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: Examples of Responses
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…
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…
Improper Final Rejections And Suggestions For Avoiding Them (And Hopefully The Expense Of Having To Request Their Withdrawal)
Patent examination in the U.S. Patent Office is guided by the principles of compact prosecution, which I discussed in some detail in an earlier post here. Under the principles of compact prosecution, second Office actions are typically final. The finality of second Office actions is addressed in section 706.07(a) the Manual of Patent Examining Procedure…
The Fundamentals Of The Written Description Requirement And Strategies For Responding To Written Description Rejections – Part I
This post is the first of a two-part series on the written description requirement. This first installment discusses the fundamentals of the requirement, relevant law, and the proper standards for compliance. The second installment will provide examples of how to more effectively respond to rejections based on the written description requirement. The Basis for the…