template for response

1. Amending the specification
1a. addressing objection/rejection--often just following instructions of examiner
1b. providing clearer antecedent basis of new claim material--be careful to make sure the original application supports the added material

2. Amending the drawing
2a. adding a new figure--often request of examiner
2b. adding a component which is claimed but not shown in the original drawing, in one figure
2c. amending/adding/deleting a reference number or textual label

3. 112
3a. 112 1st paragraph: enablement/new matter--these might be some of the most difficult rejections to deal with; must fix without adding new matter
3b. 112 2nd paragraph: indefinite--often just follow guidance of examiner; be ready to traverse, e.g., "too broad" argument (MPEP 2173.04)
3c 112 4th paragraph: one dependent claim depending from one former claim wrong

4. 102
4a. argument with/without amendment
4b. incorporating an allowable dependent claim together with intervening claims into its base claim without argument
4c. rewriting an allowable dependent claim in independent form and arguing for the original claims with amendment
4d. arguing date of the invention is earlier than the effective date of the cited reference

5. 103
5a. the combination does teach the invention--each and every element, including the appropriate connections, must be taught/suggested ( if one such element is not taught/suggested, the claim should be allowable over the cited art) ( e.g. improper reliance on "obvious to try" rationale to teach an element--MPEP 2145 X.B.)

5b. modification of reference a using reference b renders prior art (primary reference a) unsatisfactory for intended purpose and/or change the principle of operation of the primary reference (MPEP 2143.01)

5C. no suggestion to combine reference a and b (e.g., prior art (either reference) teaches away from the combination (MPEP 2141.02))

5d. primary or secondary reference is non-analogous art--is not in field of endeavor and is not reasonably pertinent to particular problem of the invention(in re Oetiker, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992); MPEP 2141.01(a)) (NOTE: both conditions must be met to meet burden of establishing non-analogous relative to each other)

5e. primary and secondary reference are non-analogous relative to each other. Therefore, e.g., no motivation to combine secondary reference with primary reference.

5f. common ownership, s. 103(c) of patent law

5g. arguing date of the invention is earlier than the effective date of the cited reference

6. election--inventions/species must always be elected, whether doing so with or without traverse
6a. election without traverse
6b. election with traverse

7. RCE--given the cost involved (time and money), Business Unit approval should be sought unless time just will not permit

8. continuing application
8a. CA
8b. CIP
8c. Division

9. appeal--attempt Request for Pre-Appeal Conference first prior to going to Appeal Brief stage (cheaper and documentation is much easier to prepare)

10.Double Patenting
10a. statutory-type: arguing that rejection is improper or overcome by amedment
10b. nonstatutory-type/obvious-type: arguing that rejection is improper or overcome by amendment
10c. nonstatutory-type/obvious-type: Terminal Disclaimer with traverse to avoid Applicant admitting some claims of the two patents are obvious to each other
10d. nonstatutory-type/obvious-type: Terminal Disclaimer without traverse
10e. nonstatutory-type/obvious-type: Terminal Disclaimer without traverse--but delay filing such time (if any) when some claims become allowable.