3

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 exists no more for the depended claims 2-11 (I assume they were dependent to 1). Same goes for (independent?) claim 12, which is considered to lack inventive step, ...


3

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 the invention is nothing more than an abstract idea, yet most of the times that makes no sense from my point of view because the invention is a computer-...


3

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 to broken lines or converting originally-disclosed broken line structure to solid lines would not introduce new matter because such amendment would not ...


3

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 these include: The amendment places the application in condition for allowance by canceling claims or complying with formal requirement(s) in response to ...


2

"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 rejection then you should be a relieved man, you are almost through. If that "how to" was just academic, then all the niceties were of 'Null' utility to you. ...


2

There is a key distinction made between withdrawn claims and canceled claims. A canceled claim subtracts from your total, a withdrawn claim does not.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 withdrew 20 claims, added twenty claims and then got a notice of fees due on having 40 total claims on file. It is unfix-able by any action after the amendment was ...


2

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 through the system. You may be able to get an interview over Webex or whatever the approved system the USPTO is currently using at which time you can hold up your ...


2

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 week or so to get the filing done, call the examiner and let them know when you plan to file.


2

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 declared a "restriction by original presentation" or similar words. A restriction is properly issued when the initial claim set contains claims to more ...


1

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. you can get the same claims by repetition. Just saying "variations are possible" will not get you anything, the specific variation must be spelled ...


1

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, Brazil, etc. Some others let you do that to some extent, like China, where you can have multiple dependent claims but a multiple dependent claim cannot depend upon a ...


1

Turned out quoting the file wrapper of the reference patent application didn't hurt. I can't say if it actually helped as the enablement argument was just a blip in an 18 page response. This is how it read-- In the Sabatini prosecution, the first Office Action contained the following assertion on page 12, third paragraph — ...the skilled artisan would be ...


1

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 rejection but not be any indication that the specification did not contain useful information. A journal article can be prior art - it has no claims. Prior art ...


1

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 rank them as §101, §112, §102, §103. In order from most to least attorney time spent overcoming them, I would rank them as §103, §112, §102, §101. I'm not a ...


1

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 cancel it (if you are not going to pursue in this application why not keep things cleaner and get rid of it).


1

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 for patents and utility models, and six months for industrial designs and trademarks. (2) These periods shall start from the date of filing of the first ...


1

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 introduced for the first time is generally preceded by the indefinite article. In fact, the problem arises in the other direction: when the first use is ...


1

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 solid line.


1

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 application. I would do a Google search of divisional patents to find strategies to get around this.


1

The documents are submitted by the applicants in writing or pdf. Getting text from them requires OCR, there's no way around that.


1

As to your second point: https://www.epo.org/law-practice/legal-texts/html/guidelines/e/h_ii_6_2.htm If amended claims are directed to subject-matter which has not been searched because it only appeared in the description (and the search division did not find it appropriate to extend the search to this subject-matter, see B‑III, 3.5) and which does not ...


1

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 cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a ...


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