Clarifying amendments such as timing, what causes X to do Y, the placement of various parts of a device in relation to other parts of the device, etc. Typically, I will call the Examiner and discuss the wording on the clarifying amendment just so they know 1) why I made the amendment; 2) they agree with my reasoning, 3) they may have suggestions for how to alter the claims.
To overcome a 35 USC 102 rejection via amendment I will use the following language.
The first step is to compare the publication date of the cited art with the patent filing date of your invention.
On page X of the office Action dated January 1, 2013, the Examiner states that Jones (the cited art reference) discloses each and every claimed limitation in independent claim 1.
To expedite prosecution, and without discussing the merits of the subject matter of Jones corresponding to the claimed limitations of independent claim (which is not admitted or suggested that Jones anticipates any of the claimed limitations of independent claim 1), Applicant submits that Jones is not proper cited art under 35 USC 102.
On page X of the office Action dated January 1, 2013, the Examiner alleges that col.
1, lines 1-5 of Jones disclose “limitations A-C” of independent claim 1.
In view of the above, Jones does not disclose “limitations A-C” of independent claim 1, and independent claim 1 is allowable.