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“I do not think that word means what you think it means” October 23, 2009

Posted by Brian Schar in Patent prosecution, USPTO.

The word being “moot.”

One of my least favorite things about Office Action is the form sentence that states “Applicant’s arguments have been considered but are moot in view of the new ground(s) of rejection.”  More often than not, the Office Action cuts and pastes a section from a previous Office Action that necessitated the applicant argument that was supposedly considered but is now “moot.”  Then I get to cut and paste the same argument a second (or third, or fourth) time in the response.  I suppose this is “compact prosecution.”


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