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how to response to this office action?
Posted by Anonymous . updated on 2/26/2009
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
Answers (8)
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biopico
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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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wade
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biopico,
i am in telecommunication area.
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TataBox...
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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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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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TataBox...
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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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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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biopico
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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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wade
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br>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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