Any inquiry concerning this communication should be directed to [1] at telephone number [2].
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
1. This form paragraph, form paragraph 7.101, or form paragraph 7.102 should be used at the conclusion of all actions.
2. In bracket 1, insert the name of the examiner designated to be contacted first regarding inquiries about the Office action. This could be either the non-signatory examiner preparing the action or the signatory examiner.
3. In bracket 2, insert the individual area code and phone number of the examiner to be contacted.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [6], can be reached at telephone number [7]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center and the Private Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from Patent Center or Private PAIR. Status information for unpublished applications is available through Patent Center and Private PAIR to authorized users only. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
3. In bracket 3, insert the days that you work every week, e.g. "Monday-Thursday" for an examiner off every Friday.
4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM - 5:00 PM."
5. In bracket 6, insert your SPE’s name.
6. In bracket 7, insert your SPE’s area code and phone number.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5]. The examiner can also be reached on alternate [6].
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [7], can be reached at telephone number [8]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center and the Private Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from Patent Center or Private PAIR. Status information for unpublished applications is available through Patent Center or Private PAIR to authorized users only. Should you have questions about access to Patent Center or the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
1. In bracket 1, insert your name.
2. In bracket 2, insert your individual area code and phone number.
3. In bracket 3, insert the days that you work every week, e.g. "Monday-Thursday" for an examiner off on alternate Fridays.
4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM - 4:00 PM."
5. In bracket 6, insert the day in each pay-period that is your compressed day off, e.g. "Fridays" for an examiner on a 5/4/9 work schedule with the first Friday off.
6. In bracket 7, insert your SPE’s name.
7. In bracket 8, insert your SPE’s area code and phone number.
Where the text of sections of Title 35, U.S. Code was previously reproduced in an Office action, form paragraph 7.103 may be used.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
After the search has been completed, action is taken in the light of the references found. Where the assistant examiner has been in the Office but a short time, it is the duty of the primary examiner to review the application thoroughly. The usual procedure is for the assistant examiner to explain the invention and discuss the references which he or she regards as most pertinent. The primary examiner may indicate the action to be taken, whether restriction or election of species is to be required, or whether the claims are to be considered on their merits. If action on the merits is to be given and claims rejected, the primary examiner may indicate how the references are to be applied in any prior art rejection and explain the basis for any non-prior art grounds of rejection. The primary examiner may authorize allowance if all statutory requirements are met and no further field of search is known.
The supervisory patent examiners should impress upon their assistants that the shortest path to the final disposition of an application is by finding the best references on the first search and carefully applying them.
The supervisory patent examiners are expected to personally check on the pendency of every application which is up for the third or subsequent Office action with a view to finally concluding its prosecution.
Any application that has been pending five years or more should be carefully studied by the supervisory patent examiner and every effort should be made to terminate its prosecution. In order to accomplish this result, the application is to be considered "special" by the examiner.
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During the examination of an application or reexamination of a patent, the examiner should cite appropriate prior art which is nearest to the subject matter defined in the claims. When such prior art is cited, its pertinence should be explained.
The examiner must consider all the prior art references (alone and in combination) cited in the application or reexamination, including those cited by the applicant in a properly submitted Information Disclosure Statement. See MPEP § 609.
Form paragraph 7.96 may be used as an introductory sentence.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. [1]
When such prior art is cited, its relevance should be explained in bracket 1 in accordance with MPEP § 707.05.
Effective June 8, 1995, Public Law 103-465 amended 35 U.S.C. 154 to change the term of a patent to 20 years measured from the filing date of the earliest U.S. application for which benefit under 35 U.S.C. 120, 121 or 365(c) is claimed. The 20-year patent term applies to all utility and plant patents issued on applications filed on or after June 8, 1995. Effective March 16, 2013, Public Law 112-196 amended Title 35 of the U.S. Code to change U.S. practice from a first to invent system to a first inventor to file system. In certain circumstances, applicants may cancel their benefit/priority claim by amending the specification to delete any references to prior applications. Therefore, examiners should search all applications based on the actual U.S. filing date of the application rather than on the filing date of any parent U.S. application for which benefit is claimed or foreign application to which priority is claimed. Examiners should cite of interest all material prior art having an effective filing date after the filing date of the U.S. parent application or the foreign priority application but before the actual filing date of the application being examined.
