How should examiners respond to applicant’s arguments regarding well-understood, routine, conventional activity?
When responding to an applicant’s arguments regarding well-understood, routine, conventional activity, examiners should follow these guidelines: If the applicant challenges the examiner’s position that an additional element is well-understood, routine, conventional activity, the examiner should reevaluate whether it is readily apparent that the element is widely prevalent or in common use in the relevant industry.…
Read MoreWhat should examiners do if an applicant argues that an additional element is not well-understood, routine, conventional activity?
When an applicant argues that an additional element is not well-understood, routine, conventional activity, examiners should take the following steps: Reevaluate whether it is readily apparent that the additional element is well-understood, routine, conventional activity in the relevant field. If it is not readily apparent, provide additional evidence to support the examiner’s position, as outlined…
Read MoreHow should examiners evaluate applicant’s arguments regarding the improvement to computer functionality or other technology?
When evaluating applicant’s arguments regarding improvements to computer functionality or other technology, examiners should: Carefully consider the applicant’s arguments and any supporting evidence provided. Determine whether the claimed invention provides a technical improvement that is reflected in the specification. Assess whether the improvement is to the functioning of a computer itself or to any other…
Read MoreHow does responding to applicant’s arguments with new reference portions affect the grounds of rejection?
Responding to an applicant’s arguments by citing different portions of a reference submitted by the applicant does not necessarily constitute a new ground of rejection. According to MPEP 1207.03(a): “If an applicant submits a new reference to argue, for example, that the prior art ‘teaches away’ from the claimed invention (see MPEP § 2145), and…
Read MoreWhat form paragraphs should examiners use when responding to applicant’s arguments?
Examiners have several form paragraphs available to respond to applicant’s arguments, depending on the situation. According to MPEP 707.07(f): Form paragraphs 7.37 through 7.37.13 may be used where applicant’s arguments are not persuasive. Form paragraphs 7.38 through 7.38.02 may be used where applicant’s arguments are moot or persuasive. These form paragraphs cover various scenarios, such…
Read MoreWhat is the examiner’s responsibility when applicant traverses a rejection?
When an applicant traverses a rejection, the examiner has a responsibility to address the applicant’s arguments. As stated in MPEP 707.07(f): Where the applicant traverses any rejection, the examiner should, if they repeat the rejection, take note of the applicant’s argument and answer the substance of it. This means the examiner must carefully consider the…
Read MoreHow should an examiner respond to applicant’s arguments in patent prosecution?
According to MPEP 707.07(f), examiners should respond to applicant’s arguments as follows: If repeating a rejection, take note of the applicant’s argument and answer the substance of it. If withdrawing a rejection due to persuasive arguments, provide reasons for the withdrawal by referring specifically to the applicant’s remarks. If making a new ground of rejection…
Read MoreHow should examiners address asserted advantages claimed by applicants?
Examiners should carefully consider and address any asserted advantages claimed by applicants. According to MPEP 707.07(f): If it is the examiner’s considered opinion that the asserted advantages are not sufficient to overcome the rejection(s) of record, they should state the reasons for their position in the record, preferably in the action following the assertion or…
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