Comments on: Some Strategies For Responding To Rejections Based On Inherency http://patentablydefined.com/2008/09/17/some-strategies-for-responding-to-rejections-based-on-inherency/ 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: in-house http://patentablydefined.com/2008/09/17/some-strategies-for-responding-to-rejections-based-on-inherency/comment-page-1/#comment-4792 in-house Wed, 17 Jun 2009 12:29:13 +0000 http://patentablydefined.com/?p=59#comment-4792 Thank you for your thoughts. Thank you for your thoughts.

]]> By: Matsushita http://patentablydefined.com/2008/09/17/some-strategies-for-responding-to-rejections-based-on-inherency/comment-page-1/#comment-4776 Matsushita Sun, 10 May 2009 05:55:29 +0000 http://patentablydefined.com/?p=59#comment-4776 Thank you for providing thoughtful examples contrasting two methodologies of responding to the rejections on the grounds of “Inherent Anticipation”. I have heard somewhere: if the applicant submits only a substantive response to the rejections based on the doctrine of inherency even though he or she believes a failure of the Examiner to articulate a prima facie case, it would be presumed that he or she has conceded that a prima facie case of inherent anticipation was established by the Examiner. In my view, there may be cases where the combination of two methodologies is effective in overcoming the rejections reliant on the doctrine of inherency. Thank you for providing thoughtful examples contrasting two methodologies of responding to the rejections on the grounds of “Inherent Anticipation”. I have heard somewhere: if the applicant submits only a substantive response to the rejections based on the doctrine of inherency even though he or she believes a failure of the Examiner to articulate a prima facie case, it would be presumed that he or she has conceded that a prima facie case of inherent anticipation was established by the Examiner. In my view, there may be cases where the combination of two methodologies is effective in overcoming the rejections reliant on the doctrine of inherency.

]]> By: mike http://patentablydefined.com/2008/09/17/some-strategies-for-responding-to-rejections-based-on-inherency/comment-page-1/#comment-4751 mike Tue, 17 Feb 2009 16:10:26 +0000 http://patentablydefined.com/?p=59#comment-4751 Dear In-house, I try to "cut to the chase". I point out that the Office has conceded that the primary (or secondary) document does not disclose the subject feature. I then point out that the other document does not expressly disclose the subject feature. Next, I expressly state that the Office is using inherency and I traverse, using the legal and logical principles of this post. This way, I avoid writing about issues that do not relate to the crux of the matter - the inherency of the subject feature. Dear In-house,

I try to “cut to the chase”. I point out that the Office has conceded that the primary (or secondary) document does not disclose the subject feature. I then point out that the other document does not expressly disclose the subject feature. Next, I expressly state that the Office is using inherency and I traverse, using the legal and logical principles of this post. This way, I avoid writing about issues that do not relate to the crux of the matter – the inherency of the subject feature.

]]> By: in-house http://patentablydefined.com/2008/09/17/some-strategies-for-responding-to-rejections-based-on-inherency/comment-page-1/#comment-4749 in-house Thu, 12 Feb 2009 16:45:02 +0000 http://patentablydefined.com/?p=59#comment-4749 What's your rebuttal when the rejection is a 103(a) using two references to meet all the claim limitations, except the final one. . . that is inherent? What’s your rebuttal when the rejection is a 103(a) using two references to meet all the claim limitations, except the final one. . . that is inherent?

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