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Topic: how to response to this office action? (Read 2828 times) |
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TataBoxInhibitor
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Re: how to response to this office action?
« Reply #5 on: Jun 23rd, 2007, 12:17pm » |
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I think that is what the OP would essentially be doing. Address claim 1, and in addressing claims 2 - 5 for 103, that would include claim 1 as well, because, well, they depend from 1. So, method 1 would address this concern. I do not think addressing claim 1 only, for novelty and non-obvious is a good idea, as I indicated above.
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wade
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Re: how to response to this office action?
« Reply #6 on: Jun 24th, 2007, 8:50am » |
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Thank you all for your answers. Before discussion, let's make the OA more detailed. Claim 1 is rejected under 102(e) by reference A; Claim 2 (dependent from claim 1) is rejected under 103(a) over reference A in view of reference B. Claim 3 (dependent from claim 1) is rejected under 103(a) over reference A in view of reference C. if we choose the second way to response to the OA, how to argue that claim 1 is unobvious? Should we assert the following four? (1) claim 1 is unobvious over reference A; (2) claim 1 is unobvious over reference A in view of B; (3) claim 1 is unobvious over reference A in view of C; (4) claim 1 is unobvious over reference A, B in view of C? or just the forth is ok? Thanks Wade
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« Last Edit: Jun 24th, 2007, 8:54am by wade » |
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biopico
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Re: how to response to this office action?
« Reply #7 on: Jun 24th, 2007, 9:07am » |
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First: Are you sure the examiner is correct? Does reference A convey the exact information as stated in the Office Action?
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Registered Patent Agent Specializing in All Areas of Biotechnology
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wade
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Re: how to response to this office action?
« Reply #8 on: Jun 24th, 2007, 9:13am » |
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hello biopico yes, the examiner is correct, and reference A convey the exact information. Beside this, how do we to respons if the examiner is incorrect and the reference A doesn't convey the exact information?
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