Allowed applications should generally contain a citation of pertinent prior art for printing in the patent, even if no claim presented during the prosecution was considered unpatentable over such prior art. Only in those instances where a proper search has not revealed any prior art relevant to the claimed invention is it appropriate to send an application to issue with no art cited. In the case where no prior art is cited, the examiner must indicate "None" on a form PTO-892 and include it in the application file wrapper. Where references have been cited during the prosecution of parent applications and a continuing application, having no newly cited references, is ready for allowance, the cited references of the parent applications should be listed on a form PTO-892. The form should then be placed in the file of the continuing application. See MPEP § 1302.12. In a continued prosecution application filed under 37 CFR 1.53(d), it is not necessary to prepare a new form PTO-892 because the form from the parent application is in the same file wrapper and will be used by the printer.
In all continuation, divisional, and continuation-in-part applications, the parent applications should be reviewed for pertinent prior art. See MPEP § 609.02.
Applicants and/or applicants’ attorneys in PCT related national applications may wish to cite the material citations from the PCT International Search Report by an information disclosure statement under 37 CFR 1.97 and 1.98 in order to ensure consideration by the examiner.
In those instances where no information disclosure statement has been filed by the applicant and where documents are cited in the International Search Report but neither a copy of the documents nor an English translation (or English family member) is provided, the examiner may exercise discretion in deciding whether to take necessary steps to obtain the copy and/or translation.
Copies of documents cited will be provided as set forth in MPEP § 707.05(a). That is, copies of documents cited by the examiner will be provided to applicant except where the documents:
See MPEP § 707.05(e) regarding data used in citing references.
Copies of cited foreign patent documents and non-patent literature references (except as noted below) are automatically furnished without charge to applicant together with the Office action in which they are cited. Copies of the cited references are also placed in the application file for use by the examiner during the prosecution. Copies of U.S. patents and U.S. patent application publications are not provided in paper to applicants and are not placed in the application file.
Copies of references cited by applicant in accordance with MPEP §§ 609, 707.05(b) and 708.02 are not furnished to applicant with the Office action. Additionally, copies of references cited in continuation applications if they had been previously cited in the parent application are not furnished. The examiner should check the left hand column of form PTO-892 if a copy of the reference is not to be furnished to the applicant.
Copies of foreign patent documents and nonpatent literature (NPL) which are cited by the examiner at the time of allowance will be furnished to applicant with the Office action and be retained in the file wrapper. This will apply to all allowance actions, including first action allowances and Ex Parte Quayle actions.
In the rare instance where no art is cited in a continuing application, all the references cited during the prosecution of the parent application will be listed at allowance for printing in the patent.
To assist in providing copies of, or access to, references, the examiner should:
In the case of design applications, procedures are the same as set forth in MPEP §§ 707.05(a) - 707.05(g).
The USPTO does not provide copies of U.S. patents or U.S. patent application publications with Office actions. Reviewing the U.S. patent(s) and/or U.S. patent application publication(s) cited below is important in deciding how to respond to the Office action. To obtain copies of the cited U.S. patent(s) and/or U.S. patent application publication(s), any of the following options may be used, free of charge:
Copies of the U.S patent(s) and/or U.S. patent application publication(s) cited below may also be purchased for a fee preferably from the Patent and Trademark Copy Fulfillment Branch’s Certified Copy Center storefront at https://certifiedcopycenter.uspto.gov or by written request to Mail Stop Patent and Trademark Copy Fulfillment Branch, Director of the U.S. Patent & Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. For information regarding purchasing copies of U.S. patents and U.S. patent application publications, contact the Patent and Trademark Copy Fulfillment Branch at 1-800-972-6382 (toll free), 571-272-3150 (local), or by email at dsd@uspto.gov.
