How should examiners handle rejections based on prior art?
How should examiners handle rejections based on prior art?
Examiners must carefully consider prior art when making rejections. According to MPEP 706:
‘The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity.’
To handle rejections based on prior art effectively, examiners should:
- Clearly explain the basis for the rejection, citing specific sections of the prior art.
- Provide a detailed mapping of the prior art elements to the claim limitations.
- Consider the applicant’s arguments and evidence carefully.
- Be prepared to withdraw or modify rejections if the applicant’s response overcomes the rejection.
Examiners must also ensure that the rejection is supported by a preponderance of evidence and that the reasoning is clearly articulated to allow the applicant to respond effectively.
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