Q10: Avoiding RCEs

Have both parties put all their cards on the table

I recently received a first Office Action (OA) for an application and then set up an interview. I emailed the Examiner various portions of the Specification that were disclosed but not claimed that I was considering for amendments to the claims. The Examiner emailed back, indicating he had done another search, and cited different portions of references, for each portion of the Specification that I had sent him. I then reviewed the references he had sent, and pointed out which features were not disclosed, and he performed another search and sent me so more references. At this point, both of us had put our cards on the table. Based on this, I was able to draft a claim amendment that should place the application in condition for allowance, or at most, require a few minor tweaks. I told the Examiner that he probably saved both of us at least 1-2 RCEs. This would be the ideal process to eliminate RCEs - get to the allowable subject matter as quickly as possible.



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Idea No. 7