3 votes
Accepted

Meaning of election and elected/nonelected species

Approximately correct - the species elected and not elected are typically sub-classes of categories of inventions to be claimed. This will encompass some embodiments in each grouping but your ...
George White's user avatar
  • 28.8k
3 votes
Accepted

Examiner ignores inventor's arguments against his owns

First, call the supervisor (SPE). His/her name and number should be listed at the end of each office action. Most likely the SPE will set up an interview with you, the examiner and the SPE. During ...
Riccati's user avatar
  • 469
2 votes

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

I do not think the fear expressed in the 2008 blog post came to pass. I can speculate on the motivation for the change in the MPEP but I have not heard any subsequent outcry that 103 rejections that ...
George White's user avatar
  • 28.8k
2 votes
Accepted

Time for submitting Supplemental Response & update 132 declaration

Sounds like the call from the examiner was not a formal action, so there is not formal deadline. If you wait long enough you will get a final action that you do not want so, if it will be more than a ...
George White's user avatar
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2 votes
Accepted

Decision on final office action amendment in regards to potential infringements

Under patent infringement doctrine, there can be infringement under doctrine of equivalents or under means plus function language. The latter is invoked when the claim includes functional language. ...
user7875084's user avatar
2 votes
Accepted

Does an IDS filed after a non-final election requirement require payment of a fee

No fee is required An action on the merits means an action related to patentablity. It excludes formalities like errors in payments or requests to have drawings improved. From a very quick search of ...
George White's user avatar
  • 28.8k
2 votes

Office Action response on Design patent application

The USPTO MPEP manual explains patent office procedure. This section is titled - 37 CFR 1.121 Manner of making amendments in application. You will need to study this and follow the required ...
George White's user avatar
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2 votes
Accepted

Non docketing of response to examiner

Your question should not be when will it be forwarded to the examiner but if there is any bureaucratic reason why it might not be considered as a properly submitted responsive document as of the date ...
George White's user avatar
  • 28.8k
1 vote

If your attorney were to receive high number of non-final office actions, does that mean lack experience or that the claims lack evidence?

At least two questions here - High number of non-final actions? Usually office actions become final very soon in the process. Many non-final actions means the examiner has not succeed in even making a ...
George White's user avatar
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1 vote
Accepted

(International) Are the non-final office actions publicly searchable or published online or findable using the patent application number?

When the register of the patent office is public, yes, you can, but only once the patent application is public. For example, for the USPTO, you just need to browse the files of your case in the Patent ...
the Europeist's user avatar
1 vote

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?

The section of the law (102) on prior art says: (2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under ...
George White's user avatar
  • 28.8k
1 vote

Non docketing of response to examiner

One option is to call to the examiner. Under "Conclusions" of the Office Action you should find examiner's contact number.
Mikk Putk's user avatar
  • 402
1 vote

How would I go about abandoning this patent application?

You need not do anything. It will become abandoned by your failure to reply in time (37 CFR 1.135(a)). Nevertheless, if you want, you can expressly abandon your application by filing a letter to this ...
Maca's user avatar
  • 6,178
1 vote

In non-final office action, how to handle previously withdrawn claims?

Do you want to leave it withdrawn or do you wish to cancel it? Those are two different states and you can chose to leave it withdrawn (easier to bring back after allowance if that is relevant) or ...
George White's user avatar
  • 28.8k
1 vote

How can we extract the prosecution history for the reexamination?

To find a reexamination record look up the patent application for the issued patent in Public PAIR. Under the Continuity tab will be a list of child applications (if any) and reexaminations (if any).
George White's user avatar
  • 28.8k
1 vote

How to handle a non-final action with only a provisional non-statutory double patenting rejection

It is a practice of Patent office to give a provisional Non-statuary double patent rejection based on continuation of prior granted/ pending application, if the claims are not substantially different ...
RishiM's user avatar
  • 1,191
1 vote

What is the strength of the patent, if during re-examination all the independent claims get cancelled and only dependent claims are confirmed?

A claim that survived reexamination is stronger afterwards than it was before. By definition, a claim that was originally dependent is narrower than the original independent claim. After reexamination ...
George White's user avatar
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