As regular readers of this blog know, I advocate using the USPTO’s Manual of Patent Examining Procedure (MPEP) as primary authority during prosecution. This is by no means a per se rule, however. There are times when I find judicial authority more effective. One situation where judicial decisions have been particularly helpful has been when…
Category: Examples of Responses
Examples Of Responses To Enablement Rejections
Based on the number of requests I have received since my first post on enablement, I know that many of you have been waiting for this follow up. The following are a few examples employing the principles I discussed in my earlier post. A word of caution, as is the case with most technical (non-art)…
How To Respond To Enablement Rejections – Part I
This post is the first of a two-part series on the enablement requirement. This first installment discusses some of the fundamentals of the requirement, relevant law, and the standards for compliance. The second installment will provide examples of responses to enablement rejections. The Basis for the Enablement Requirement The enablement requirement arises from the first…
Requesting Withdrawal Of The Finality Of An Office Action
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…
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…