Questions tagged [rejection]

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What is the rationale behind inventor-disclosed prior art disqualification

If an inventor publishes ideas on a process in an academic journal but then market forces shift making the idea commercially viable, why disqualify (that inventor) from patent protection on that ...
Oika Rich's user avatar
1 vote
1 answer
32 views

Regarding legal options after rejection due to "undue search burden"

As explained here by George, In the U.S. a restriction requirement can be issued by an examiner who feels a claim set covers more than one invention. One criteria they can use is to assert “ undue ...
Sazzad Hissain Khan's user avatar
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1 answer
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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
1 vote
2 answers
78 views

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 ...
Lou's user avatar
  • 217
0 votes
1 answer
84 views

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. ...
CrossSlide's user avatar
2 votes
2 answers
85 views

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
J Li's user avatar
  • 151
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0 answers
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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 ...
Charles's user avatar
  • 633
0 votes
1 answer
38 views

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 ...
Keir Finlow-Bates's user avatar
2 votes
3 answers
628 views

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 ...
Pol99's user avatar
  • 543
2 votes
3 answers
188 views

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 ...
Helen's user avatar
  • 109
2 votes
1 answer
128 views

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 ...
Charles's user avatar
  • 633
1 vote
2 answers
274 views

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 ...
Helen's user avatar
  • 109
2 votes
2 answers
116 views

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 ...
Helen's user avatar
  • 109
2 votes
3 answers
193 views

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 "...
Keir Finlow-Bates's user avatar
0 votes
2 answers
453 views

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 ...
Keir Finlow-Bates's user avatar
2 votes
1 answer
67 views

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 ...
Charles's user avatar
  • 633
3 votes
1 answer
106 views

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
  • 633
1 vote
1 answer
28 views

Rejection in US

In reference to the patent: US20100065236 Why was it rejected in the US?
user19185's user avatar
1 vote
1 answer
198 views

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 ...
projectgonewrong's user avatar
1 vote
1 answer
519 views

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 ...
DylanM's user avatar
  • 123