Showing posts from July, 2021

Interplay Among Different Statutory Rejections

During patent prosecution, practitioners address the various rejections under different statutory sections one at a time. This makes sense since the different rejections stand on their own, and different arguments/rules apply. While sometimes there are overlapping issues, generally most examiners judiciously apply the grounds when they feel the facts warrant such application. However, from a strategic point of view, one can often learn a lot by considering the rejections together.  In particular, some examiners (e.g., those that tend to be more intent on rejecting applications no matter the facts) do not simply go through the claims and various statutory provisions and apply them independently. Rather, as an example, some examiners, upon realizing that their best prior art rejection is still missing certain explicit claim elements, go back and suddenly find that certain claim elements are unclear (112), unsupported (112), etc. In other words, it is generally not a coincidence when the