What should patent examiners include in their request for a rewritten specification?

When requesting a rewritten specification, patent examiners should provide specific details about the sections that need to be rewritten. The MPEP 1302.02 provides guidance in the Examiner Note: “Specific discussion of the sections of the specification or claims required to be rewritten must be set forth.” This means examiners should clearly identify and explain which…

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Who is responsible for notifying the applicant about rejoined claims?

The responsibility for notifying the applicant about rejoined claims lies with the patent examiner. According to MPEP 1302.04(h): “The examiner should notify the applicant of the rejoinder.” This notification is an important step in the patent examination process, as it informs the applicant that previously withdrawn claims are now being considered and allowed. The examiner’s…

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What are the exceptions to partial signatory authority for patent examiners?

Patent examiners with partial signatory authority are generally expected to sign their own actions. However, there are several exceptions that require the signature of a primary examiner, Technology Center Director, or practice specialist. These exceptions include: Allowances Examiner’s amendments Quayle actions Final rejections Withdrawal of final rejection Actions on amendments submitted after final rejection Examiner’s…

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What is the examiner’s responsibility regarding cancelled claims after a Board decision?

After a Board decision in a patent appeal, the examiner has specific responsibilities regarding cancelled claims. According to MPEP 1214.05, “It is necessary for the examiner to notify the appellant of the cancellation of the withdrawn claims.” This means that if claims are considered withdrawn and subsequently cancelled due to the appellant not presenting them…

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What should an examiner do if they disagree with the preliminary CPC classification of a patent application?

If an examiner disagrees with the preliminary CPC classification of a patent application, they should take the following steps: Carefully review the application’s subject matter and claims. Compare the invention with the definitions of the assigned CPC groups and subgroups. Consult the CPC scheme and relevant classification definitions. If necessary, conduct additional searches to determine…

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What should an examiner do if species cannot be conveniently identified?

In cases where species cannot be conveniently identified, the examiner should take specific actions as described in MPEP 809.02(a): “If the species cannot be conveniently identified, the examiner may request the applicant to make a proper identification. Care should be exercised to avoid misleading or confusing language in specifying the species.” This guidance ensures that…

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