5
votes
In practice, which patent rejection reason is the hardest to address and overcome?
From my personal experience it is both 101, when the invention is a computer-implemented invention, and 103 rejections.
The 101 rejections are a nightmare for me because with them it is alleged that ...
- 2,274
3
votes
Can I reclaim the broken line features in Design application drawings during prosecution?
MPEP 1504.04 discusses converting originally disclosed broken lines to solid lines:
"an amendment that changes the scope of a design by either converting
originally-disclosed solid line structure ...
3
votes
How to file After Final response and what can be included in it
After reading the comment of George White I found that the AFTER FINAL CONSIDERATION PILOT PROGRAM 2.0 gives the applicant additional flexibility beyond the limitations stated in the CFR 1.116(b) and ...
- 225
2
votes
Accepted
How to file After Final response and what can be included in it
"suggests how to amend claims for allowance"
If examiner suggested any specific amendment(s) to your claim(s) to put your claims in condition of allowance and has asked you to send response to final ...
- 1,072
2
votes
Accepted
How fees are calculated for new claims that replace cancelled claims?
There is a key distinction made between withdrawn claims and canceled claims. A canceled claim subtracts from your total, a withdrawn claim does not. I know of someone - a patent attorney - who ...
- 28.6k
2
votes
Accepted
Just got an extended European search report with Unity rejection, how can I do to argue with the Examiner?
From the above I come to the conclusion that the unity objection is raised because claim 1 was found non-inventive (non compliance with Art. 56) and therefore the single general inventive concept ...
- 1,292
2
votes
Accepted
Is there any page limit or fee for "Applicant Arguments/Remarks Made in an Amendment"?
You can use drawings and there is no page limit or excess page fee. Of course you need to understand that you are trying to convince and less might be more. It may be difficult to get color images ...
- 28.6k
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 ...
- 28.6k
2
votes
In practice, which patent rejection reason is the hardest to address and overcome?
This is a somewhat arbitrary question and I think you’ll get different answers from different people, based on their area of expertise.
In order from most to least difficult to argue against, I would ...
- 121
2
votes
Accepted
After NFOA, can you amend your independent claim by subject matter in your description although not claimed first without substantial repercussions?
This is a US/USPTO answer.
It is not clear what the situation might be. I have seen a case where original independent claims were all canceled and new independent claims submitted and the examiner ...
- 28.6k
1
vote
Is the language '[a] method as claimed in any preceding claim" only available if a special fee is paid for combinations, variation or permutations?
Multiple dependencies are strongly discouraged in the U.S. Here they are thought of as potentially confusing. In much of the world they are thought of as a way to have more compact wording.
In the U.S....
- 28.6k
1
vote
Accepted
Is the language '[a] method as claimed in any preceding claim" only available if a special fee is paid for combinations, variation or permutations?
It will depend upon the jurisdiction the patent application is in. Some jurisdictions let you do that without having to pay any additional fees, for example the EPO, most European jurisdictions, ...
- 2,274
1
vote
Can an applicant cite the prosecution record of a patent reference?
The claims of an application might or might not be patentable. That, itself, has no bearing on the document's value as a reference. Poor claim drafting or overly broad claiming would lead to a ...
- 28.6k
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 ...
- 28.6k
1
vote
is the indirectly claimed priority valid?
Legal basis for priority is article 4 of the Paris Convention. For your example, relevant are the following extracts, Article 4C:
(1) The periods of priority referred to above shall be twelve months ...
- 1,292
1
vote
When an element (uncountable noun) is introduced for the first time, is there any introcductory article needed?
Do I have to add an indefinite article preceeding an uncountable noun?
No. This would be ungrammatical English.
It appears you might have the wrong end of the stick by suggesting that an element ...
- 6,178
1
vote
Can I reclaim the broken line features in Design application drawings during prosecution?
I have seen many office actions on design patent applications that we have worked over years, In most cases examiner will not allow reclaiming a portion of the design by converting broken line to ...
- 57
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).
- 28.6k
1
vote
Election of species for prosecution
You can't have coverage for two "inventions" in one patent. It gets around the fee structure the patent offices operate under. It sounds like they are trying to force you to create a divisional ...
- 207
1
vote
Examiner Cited Disclosed Art 3 Years After the fact in a 102 Rejection
No.
As a starting point, the USPTO is under an obligation to ensure that an application meets the various requirements before a patent is issued. That is, 35 USC § 131 provides:
The Director shall ...
- 6,178
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