When an application is in condition for allowance, except as to matters of form, the application will be considered special and prompt action taken to require correction of formal matters. See MPEP § 710.02(b).
When an application is apparently ready for allowance, it should be reviewed by the examiner to make certain that the whole application meets all formal and substantive (i.e., statutory) requirements and that the language of the claims is enabled by, and finds adequate descriptive support in, the application disclosure as originally filed. Neglect to give due attention to these matters may lead to confusion as to the scope of the patent.
There should be clear support or antecedent basis in the specification for the terminology used in the claims. Usually, the original claims follow the nomenclature of the specification; but sometimes in amending the claims or in adding new claims, applicant employs terms that do not appear in the specification. This may result in uncertainty as to the interpretation to be given such terms. See MPEP § 608.01(o). It should be noted, however, that exact terms need not be used in haec verba to satisfy the written description requirement of 35 U.S.C. 112(a). Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995); In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976). See also 37 CFR 1.121(e) which merely requires substantial correspondence between the language of the claims and the language of the specification.
The claims should be renumbered as required by 37 CFR 1.126, and particular attention should be given to claims dependent on previous claims to see that the numbering is consistent. See MPEP § 608.01(j) and § 608.01(n).
The abstract should be checked for an adequate and clear statement of the disclosed invention. See MPEP § 608.01(b). The length of the abstract should be limited to 150 words. For changes to the abstract by examiner’s amendment, see MPEP § 1302.04.
The title should also be checked. The title may not exceed 500 characters in length and must be as short and specific as possible. See 37 CFR 1.72. The title should be descriptive of the invention claimed, even though a longer title may result. If a satisfactory title is not supplied by the applicant, the examiner may change the title on or after allowance. See MPEP § 606 and § 606.01.
All amendments should be reviewed to assure that they were timely filed.
Whenever interlineations or cancellations have been made in the specification or amendments which would lead to confusion and mistake, the examiner should require the entire portion of specification affected to be rewritten before passing the application to issue. See 37 CFR 1.125 and MPEP § 608.01(q).
Form paragraph 13.01 should be used when making such a requirement.
The interlineations or cancellations made in the specification or amendments to the claims could lead to confusion and mistake during the issue and printing processes. Accordingly, the portion of the specification or claims as identified below is required to be rewritten before passing the case to issue. See 37 CFR 1.125 and MPEP § 608.01(q).
1. Specific discussion of the sections of the specification or claims required to be rewritten must be set forth.
2. See form paragraph 6.28.01 for a substitute specification.
A Notice of Allowability form PTOL-37 is used whenever an application has been placed in condition for allowance. The date of any communication and/or interview which resulted in the allowance should be included in the notice.
In all instances, both before and after final rejection, in which an application is placed in condition for allowance, applicant should be notified promptly of allowability of the claims by a Notice of Allowability PTOL-37. Prompt notice to applicant is important because it may avoid an unnecessary appeal and act as a safeguard against a holding of abandonment.
With the exception of the following no corrections or interlineations may be made by the examiner in the body of written portions of the specification or any other paper filed in the application for patent, except by examiner’s amendment approved by applicant and as described hereinafter. (See 37 CFR 1.121.):
The prior practice of informal examiner’s amendments are not permitted in Image File Wrapper (IFW) applications. Any amendment of an IFW application must be by way of an examiner’s amendment, as described below, or be an amendment made by the applicant.
For continuing applications filed under 37 CFR 1.53(b), a reference to a parent application in the first sentence(s) of the specification is no longer required when the reference appears in an Application Data Sheet. If a reference to the parent application has not been included in the first sentence(s) of the specification an examiner should not add a reference to the prior application without the approval of the applicant and an examiner’s amendment. If applicant has included a reference to the parent application, the examiner should review the statement and the application data sheet for accuracy. Applicant may decide to delete the benefit claim in the application filed under 37 CFR 1.53(b). Furthermore, a petition under 37 CFR 1.78 to accept an unintentionally delayed benefit claim may be required if the application is a utility or plant application filed on or after November 29, 2000. See MPEP § 211.04.
