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How to Gain a REAL Examination on the Merits of a New Application

January 14, 2016| in Wegner's Writings| by Hal Wegner

Not infrequently, applicants complain that in their applications, inventions which appear to be novel and nonobvious are simply rejected over what appears to be a random collection of prior art references in an arcane combination:  The claims are rejected over reference “A” or “B”, each taken alone or in view of any of references “C”, “D” and “E”.

Why wasn’t I given a “real” examination of my claims?  The answer all too often is that the applicant’s presentation of the case is too complex to permit complete examination within the brief time frame allocated for a first action.  To better present an application to avoid this outcome it is necessary to have a simple presentation, as outlined in an excerpt from the monograph, FIRST-TO-FILE PATENT DRAFTING, Ten Steps to Reach the Goals of this Monograph (pp. 17-20), attached.

FirstToFilePatentDraftingJan14excerpt 

Regards,
Hal

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