Some of the above options will cause U.S. patent(s) and/or U.S. patent application publication(s) to be downloaded in Portable Document Format (PDF). The downloaded documents can be viewed and printed using most commercially available web browsers. Free PDF viewers are additionally available through online sources, such as Adobe Systems Incorporated at www.adobe.com/acrobat/pdf-reader.html.
For additional information or questions, contact the Pro Se Assistance Program at 1-866-767-3848 or by email at innovationdevelopment@uspto.gov or the Inventors Assistance Center at 1-800-786-9199 (toll free), 571-272-1000 (local), or 1-800-877-8339 (TDD/TTY).
1. This form paragraph is recommended for use in Office actions citing U.S. patent(s) or U.S. patent application publication(s) when the applicant is not represented by a registered patent attorney or a registered patent agent.
2. This form paragraph should be followed by a citation to a U.S. patent(s) and/or a U.S. patent application publication(s).
MPEP § 609 sets forth guidelines for applicants, their attorneys and agents who desire to submit prior art for consideration by the U.S. Patent and Trademark Office.
Submitted citations will not in any way diminish the obligation of examiners to conduct independent prior art searches, or relieve examiners of citing other pertinent prior art of which they may be aware.
Prior art submitted by applicant in the manner provided in MPEP § 609 will not be supplied with an Office action.
37 CFR 1.105 and MPEP § 704.10 et seq. set forth procedures for examiners to require applicants, their attorneys and agents to submit information reasonably necessary for the Office to examine an application or treat a matter being addressed in an application.
Any such requirement, and any information submitted in reply thereto, will not in any way diminish the obligation of examiners to conduct independent prior art searches, or relieve examiners of citing other pertinent prior art of which they may be aware.
Information submitted by applicant in the manner provided in MPEP § 704.10 et seq. will not be supplied with an Office action.
In citing references for the first time, the identifying data of the citation should be placed on form PTO-892 "Notice of References Cited," a copy of which will be attached to the Office action. No distinction is to be made between references on which a claim is rejected and those formerly referred to as "pertinent." With the exception of applicant submitted citations, MPEP § 609 and § 708.02, it is recommended that the pertinent features of references which are not used as a basis for rejection be pointed out briefly.
See MPEP § 1302.12.
Where an applicant in an amendatory paper refers to a reference that is subsequently relied upon by the examiner, such reference shall be cited by the examiner in the usual manner using a form PTO-892, "Notice of References Cited," unless applicant has listed the reference on a form PTO/SB/08 that has been initialed by the examiner.
37 CFR 1.104(d) (see also MPEP §§ 707.05 and 901.05(a)) requires the examiner to provide certain data when citing references. The examiner should provide the citations on the "Notice of References Cited" form PTO-892 (copy at MPEP § 707.05).
If a U.S. patent application publication is cited by the examiner, the publication number, publication date, name of the applicant, class, and subclass should be cited under the section "U.S. Patent Documents" on the form PTO-892. For U.S. patents, the patent number, patent date, name of the patentee, and the relevant classification should also be cited under the same section. In addition, examiners are encouraged to cite the kind codes printed on U.S. patent application publications and patents. See MPEP § 901.04(a) for an explanation of the kind codes. See MPEP § 901.04 for details concerning the various series of U.S. patents and how to cite them. Note that patents of the X-Series (dated prior to July 4, 1836) are not to be cited by number. Some U.S. patents issued in 1861 have two numbers thereon. The larger number should be cited.
Defensive Publications and Statutory Invention Registrations (SIRs) should be cited under the section "U.S. Patent Documents" on the form PTO-892 (see MPEP §§ 711.06(a) and 901.06(a)).
