Asked in Patents (Intellectual Property)

Q: How to respond to an objection to the specification in an Office Action.

The background section in the specification cites some patent and non-patent publications, which were submitted in an IDS and considered by the examiner. However, Office Action rejects the specification by stating "It is noted that applicant appears to have furnished a version of these references in the IDS.... The attempt to incorporate subject matter into this application by reference to the patent applications and non-patent literature is ineffective. appropriate correction is required. " How to deal with this objections?

1 Lawyer Answer
Liliana Di Nola-Baron
Liliana Di Nola-Baron
  • Patents Lawyer
  • Washington, DC

A: It sounds like the examiner is requesting that the applicant remove prior art citations from the specification in view of the IDS. I suggest that you request a phone interview with the examiner to discuss this and possibly othe rejections, so that your next response may put the application in condition for allowance. Please let me know if you have any additional questions.

Liliana Di Nola-Baron, J.D., Ph.D.

Attorney at Law


Kathryn Perales agrees with this answer

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