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Topic: how to response to this office action? (Read 2404 times) |
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wade
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Posts: 25
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how to response to this office action?
« on: Jun 23rd, 2007, 7:55am » |
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i received an office action, independent claim 1 is rejected under 102, and depdent claims 2-5 are rejected under 103 respectively. there are two ways to response to the OA, i dont know which is better.
(1) argue independent claim 1 is novelty, and dependent claims 2-5 are unobvious respectively.
(2) just argue independent claim 1 is novelty and is unobvious. and then directly get the result that dependent claims 2-5 are unobvious because they are depent from claim 1.
the first way is offen to be seen. but i also know some people like to use the second way to response such OA. but i wonder if the second way can be accepted by the examiner, because in the OA the examiner just rejected the claim 1 under 102, but not 103.
some suggestions?
Thanks for a lot
Wade
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biopico
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Posts: 434
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Re: how to response to this office action?
« Reply #1 on: Jun 23rd, 2007, 8:21am » |
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I would choose based on the nature of rejections (102 and 103) including claim amendments. In other words, I am in biotech area and I don't know your area of practice.
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Registered Patent Agent Specializing in All Areas of Biotechnology
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wade
Newbie
Posts: 25
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Re: how to response to this office action?
« Reply #2 on: Jun 23rd, 2007, 8:30am » |
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biopico,
i am in telecommunication area.
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TataBoxInhibitor
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Posts: 456
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Re: how to response to this office action?
« Reply #3 on: Jun 23rd, 2007, 9:11am » |
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I have seen it done both ways. IMO I would respond under the first method because I feel it is a more thorough response and may head off any 102/103 argument in the second action. At the same time, the second method is more succinct and there is less of a chance in giving up ground unintentionally.
Regards,
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pentazole
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Posts: 197
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Re: how to response to this office action?
« Reply #4 on: Jun 23rd, 2007, 10:08am » |
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The examiner rejected only claim 1 under 102 because well... looks like claims 2-5 are not anticipated. I'd go with method 2 because if you overcome 1 as non anticipated, and don't argue it's obiousness, then you are going to get another rejection citing 1 as obvious. In addition, since claims 2-5 are dependent from 1 (I presume), then their rejection under 103 inherently adds claim 1 under this rejection.
If claims 2 to 5 depend from claim 1, all you really need to do is argue the 102 and 103 rejections for claim 1. Obviously claims 2-5 aren't anticipated by the 102 reference, so if all else fails, you can overcome the 102 rejection by cancelling either 2-5 and incorporating the limitation into claim 1. But now you have to worry about the 103 rejection. As long as you can argue that claim 1 is non obvious (after showing it's not anticipated either) then you'll be ok.
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| « Last Edit: Jun 23rd, 2007, 10:12am by pentazole » |
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