• Using Word’s auto-correct feature may help you save some time when you draft a response.  This feature is available in Word from “Tools->AutoCorrection Options …,”  where you can define the shorthand expressions and the corresponding full text.  For example, you may use “ARR” for “Applicants respectively request,” so that when you type “ARR” in the document, Word will expand it to “Applicants respectively request.”  To avoid confusion, make sure to pick unique shorthand names that do not normally appear in text.

• If you need to get an updated claim set from the previous response into the current draft, use ClaimMaster’s amendment tool.  It lets you manipulate amendments and indicators, so that you can quickly generate a clean claim set from a previous amendment in a matter of seconds.   If you are adding new claims, the software will also calculate any excess claim fees.

• Once you finalize your claim amendments and proceed to the “Remarks” section, use ClaimMaster’s summary tool to generate a summary of claims, amendments, etc that you can paste into the beginning of your remarks.

• When drafting the actual argument, try to avoid saying more than necessary about the claims or the prior art.  Just address the differences between the art and your claim limitations and/or impropriety of combinations.  You should avoid needless characterization of prior art, your invention, or paraphrasing the claim language.  You do not want to create unnecessary prosecution estoppel and everything you say in your response may be later used to limit the scope of the claims during litigation.

• Finally, once you finish the response, you can use ClaimMaster to double-check it for you.  The software is going to pinpoint any errors in claim amendments, numbering, missing antecedents, or status indicators. 

Using ClaimMaster for error checking allows you to reduce the risk of receiving a notice of non-compliance from the USPTO or, worse, seriously messing up your claims.  Please note, however, that while ClaimMaster can catch many types of insidious errors, you always need to review the response one final time, just to make sure that everything is correct before you file it.

If you follow the above tips, you can significantly reduce the amount of burdensome work involved in each Office Action response.  For example, instead of spending 20 minutes trying to create a clean set of claims from a particularly messy set of previous amendments, you can spend that time on the analysis or drafting of the response resulting in more polished work product.  And all clients will appreciate that.

What follows is a list of tips and tricks for drafting responses to a typical Office Action that involves prior art rejections.  The list is not meant to be exhaustive, but hopefully you will find something new that may save you time on your next response.  Some of the tips are general; others rely on built-in features in Word or special drafting software, such as ClaimMaster.

•  If you have a text pdf file of the Office Action, you can use ClaimMaster’s Office Action Browser tool to quickly identify rejections (35 U.S.C. §§ 102, 103, etc.), objections, or allowances in the action.  You can then use the software to download the PDFs of the cited references.  The tool will also let you identify any claims that the action failed to address.

• Before you can formulate a response strategy, you will need to analyze the general structure of the claims in your application.  This is especially true if you inherited the case from someone else and are not yet familiar with the claims.  You can use ClaimMaster’s  viewer to quickly identify the hierarchy and types of claims in the application.  The tool will also let you pinpoint any differences in scope between claim sets with visual highlighting.

• When analyzing the Office Action, I would suggest that you do not immediately read the specific details/citations in the examiner’s rejection.  Instead, try to read each reference carefully and note any broad differences between the reference and what is being claimed.  Doing so should allow you to evaluate the reference without having your opinion influenced by the Examiner’s reasoning.  I find it much easier to identify holes in the rejection when I get a general sense of the reference before diving into the detailed rejections.

• When you start drafting a response, start with a generic pre-drafted template that already has some sections/law populated.  Having a response template helps you organize your thoughts and ensures that you do not waste time “re-inventing the wheel” every time you sit down to write a response.  You can also use ClaimMaster’s Office Action browser to generate a summary of rejections for you.