Phrases to Communicate with USPTO Examiners

Introduction

Navigating the intricacies of communicating with USPTO examiners is crucial for patent attorneys and agents. This blog post offers a collection of strategic phrases designed to enhance clarity and professionalism in interactions with examiners. Whether you're responding to an Office Action, requesting an interview, or presenting arguments for patentability, these phrases can help you articulate your points effectively and foster a constructive dialogue.

Introducing a response to an Office Action:

1. In response to the Office Action dated (date), we respectfully submit the following arguments and amendments.
2. We hereby address the objections and rejections raised in the Office Action of (date).

Referring to specific sections or claims:

1. With regard to Claim 1, we respectfully disagree with the Examiner's assertion that...
2. As outlined in the specification on page X, lines Y-Z, the invention provides...

Requesting an examiner's interview:

1. We kindly request an interview with the Examiner to discuss the outstanding issues and clarify our position.
2. In order to better understand the Examiner's concerns and facilitate the prosecution of this application, we would like to schedule an interview.

Agreeing with the examiner:

1. We concur with the Examiner's assessment and have amended the claims accordingly.
2. In light of the Examiner's comments, we have revised Claim X as follows...

Disagreeing with the examiner:

1. We respectfully submit that the Examiner's rejection under 35 U.S.C. 103 is not well-founded because...
2. While we understand the Examiner's concerns, we believe that the cited prior art does not disclose the claimed feature as set forth in Claim X.

Providing additional information or clarification:

1. For further clarification, please note that the invention differs from the cited prior art in the following ways...
2. We would like to bring the Examiner's attention to the additional experimental data submitted herewith, which supports the patentability of the claims.

Requesting reconsideration or withdrawal of a rejection:

1. In light of the above arguments, we respectfully request that the Examiner reconsider the rejection of Claims X-Y.
2. Based on the submitted amendments and supporting arguments, we kindly request the withdrawal of the rejection under 35 U.S.C. 102.

Concluding a response:

1. We appreciate the Examiner's consideration of the present arguments and amendments and look forward to the allowance of the application.
2. We trust that the provided information and amendments will address the Examiner's concerns, and we look forward to the successful prosecution of this patent application.

Conclusion

Effective communication with USPTO examiners is key to the successful prosecution of a patent application. The phrases provided in this post are tailored to address various scenarios you may encounter during the examination process. By using these expressions, you can ensure that your responses are clear, respectful, and persuasive, ultimately aiding in the advancement of your applications towards allowance. Remember, the goal is to build a rapport with the examiner that facilitates understanding and resolves issues efficiently, leading to a smoother patent prosecution process.

Introducing a response to an Office Action:

In response to the Office Action dated (date), we respectfully submit the following arguments and amendments.
We hereby address the objections and rejections raised in the Office Action of (date).
Referring to specific sections or claims:

With regard to Claim 1, we respectfully disagree with the Examiner's assertion that...
As outlined in the specification on page X, lines Y-Z, the invention provides...
Requesting an examiner's interview:

We kindly request an interview with the Examiner to discuss the outstanding issues and clarify our position.
In order to better understand the Examiner's concerns and facilitate the prosecution of this application, we would like to schedule an interview.
Agreeing with the examiner:

We concur with the Examiner's assessment and have amended the claims accordingly.
In light of the Examiner's comments, we have revised Claim X as follows...
Disagreeing with the examiner:

We respectfully submit that the Examiner's rejection under 35 U.S.C. 103 is not well-founded because...
While we understand the Examiner's concerns, we believe that the cited prior art does not disclose the claimed feature as set forth in Claim X.
Providing additional information or clarification:

For further clarification, please note that the invention differs from the cited prior art in the following ways...
We would like to bring the Examiner's attention to the additional experimental data submitted herewith, which supports the patentability of the claims.
Requesting reconsideration or withdrawal of a rejection:

In light of the above arguments, we respectfully request that the Examiner reconsider the rejection of Claims X-Y.
Based on the submitted amendments and supporting arguments, we kindly request the withdrawal of the rejection under 35 U.S.C. 102.
Concluding a response:

We appreciate the Examiner's consideration of the present arguments and amendments and look forward to the allowance of the application.
We trust that the provided information and amendments will address the Examiner's concerns, and we look forward to the successful prosecution of this patent application.