Legal Writing Blog

 https://www.theheavypencil.com/ 

Calculating Extension Fee regarding F.R.

For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, any extension fee would then be calculated from the end of the 3-month period. If the examiner, however, does not mail an advisory action until after the end of 3 months, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension fee may be calculated from that date. In the event that a first reply is not filed within 2 months of the mailing date of the final rejection, any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the end of the reply period set in the final rejection.

https://www.bitlaw.com/source/mpep/714_13.html

If filed Amendment is not signed

"Ratification of Previously Unsigned Document" needs to be filed, under MPEP 714.01(a). 

Examiner's arbitrary and capricious

The Examiner’s failure to specifically identify which features of [...] are alleged to disclose each element of Applicant’s presently claimed invention renders the Office Action “arbitrary and capricious”, and therefore invalid, under the Administrative Procedure Act (5 U.S.C. § 706), a standard to which all Actions by the USPTO must adhere (see Dickenson v. Zurko, 527 U.S. 150 (1999)). Without proper guidance as to which “element” of the claim is believed to correspond with which section cited in the rejection, Applicant is forced to guess which features in the cited art the Examiner believed to disclose each of the claimed features.  Because reasons for the rejection were not presented in the Office Action and Applicant cannot reasonably determine which feature of [...]

 is believed to correspond with which feature recited in the claims, it is respectfully submitted that the rejection is improper and must be withdrawn.

[MPEP 2144.05] Obviousness of ranges

https://mpep.uspto.gov/RDMS/MPEP/print?version=E8r8&href=d0e211255.html

https://www.oblon.com/news/not-always-obvious-to-optimize-claimed-variables

A recent BPAI decision in Ex parte Collison (Appeal 2010-002734, in application serial no. 11/284,178, decision issued February 29, 2012) illustrates deficiencies to look for when evaluating an obviousness rejection supported by an optimization rational.

Non-Technical Description of the Patented Invention

All non-technical descriptions of the patents herein are presented to give a general background of those inventions. Such statements are not intended to be used, nor should be used, for purposes of patent claim interpretation. [Complainants] present these statements subject to, and without waiver of, their right to argue that claim terms should be construed in a particular way, as contemplated by claim interpretation jurisprudence and the relevant evidence.

[103] Graham factors & KSR

MPEP 2141

Graham (1966)

• (A) Determining the scope and content of the prior art;
• (B) Ascertaining the differences between the claimed invention and the prior art; and
• (C) Resolving the level of ordinary skill in the pertinent art.

Once the Graham factual inquiries are resolved, Office personnel must determine whether the claimed invention would have been obvious to one of ordinary skill in the art.

KSR
The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that “‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:

• (A) Combining prior art elements according to known methods to yield predictable results;
• (B) Simple substitution of one known element for another to obtain predictable results;
• (C) Use of known technique to improve similar devices (methods, or products) in the same way;
• (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
• (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
• (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
• (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.