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« 2022 Business Methods Partnership Meeting | Main | Think Twice About Appealing a § 101 Rejection to the PTAB »

September 11, 2022


Thank you for this article (and the previous one). It's too bad that the PTO has never come up with a way to correct these practices (or doesn't want to), because they make it difficult for the applicant to achieve compact prosecution and obtain allowable claims or decide to abandon an application. Use of these sloppy examination practices effectively damages both the applicant's intellectual property interest and the interest of the public in having settled patent claims. The public interest would be better served by timely, thorough, and fair examination.

What's important about a dumb 102 rejection is that it wastes your first bite at the apple: the Examiner will often come back with the 103 rejections that should have been made in the first place, but now it's a final rejection, and your client is looking at an RCE or appeal, and the associated costs.
The improperly-made-final rejection is a very common tactic - some examiners use it routinely - and you have to be alert to new references and new grounds for rejection. (The latter are automatically deemed "made necessary by applicant's amendments", and that too needs to be promptly argued against.)

Mr. Demers,

As any choice to amend is solely that of the Applicant, how exactly do you propose to "promptly argue against" a next action Finality?

Genuinely curious.

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