What are the principles of compact prosecution in relation to enablement rejections?

The principles of compact prosecution are important in the context of enablement rejections. According to MPEP 2164.04:

“In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal.“

Key aspects of compact prosecution in relation to enablement rejections include:

• Providing the best rejection in the first Office action
• Allowing the second Office action to be made final if the applicant fails to provide convincing arguments or evidence
• Noting limitations that would render the claims enabled as early as possible in prosecution
• Always looking for enabled, allowable subject matter and communicating it to the applicant at the earliest point possible

These principles aim to expedite the examination process and help applicants understand and address enablement issues efficiently.

To learn more:

• Compact Prosecution
• Enablement Rejection
• Patent Examination
• Office Action