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MPEP § 2111

Overview

Sometimes, an Office Action will put forth the conclusory assertion that a certain claim feature has been given the broadest reasonable interpretation as being equivalent to some term without providing evidence that this is the case. However, the “broadest reasonable interpretation” alone is not the standard that must be applied. Rather, the broadest reasonable interpretation must be in light of the specification as it would be interpreted by one of ordinary skill in the art. Where the Examiner has not provided reasoning for the alleged broadest reasonable interpretation and Applicant does not believe that the interpretation meets the above standard, it may be beneficial to traverse the rejection as follows.

Example Argument

On page X, the Office Action alleged that because the Examiner is to give the claims their broadest reasonable interpretation, [CLAIMED FEATURE] can allegedly be interpreted as [ASSERTED EQUIVALENT]. However, this interpretation is not compatible with the present specification and, therefore, is a misapplication of MPEP § 2111.

The underlying meaning of the word [FEATURE] as recited in the claims cannot be dismissed. While the Office Action stated that the claims must be given the broadest reasonable interpretation, this is not the complete standard. As required by MPEP § 2111, the claims must be given their broadest reasonable interpretation consistent with the specification. The Federal Circuit elaborated on this standard by requiring that the broadest reasonable interpretation must be “in light of the specification as it would be interpreted by one of ordinary skill in the art” per In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (emphasis added). In the present case, in some embodiments, the claimed term [FEATURE] is discussed in the present specification as [SUPPORT].

On the other hand, the Office Action alleged that the broadest reasonable interpretation of [FEATURE] is [ASSERTED EQUIVALENT], without providing support. In fact, the record is devoid of any evidence supporting the Office Action’s conclusion as to why a person of ordinary skill in the art would allegedly construe [ASSERTED EQUIVALENT] as [FEATURE]. If the Examiner elects to maintain the position that an [ASSERTED EQUIVALENT] can be a [FEATURE], Applicant respectfully requests that the Examiner provide documentary evidence on the record supporting this position. Otherwise, Applicant respectfully asserts that the conclusory assertion presented in support of this rejection is insufficient to maintain the rejection.

Accordingly, it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.

Established Corporations

LeonardPatel works closely with corporate counsel to develop and adhere to an effective patent portfolio management strategy and to deliver high quality intellectual property services at reasonable and predictable fees. We offer a full suite of intellectual property services to assist corporate counsel with the many issues that may arise in the context of a large intellectual property portfolio.

Government Organizations

LeonardPatel assists government technology organizations such as NASA with evaluating and protecting promising technologies. We have a deep understanding of the process of protecting government intellectual property assets. We have a CAGE code, a DUNS number, and we are qualified as a SBA small business, as is often preferred for government contractors.

Startups And Individual Inventors

LeonardPatel offers end-to-end intellectual property services to startups and individual inventors, including evaluating the business case to determine whether intellectual property protection makes sense, procuring intellectual property protection, and, if desired, assisting with valuing and licensing the technology. We also attempt to connect startups with venture capital sources, where possible.