In an earlier post, I discussed reasons why it is preferable to rely on the MPEP for authority during prosecution. An exception to this guideline is when the MPEP is either incorrect or incomplete, which I suggest is the case with newly revised Section 2143.03. So what is an Applicant to do when the MPEP…
Category: Prosecution Strategy
How To Respond To § 103 Obviousness Rejections Using The “All Elements Test” In View Of Recent Revisions To Section 2143.03 Of The Manual Of Patent Examining Procedure
A while back, in response to my post on citing to the Manual of Patent Examining Procedure, reader Michael Hull of Miller, Matthias & Hull asked an astute question (thank you!) about whether section 2143 of the Manual of Patent Examining Procedure (MPEP) would be rewritten in response to KSR. Well, for those who may…
Recent Decisions Of The Board Of Patent Appeals And Interferences Confirm The Need For An Adequate Rational To Modify/Combine
A colleague passed along the results of a brief survey of some recent Board of Patent Appeals and Interferences (BPAI) decisions in which the BPAI cited KSR and reversed claim rejections. Two aspects of the survey results stood out. Of the 43 reversals identified by the search, 24 were based on a failure of the…
Strategic Use Of A Deficient Office Action (Or Why A Call To An Examiner Might Not Be In An Applicant’s Best Interests)
I have received numerous comments, both public and private, about my earlier post on avoiding improper final rejections. In that post, I outlined a practice of advising the Office when a next Office action cannot properly be made final because of a deficiency in a current Office action. In reading some of the comments, it…
Examples Of How To Respond To Written Description Rejections – The Fundamentals Of The Written Description Requirement And Strategies For Responding To Written Description Rejections – Part II
This post is the second in a series addressing written description rejections. The following are basic examples of responses to written description rejections that apply some of the principles I discussed in my earlier post on the fundamentals of the written description requirement. Examples 1. The Office Action Fails to Establish a Prima Facie Case…