Employing the USPTO’s Coverage of Compact Prosecution Towards It

The Policy of “Compact” Prosecution

Patent prosecution right before the U.S. Patent Workplace is conducted under a policy of “compact” prosecution. Less than this coverage, prosecution of an application is normally developed to conclude with the Examiner’s thing to consider of 1 response to one non-final Office Action. That is, a next Workplace Action, responding to an applicant’s reply to a 1st Place of work Action, is normally ultimate, unless an applicant areas the application in condition for allowance. Mentioned ambitions of this policy of “compact” prosecution are to present candidates with prompt and entire evaluation of their apps. To attain these goals, the coverage imposes distinct obligations on Examiners. As the Workplace by itself has stated, “[t]he Office’s plan of compact prosecution demands that the two examiners and candidates deliver the info vital to increase and take care of the challenges similar to patentability expeditiously.” (Official Gazette of 07 November 2003).

The Office’s Obligations

A initially Office environment Motion on the deserves should ordinarily determine each and every issue that stands amongst the applicant and allowance of the software. (See The Handbook of Patent Analyzing Method (MPEP) §707.07(g)). And, the Place of work Action ought to do so by presenting the very best situation versus patentability. (See, for example, MPEP §§2164.04 and 2106II). In idea, this presents an applicant with the prospect to reply to each individual problem so that, if every single difficulty is efficiently rebutted or in any other case dealt with, the application would be condition for allowance. Conversely, if the applicant not thriving, the application should be in ailment for attraction. A failure to deliver the greatest circumstance this sort of that a new rejection, new art, and/or expanded arguments are expected in a subsequent Workplace Motion usually precludes the finality of that subsequent Place of work Action. (See MPEP §706.07(a)). In apply, this helps prevent piecemeal prosecution of the application, which the MPEP instructs should really be averted. (MPEP §707.07(g)).

The obligations imposed on Examiners by the U.S. Patent Office’s plan of compact prosecution have essential practical ramifications. For starters, in each individual Office environment Action, each assert ought to be reviewed for compliance with each and every statutory necessity for patentability, even if a single or much more promises are uncovered to be deficient with respect to some statutory necessity. On top of that, anytime practicable, an Office Motion need to show how rejections could be get over and how objections and informalities may possibly be fixed. The rationale is that a failure to abide by this tactic can lead to unwanted delays in the prosecution of the application. (See, for example, MPEP §2106II).

Examples of Utilizing the Plan of Compact Prosecution

These obligations can be of strategic worth in prosecution and should really not be discounted. The subsequent are just a couple examples of means an applicant may perhaps use them.

1. If the Business office action simply asserts that statements are not enabled

Accordingly, favorable reconsideration and withdrawal of the rejection of unbiased assert 1 under the 1st paragraph of 35 U.S.C. §112 are respectfully asked for.

In the function that the Business office maintains this enablement rejection, Applicant respectfully requests, in accordance with the rules of compact prosecution, that the Business office articulate, a single the report and with specificity sufficient to support a prima facie circumstance of non-enablement, the factual foundation on which it is alleged that it would be past the amount of ordinary talent in the widget art to make and use the claimed invention without having undue experimentation. (MPEP §2164.01).

2. If the Office motion applies the cited art only in opposition to the impartial promises

Last of all, it is pointed out that the Office environment Motion fails to exclusively deal with even the expressly recited functions of the pending dependent statements. Underneath the Office’s coverage of compact prosecution, just about every claim ought to be reviewed for compliance with each and every statutory requirement for patentability in the first critique of the application, even if a single or extra promises are observed to be deficient with respect to some statutory requirement. (MPEP §707.07(g)). It is submitted that the current application is not adequately casual, does not present an undue multiplicity of promises, or exhibit a misjoinder of innovations, so as to fairly preclude a total action on the merits. Therefore, it is submitted that the Office’s failure constitutes a failure to expeditiously offer the details important to resolve issues connected to patentability that stops the Applicant from, for example, presenting correct patentability arguments and/or rebuttal proof. (See The Formal Gazette Notice of November 7, 2003). Also, it is submitted that the Office’s failure needlessly encourages piecemeal prosecution, which is to be avoided as much as probable. (MPEP §707.07(g)). Appropriately, in the event that the Office environment maintains the rejection of any of the dependent claims, Applicant respectfully requests, in the interests of compact prosecution, that the Business use artwork towards just about every characteristic of each individual rejected dependent assert, on the document, and with specificity adequate to aid a prima facie situation of anticipation (or obviousness).

3. If the Workplace action tends to make only a common allegation that a claim feature is taught (or prompt) by cited art

An Place of work Action contends that a claim aspect is taught by a patent to Smith but does not discover in which/how the characteristic is taught. And, a careful evaluation of that patent, on the other hand, reveals no this kind of instructing. An acceptable reaction might be:

The Business office Motion contends that Smith teaches the aforementioned feature of “a widget” of impartial assert 1. (Office environment Motion, page 3). This rivalry is respectfully traversed.

Initially, it is famous that the Business office has not recognized the place in Smith an alleged anticipatory educating is to be found. Furthermore, FIG. 1 of Smith, cited by the Business office Action in assistance of the contentions that Smith teaches the features that quickly precede and adhere to the subject aspect of “a widget,” as nicely as the published disclosure linked with that FIG. 1, are silent as to the matter function. Continue to additional, Applicant has thoroughly reviewed the remainder of patent to Smith, and finds no educating of “a widget.” As a result, for at the very least this motive, Smith are unable to anticipate impartial assert 1.

Accordingly, favorable reconsideration and withdrawal of the rejection of impartial assert 1 underneath 35 U.S.C. §102 are respectfully asked for.

In the occasion that the Business maintains the rejection of impartial assert 1 underneath 35 U.S.C. §102, Applicant respectfully requests that the Business, in the interests of compact prosecution, recognize on the report and with specificity adequate to help a prima facie situation of anticipation, wherever in the Smith patent the issue attribute of unbiased assert 1 of “a widget” is alleged to be taught.