How to Structure a Response

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How to Structure a Response

There’s a variety of ways to structure your response. You can see this plainly on PAIR where each firm tends to have their own template manner of responding. One such template is below. However, I want you to understand some of the rationale for using this template.

First, the template focuses on letting the claim language speak for itself. This is probably one of the biggest differing points among practitioners. Some will interpret what the prior art is teaching, and then interpret what the claim is teaching, and then conclude that the interpretation of the prior art does not teach the interpretation of the claim. The danger is taking this approach is simply that 1) your characterization of the language may be technically not spot on; 2) your characterization may restrict the claim more than what the language requires (which creates a lot of ambiguity on and may subject your claim to prosecution history estoppel, which is a whole other topic); or 3) your characterization may be more prone to subjective/persuasive  type arguments that may be beyond the scope of the claimed language (and which may subject the claim again to prosecution history estoppel).

As such, especially when starting out (and even thereafter should you desire), let the language speak for itself.

Second, the template focuses on letting the prior art language speak for itself. Again, the less we “interpret” what we are reading, the more we minimize any issues with us potentially misinterpreting what is being taught.

The following framework (with my explanation in each [[ ]] section) is a template I recommend you start with.

The Examiner has rejected Claims [[insert the claims rejected]] under 35 U.S.C. 102([[insert subsection number from the office action rejection]]) as being anticipated by [[insert name of prior art relied upon by the Examiner (REF_1)]] (U.S. Patent No. [[insert the publication number or non patent literature reference here]]).  Applicant respectfully disagrees with such rejection, especially in view of the amendments made hereinabove to each of the independent claims.  [[note this assumes you have edited your claim in some manner to clarify what is being claimed. If you haven’t then you would obviously need to remove this sentence]]

Specifically, applicant has amended the independent claims, as follows:

[[insert the amended claim section]]

With respect to the independent claims, the Examiner has relied on [[insert specific excerpt paragraph number or line number or page number from the relied upon prior art reference]]from the [[REF_1]]reference to make a prior art showing of applicant’s claimed technique “[[insert claim language that is the basis for the argument]]” (see this or similar, but not necessarily identical language in the independent claims).

Applicant respectfully notes that the [[REF_1]]reference, as relied upon by the Examiner, discloses that “recite relevant section from the REF_1 relied upon by the Examiner.” See Paragraph [[insert citation for the relevant section just cited]] – emphasis added.

However, disclosing that [[give a subset of the relevant section of the REF_1]], as in the [[REF_1]]excerpt(s) relied upon, does not teach or suggest “[[insert claim language that is the basis for the argument]]” (emphasis added), as claimed by applicant.

In a nutshell, the framework recites the claim language that the Examiner indicates is being taught by the prior art. You then simply cite the prior art excerpt relied upon by the Examiner. And then you cite a pertinent or relevant subsection of the reference and indicate that such does not teach the claimed language. Of course, this assumes that the prior art reference does indeed NOT teach the claim language. If the claim language is being taught by the prior art, then it is recommended to make a claim amendment such that the prior art no longer teaches each and every limitation of the now modified claim.