Industrial IP

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 ...

Sometimes a case has a whole slew of rejections that all relate to a common issue or complaint by an examiner. Further, the rejections can be somewhat sloppy, incomplete, and overlapping and create a bit of a jumbled mess. While it may be possible (although not recommended) to write some general remarks in response to an Office action without clearly addressing each ground and have the examiner consider it fully responsive, when the case is on appeal one must be very careful to address every ground of rejection in a separate section of the brief, and in doing so address the specific requirements of each ground of rejection.   Here we see an example where the applicant had what looked to be a winning case, but did not fully address all grounds of rejection and thus suffered the result of waiver. The case is SN 13/920,296 and relates to steering systems.  While ownership was not fully investigated, the case seems to belong in some way to Intellectual Ventures, which by all acc...