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Patent Law

: Patently Obvious

Sample Responses to Office Actions

By Dennis Crouch, Esq.

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Attorneys have always learned by following the example of their elders and peers. With that in-mind, I would like to post several exemplary responses to patent office rejections and objections. Please forward to dcrouch@patentlyo.com with a very brief explanation of the topic/technology. If you like, you may scrub the response for anonymity. Likewise, feel free to submit good ones you have found that were written by others. Potential topics:

  • Arguing that combination is nonobvious (under KSR);
  • Arguing secondary factors of nonobviousness;
  • Swearing behind prior art;
  • Arguing that prior art is not enabled;
  • Disputing date of prior art;
  • Arguing that prior art is not inherently anticipatory;
  • Responding to obviousness type double patenting;
  • Arguing utility;
  • Responding to restriction;
  • Arguing against indefiniteness;
  • Arguing amendment is not new matter;
  • Etc.

Full post as published by Patently Obvious on October 06, 2008 (boomark / email).

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