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 an examiner do if an applicant adequately traverses an official notice?
If an applicant adequately traverses an examiner’s assertion of official notice, the examiner must take specific actions in the next Office action. According to MPEP 2144.03: “If applicant adequately traverses the examiner’s assertion of official notice, the examiner must provide documentary evidence in the next Office action if the rejection is to be maintained.” Additionally,…
Read MoreHow should examiners respond to arguments about claim specificity and non-preemption?
When applicants argue that their claims are specific and do not preempt all applications of an exception, examiners should reconsider their eligibility analysis. The MPEP 2106.07(b) provides guidance: “If applicant argues that the claim is specific and does not preempt all applications of the exception, the examiner should reconsider Step 2A of the eligibility analysis,…
Read MoreWhat should examiners do if an applicant challenges a well-known, routine, conventional activity assertion?
When an applicant challenges an examiner’s assertion that certain elements are well-known, routine, conventional activities, the examiner must carefully reevaluate their position. The MPEP 2106.07(b) provides specific guidance: “If applicant responds to an examiner’s assertion that something is well-known, routine, conventional activity with a specific argument or evidence that the additional elements in a claim…
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 does an examiner handle a submission not fully responsive to a non-final Office action?
An examiner has two main options when handling a submission not fully responsive to a non-final Office action, as outlined in MPEP 2666.30: Option A: Waive minor deficiencies and act on the submission. Option B: Treat it as an incomplete response and notify the patent owner to complete the response within a set period. The…
Read MoreHow does an examiner handle a not fully responsive submission in patent reexamination?
When an examiner encounters a not fully responsive submission in a patent reexamination, they have several options: Waive the deficiencies if they are not serious and act on the submission Accept the amendment as a response but notify the patent owner that the omission must be supplied Notify the patent owner that the response must…
Read MoreWhat happens to the application file and petition after an examiner’s formal statement?
After an examiner provides a formal statement in response to a USPTO petition, the following steps occur: A copy of the formal statement is mailed to the petitioner by the examiner (unless otherwise directed). The original copy of the examiner’s statement is attached to the application file and petition. The complete package (application file, petition,…
Read MoreHow does an examiner respond to amendments filed after an appeal has been taken?
Examiners are required to respond to all amendments filed after an appeal has been taken and prior to the transfer of jurisdiction to the Board. The response process is outlined in MPEP 1206: If the examiner denies entry of an amendment, they should use form PTOL-303 (“Advisory Action Before the Filing of an Appeal Brief”)…
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…
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