One dilemma I often face is whether to combine procedural and substantive arguments. This is not just for 112 rejections.

The examiner does not even come close to making a prima facie case for 102, 103, 112 — no Wands analysis, no Graham/KSR analysis, conclusory inherency rejection, whatever — and I traverse by explaining the problem, hopefully as well as your example 1.

Now, the temptation is to go on and argue, notwithstanding the fact that the burden hasn’t shifted, why there is sufficient enablement or why the reference doesn’t disclose half of the elements of the claim, etc. This easily doubles the cost of the response, but hopefully, it will help cut off another rejection and make it clear to the examiner an appeal is certain.

Often, if I only attack the procedural errors, the examiner will tidy up the rejection and make it final. That way he avoids addressing the substantive arguments unless I file an appeal, at which point he re-opens prosecution to prevent his mess from reaching the BPAI.

One dilemma I often face is whether to combine procedural and substantive arguments. This is not just for 112 rejections.

The examiner does not even come close to making a prima facie case for 102, 103, 112, whatever, and I traverse by explaining the problem, hopefully as well as your example 1.

Now, the temptation is to go on and argue, notwithstanding the fact that the burden hasn’t shifted, why there is sufficient enablement or why the reference doesn’t disclose half of the elements of the claim. Hopefully, it will help cut off another rejection or set the stage for the appeal.

Often, if I only attack the procedural errors, the examiner will tidy up the rejection and make it final. That way he avoids addressing the substantive arguments unless I file an appeal, at which point he re-opens prosecution to prevent his mess from reaching the BPAI.