With the advent of computers, digital imaging and cut-and-paste there is an opportunity to make the response to a rejection easier for the patent examiner to consider.
The typical response by a patent attorney will require the examiner to reference the original application, the examiner’s rejection, the cited prior art and the patent attorney’s remarks. However, if you are trying to facilitate a positive result for your client why would you make examination so cumbersome? Here are four suggestions:
1. Corresponding Numbering: Office actions rejections are numbered and follow a generally common format. The outstanding claims; citation of statutory authority for the rejection; point-by-point claim analysis; and conclusion are numbered. Use the corresponding numbering in the response. This confirms no points are missed.
2. Reproduce Examiner’s Findings: The examiner’s rejection is a PDF document usually about 10-20 pages in length. OCR the rejection and cut and paste the examiner’s language verbatim into the response.
3. Reproduce the Cited Prior Art: When the examiner makes a rejection based on an existing patent or published patent application, they will generally cite a specific line, paragraph or drawing. Cut and paste the text or image as cited by the examiner.
4. Side by Side Comparisons: In many cases it is possible to show the prior art drawing next to a drawing from the current patent application. This can be extremely useful for the examiner to see but be aware that (unless it is a design patent application) the examiner is primarily concerned with the patent claims…not the supporting drawings. Technorati Tags: Patent,Practice,Include,Response,advent,computers,rejection,examiner,attorney,reference,client,examination,Here,suggestions,Office,rejections,citation,analysis,conclusion,Reproduce,Findings,length,Prior,paragraph,text,Side,Comparisons,drawings