A common prosecution strategy when an Office action indicates allowed claims or allowable subject matter is to cancel the rejected subject matter and continue prosecuting that canceled subject matter in a continuing application. This strategy, of course, results in the relatively rapid issuance of a patent. An interesting aspect of this strategy is that some…
Month: June 2008
How To Identify Support For A Claim Amendment And When To Do So
This post discusses strategic considerations concerning identifications of support for claim amendments. New Matter is Prohibited Section 706.03(o) of the Manual of Patent Examining Procedure (MPEP) addresses rejections based on new matter (matter not supported by the disclosure at the time of filing). This section of the MPEP, citing 35 U.S.C. § 132, articulates the…