Amend or Argue–Part I
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Invention Analysis and Claiming:
Amend or Argue–Part I 1

By Ronald Slusky

Ronald Slusky mentored dozens of attorneys in “old school” invention analysis and claiming principles over a 31-year career at Bell Laboratories. He is now in private practice in New York City. This article is adapted from his 2007 book “Invention Analysis and Claiming: A Patent Lawyer’s Guide.” Ron’s two–day seminar based on the book will be given later this year in Philadelphia and New York. See Ron can be reached at 212-246-4546 and

What’s to be done when a claim is rejected under §102 or §103?

One option, of course, is to cancel the claim, irrespective of the merits of the rejection. A rejected claim may be expendable because other, allowed claims may be deemed to adequately cover the invention.  Or the client may not wish to incur the cost of fighting the rejection.  Yet another option is to “take” any allowed claims and re-present the cancelled claim(s) in a continuation.

On the other hand, when addressing a §§102-103 rejection on the merits, six main options are available, as shown in the accompanying flow diagram. The option to simply cancel the claim is shown as stand-alone box 10. The other five options ...

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