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Author Topic: Office action question  (Read 300 times)

cheesepep

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Office action question
« on: 08-12-18 at 12:53 pm »

I had a final office action which rejected my claims against A, B, and C. I responded and received an advisory action. In the advisory action, there was no mention of the claims still being rejected against the prior art, but instead the examiner said that a certain element of my claims, under the broadest reasonable interpretation, could mean a different element. There was nothing else. This was the first time mentioning the BRI and was not related to any of the prior art.

Did the examiner erred in not mentioning the prior art again? Are the claims still being rejected? Iím going to argue that the examiners BRI is incorrect, but what else should I do?
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Rabid Levity

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Re: Office action question
« Reply #1 on: 08-12-18 at 01:21 pm »

Hello.  Did the Advisory Action have the box checked that your response "does not place application in condition for allowance because: See Continuation Sheet"?

If so, then I would assume the prior rejection remains in place and that this commentary regarding BRI is the examiner's attempt at explaining (not changing) the rejection.

Perhaps others will have better explanation for you.
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cheesepep

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Re: Office action question
« Reply #2 on: 08-13-18 at 12:32 am »

Yes, it was checked, but I fail to see how the BRI relates to any of the prior arts A, B, and C. There is just no relation. Thanks for your explanation.
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abc123

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Re: Office action question
« Reply #3 on: 08-13-18 at 03:46 am »

I am unclear about what happened, but I can imagine a situation in which an examiner issues a final rejection, an applicant files a request for reconsideration, and the examiner, after reading it, realizes that he or she made a mistake, and instead of reopening prosecution, decides to stretch the interpretation of the references like a piece of gum to try to cover the claims, without actually changing the combination of references used to reject them with. If that is the case, someone could ask that the previous office action be revoked for being defective as it did not clearly communicate the rejection and set forth a prima facie case of unpatentability.
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smgsmc

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Re: Office action question
« Reply #4 on: 08-13-18 at 09:09 am »

I had a final office action which rejected my claims against A, B, and C. I responded and received an advisory action. In the advisory action, there was no mention of the claims still being rejected against the prior art, but instead the examiner said that a certain element of my claims, under the broadest reasonable interpretation, could mean a different element. There was nothing else. This was the first time mentioning the BRI and was not related to any of the prior art.

Did the examiner erred in not mentioning the prior art again? Are the claims still being rejected? Iím going to argue that the examiners BRI is incorrect, but what else should I do?
It's worth a shot giving the Examiner a call for clarification.  Formally, they aren't required to give an interview after final.  But some will.
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bluerogue

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Re: Office action question
« Reply #5 on: 08-13-18 at 11:14 am »

The OP is missing a lot of detail.  Did you respond to the ABC rejection? Did you amend?  Is the BRI related to your amendment and new to the advisory action?

Put simply, examiners are given 0 time to respond to an advisory action.  That means you're getting maybe 5 minutes of a quick glance and the fact that you got even some marginally useful response is pretty good. You're not going to get a search of ABC for new elements in an advisory and you're definitely not entitled to get a D to address any new elements.  Examiners do not have the time for that and you're not entitled to another bite of the apple at this point.  I'm guessing the examiner saw the amendment and did a little claim interpretation of the language in light of what the invention actually is and gave you some advice that the amendment doesn't cover what you think it does and you may want to consider revising the language if you file a RCE. 
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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.
 



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