Common Patent Prosecution Mishap: Failing to Address a 35 U.S.C. 112 Rejection

MARK TERRY, ESQ.

The Board’s decision in Ex Parte Lin illustrates a recurring prosecution mistake: failing to address the rejection actually made by the examiner.

The application concerned a photolithography invention. The examiner rejected the claims under the first paragraph of 35 U.S.C. § 112, finding that the specification did not enable a person of ordinary skill to make or use a photomask across the full claimed refractive-index range without undue experimentation.

The applicants pointed to disclosed wavelength-reducing materials having a refractive index greater than one. The Board found that this argument did not answer the examiner’s concern about enablement throughout the entire claimed range.

Lessons learned: Address an examiner’s rejection head-on. For an enablement rejection, the response must explain why the specification teaches a skilled artisan to make and use the invention as broadly as claimed. Tangential arguments only distract from the controlling issue.