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)…
Category: §112 Rejections
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…
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…
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…
The U.S. Patent Office’s Examiner Training Materials For 35 U.S.C. §112 – A Useful Summary
The U.S. Patent Office publishes many of its examination guidelines and Examiner training materials on its official website. In my opinion, one of the more useful of these Examiner training materials is an examination guide for rejections under 35 U.S.C. §112 which can be found here. The stated purpose of this training document is to…