Patents & Trademarks Questions for rejection
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In Trademark - updated on 2/26/2009
I need to draft a response to office action for a mark that was rejected as merely descriptive. Based on the rejection, it appears that the examining attorney misunderstands the nature of my client... Read More  Answer |
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In Trademark - updated on 2/26/2009
I have a trademark application which has been rejected as merely descriptive. The history of this mark: Mark was previously registered and went abandoned. Re-filed an application and in th... Read More Answer |
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In Patent Process - updated on 2/26/2009
MPEP 706.07（a）says "Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new gr... Read More Answer |
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In Patent Process - updated on 2/26/2009
I've seen it now for the second time that an examiner rejects an application over some prior art under 103(a) and then makes a double-patenting rejection over the same art. It seems to me that this is i... Read More Answer |
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In Patent Process - updated on 2/26/2009
Has anyone ever filed a terminal disclaimer to overcome a provisional double patenting rejection with 2 pending provisional applications? The cited application looks like it will issue before ours but ... Read More Answer |
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In Patent Process - updated on 2/26/2009
Any downside to using CREATE 103(c) (common ownership) to overcome 103(a) rejection rather than overcoming the rejection based on arguments? from a litigation standpoint? Also, if I do use t... Read More Answer |
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In Patent Process - updated on 2/26/2009
After receiving a final rejection, I met with my examiner and we agreed that in each of two dependent claims which had Markush groups there was one of the group elements that overcame prior art. My position ... Read More Answer |
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In Patent Process - updated on 2/26/2009
Hi. Has anyone recently seen an increase in 112 rejections for omitted essential elements/steps? People here haven't seen one in over 5 yrs. Now we've gotten ~10 in the last 6 mon... Read More Answer |
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In Patent Process - updated on 2/26/2009
I have a situation where application A was filed in 2004, published late 2005, and abandoned on 2007. Application B was filed on early 2005, and is under 1st office action. All claims in app B is... Read More Answer |
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In Patent Process - updated on 2/26/2009
In a non-final office action, the examiner cites one reference in a 103 rejection and uses "common knowledge" to supply a missing element/limitation. The element is an integrated spring for b... Read More Answer |
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In Patent Process - updated on 2/26/2009
In a first office action, claim 4 (among a few other claims) received no art rejections (i.e., no 102 nor 103 rejections) but in the remarks at the end of the office action, the Examiner: &... Read More Answer |
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In Patent Process - updated on 2/26/2009
Quick ?, I have a rejection under 102(a) based on reference X and a 103(a) rejection based on reference Y in view of X. I know I can get over the 102(a) rejection by directing the Examiner to the... Read More Answer |
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In Patent Process - updated on 2/26/2009
Hi, An application got final rejection from a new set of references. The examiner wrote that the amendment to the first OA necessitates a changing ground for rejection. In fact, the ... Read More Answer |
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In Patent Process - updated on 2/26/2009
Does anyone have any suggested language for holding a plurality of obviousness-type double patenting rejections in abeyance until at least some of the smoke clears in the subject applications and it is bette... Read More Answer |
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In Patent Process - updated on 2/26/2009
I just received a double patenting rejection with NO inventor in common? How can this be?! Am i missing something here? I thought that was a requirement. Also rejection is provision... Read More Answer |
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In Patent Process - updated on 2/26/2009
The CIP was filed over one year after publication of the commonly owned parent. Every claim in the CIP contains new matter. My understanding is that all the claims in the CIP are given their actu... Read More Answer |
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In Patent Process - updated on 2/26/2009
Got a 101 rejection for claiming "A computer program product comprising a computer usable medium including computer usable program code for [method], the computer program product including: comput... Read More Answer |
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In Patent Process - updated on 2/26/2009
Here's the situation: After final rejection, into extension, let's say in the 5th month. I don't care to respond and will either let it go abandoned or expressly abandon it. I would like... Read More Answer |
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In Patent Process - updated on 2/26/2009
Could someone please concisely tell me the options available following a non-final rejection and the likely/standard timescales involved. Many thanks PR Read More Answer |
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In Patent Process - updated on 2/26/2009
I have a pending 102(e) rejection based upon a co-pending application which is commonly assigned. There are only 2 common inventors in both pending applications whereas each application lists five inve... Read More Answer |
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