How can an applicant traverse an examiner’s assertion of official notice?
To properly traverse an examiner’s assertion of official notice, an applicant must: Specifically point out the supposed errors in the examiner’s action State why the noticed fact is not considered to be common knowledge or well-known in the art According to MPEP 2144.03: “A mere request by the applicant that the examiner provide documentary evidence…
Read MoreWhat happens if an applicant doesn’t traverse or inadequately traverses an official notice?
If an applicant either fails to traverse an examiner’s assertion of official notice or provides an inadequate traversal, the examiner should clearly indicate this in the next Office action. According to MPEP 2144.03: “If applicant does not traverse the examiner’s assertion of official notice or applicant’s traverse is not adequate, the examiner should clearly indicate…
Read MoreCan an applicant traverse a species election requirement in a patent application?
Yes, an applicant can traverse a species election requirement in a patent application. The MPEP 809.02 provides guidance on this process: “If applicant traverses the requirement, applicant should present arguments why election should not be required or why all of the species are allowable.” When traversing a species election requirement: Provide clear arguments explaining why…
Read MoreWhat happens if an applicant traverses a restriction requirement between a process and a product?
If an applicant convincingly traverses a restriction requirement between a process and a product, the burden shifts to the examiner. According to MPEP 806.05(f): “If applicant convincingly traverses the requirement, the burden shifts to the examiner to document a viable alternative process or product, or withdraw the requirement.” This means that if the applicant provides…
Read MoreHow can an applicant respond to a restriction requirement?
When faced with a restriction requirement, an applicant has several options for response, as outlined in MPEP 817. The key elements of a proper response include: Electing an invention to be examined Identifying the claims encompassing the elected invention Optionally, traversing the requirement Form Paragraph 8.21 in the MPEP provides guidance on the applicant’s response…
Read MoreWhat is the relationship between a provisional election and a traversal in a restriction requirement response?
The relationship between a provisional election and a traversal in a restriction requirement response is critical. According to MPEP 818.01(a): “[T]he required provisional election (see MPEP § 818.01(b)) becomes an election without traverse if accompanied by an incomplete traversal of the requirement for restriction.” This means that when responding to a restriction requirement, an applicant…
Read MoreWhat is required when traversing a restriction requirement?
When traversing a restriction requirement, an applicant must still make a provisional election. This is explicitly stated in MPEP 818.01(b): “As noted in the second sentence of 37 CFR 1.143, a provisional election must be made even if the requirement is traversed.” This means that even if you disagree with the restriction requirement and plan…
Read MoreHow does traversing a restriction requirement affect the examination process?
Traversing a restriction requirement can have several effects on the examination process: It preserves the applicant’s right to petition the restriction requirement. It requires the examiner to reconsider and respond to the traversal arguments. It may result in the withdrawal of the restriction requirement if the examiner finds the arguments persuasive. It can potentially lead…
Read MoreCan I traverse an Election of Species requirement?
Yes, you can traverse (challenge) an Election of Species requirement. The MPEP 809.02(a) states: “The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse.” To traverse the requirement: Make your species election as required. Clearly state that your election is made “with traverse.”…
Read MoreHow 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…
Read More