How should patent examiners approach claim rejections?
According to MPEP 707.07(g), patent examiners should approach claim rejections comprehensively. The MPEP states, “The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references.” This means that examiners should:
- Address all valid grounds for rejection in a single office action
- Apply rejections for issues such as lack of proper disclosure, lack of enablement, and indefiniteness where appropriate
- Provide full development of reasons for non-prior art rejections, rather than mere conclusions
- Avoid excessive citation of references while still covering all valid grounds
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