There is an old saying that “sometimes, less is more.” This advice has particular applicability to patent prosecution where, with each word written, an Applicant risks generating argument estoppel. Additionally, each written word presents with it an inherent risk of introducing error. Further, extended arguments are generally more expensive since they require additional time to…
Category: Examples of Responses
A Technique To Assert The Patentable Weight Of A Claim Preamble
Generally, during the examination of an application, an Examiner attempts to rebut the novelty and non-obviousness of a claim by identifying, in the prior art, teachings or suggestions of each feature of that claim. Some claim features, however, may be ignored in this analysis. These features are said not to be entitled to any “patentable…
Comments On And Practical Suggestions For Improved After Final Practice
This post concerns “after final practice,” that is, practice after a final Office Action has been issued in an application. A brief survey of some basics of after final practice follows, along with some suggestions, sample paragraphs, and practice tips for after final practice. Prosecution After Final Rejection is Restricted The most significant aspect of…
Practical Prosecution Strategies In View Of The U.S. Patent Office’s New Continuation Rules – Part I
On August 21, 2007, the long awaited final rules (“the new rules”) substantially changing (limiting) continuation practice and requests for continued examination (RCEs) were published. This post is the first of a series discussing practice suggestions and prosecution strategies to consider in response to these changes. A Summary of the New Rules Regarding Continuation Practice…
Advising Clients About The Duty Of Candor – Part II
I have received several inquiries for the memorandum referenced in the first form paragraph of my earlier post on this subject. The following is the basic text I start with when drafting the memorandum for a new client. 2006 Memorandum Re: The Duty of Disclosure and Materiality Every applicant for a U.S. patent has a…