In an earlier post, I discussed the Office’s policy of compact prosecution and how that policy affects patent prosecution in the USPTO. Under that policy, second Office actions are usually made final, except in limited circumstances. Consequently, except for an allowance or an indication of allowable subject matter, a response that triggers a non-final Office…
Category: Practice Suggestions
Appealing Non-Final Rejections In Continuing Applications
A common prosecution strategy when an Office action indicates allowed claims or allowable subject matter is to cancel the rejected subject matter and continue prosecuting that canceled subject matter in a continuing application. This strategy, of course, results in the relatively rapid issuance of a patent. An interesting aspect of this strategy is that some…
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 – Part II
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…
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…