Using the USPTO's Policy of Compact Prosecution Against It

The Policy of "Compact" Prosecution

Patent prosecution before the U.S. Patent Office is performed under a coverage of "compact" prosecution. Under this coverage, prosecution of an application is commonly designed to finish with the Examiner's consideration of one response to one non-final Office Action. That is, a second Office Action, responding to an applicant's reply to a first Office Action, is usually final, except an applicant places the software in circumstance for allowance. Stated dreams of this policy of "compact" prosecution are to provide applicants with spark off and complete exam of their applications. To achieve those goals, the coverage imposes specific responsibilities on Examiners. As the Office itself has explained, "[t]he Office's coverage of compact prosecution calls for that each examiners and applicants offer the data important to elevate and resolve the problems related to patentability expeditiously." (Official Gazette of 07 November 2003).

The Office's Obligations

A first Office Action at the deserves should primarily discover every issue that stands between the applicant and allowance of the application. (See The Manual of Patent Examining Procedure (MPEP) §707.07(g)). And, the Office Action should achieve this with the aid of offering the quality case in opposition to patentability. (See, as an instance, MPEP §§2164.04 and 2106II). In principle, this offers an applicant with the possibility to reply to each issue so that, if every difficulty is effectively rebutted or in any other case addressed, the utility might be situation for allowance. Conversely, if the applicant no longer successful, the application ought to be in condition for appeal. A failure to provide the first-class case such that a brand new rejection, new art, and/or multiplied arguments are required in a subsequent Office Action typically precludes the finality of that subsequent Office Action. (See MPEP §706.07(a)). In exercise, this prevents piecemeal prosecution of the utility, which the MPEP instructs should be prevented. (MPEP §707.07(g)).

The obligations imposed on Examiners by using the U.S. Patent Office's coverage of compact prosecution have vital sensible ramifications. Firstly, in each Office Action, each claim should be reviewed for compliance with each statutory requirement for patentability, even supposing one or more claims are determined to be poor with respect to a few statutory requirement. Additionally, every time doable, an Office Action have to suggest how rejections may be conquer and the way objections and informalities can be resolved. The reason is that a failure to follow this method can result in unnecessary delays in the prosecution of the utility. (See, as an example, MPEP §2106II).

Examples of Using the Policy of Compact Prosecution

These obligations may be of strategic fee in prosecution and must not be discounted. The following are only some examples of methods an applicant might also use them.

1. If the Office movement simply asserts that says are not enabled

Accordingly, favorable reconsideration and withdrawal of the rejection of impartial declare 1 below the first paragraph of 35 U.S.C. §112 are respectfully asked.

In the occasion that the Office continues this enablement rejection, Applicant respectfully requests, in accordance with the standards of compact prosecution, that the Office articulate, one the report and with specificity sufficient to help a prima facie case of non-enablement, the actual basis on which it's miles alleged that it might be past the extent of normal ability inside the widget art to make and use the claimed invention with out undue experimentation. (MPEP §2164.01).

2. If the Office movement applies the referred to art most effective in opposition to the impartial claims

Lastly, it's far referred to that the Office Action fails to specifically deal with even the expressly recited capabilities of the pending dependent claims. Under the Office's policy of compact prosecution, each declare ought to be reviewed for compliance with each statutory requirement for patentability in the preliminary overview of the software, even though one or extra claims are determined to be poor with admire to some statutory requirement. (MPEP §707.07(g)). It is submitted that the present application isn't sufficiently casual, does not gift an undue multiplicity of claims, or show off a misjoinder of innovations, in an effort to moderately prevent a entire movement at the merits. Thus, it is submitted that the Office's failure constitutes a failure to expeditiously provide the data vital to solve troubles associated with patentability that stops the Applicant from, as an example, imparting suitable patentability arguments and/or rebuttal evidence. (See The Official Gazette Notice of November 7, 2003). Additionally, it's miles submitted that the Office's failure needlessly encourages piecemeal prosecution, which is to be prevented as a whole lot as viable. (MPEP §707.07(g)). Accordingly, in the event that the Office maintains the rejection of any of the established claims, Applicant respectfully requests, in the hobbies of compact prosecution, that the Office observe art towards each function of each rejected established declare, at the report, and with specificity enough to guide a prima facie case of anticipation (or obviousness).

3. If the Office motion makes most effective a general allegation that a declare characteristic is taught (or counseled) via stated artwork

An Office Action contends that a declare feature is taught via a patent to Smith however does now not discover wherein/how the characteristic is taught. And, a careful overview of that patent, however, famous no such teaching. An suitable reaction might be:

The Office Action contends that Smith teaches the aforementioned function of "a widget" of independent claim 1. (Office Action, page three). This contention is respectfully traversed.

Initially, it is referred to that the Office has no longer identified where in Smith an alleged anticipatory teaching is to be found. Additionally, FIG. 1 of Smith, referred to with the aid of the Office Action in guide of the contentions that Smith teaches the capabilities that immediately precede and follow the situation characteristic of "a widget," in addition to the written disclosure associated with that FIG. 1, are silent as to the challenge feature. Still similarly, Applicant has carefully reviewed the remainder of patent to Smith, and unearths no coaching of "a widget." Thus, for at least this purpose, Smith cannot anticipate unbiased claim 1.

Accordingly, favorable reconsideration and withdrawal of the rejection of unbiased declare 1 beneath 35 U.S.C. §102 are respectfully asked.

In the event that the Office continues the rejection of impartial claim 1 beneath 35 U.S.C. §102, Applicant respectfully requests that the Office, inside the hobbies of compact prosecution, pick out on the document and with specificity enough to support a prima facie case of anticipation, where within the Smith patent the difficulty feature of independent claim 1 of "a widget" is claimed to learn.