In some instances, a citation may be too lengthy to fit within the box provided on the PTO-892, "NON-PATENT DOCUMENTS" section. This scenario occurs commonly with URLs. When entering lengthy citations, the examiner should confirm that the entire citation appears on the PTO-892 form after completing the OC reference entry. When the citation does not fit within the box provided, the examiner should continue the citation into the next box and should clearly indicate that the citation is being continued into the next box. Such citation will be captured as one citation, and any explanatory wording (such as "[item U continued]" in the mockup below) will not be captured.
Where an error in citation of a reference is brought to the attention of the Office by applicant, a letter correcting the error, together with a correct copy of the reference, is sent to applicant. See MPEP § 710.06. Where the error is discovered by the examiner, applicant is also notified and the period for reply restarted. See MPEP § 710.06.
One or more of form paragraphs 7.81, 7.82, 7.82.01, and 7.83 may be used to correct citations or copies of references cited.
In response to applicant’s [1] regarding the last Office action, the following corrective action is taken.
The period for reply of [2] MONTHS set in said Office action is restarted to begin with the mailing date of this letter.
1. In bracket 1, insert --telephone inquiry of _____-- or --communication dated ______--.
2. In bracket 2, insert new period for reply.
3. This form paragraph must be followed by one or more of form paragraphs 7.82, 7.82.01 or 7.83.
4. Before restarting the period, the SPE should be consulted.
The reference [1] was not correctly cited in the last Office action. The correct citation is shown on the attached PTO-892.
1. Every correction MUST be reflected on a corrected or new PTO-892.
2. This form paragraph must follow form paragraph 7.81.
3. If a copy of the PTO-892 is being provided without correction, use form paragraph 7.83 instead of this form paragraph.
4. Also use form paragraph 7.82.01 if reference copies are being supplied.
Copies of the following references not previously supplied are enclosed:
1. The USPTO ceased mailing paper copies of U.S. patents and U.S. application publications cited in Office Actions in nonprovisional applications beginning in June 2004. See the phase-in schedule of the E-Patent Reference program provided in "USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies," 1282 OG 109 (May 18, 2004). Therefore, this form paragraph should only be used for foreign patent documents, non-patent literature, pending applications that are not stored in the image file wrapper (IFW) system, and other information not previously supplied.
2. The reference copies being supplied must be listed following this form paragraph.
3. This form paragraph must be preceded by form paragraph 7.81 and may also be used with form paragraphs 7.82 or 7.83.
[1] of the last Office action is enclosed.
1. In bracket 1, explain what is enclosed. For example:
a. "A corrected copy"
b. "A complete copy"
c. A specific page or pages, e.g., "Pages 3-5"
d. "A Notice of References Cited, Form PTO-892"
2. This form paragraph should follow form paragraph 7.81 and may follow form paragraphs 7.82 and 7.82.01.
In any application otherwise ready for issue, in which the erroneous citation has not been formally corrected in an official paper, the examiner is directed to correct the citation by examiner’s amendment accompanying the Notice of Allowability form PTOL-37.
If a FOREIGN patent is incorrectly cited: for example, the wrong country is indicated or the country omitted from the citation, the General Reference Branch of the Scientific and Technical Library may be helpful. The date and number of the patent are often sufficient to determine the correct country which granted the patent.
In citing court decisions, when it is convenient to do so, the U.S. or Federal Reporter citation should be provided; in the alternative, the USPQ citation should be given.
The citation of decisions which are not available to the public should be avoided.
It is important to recognize that a federal district court decision that has been reversed on appeal cannot be cited as authority.
In citing a decision which is available to the public but which has not been published, the tribunal rendering the decision and complete data identifying the paper should be given. Thus, a decision of the Patent Trial and Appeal Board which has not been published but which is available to the public in the patented file should be cited, as " Ex parte — — , decision of the Patent Trial and Appeal Board, Patent No. — — — , paper No. — — , — — — pages."
Decisions found only in patented files should be cited only when there is no published decision on the same point.