In citing foreign patents, the patent number, kind code, citation date, name of the country, name of the patentee, and the relevant classification, if appropriate, must be given. Foreign patents searched in those Technology Centers (TCs) using the International Patent Classification (IPC) will be cited using the appropriate IPC subclass/group/subgroup. On the application’s "Search Notes" FWF form and PTO-892, the IPC subclass/group/subgroup shall be cited in the spaces provided for "Classification."
Where less than the entire disclosure of the reference is relied upon, the sheet and page numbers specifically relied upon and the total number of sheets of drawing and pages of specification must be included (except applicant submitted citations). If the entire disclosure is relied on, the total number of sheets and pages are not required to be included on the PTO-892.
Publications such as German allowed applications and Belgian and Netherlands printed specifications should be similarly handled.
International registrations published by the World Intellectual Property Organization (WIPO) under the Hague Agreement Concerning the International Registration of Industrial Designs (also known as published international design applications) are not assigned a publication number uniquely identifying the published international registration. When citing an international registration, both the International Registration Number (referenced by INID Code 11 in the publication) and the publication date should be included. See the third item under example 5 of subsection IV below.
See MPEP § 901.05(a) for a chart in which foreign language terms indicative of foreign patent and publication dates to be cited are listed.
Abstracts, abbreviatures, Alien Property Custodian publications, withdrawn U.S. patents, withdrawn U.S. patent application publications, and other non-patent documents should be cited under the section "Non-Patent Documents" on the form PTO-892). See MPEP § 711.06(a) for citation of abstracts, and abbreviatures. See MPEP § 901.06(c) for citation of Alien Property Custodian publications. In citing a publication, sufficient information should be given to determine the identity and facilitate the location of the publication. For books, the data required by 37 CFR 1.104(d) (MPEP § 707.05) with the specific pages relied on identified together with the Scientific and Technical Information Center (STIC) call number will suffice. The call number appears on the "spine" of the book if the book is thick enough and, in any event, on the back of the title page. Books on interlibrary loan will be marked with the call numbers of the other library, of course. THIS NUMBER SHOULD NOT BE CITED. The same convention should be followed in citing articles from periodicals. The call number should be cited for periodicals owned by the STIC, but not for periodicals borrowed from other libraries. In citing periodicals, information sufficient to identify the article includes the author(s) and title of the article and the title, volume number issue number, date, and pages of the periodical. If the copy relied on is located only in the Technology Center making the action (there may be no call number), the additional information, "Copy in Technology Center — —" should be given.
The following are examples of nonpatent bibliographical citations:
(A) For books:
Winslow. C. E. A. Fresh Air and Ventilation. N.Y., E. P. Dutton, 1926. p. 97-112. TI17653.W5.
(B) For parts of books:
Smith, J. F. "Patent Searching." in: Singer, T.E.R., Information and Communication Practice in Industry (New York, Reinhold, 1958), pp. 157-165. T 175.S5.
(C) For encyclopedia articles:
Calvert, R. "Patents (Patent Law)." in: Encyclopedia of Chemical Technology (1952 ed.), vol. 9, pp. 868-890. Ref. TP9.E68.
(D) For sections of handbooks:
Machinery’s Handbook, 16th ed. New York, International Press, 1959. pp. 1526-1527. TJ151.M3 1959.
(E) For periodical articles:
Noyes, W. A. A Climate for Basic Chemical Research
Chemical & Engineering News, Vol. 38, no. 42 (Oct. 17, 1960), pp. 91-95. TP1.I418.
The following are examples of how withdrawn U.S. patents and withdrawn U.S. patent application publications should be cited:
(A) Withdrawn U.S. patents:
US 6,999,999, 10/2002, Brown et al., 403/155 (withdrawn).
(B) Withdrawn U.S. patents application publications:
US 2002/0009999 A1, 7/2002, Jones et al., 403/155 (withdrawn).
Titles of books and periodicals SHOULD NOT be abbreviated because an abbreviation such as P.S.E.B.M. will not be sufficient to identify the publication. References are to be cited so that anyone reading a patent may identify and retrieve the publications cited. Bibliographic information provided must be at least enough to identify the publication. author, title and date. For books, minimal information includes the author, title, and date. For periodicals, at least the title of the periodical, the volume number, date, and pages should be given. These minimal citations may be made ONLY IF the complete bibliographic details are unknown or unavailable.
