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   how to response to this office action?
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   Author  Topic: how to response to this office action?  (Read 2488 times)
wade
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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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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
wade
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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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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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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.
« Last Edit: Jun 23rd, 2007, 10:12am by pentazole » IP Logged
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