Questions tagged [office-action]

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Statutory, regulatory, or other bases for the "all elements test" in obviousness responses

I often see 103 rejections rebutted in essentially the same way a 102 rejection is rebutted: by arguing that one reference (usually the primary reference) does not teach the elements the Examiner ...
jordanpg's user avatar
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Office Action Codes

Like for US, CTNF (non-final rejection and CTFR (final rejection) are the office action codes where we can search for 102 and 103 rejection info. I want to check for EP, JP, CN and KR countries office ...
Patent analyst's user avatar
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Meaning of election and elected/nonelected species

I received an Office Action, in which claims are withdraw from further consideration as being drawn to a nonelected species. There was no allowable generic or linking claim. Election was made without ...
picibucor's user avatar
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does the patent examiner not have discretion over how many office actions or examiner's reports after October 3rd, 2022 in Canada?

So does the patent examiner not have discretion over how many office actions or examiner's reports after October 3rd, 2022 or is this table-misleading? https://mcmillan.ca/insights/forecast-2022-...
Coo's user avatar
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If your attorney were to receive high number of non-final office actions, does that mean lack experience or that the claims lack evidence?

Does a high number of non-final office actions indicate a attorney is inexperienced or intentionally dragging on the timeline to make more money? What is "high?" :Is there anyway to figure ...
Coo's user avatar
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(International) Are the non-final office actions publicly searchable or published online or findable using the patent application number?

Are non-final office actions publicly searchable? If an attorney claims they receive an office action, is there anyway the client may find the letter of the non-final action the attorney received by ...
Coo's user avatar
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(International) How does the client independently obtain substantiated expenses/reciepts/ invoices, non-final office-action letters for patents?

How does the client find the substantiated expenses/receipts for international and general patent filing/annuities without asking the patent lawyer for a copy? Does one ask for serial numbers, or what ...
Coo's user avatar
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Does adding an Applicant's other patent as prior art to a nonfinal first office action in response to a claim rejection require a reexamination?

If I add my recently issued patent as an argument or citation for patentability and non-obviousness in support of a claim rejection on a nonfinal first office action, will the patent have to go ...
Helmuth Bachmann's user avatar
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Time for submitting Supplemental Response & update 132 declaration

we previously filed a response to Non-Final Office Action and 132 Declaration with 3-month extension. Then, Examiner called and verbally asked us to modify the 132 Declaration and cancel the withdrawn ...
Patent's user avatar
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Decision on final office action amendment in regards to potential infringements

In order do make a final office action allowable, I need to amend independent claim 1 which broadly claims a rotating device specific to the art which would cover most potential infringements. The ...
Helmuth Bachmann's user avatar
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Does an IDS filed after a non-final election requirement require payment of a fee

An IDS can be filed without requiring a fee if done so a) within 3 months of filing the non-provisional application or b) before the first office action on the merits. I have a (first) non-final ...
Keir Finlow-Bates's user avatar
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In non-final office action, how to handle previously withdrawn claims?

Assume in a response to examiner's restriction requirement, an applicant elected Claim 1 and withdrew Claim 2 without traverse. Then in the following non-final office action, what should the ...
IP_newbie's user avatar
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2 answers
113 views

How can we extract the prosecution history for the reexamination?

The patent US7405443 has been reexamined but the corresponding office action is missing from the file wrapper as well as global dossier.
Promax Legal's user avatar
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How to handle a non-final action with only a provisional non-statutory double patenting rejection

I have two granted patents - parent A and parent B, and each has a continuation: continuation A and continuation B. Parent B has a terminal disclaimer against parent A. Continuation A and and ...
Keir Finlow-Bates's user avatar
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1 answer
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What is the strength of the patent, if during re-examination all the independent claims get cancelled and only dependent claims are confirmed?

In the patent US7292151B2, many claims including independent claims have been cancelled during reexamination. However, patentability of corresponding dependent claims is still confirmed. In this case, ...
Searcher's user avatar
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Limit on number of "Office Actions"/Reasoned Communications at EPO?

There are two scenarios where I am unsure what the practical limit on the number of "Communications"/objections from an EPO examiner would be. However, I do realize that the annuity fee requirement ...
user132162's user avatar
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Resubmitting an application

Is there any valid reason to resubmit an application that's had an unfavorable office action and abandoned several years earlier?
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Office Action response on Design patent application

I received a 1st OA on a design patent application. The examiner advised me to convert screws in the drawing to broken lines and add a broken line statement to the specification indicating I am not ...
Mkayres's user avatar
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Non docketing of response to examiner

This refers to my application no 14/378346 with USPTO. After first RCE, Office action was mailed to me on 06 December, 2017. I sent response on 02 February, 2018 which was duly acknowledged. But the ...
AD Adhikary's user avatar
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How would I go about abandoning this patent application?

I filed a patent application as a pro se inventor and I've now received an office action. Between the filing date of the application and now, I've discovered that I don't have a need for this patent ...
user3216108's user avatar
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In the attempt to address claim rejections, how much assistance can I get from the examiner who handled my application?

I have received a First Office Action, and this is a new experience for me. As many had advised and warned me to expect at this stage, the claims are rejected. The examiner's report appears to ...
Charles's user avatar
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Examiner ignores inventor's arguments against his owns

Here is the situation: my patent has gone through several Office Actions (OA). In the first 2 Office Actions, the examiner found some legitimate arguments against my application and I have amended ...
calocedrus's user avatar
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1 answer
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Are patent term adjustment granted automatically?

My understanding of patent term adjustments are validity extensions that arise from delays within the Patent Office itself is that they are calculated automatically with the possibility of a filer ...
CQM's user avatar
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What does this sentence mean in an Office Action?

I recently received an Office Action from the USPTO containing the following sentence: Upon allowance of a generic claim, applicant will be entitled to consideration of claims to additional species ...
miki's user avatar
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Do I need to sign power of attorney to respond to office action?

We filed a patent. It was approved but then the office action was double patenting. To respond to this office action do I need to sign power of attorney? Is there data base for for patent lawyer ...
Anonymous's user avatar
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1 answer
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How to handle uncooperative examiner

As a pro se inventor, my examiner seems to be taking advantage of my supposed ignorance. He understands neither my invention, his own references, nor the law. To my first amendment, he flagged up ...
Adrian May's user avatar
1 vote
2 answers
47 views

Reply to office action scope

If you reply to office action does the same rules apply as in normal amendments? That is: That is you may not amend beyond the scope of the original body of the specification. You may not amend ...
Deon P Hugo's user avatar
3 votes
1 answer
237 views

Can a device claim be amended to a method after an office action?

Is it possible to amend a product/device claim to a method claim after receiving an office action? Where is this discussed in MPEP?
Deon P Hugo's user avatar