Don't just assert cited references don't show all claim elements

Ex Parte Dandekar:

Specifically, with respect to claims
1-6, at pages 3-4 of the Appeal Brief, Appellants argue:
Lee does not teach or suggest a computer implemented
system for enabling configuration of an information handling
system which includes a configurator, a service activation
module for enabling a user to activate a service for use on an
information handling system, and a database where database
receives information from and supplies information to the
configurator and the service activation module, all as required
by claim 1. Accordingly, claim 1 is allowable over Lee. Claims
2 - 6 depend from claim 1 and are allowable for at least this
reason.
The Appeal Brief presents no other arguments with respect to claim 1.

Appeal board says that Examiner had "specific and detailed findings" while the Applicant had only "arguments not supported by further evidence...." Examiner won.

Omnibus rejection of multiple claims

From Patently Defined, here
"We have all seen rejections in which an Examiner has erroneously characterized several independent claims, grouped them together, and generically rejected the group. In situations like this in which an Examiner has grouped claims together to make a generic, omnibus rejection, §707.07(d) of the MPEP may be of interest. That section warns:"

707.07(d) Language to be Used in Rejecting Claims

*****

A plurality of claims should never be grouped together in a common rejection, unless that rejection is equally applicable to all claims in the group.

Office action steps.

1. Check that the dates of all cited references qualify as prior art.
2. Check if patent entity owns any of the references.


Words to check--Refer to "cited publication" not "prior art."

Check that there are no occurances of the words "must," "Prior art," "invention" or "reference."

A recent litigated case involving a Colorado inventor hinged on the fact that the patent drafter stated “the benefit is…” rather than “a benefit is…” or “a potential benefit is …”. The entire case hinged on the fact that the court read the phrase to mean that the claimed invention must have the limitation. Literally millions of dollars were on the line because of an inadvertent error during patent drafting.

From http://www.krajec.com/index.php?/weblog/prohibited_words_in_a_patent_must/