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I have a provisional OTDP rejection that references an earlier application I made, explicitly references a third-party reference (no inventors in common with the application), and two other references that aren't referenced properly at that point in the office action.

It looks like the examiner copy-pasted a paragraph from a 103 rejection that turns up further down the office action.

a) is this valid? I was under the impression that OTDP rejections are supposed to be based on references to the inventor's previous work, not other material that's completely independently produced from the application.

b) if I want to traverse do I therefore have to make the same argument twice, once in the OTDP section, and once in the 103 section?

  • That seems to be a mistake. You could call the examiner to clarify, it's probably easier than us guessing what they mean. – DonQuiKong Dec 17 '18 at 15:30
  • Thanks DonQuiKong. Every piece of advice you've ever given me has been of value, and this one is no exception. – Keir Finlow-Bates Dec 17 '18 at 15:31
  • It may be that your second application is shown to be an obvious extension of your first patent, in light of the third party reference. Then the argument might look similar to a 103 rejection, – George White Dec 17 '18 at 21:01
  • Thanks George. I actually had a chat with the examiner a few days ago, and this was exactly the case. – Keir Finlow-Bates Jan 6 at 23:04

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