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Patent Practice Tip: Include Everything in the Res

Smith & Hopen PA

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.

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