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…
Category: Examples of Responses
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…
Some Comments On RCEs, Submissions, And RCE Strategy
RCE Basics A Request for Continued Examination (RCE) is a request to continue prosecution of an application. Essentially, RCE practice can be thought of as a mechanism to buy another full examination of an application without having to refile it. An application in which an RCE is filed stays with the same Examiner and keeps…
How To Identify Support For A Claim Amendment And When To Do So
This post discusses strategic considerations concerning identifications of support for claim amendments. New Matter is Prohibited Section 706.03(o) of the Manual of Patent Examining Procedure (MPEP) addresses rejections based on new matter (matter not supported by the disclosure at the time of filing). This section of the MPEP, citing 35 U.S.C. § 132, articulates the…