When a Director’s order, notice or memorandum not yet incorporated into this manual is cited in any official action, the title and date of the order, notice or memorandum should be given. When appropriate other data, such as a specific issue of the Official Gazette may also be given.
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Any form that lists informalities and any additional formal requirements which the examiner desires to make should be included in the first action.
When any formal requirement is made in an examiner’s action, that action should, in all cases where it indicates allowable subject matter, call attention to 37 CFR 1.111(b) and state that a complete reply must either comply with all formal requirements or specifically traverse each requirement not complied with.
As allowable subject matter has been indicated, applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
This form paragraph would be appropriate when changes (for example, drawing corrections or corrections to the specification) must be made prior to allowance.
Where a claim is refused for any reason relating to the merits thereof it should be "rejected" and the ground of rejection fully and clearly stated, and the word "reject" must be used. The examiner should designate the statutory basis for any ground of rejection by express reference to a section of 35 U.S.C. in the opening sentence of each ground of rejection. Claims should not be grouped together in a common rejection unless that rejection is equally applicable to all claims in the group.
The burden is on the Office to establish any prima facie case of unpatentability (see, e.g., MPEP § 2103), thus the reasoning behind any rejection must be clearly articulated. For example, if the claim is rejected as broader than the enabling disclosure, the reason for so holding should be explained; if rejected as indefinite the examiner should point out wherein the indefiniteness resides; or if rejected as incomplete, the element or elements lacking should be specified, or the applicant be otherwise advised as to what the claim requires to render it complete.
Most of the form paragraphs for use in rejecting claims are now in MPEP Chapter 2100. See especially MPEP §§ 2106.07(a)(1), 2107.02, 2117, 2139.03, 2148, 2152.07, 2157, 2158.01, 2166, 2175, and 2187 for language to be used.
Everything of a personal nature must be avoided. Whatever may be the examiner’s view as to the utter lack of patentable merit in the disclosure of the application examined, he or she should not express in the record the opinion that the application is, or appears to be, devoid of patentable subject matter. Nor should he or she express doubts as to the allowability of allowed claims or state that every doubt has been resolved in favor of the applicant in granting him or her the claims allowed. The impression that any part of an Office action fails to reflect the professional judgment of the examiner or other employee authorizing the action should not be created by the action.
The examiner should, as a part of the first Office action on the merits, identify any claims which he or she judges, as presently recited, to be allowable and/or should suggest any way in which he or she considers that rejected claims may be amended to make them allowable.
In taking up an amended application for action the examiner should note in every letter all the requirements outstanding against the application. Every point in the prior action of an examiner which is still applicable must be repeated or referred to, to prevent the implied waiver of the requirement. Such requirements include requirements for information under 37 CFR 1.105 and MPEP § 704.10; however the examiner should determine whether any such requirement has been satisfied by a negative reply under 37 CFR 1.105(a)(3).
As soon as allowable subject matter is found, correction of all informalities then present should be required.
In order to provide a complete application file history and to enhance the clarity of the prosecution history record, an examiner must provide clear explanations of all actions taken by the examiner during prosecution of an application.
Where the requirements are traversed, or suspension thereof requested, the examiner should make proper reference thereto in their action on the amendment.
Where the applicant traverses any rejection, the examiner should, if they repeat the rejection, take note of the applicant’s argument and answer the substance of it.
If applicant’s arguments are persuasive and upon reconsideration of the rejection, the examiner determines that the previous rejection should be withdrawn, the examiner must provide in the next Office communication the reasons why the previous rejection is withdrawn by referring specifically to the page(s) and line(s) of applicant’s remarks which form the basis for withdrawing the rejection. It is not acceptable for the examiner to merely indicate that all of applicant’s remarks form the basis for withdrawing the previous rejection. Form paragraph 7.38.01 may be used. If the withdrawal of the previous rejection results in the allowance of the claims, the reasons, which form the basis for the withdrawal of the previous rejection, may be included in a reasons for allowance. See MPEP § 1302.14. If applicant’s arguments are persuasive and the examiner determines that the previous rejection should be withdrawn but that, upon further consideration, a new ground of rejection should be made, form paragraph 7.38.02 may be used. See MPEP § 706.07(a) to determine whether the Office action may be made final.
