This post discusses requests to withdraw finality. Under the USPTO’s policy of compact prosecution discussed here, a second office action may properly be made final under most circumstances. The circumstances are set forth in §706.07(a) of the Manual of Patent Examining Procedure (MPEP), entitled Final Rejection, When Proper on Second Action, which states: Under present…
Category: Prosecution Strategy
Examples Of How To Respond To Takings Of Official Notice – Part II
This is the second in a two-part series on Official Notice and strategies for responding to rejections based on Official Notice. In part one of this series, I discussed basic principles of Official Notice. What follow are a few examples of responses to rejections based on the principles discussed in my earlier post. Example 1…
Official Notice And Tips For Responding To Rejections Based On Official Notice
Official Notice is a principle in U.S. patent prosecution that authorizes an Examiner to depart from the general requirement to present evidence on the record to support a claim rejection. By “taking official notice”, an Examiner may rely on facts beyond the record to reject claims. Official Notice is intended for facts that are common…
Some Strategies For Responding To Rejections Based On Inherency
Inherency is a doctrine in U.S. patent prosecution by which unstated or unillustrated aspects of cited art are treated as if they are expressly disclosed. The basis for this doctrine is that some things that will, as a matter of scientific fact, always flow from what is disclosed in art. This doctrine permits the USPTO…
A Few Reasons To Consider Including A Listing Of Claims In Every Response To An Office Action
Listings of claims are required in most, but not all responses to Office actions. This post discusses when they are required and why it may be prudent to include them even when they are not. The Rules The manner of making amendments in a patent application is governed by 37 CFR. 1.121 entitled “Manner of…