Though I've only encountered this type of objection to the specification a few times, my arguments are basically the same no matter whether the Examiner applies a claim rejection or a spec objection. However, there is a big difference in how you proceed if the Examiner isn't persuaded by your arguments:
- a rejection is appealable;
- an objection alone is petitionable; and
- an objection in combination with a §112 ¶1 rejection becomes appealable.
(See MPEP 2163.06.II.)
If you have an objection without a §112 ¶1 rejection, and you're appealing on other grounds, I see several options.
- You can petition the objection concurrently with the appeal.
- You can petition the objection after the decision on appeal.
- You can wait for the decision on appeal, and hope the objection simply goes away!
I found several cases in PAIR where the Applicant won an appeal on prior art rejections, and the Examiner issued a Notice of Allowance without explicitly withdrawing the spec objection. (See, e.g., Serial Nos. 10/329,617; 10/010,337; 09/325,944.) Perhaps when a spec objection is the only thing standing between the Examiner and a count for Notice of Allowance, the Examiner had second thoughts about the objection.
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