If a rejection of record is to be applied to a new or amended claim, specific identification of that ground of rejection, as by citation of the paragraph in the former Office letter in which the rejection was originally stated, should be given.
After an Office action, the reply (in addition to making amendments, etc.) may frequently include arguments and affidavits to the effect that the prior art cited by the examiner does not teach how to obtain or does not inherently yield one or more advantages (new or improved results, functions or effects), which advantages are urged to warrant issue of a patent on the allegedly novel subject matter claimed.
If it is the examiner’s considered opinion that the asserted advantages are not sufficient to overcome the rejection(s) of record, they should state the reasons for their position in the record, preferably in the action following the assertion or argument relative to such advantages. By so doing the applicant will know that the asserted advantages have actually been considered by the examiner and, if appeal is taken, the Patent Trial and Appeal Board will also be advised. See MPEP § 716 et seq. for the treatment of affidavits and declarations under 37 CFR 1.132.
The importance of answering applicant’s arguments is illustrated by In re Herrmann, 261 F.2d 598, 120 USPQ 182 (CCPA 1958) where the applicant urged that the subject matter claimed produced new and useful results. The court noted that since applicant’s statement of advantages was not questioned by the examiner or the Board, it was constrained to accept the statement at face value and therefore found certain claims to be allowable. See also In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688 (Fed. Cir. 1995) (Office failed to rebut applicant’s argument).
Form paragraphs 7.37 through 7.37.13 may be used where applicant’s arguments are not persuasive.
Form paragraphs 7.38 through 7.38.02 may be used where applicant’s arguments are moot or persuasive.
Applicant’s arguments filed [1] have been fully considered but they are not persuasive. [2]
1. The examiner must address all arguments which have not already been responded to in the statement of the rejection.
2. In bracket 2, provide explanation as to non-persuasiveness.
Applicant’s arguments with respect to claim(s) [1] have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
1. In bracket 1, insert the claim number(s).
2. The examiner must, however, address any arguments presented by the applicant which are still relevant to any references being applied.
Applicant’s arguments, see [1], filed [2], with respect to [3] have been fully considered and are persuasive. The [4] of [5] has been withdrawn.
1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection/objection.
2. In bracket 3, insert claim number, figure number, the specification, the abstract, etc.
3. In bracket 4, insert rejection or objection.
4. In bracket 5, insert claim number, figure number, the specification, the abstract, etc.
Applicant’s arguments, see [1], filed [2], with respect to the rejection(s) of claim(s) [3] under [4] have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of [5].
1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection.
2. In bracket 3, insert the claim number(s).
3. In bracket 4, insert the statutory basis for the previous rejection.
4. In bracket 5, insert the new ground(s) of rejection, e.g., different interpretation of the previously applied reference, newly found prior art reference(s), and provide an explanation of the rejection.
In response to applicant’s argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
This form paragraph must be preceded by form paragraph 7.37.
In response to applicant’s argument that [1], the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of bodily incorporation.
2. This form paragraph must be preceded by form paragraph 7.37.
In response to applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
This form paragraph must be preceded by form paragraph 7.37.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, [1].
1. In bracket 1, explain where the teaching, suggestion, or motivation for the rejection is found, either in the references, or in the knowledge generally available to one of ordinary skill in the art.
2. This form paragraph must be preceded by form paragraph 7.37.
In response to applicant’s argument that [1] is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, [2].
1. In bracket 1, enter the name of the reference which applicant alleges is nonanalogous.
2. In bracket 2, explain why the reference is analogous art.
3. This form paragraph must be preceded by form paragraph 7.37.
In response to applicant’s argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
This form paragraph must be preceded by form paragraph 7.37.
