The Intellectual Property Forum

Quote from: john122 on 10-13-11 at 06:31 am

The examiner rejected the sole independent claim of the application as being obvious.
The examiner however failed to make any comments regarding the dependent claims, except for the fact that they are also obvious.
In other words, the examiner simply made a blanket rejection.
Is there a section in the MPEP that indicates that the examiner must examine every claim? 
Or, is there an MPEP section that indicates that the examiner must give specific reasons as to how the claims are non-novel and obvious?
If so, can someone provide me with the MPEP section.

See generally MPEP 707.07 et seq.  In particulart 707.07(d) and (g).  But note that it is often permissible for an examiner to reject a group of claims under a common rejection.

klaviernista:  As best understood by your comment, the examiner can reject independent claim 1 (the sole independent claim) over reference X and reference Y.  Once the examiner has rejected independent claim 1, the examiner can simply make a general statement that dependent claims 2-5 are also obvious, without specifically commenting on how these dependent claims are obvious.

Let me be more clear on my situation.  The situation I'm having is that the opening statement of the examiner's obviousness rejection states that claims 1-5 are obvious over reference X and reference Y.  After the opening statement, the examiner provides his analysis as to how independent claim 1 is obvious over the cited references.  The obviousness rejection of independent claim 1 is thereafter immediately followed by the primary examiner's signature. 

However, no analysis or reasoning is provided for dependent claims 2-5 in the office action.  Is this even permissible according the the examination guidelines in the MPEP?  I find it hard to believe that the examiner can reject the independent claims and disregard the dependent claims. 

If money is not an issue for you right now, I suggest looking for a part-time job or even a non-paid internship to get experience.
I believe getting work experience is more important than getting paid in this current market.
Once you have the experience, I'm sure you can land another job somewhere else.

I understand the many reasons why examiners do not reopen prosecution after issuing a final office action, but can one of those reasons be because the 0.25 count for issuing the final office action is taken away when prosecution is reopened?

Does anyone know if the bio-tech art units are hiring right now?  I have a friend that is looking to enter the USPTO.

Our firm handles many European applications that enter the United States, either from PCT or Paris Convention.

I've noticed a pattern in how the European foreign counsels would like to prosecute their U.S. applications.

One pattern I've noticed is that the European foreign counsel's seem to avoid requesting for a Pre-Appeal Brief for Review of the U.S. application, even though the Examiner's final

rejection is weak and the European foreign counsels have a convincing argument.

Most of the time, the European foreign counsels would rather file a Request for Continued Examination (RCE) instead of a Pre-Appeal Brief for Review of the U.S. application.

Is there are reason why they would take such a course of action?

Also, is it true that when the European Board of Appeals affirms the Examiner's final rejection, the applicant would need to file a European Divisional application to put the invention back into prosecution?

Thanks.

Thats what I thought, you have two months after receiving a final office action to file a response requesting that the examiner issue an advisory action.

But after reading the MPEP, I wasn't able to find the relevant MPEP section that states the two month rule.  The only MPEP sections I found are 706.07(f) and 714.13, which talks about extensions of time and the stautory six month deadline with regard to advisory actions.  Would you by any chance have the MPEP section that discusses the two month advisory action date?


Thanks for the help.

mk1023, thank you for your help.