An examiner’s amendment may be used to correct informalities in the body of the written portions of the specification as well as all errors and omissions in the claims. The examiner’s amendment must be signed by the primary examiner, entered into the file and a copy sent to applicant. The examiner should determine if an extension of time is required for the entry of an examiner's amendment. See MPEP § 706.07(f), subsection II. The changes specified in the amendment are entered by the technical support staff in the regular way. An examiner’s amendment should include form paragraph 13.02 and form paragraph 13.02.01. Form paragraph 13.02.02 should be used if an extension of time is required.
An examiner’s amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
This form paragraph is NOT to be used in a reexamination proceeding (use form paragraph 22.06 instead).
Authorization for this examiner's amendment was given in an interview with [1] on [2].
An extension of time under 37 CFR 1.136(a) is required in order to make an examiner’s amendment that places this application in condition for allowance. During a conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension and authorized the following examiner’s amendment. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
1. See MPEP § 706.07(f) which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.
2. In no case can any extension carry the date for reply to an Office action beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
Although 37 CFR 1.121 has been amended to require amendments to the specification/claims to be made in compliance with 37 CFR 1.121(b)(1), (b)(2), or (c), where appropriate, 37 CFR 1.121(g) permits the Office to make amendments to the specification, including the claims, by examiner’s amendments without the need to comply with the requirements of 37 CFR 1.121(b)(1), (b)(2), or (c) in the interest of expediting prosecution and reducing cycle time. Examiners may continue to make additions or deletions of subject matter in the specification, including the claims, in examiner’s amendments by instructions to make the change at a precise location in the specification and/or the claims. Examiners may use an examiner’s amendment to correct a non-compliant amendment filed by the applicant if the amendment would otherwise place the application in condition for allowance (e.g., a reply to a non-final Office action or an after-final amendment includes an incorrect status identifier). See MPEP § 714, subsection II.E, Examiner’s Amendments.
As an alternative, the examiner’s amendment utilizing paragraph/claim replacement can be created by the examiner with authorization from the applicant. The examiner’s amendment can also be created from a facsimile transmission or emailed amendment received by the examiner and referenced in the examiner’s amendment and attached thereto. Any subject matter, in clean version form (containing no brackets or underlining), to be added to the specification/claims should be set forth separately by applicant in the email or facsimile submission apart from the remainder of the submission. A clean version of a paragraph/claim, or portion of a paragraph/claim, submitted by applicant in a fax or email, should be printed and attached to the examiner’s amendment and may be relied on as part of the examiner’s amendment. The examiner should mark "requested" on the entire attachment to indicate that the fax or email was requested by the examiner, so as to not lead to a reduction in patent term adjustment (37 CFR 1.704(c)(8) ). As the attachment is made part of the examiner’s amendment, it does not get a separate entry code and will not trigger any reduction in patent term adjustment. A paper copy of the entire email or facsimile submission should be entered in the application file. Examiners are not required to electronically save any emails once any emails or attachments thereto are printed and become part of an application file record. The email practice that is an exception for examiner’s amendments is restricted to emails to the examiner from the applicant and should not be generated by the examiner to the applicant unless such emails are in compliance with all of the requirements set out in MPEP § 502.03.
The amendment or cancellation of claims by examiner’s amendment is permitted when passing an application to issue where these changes have been authorized by applicant (or his/her attorney or agent) in an interview. The examiner’s amendment should indicate that the changes were authorized, the date and type of interview, and with whom it was held.
The examiner’s amendment practice may be used to make charges against deposit accounts or credit cards under special conditions.
An examiner’s amendment can be used to make a charge against a deposit account, provided prior approval is obtained from the applicant, attorney or agent, in order to expedite the issuance of a patent on an application otherwise ready for allowance. When such an examiner’s amendment is prepared, the prior approval is indicated by identification of the name of the authorizing party, the date and type (personal or telephone) of authorization, the purpose for which the charge is made (additional claims, etc.), and the deposit account number.
Charges can also be made against a credit card in an examiner’s amendment. Once the examiner has informed applicant of the required charges, applicant must submit by facsimile, a properly completed PTO-2038, authorizing the necessary charges. After completion of processing in the Office of Finance, form PTO-2038 will be removed from the record. Office employees may not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process or trademark process fee (as opposed to information product or service fees) to a credit card. Further identifying data, if deemed necessary and requested by the applicant, should also be included in the examiner’s amendment.
Form paragraph 13.06 may be used to charge an extension of time fee in an examiner’s amendment.