Where a nonpatent literature reference with a document identification number is cited, the identification number and the class and subclass should be included on form PTO-892. For example, the citation should be as follows: (S00840001) Winslow, C.E.A. Fresh Air and Ventilation N.Y., E.P. Dutton, 1926, p. 97-112, TH 7653, W5, 315/22.
If the original publication is located outside the Office, the examiner should immediately make or order a photocopy of at least the portion relied upon and indicate the class and subclass in which it will be filed, if any.
An electronic document is one that can be retrieved from an online source (e.g., the Internet, online database, etc.) or sources found on electronic storage media (e.g., CD-ROM, magnetic disk or tape, etc.). Many references in paper format may also be retrieved as electronic documents. Other references are retrievable only from electronic sources.
The U.S. Patent and Trademark Office follows the format recommended by World Intellectual Property Organization (WIPO) Standard ST.14, "Recommendation for the Inclusion of References Cited in Patent Documents." The format for the citation of an electronic document is as similar as possible to the format used for paper documents of the same type, but with the addition of the following information in the locations indicated, where appropriate:
Office copies of an electronic document must be retained if the same document may not be available for retrieval in the future. This is especially important for sources such as the Internet and online databases.
Where an Internet source, such as a social media source, does not provide an ability to download the information as an electronic document, screen shots should be captured of the information, and an explanation provided as to what can be found in the screen shots.
If an electronic document is also available in paper form it does not need to be identified as an electronic document, unless it is considered desirable or useful to do so.
Examples 1-4: Documents retrieved from online databases outside the Internet
SU 1511467 A (BRYAN MECH) 1989-09-30 (abstract) World Patents Index [database online]. Derwent Publications, Ltd. [retrieved on 1998-02-24]. Retrieved from: Questel. DW9016, Accession No. 90-121923.
DONG, XR. ‘Analysis of patients of multiple injuries with AIS-ISS and its clinical significance in the evaluation of the emergency managements’, Chung Hua Wai Ko Tsa Chih, May 1993, Vol. 31, No. 5, pages 301-302. (abstract) Medline [online]: United States National Library of Medicine [retrieved on 24 February 1998]. Retrieved from: Dialog . Medline Accession no. 94155687, Dialog Accession No. 07736604.
JENSEN, BP. ‘Multilayer printed circuits: production and application II’. Electronik, June-July 1976, No. 6-7, pages 8, 10,12,14,16. (abstract) INSPEC [online]. London, U.K.: Institute of Electrical Engineers [retrieved on 1998-02-24]. Retrieved from: STN International, USA. Accession No. 76:956632.
JP 3002404 (Tamura Toru) 1991-03-13 (abstract). [online] [retrieved on 1998-09-02]. Retrieved from: EPOQUE PAJ Database.
Examples 5-18: Documents retrieved from the Internet
(Electronic patent document – not page based)
WO 2004/091307 A2 (ADVANCED BIONUTRITON CORP) 2004-10-28, paragraphs [0068], [0069]; examples 2, 6.
GB 2,432,062 A (GE INSPECTION TECHNOLOGY LP) 2007.05.09, Detailed Description, third paragraph beginning ‘Referring to Figure 2’.
Published International Registration Number DM/096222 (SAUL PARISIIS), published on June 9, 2017. Retrieved from the Global Design Database (www.wipo.int/ designdb/en/index.jsp ).
(Electronically registered Intellectual Property – other than patent documents)
HU D9900111 Industrial Design Application, (HADJDUTEJ TEJIPARI RT, DEBRECEN) 2007-07-19, [database online], [retrieved on 1999-10-26] Retrieved from the Industrial Design Database of the Hungarian Patent Office using Internet <URL: http://elajstrom.hpo.hu/?lang=EN>
