Questions tagged [rejection]

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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 ...
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Can I answer a 112 rejection of a method claim by making it less specific?

A patent with the composition claims has already issued (11,090,320), and this is a divisional. My main method claim as filed has the steps of (among others)— Original claim -- A method for reducing ...
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Notice to File Corrected Application Papers

I forgot to number my claims and they asked for the required items (below). Required items: Replacement claim(s) commencing on a separate sheet in compliance with 37 CFR 1.75(h) and 1.121 is required. ...
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In practice, which patent rejection reason is the hardest to address and overcome?

I'm referring to: 101: utility (and others) 102: lacking novelty 103: obviousness
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Strategies for OA rejections on CIP when same claims allowed by different examiner for a preceding CON

I have a first OA on a CIP wherein the examiner has rejected claims identical to ones allowed in a related CON (actually granted now), which had a different examiner. (The rejections are not stated to ...
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Repeated rejections with new prior art

I have an application that is now on its fifth rejection. In some cases, I have made amendments in light of the prior art, and in all cases, I have presented rebuttals for arguments raised by the ...
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2 votes
3 answers
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I decided not respond to the office action and abandon application. What to do next?

My patent application was rejected and I decided not to respond to the office action so the case will go abandoned and all potential patent rights will be lost. My patent lawyer who represented me has ...
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Does obtaining a timestamp for a description affect future attempts to patent it?

Allow me to ask four variants of this question in order to try and make clear what the point is. I will also answer each of them according to my current understanding, which I seek to find out if is ...
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Use of phrase "teach or disclose" in OA responses

The question is in context of a response attempting to overcome the examiner's cited prior art in a rejection. If stating that the prior art in question doesn't exactly address the point being used ...
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1 vote
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Does notarizing the document of a description invalidate any future attempt to patent it?

In other words, can it count as prior art that will result in rejecting a patent application submitted after the notarization? Thanks. -- Edit: Due to my poor knowledge of English terminology, this ...
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Application rejected at examination stage - How to proceed best?

Some months ago I filed an application for a national patent (in an EU country). The examiner pointed out several amendments to be made, which I did after I discussed with him twice. Eventually the ...
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How much "mere reversal of parts" can an Examiner validly claim constitutes a 103 rejection

I have a 103 rejection based on one prior patent and In Re Einstein (a mere reversal of the essential working parts of a previously patented device does not constitute invention). However, the "...
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What is a PTOL-2323?

I recently received a final rejection, called the examiner, received guidance for what amendments I should submit to receive an allowance, made them and filed an AFCP request. The response is that ...
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1 answer
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Can the examiner's use of more than 3 prior art refs in combination be successfully argued as "nonobviousness"?

In attorney-authors Pressman & Tuytschaevers' book Patent It Yourself, in the section on responding to rejections based on combinations of multiple prior art refs to achieve the same result (18th ...
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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 ...
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1 answer
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Rejection in US

In reference to the patent: US20100065236 Why was it rejected in the US?
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Final rejection using same references after an unarticulated non-final

For an example scenario you get a rejection on your only claim, claim 1. It is rejected under 103 and the examiner cites paragraph [0010] of reference A and the abstract of reference B. Although ...
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Where/how can I find the reason for a rejected patent?

When searching information regarding a specific patent, I am often interested in information on its status, e.g. has it entered national phase in some countries, was it granted or rejected, etc. I ...
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