An extension of time under 37 CFR 1.136(a) is required to place this application in condition for allowance. During a telephone conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension.
1. See MPEP § 706.07(f), item J which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance. In no case can any extension carry the date for reply to an Office action beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
2. When an examiner’s amendment is also authorized, use form paragraph 13.02.02 instead.
At the time of allowance, substantive changes made by the examiner to the abstract must be done by an examiner’s amendment after first obtaining approval from the applicant. As noted by the court the abstract may be used to determine the meaning of claims. See Pandrol USA, LP v. Airboss Railway Products, Inc., 320 F.3d 1354, 1363 n.1, 65 USPQ2d 1985, 1996 n.1 (Fed. Cir. 2003), Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.1, 54 USPQ2d 1437, 1443 n.1 (Fed. Cir. 2000). Since the abstract may be relied upon to determine the scope of the claimed invention, examiners should review the abstract for compliance with 37 CFR 1.72(b) and point out defects noted to the applicant in the first Office action, or at the earliest point in the prosecution that the defect is noted, so that applicant may make the necessary changes to the abstract.
No examiner’s amendment may make substantive changes to the written portions of the specification, including the abstract, without first obtaining applicant’s approval.
For applications filed prior to September 16, 2012 a reference to a prior filed application, for which benefit is claimed, is required in either the first sentence(s) of the specification or in an Application Data Sheet. For applications filed after September 16, 2012 a reference to a prior filed application, for which benefit is claimed, is required in the Application Data Sheet. If the application data sheet fails to include a required reference applicant should be contacted to supply a Supplemental or Corrected Application Data Sheet, in compliance with 37 CFR 1.76(c). See MPEP § 601.05(a) and (b). To minimize the possibility of the claim for the benefit to an earlier filing date under 35 U.S.C. 119(e), 35 U.S.C. 120, 121, 365(c), or 386(c) being overlooked it is recommended that the statement, "This is a division (continuation, continuation-in-part) of Application Number -/---, filed ---" appear as the first sentence(s) of the specification. For design applications see MPEP § 1504.20. In the case of an application filed under 37 CFR 1.53(b) as a division, continuation or continuation-in-part of a CPA, there would be only one reference to the series of applications assigned the same application number with the filing date cited being that of the original non-continued application. In applications claiming the benefit under 35 U.S.C. 119(e), a statement such as "This application claims the benefit of U.S. Provisional Application No. 60/ - --, filed - --" should appear as the first sentence(s) of the specification. In addition, for an application which is claiming the benefit under 35 U.S.C. 120 of a prior application which in turn claims the benefit of a provisional application under 35 U.S.C. 119(e), a suitable reference would read, "This application is a continuation of U.S. Application No. 08/ - --, filed - --, now abandoned, which claims the benefit of U.S. Provisional Application No. 60/ - --, filed - --." Any such statements appearing elsewhere in the specification should be relocated.
References cited as being of interest by examiners when passing an application to issue will not be supplied to applicant, but foreign patent documents and non-patent literature will be scanned and added to the IFW for viewing and downloading by the applicant, if desired. The references will be cited as usual on form PTO-892, a copy of which will be attached to the Notice of Allowability, form PTOL-37.
Where an application is ready for issue except for a slight defect in the drawing not involving a change in structure, the examiner will prepare a letter indicating the change to be made and, if necessary, including a marked-up copy of the drawing showing the addition or alteration to be made. See MPEP § 608.02(w).
No other changes may be made by any person in any record of the U.S. Patent and Trademark office without the written approval of the Director of the United States Patent and Trademark Office.
In reviewing the application, all errors should be carefully noted. It is not necessary that the language be the best; it is, however, essential that it be clear in meaning, and free from errors in syntax. Any necessary examiner’s amendment is usually made at the time an application is being prepared for issue by the examiner and a copy of any examiner’s amendment is sent to the applicant as an attachment to the Notice of Allowability, PTOL-37.
Examiners will not cancel claims on the basis of an amendment which argues for certain claims and, alternatively, purports to authorize their cancellation by the examiner if other claims are allowed. See generally In re Willingham, 282 F.2d 353, 356, 127 USPQ 211, 215 (CCPA 1960).
In all instances, both before and after final rejection, in which an application is placed in condition for allowance as by an interview or amendment, applicant should be notified promptly of this fact by means of a Notice of Allowability (PTOL-37). See MPEP § 714.13 and § 1302.03.
