How should a patent examiner respond to an applicant’s reply to a written description rejection?
When an applicant replies to a written description rejection, the patent examiner must follow a specific process as outlined in MPEP 2163.04:
- Review the entire record, including amendments, arguments, and any evidence submitted by the applicant.
- If the whole record now demonstrates that the written description requirement is satisfied, do not repeat the rejection in the next Office action.
- If the record still does not demonstrate adequate written description, repeat the rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1.
- Fully respond to applicant’s rebuttal arguments and properly treat any further showings submitted by the applicant.
- When a rejection is maintained, thoroughly analyze and discuss any relevant affidavits in the next Office action.
The MPEP emphasizes: “When a rejection is maintained, any affidavits relevant to the 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, written description requirement, must be thoroughly analyzed and discussed in the next Office action.”
This process ensures a fair and thorough examination of the written description requirement.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2163.04 - Burden On The Examiner With Regard To The Written Description Requirement,
Patent Law,
Patent Procedure