject matter and that these claims would be allowable if rewritten in independent form to include all of the features of their respective base claims and all intervening claims. By the present Amendment, Applicant has …
1. Since this objection is really an indication of patentable subject matter, I choose to emphasize this in the prosecution history. In litigation, it is much more attractive to have a prosecution history that discusses patentable subject matter rather than “objected to” claims.
2. It is to be appreciated that this paragraph avoids the use of the term “limitations.” I choose the more palatable term “features.” Again, this practice yields a far more attractive prosecution history.
Requesting More Detail for a Rejection
In the interests of compact prosecution, in the even that the Office maintains the rejection under 35 U.S.C. § 103, Applicant respectfully requests that the Office identify, with the specificity required to establish a prima facie case of obviousness, where in the primary citation to Smith, a disclosure of a widget is alleged to be found.
Alleging/Identifying Support for an Amendment
Applicant submits that support for these amendments can be found in the disclosure as originally filed, and therefore no new matter has been added.
Applicant submits that support for these amendments can be found at least at, for example, paragraph  of the Specification as originally filed, and therefore no new matter has been added.
Memorializing The Substance Of A Personal Interview
Applicant expresses his gratitude to the Examiner for the courtesies extended to Applicant’s undersigned representative during the personal interview conducted on January 1, 2007. During that interview, ______, ______, and ______ were discussed. It was agreed that _______.
In view of the foregoing, Applicant respectfully submits that the independent claims patentably define the present invention over the citations of record. Further, the dependent claims should also be allowable for the same reasons as their respective base claims and further due to the additional features that they recite. Separate and individual consideration of the dependent claims is respectfully requested.
I recommend this conclusory paragraph or one similar at the end of all patentability arguments to avoid attempts by the Examiner to only examine the independent claims. In the absence of such a request, when only the independent claims are discussed, some Examiners only direct their efforts toward the independent claims.
© 2007, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney