Anticipat Education Part 4: How to find legal arguments relevant for reversing particular Office Action rejections 

Every patent application is different. So is every Office Action. But there are only a limited number of ways to successfully rebut a given rejection in any Office Action.

Think of Anticipat’s ex parte PTAB database as holding the answers to all the successful ways in which Examiners have been overturned on appeal. Anticipat Analytics breaks down the most persuasive arguments that the Board relies on to overturn this particular ground of rejection of interest. For example, as shown in the below image, the red arrow points to the most commonly used arguments that the Board relied on in reversing obviousness rejections in art unit 3689. See below image.


This provides a practitioner an outline straight from the Board of successful ways to overcome various grounds of rejection. The clear leading argument for this art unit, as shown above, is that the combination of references must teach or disclose the claim elements. This can guide the practitioner in developing a winning argument by focusing on arguing against the references not teaching what the Examiner purports that they teach.

All these tags are specific to the application’s examiner, art unit, or tech center. You can click on the various tags to further research the context of the arguments to draw appropriate parallels.

Anticipat Analytics organizes the tags the Board uses to overcome rejections to help you in your practice. The efficiencies and knowledge gained pay for themselves within minutes of use. Click here to give it a try.


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