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.…

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What 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,…

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How 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,…

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What 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…

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What 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…

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What 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,…

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What 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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