If after reviewing, screening, or surveying an allowed application the Office of Patent Quality Assurance discovers any informality in the application suitable for correction by examiner’s amendment or in an informality in an examiner’s amendment, the Review Quality Assurance Specialist will return the application to the Technology Center (TC) personnel via the TC Director suggesting, as appropriate, specific changes for approval and correction by the examiner through the use of an examiner’s amendment.
Where the title of the invention is not specific to the invention as claimed, see MPEP § 606.01.
See MPEP § 821.01 and § 821.02.
See MPEP Chapter 2300.
See MPEP § 1214.06, § 1215.03, § 1215.04 and § 1216.01.
To identify a claim, an examiner’s amendment should refer to it by the original number and, if renumbered in the allowed application, also by the new number.
Any previously withdrawn claims that are being rejoined and allowed must be listed in the index of claims and on the Notice of Allowability to avoid a printer query. The examiner should notify the applicant of the rejoinder. See MPEP § 821.04.
Where an application otherwise ready for issue requires correction of the drawing, the application is processed for allowance in the Technology Center and then forwarded to the Office of Data Management. Any papers subsequently filed by the applicant, including replacement drawings, are matched with the application file. If the drawings that are received are still not acceptable for publishing, the Office will mail a "Notice to File Corrected Application Papers," giving the applicant a time period in which to file the corrected drawings. See MPEP § 608.02(z).
See MPEP § 202 and § 214.
When an application is in condition for allowance, an interference search must be made by using the most efficient and effective manner based on the claimed subject matter in the broadest claim (e.g., by performing a text search of the "US-PGPUB" database in EAST or WEST). Examiners are reminded that some applications, such as continuation-in-part applications, may contain claims entitled to different effective filing dates (see MPEP §§ 2133.01 and 2152.01), and that each effective filing date should be considered when performing the interference search. If the application contains a claim directed to a nucleotide or peptide sequence, the examiner must submit a request to STIC to perform an interference search of the sequence. If the search results identify any potential interfering subject matter, the examiner will review the application(s) with the potential interfering subject matter to determine whether interfering subject matter exists. If interfering subject matter does exist, the examiner will follow the guidance set forth in MPEP Chapter 2300. If there is no interfering subject matter then the examiner should prepare the application for issuance. The interference search must be made of record in the application file. See MPEP § 719.05, subsection III. The search for interfering applications must not be limited to only the classes or subgroups in which the application is classified, but must be extended to all classes in which it has been necessary to search in the examination of the application.
An interference search of those applications held under Secrecy Order, which are reviewed by Licensing and Review, may be required. Inspection of pertinent prints, drawings, brief cards, and applications will be done on request by an examiner associated with Licensing and Review.
The examiner preparing the application for issue completes the Issue Classification sheet.
Examiners must review the data regarding prior U.S. applications to make sure that the information is correct when preparing the application for issue. If any claim to domestic benefit under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) is added, deleted, and/or modified during prosecution of the application and such addition, deletion, and/or modification has been approved, the examiner must make sure that the information in the Patent Data Portal database is current and up to date. If the Patent Data Portal has not been updated, the application must be forwarded to the Technology Center (TC) Legal Instrument Examiner, with an explanation of the correction to be made. Examiners should also review the data regarding prior provisional and foreign applications for accuracy.
See MPEP § 202 for notations to be placed in the file history as to parent or prior U.S. applications, including provisional applications, and foreign patent applications.
See MPEP § 1302.13 for name of examiner.
Examiners, when preparing an application for issue, are to record the number of the claim selected for printing in the Official Gazette in the box labeled "PRINT CLAIM" on the Issue Classification Sheet.
The claim or claims should be selected in accordance with the following instructions:
When recording this information in the box provided, the following items should be kept in mind:
Examiners, when preparing an application for issue, are to record the figure selected for printing in the Official Gazette in the box labeled "Print Fig." on the Issue Classification sheet.
Ordinarily a single figure is selected for printing. This figure should be consistent with the claim to be printed in the Official Gazette. The figure to be printed in the Official Gazette must not be one that is labeled "prior art." If there is no figure illustrative of or helpful in understanding the claimed invention, no figure need be selected. "None" may be written in the box labeled "Print Fig."on the Issue Classification Sheet.
