How can an applicant respond to a prima facie obviousness rejection?
When faced with a prima facie obviousness rejection, an applicant has several options to respond. The MPEP states: “Once the examiner sets out this prima facie case, the burden shifts to the patentee to provide evidence, in the prior art or beyond it, or argument sufficient to rebut the examiner’s evidence.” Applicants can respond by:…
Read MoreHow should applicants respond to new matter objections or rejections?
When responding to new matter objections or rejections, applicants should take the following steps: Review the objection or rejection carefully: Understand whether the issue is with the specification, drawings, or claims. Identify the alleged new matter: Determine which specific content the examiner has identified as new matter. Locate support in the original disclosure: Thoroughly review…
Read MoreHow can an applicant respond to an examiner’s requirement to add a claim for interference?
When an examiner requires an applicant to add a claim for interference under 37 CFR 41.202(c), the applicant must comply but can also express disagreement. The MPEP outlines several ways an applicant can respond: Identify an existing claim in their application or another of their applications that provides a basis for the proposed interference Add…
Read MoreHow can applicants respond to indefiniteness rejections?
Applicants have several options to respond to indefiniteness rejections. The MPEP outlines these approaches: “In response to an examiner’s rejection for indefiniteness, an applicant may resolve the ambiguity by amending the claim, or by providing a persuasive explanation on the record that a person of ordinary skill in the relevant art would not consider the…
Read MoreCan the page limit for a respondent brief be waived in inter partes reexamination?
The MPEP 2675.01 addresses the possibility of waiving the page limit for respondent briefs in inter partes reexamination: “A request for waiver of the page limit for a respondent brief will be decided by a Board member and may be granted when a party can show good cause.” This means that while there is a…
Read MoreIs there a fee associated with filing a respondent brief in inter partes reexamination?
Yes, there is a fee required for filing a respondent brief in inter partes reexamination. The MPEP states: “A fee as set forth in 37 CFR 41.20(b)(2) is required when the respondent brief is filed for the first time in a particular reexamination proceeding, 35 U.S.C. 41(a).” This fee is mandatory and must be paid…
Read MoreWhat is the time limit for filing a respondent brief in an inter partes reexamination?
According to 37 CFR 41.66(b), a respondent must file their brief within one month from the date of service of the appellant’s brief. The MPEP states: “Once an appellant’s brief has been properly filed, any brief must be filed by respondent within one month from the date of service of the appellant’s brief. The time…
Read MoreWhat is the deadline for filing a respondent brief in an inter partes reexamination?
According to MPEP 2675.01, the deadline for filing a respondent brief in an inter partes reexamination is as follows: “The respondent brief is due one month after the date of service of the appellant’s brief. The time for filing a respondent brief may not be extended.” It’s crucial to note that this deadline is strictly…
Read MoreWhat are the required contents of a respondent brief in an inter partes reexamination?
The contents of a respondent brief are outlined in 37 CFR 41.68(b)(1). Key components include: Real Party in Interest statement Related Appeals, Interferences, and trials Status of claims Status of amendments Summary of claimed subject matter Issues to be reviewed on appeal Argument Evidence appendix Related proceedings appendix Certificate of service The MPEP emphasizes: “The…
Read MoreHow can an applicant respond to a rejection based on lack of utility?
When faced with a rejection based on lack of utility, an applicant has several options to respond. According to the MPEP: An applicant can do this using any combination of the following: amendments to the claims, arguments or reasoning, or new evidence submitted in an affidavit or declaration under 37 CFR 1.132, or in a…
Read More