In response to applicant’s argument that [1], the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of results not contemplated by the prior art.
2. This form paragraph must be preceded by form paragraph 7.37.
In response to applicant’s argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., [1]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
1. In bracket 1, recite the features upon which applicant relies, but which are not recited in the claim(s).
2. This form paragraph must be preceded by form paragraph 7.37.
In response to applicant’s argument that [1], a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of intended use.
2. This form paragraph must be preceded by form paragraph 7.37.
Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) [1]. When reading the preamble in the context of the entire claim, the recitation [2] is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
1. In bracket 1, identify the claim(s) the applicant’s unpersuasive argument addresses.
2. In bracket 2, briefly restate the recitation about which applicant is arguing.
3. This form paragraph must be preceded by form paragraph 7.37.
Applicant’s arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
This form paragraph must be preceded by form paragraph 7.37.
Applicant’s arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
This form paragraph must be preceded by form paragraph 7.37.
In response to applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
This form paragraph must be preceded by form paragraph 7.37.
Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available, avoiding, however, undue multiplication of references. (See MPEP § 904.03.) Rejections on grounds such as lack of proper disclosure, lack of enablement, indefiniteness and res judicata should be applied where appropriate even though there may be a seemingly sufficient rejection on the basis of prior art. Where a non-prior art ground of rejection is proper, it should be stated with a full development of reasons rather than by a mere conclusion coupled with a boiler plate expression.
Certain technical rejections (e.g., negative limitations, indefiniteness) should not be made where the examiner, recognizing the limitations of the English language, is not aware of an improved manner of reciting the claimed invention.
Some situations exist where examination of an application appears best accomplished by limiting action on the claim thereof to a particular issue. These situations include the following:
On the other hand, a rejection on the grounds of res judicata, no prima facie showing for reissue, new matter, or inoperativeness (not involving perpetual motion) should be accompanied by rejection on all other available grounds.
See MPEP § 714, subsection II. G.
In every Office action, each pending claim should be mentioned by number, and its treatment or status given. Since a claim retains its original numeral throughout the prosecution of the application, its history through successive actions is thus easily traceable. Each action should include a summary of the status of all claims presented for examination. Form PTO-326 "Office Action Summary" should be used.
Claims retained after a restriction requirement (37 CFR 1.142 ) or election of species requirement (37 CFR 1.146 ) should be treated as set out in MPEP §§ 821 to 821.04(b).
See MPEP Chapter 2300 for treatment of claims in the application of losing party in interference.
The Index of Claims should be kept up to date as set forth in MPEP § 719.04.
When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.
This practice will expedite prosecution and offer a service to individual inventors not represented by a registered patent attorney or agent. Although this practice may be desirable and is permissible in any case deemed appropriate by the examiner, it is especially useful in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications.
When an application discloses patentable subject matter and it is apparent from the claims and applicant’s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and, when possible, should offer a definite suggestion for correction. Further, an examiner’s suggestion of allowable subject matter may justify indicating the possible desirability of an interview to accelerate early agreement on allowable claims.
If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, the examiner may note in the Office action that certain aspects or features of the patentable invention have not been claimed and that if properly claimed such claims may be given favorable consideration.
If a claim is otherwise allowable but is dependent on a canceled claim or on a rejected claim, the Office action should state that the claim would be allowable if rewritten in independent form.
Where the examiner is satisfied that the prior art has been fully developed and some of the claims are clearly allowable, the allowance of such claims should not be delayed.
Form paragraphs 7.43, 7.43.01, and 7.43.02 may be used to indicate allowable subject matter.
Claim [1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim [1] would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in this Office action.
This form paragraph is to be used when (1) the noted independent claim(s) or (2) the noted dependent claim(s), which depend from an allowable claim, have been rejected solely on the basis of35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and would be allowable if amended to overcome the rejection.
Claim [1] would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
This form paragraph is to be used only when the noted dependent claim(s), which depend from a claim that is rejected base
