How can applicants respond to obviousness rejections based on scientific theory?

How can applicants respond to obviousness rejections based on scientific theory? When faced with obviousness rejections based on scientific theory, applicants have several strategies to respond effectively. The MPEP 2144.02 provides guidance on how examiners use scientific principles, but applicants can counter these arguments in several ways: Challenge the applicability of the theory: Demonstrate that…

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How can an applicant respond to a restriction requirement between process and product claims?

When faced with a restriction requirement between process and product claims under MPEP 806.05(f), an applicant has several options: Elect one group: Choose either the process or product claims for examination. Traverse the requirement: Argue against the distinctness assertion by: Demonstrating that the process cannot make a materially different product. Showing that the product cannot…

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How should an applicant respond to a restriction requirement?

When responding to a restriction requirement, an applicant must elect one invention for examination. If the applicant wishes to challenge the restriction requirement, they must also provide specific reasons for their disagreement. According to MPEP § 818: “In the reply to the restriction requirement, applicant must elect one invention for examination. If applicant wishes to…

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How should applicants respond if information remains unknown after a reasonable inquiry?

If information remains unknown after a reasonable inquiry, applicants can simply state that the requested information is either unknown or not readily available. There’s no need to distinguish between these two scenarios. MPEP 704.12(b) states: “Thus, if information remains unknown after a reasonable inquiry is made, applicant may simply reply that the requested information is…

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What options does an applicant have when responding to formal requirements?

When responding to formal requirements in a patent application, an applicant has two main options: Comply with all formal requirements Specifically traverse each requirement not complied with This is based on 37 CFR 1.111(b) and MPEP 707.07(a), which state: “a complete reply must either comply with all formal requirements or specifically traverse each requirement not…

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How can an applicant respond to a Notice of Omitted Items for missing specification pages?

When an applicant receives a Notice of Omitted Items for missing specification pages, they have several options to respond: Submit the omitted pages: The applicant can submit the missing pages within the given time period. Assert no omission occurred: If the applicant believes no pages were actually omitted, they can state this in writing. Rely…

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