Questions tagged [rejection]
The rejection tag has no usage guidance.
18
questions
0
votes
1
answer
39
views
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 ...
1
vote
2
answers
76
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 ...
- 217
0
votes
1
answer
55
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. ...
2
votes
2
answers
70
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
- 151
0
votes
0
answers
53
views
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 ...
- 633
0
votes
1
answer
33
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 ...
2
votes
3
answers
519
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 ...
- 543
2
votes
3
answers
168
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 ...
- 109
2
votes
1
answer
90
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 ...
- 633
1
vote
2
answers
253
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 ...
- 109
2
votes
2
answers
115
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 ...
- 109
2
votes
3
answers
171
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 "...
0
votes
2
answers
430
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 ...
2
votes
1
answer
56
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 ...
- 633
3
votes
1
answer
105
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 ...
- 633
1
vote
1
answer
27
views
1
vote
1
answer
193
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 ...
1
vote
1
answer
479
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 ...
- 123