See MPEP §§ 903.07 and 905 through 907 for notations to be applied on the Issue Classification sheet. The Issue Classification sheet is automatically populated with the Cooperative Patent Classification symbols applied to a family of documents (continuations, divisionals, and/or foreign documents in the family). These symbols are based on the inventive concepts in the disclosure, rather than solely based on the claimed subject matter. As such, it is possible that an issue classification will include classification group/subgroup symbols that were not searched by the examiner.
In all reissue applications, the number of the original patent which is being reissued should be placed in the box provided therefor below the box for the applicant’s name.
All references which have been cited by the examiner during the prosecution, including those appearing in Patent Trial and Appeal Board decisions or listed in the reissue oath, must be listed on either a form PTO-892 or on an Information Disclosure Statement (PTO/SB/08 ) and initialed. All such reference citations will be printed in the patent. References listed by a patent examiner on a "Notice of References Cited," form PTO-892, will be indicated with an asterisk in the "References Cited" section of the front page of a patent document. An example of how the "References Cited" section of the patent will appear is as follows:
[56] References Cited
U.S. PATENT DOCUMENTS
2,234,192 * 7/1955 Greene.............................. 75/507
4,991,048 8/1990 Larkin................................206/207
5,000,186 12/1991 Amis.................................267/340
5,000,993 * 12/1991 Thomas et al....................75/507
FOREIGN PATENT DOCUMENTS
9500000 * 6/1995 Belgium..........................…75/507
200000 * 6/1990 Japan ………………………. 75/507
9400000 9/1994 United Kingdom.
OTHER PUBLICATIONS
Hill, "Ferrous Precipitation," Journal of the American Defenestration Association, Jan. 1989, Pages 34– 46.* Clymerhill-Irons, "Ferrous Ascension for the Eighties," Proceedings of the International Ferrous Ascension Society, Jan.– Mar. 1979, Pages 1111– 1163.
* cited by examiner
Indication of whether a reference was listed by the examiner will be helpful in compiling statistical data related to prior art submissions so that the USPTO can better consider whether changes are required to the rules governing prior art statements.
Indication of a reference with an asterisk should not be considered to reflect any significance other than that the reference was listed on a "Notice of References Cited," form PTO-892. When an examiner lists references on a form PTO-892, the examiner lists references that are relied upon in a prior art rejection or mentioned as pertinent. See MPEP § 707.05(c). The examiner does not list references which were previously cited by the applicant (and initialed by an examiner) on an Information Disclosure Statement, for example, on a PTO/SB/08. See MPEP § 609 and § 707.05(b), (c) and (d). No distinction will be made in the "References Cited" section for other sources of references. Thus, references cited in a protest, by an attorney or agent not acting in a representative capacity but on behalf of a single inventor, and by the applicant will not be distinguished.
At time of allowance, the examiner may cite pertinent art in an examiner’s amendment or statement of reasons for allowance. Such pertinent art should be listed as usual on form PTO-892, a copy of which is attached to the Notice of Allowability form PTOL-37. Such pertinent art is not sent to the applicant, but foreign patent documents and non-patent literature will be scanned and added to the Image File Wrapper (IFW) for viewing and downloading by the applicant, if desired. Such citation of art is important in the case of continuing applications where significant prior art is often of record in the parent case. In the rare instance where no art is cited in a continuation application, all the references cited during the prosecution of the parent application will be listed at allowance for printing in the patent. See MPEP § 707.05 and § 707.05(a).
When preparing an application for allowance, the technical support staff will verify that there is at least one list of references (PTO-892 or PTO/SB/08 ) in the application. The technical support staff will also verify that each reference on the Information Disclosure Statement has either been initialed by the examiner or lined-through by the examiner. All lists of references are maintained in the application file.
In the first action after termination of an interference or derivation, the examiner should make of record in each application all references not already of record which were pertinent to any preliminary motions and which were discussed in the decision on motion.
In any application, otherwise ready for issue, in which an erroneous citation has not been formally corrected in an official paper, the examiner is directed to correct the citation by an examiner’s amendment. See MPEP § 707.05(g).
Any new reference cited when the application is in issue, under the practice of MPEP § 1308.01, should be added by way of a PTO-892 or PTO/SB/08.
