Chapter 700 Examination of Applications ---SECTION---701 Statutory Authority for Examination 35 U.S.C. 131 Examination of application. The Commissioner shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Commissioner shall issue a patent therefor. The main conditions precedent to the grant of a patent to an applicant are set forth in 35 U.S.C. 101, 102 and 103. 35 U.S.C. 101 Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Form Paragraph 7.04 copies 35 U.S.C. 101. 35 U.S.C. 100 Definitions. When used in this title unless the context otherwise indicates - (a) The term "invention" means invention or discovery. (b) The term " process" means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. (c) The terms "United States" and "this country" mean the United States of America, its territories and possessions. (d) The word "patentee" includes not only the patentee to whom the patent was issued but also the successors in title to the patentee. ---SECTION---702 Requisites of the Application When a new application is assigned in the examining group, the examiner should review the contents of the application to determine if the application meets the requirements of 35 U.S.C. 111(a). Any matters affecting the filing date or abandonment of the application, such as lack of an oath or declaration, filing fee, or claims should be checked before the application is placed in the storage racks to await the first action. The examiner should be careful to see that the application meets all the requisites set forth in MPEP Chapter 600 both as to formal matters and as to the completeness and clarity of the disclosure. If all of the requisites are not met, applicant may be called upon for necessary amendments. Such amendments, however, must not include new matter. ---SECTION---702.01 Obviously Informal Cases When an application is reached for its first Office action and it is then discovered to be impractical to give a complete action on the merits because of an informal or insufficient disclosure, the following procedure may be followed: (A) A reasonable search should be made of the invention so far as it can be understood from the disclosure, objects of invention and claims and any apparently pertinent art cited. In the rare case in which the disclosure is so incomprehensible as to preclude a reasonable search the Office action should clearly inform applicant that no search was made; (B) Informalities noted by the Office of Initial Patent Examination (OIPE) and deficiencies in the drawing should be pointed out by means of attachments to the Office action (see MPEP Section 707.07(a)); (C) A requirement should be made that the specification be revised to conform to idiomatic English and United States practice; (D) The claims should be rejected as failing to define the invention in the manner required by 35 U.S.C. 112 if they are informal. A blanket rejection is usually sufficient. The examiner should attempt to point out the points of informality in the specification and claims. The burden is on the applicant to revise the application to render it in proper form for a complete examination. If a number of obviously informal claims are filed in an application, such claims should be treated as being a single claim for fee and examination purposes. It is obviously to applicant's advantage to file the application with an adequate disclosure and with claims which conform to the U.S. Patent and Trademark Office usages and requirements. This should be done whenever possible. If, however, due to the pressure of a Convention deadline or other reasons, this is not possible, applicants are urged to submit promptly, preferably within 3 months after filing, a preliminary amendment which corrects the obvious informalities. The informalities should be corrected to the extent that the disclosure is readily understood and the claims to be initially examined are in proper form, particularly as to dependency, and otherwise clearly define the invention. "New matter" must be excluded from these amendments since preliminary amendments do not enjoy original disclosure status. See MPEP Section 608.04(b). Whenever, upon examination, it is found that the terms or phrases or modes of characterization used to describe the invention are not sufficiently consonant with the art to which the invention pertains, or with which it is most nearly connected, to enable the examiner to make the examination specified in 37 CFR 1.104, the examiner should make a reasonable search of the invention so far as it can be understood from the disclosure. The action of the examiner may be limited to a citation of what appears to be the most pertinent prior art found and a request that applicant correlate the terminology of the specification with art-accepted terminology before further action is made. Use form paragraph 7.01 where the terminology is such that a proper search cannot be made. 7.01 Use of Terminology, Cannot Be Examined A preliminary examination of this application reveals that it includes terminology which is so different from that which is generally accepted in the art to which this invention pertains that a proper search of the prior art cannot be made. For example: [1] Applicant is required to provide a clarification of these matters or correlation with art-accepted terminology so that a proper comparison with the prior art can be made. Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed). A shortened statutory period for reply to this action is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. Examiner Note: 1. Use this or paragraph 7.02 when a proper search cannot be made. However, see MPEP Section 702.01 which requires a reasonable search. 2. In bracket 1, fill in an appropriate indication of the terminology, properties, units of data, etc. that are the problem as well as the pages of the specification involved. 3. For the procedure to be followed when only the drawing is informal, see MPEP Section Section 608.02(a) and 608.02(b). Use form paragraph 7.02 where the application is so incomprehensible that a reasonable search cannot be made. 7.02 Disclosure Is Incomprehensible The disclosure is objected to under 37 CFR 1.71, as being so incomprehensible as to preclude a reasonable search of the prior art by the examiner. For example, the following items are not understood: [1] Applicant is required to submit an amendment which clarifies the disclosure so that the examiner may make a proper comparison of the invention with the prior art. Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed). A shortened statutory period for reply to this action is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. Examiner Note: 1. Use this paragraph when a search cannot be made. 2. In bracket 1, indicate the page numbers and features which are not understood. 3. See form paragraphs 6.28 and 6.30 for improper idiomatic English. Use form paragraph 7.03 where the invention cannot be understood because of illegible handwritten pages. 7.03 Pages Are Illegible The examiner cannot understand the invention because certain portions of the disclosure are illegible. The illegible portion(s) consist of [1]. Applicant is required to submit an appropriate amendment rectifying this deficiency. In the alternative, a substitute specification under 37 CFR 1.125(b), may be filed. The substitute specification must be accompanied by: (1) a statement that the substitute specification contains no new matter; and (2) a marked-up copy showing the amendments to be made via the substitute specification relative to the specification at the time the substitute specification is filed. A shortened statutory period for reply to this action is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. Examiner Note: 1. In bracket 1, identify the portions of the specification which are illegible. 2. This form paragraph is to be used only when the invention cannot be understood because of the illegible material, see MPEP Section 702.01. 3. See Chapter 1700 for handwritten specifications filed by pro se applicants. 4. Use form paragraph 7.02 when the disclosure is incomprehensible. For the procedure to be followed when only the drawing is informal, see MPEP Section 608.02(a) and Section 608.02(b). ---SECTION---703 "General Information Concerning Patents" The pamphlet "General Information Concerning Patents" for use by applicants contemplating the filing or prosecution of their own applications, may be purchased from the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402. The pamphlet is also available from the PTO Web page at: http://www.uspto.gov. ---SECTION---704 Search After reading the specification and claims, the examiner searches the prior art. The subject of searching is more fully treated in MPEP Chapter 900. See especially MPEP Section 904 through Section 904.02. The invention should be thoroughly understood before a search is undertaken. However, informal cases, or those which can only be imperfectly understood when they come up for action in their regular turn are also given a search, in order to avoid piecemeal prosecution. PREVIOUS EXAMINER'S SEARCH When an examiner is assigned to act on an application which has received one or more actions by some other examiner, full faith and credit should be given to the search and action of the previous examiner unless there is a clear error in the previous action or knowledge of other prior art. In general the second examiner should not take an entirely new approach to the case or attempt to reorient the point of view of the previous examiner, or make a new search in the mere hope of finding something. See MPEP Section 719.05. ---SECTION---705 Patentability Reports Where an application, properly assigned to one examining group, is found to contain one or more claims, per se, classifiable in one or more other groups, which claims are not divisible inter se or from the claims which govern classification of the application in the first group, the application may be referred to the other group or groups concerned for a report as to the patentability of certain designated claims. This report is known as a Patentability Report (P.R.) and is signed by the primary examiner in the reporting group. The report, if legibly written, need not be typed. Note that the Patentability Report practice is only to be used in extraordinary circumstances. See MPEP Section 705.01(e). ---SECTION---705.01 Instructions re Patentability Reports When an application comes up for any action and the primary examiners involved (i.e., from both the requesting and the requested group) agree that a Patentability Report is necessary, and if the Group Director of the requesting group approves, the application is forwarded to the proper group with a memorandum attached, for instance, "For Patentability Report from group -- as to claims --." ---SECTION---705.01(a) Nature of P.R., Its Use and Disposal The primary examiner in the group from which the Patentability Report is requested, if he or she approves the request, will direct the preparation of the Patentability Report. This Patentability Report is written or typed on a memorandum form and will include the citation of all pertinent references and a complete action on all claims involved. The field of search covered should be endorsed on the file wrapper by the examiner making the report. When an examiner to whom an application has been forwarded for a Patentability Report is of the opinion that final action is in order as to the referred claims, he or she should so state. The Patentability Report when signed by the primary examiner in the reporting group will be returned to the group to which the application is regularly assigned and placed in the file wrapper. The examiner preparing the Patentability Report will be entitled to receive an explanation of the disclosure from the examiner to whom the case is assigned to avoid duplication of work. If the primary examiner in a reporting group is of the opinion that a Patentability Report is not in order, he or she should so advise the primary examiner in the forwarding group. DISAGREEMENT AS TO CLASSIFICATION Conflict of opinion as to classification may be referred to a patent classifier for decision. If the primary examiner in the group having jurisdiction of the application agrees with the Patentability Report, he or she should incorporate the substance thereof in his or her action, which action will be complete as to all claims. The Patentability Report in such a case is not given a paper number but is allowed to remain in the file until the application is finally disposed of by allowance or abandonment, at which time it should be removed. DISAGREEMENT ON PATENTABILITY REPORT If the primary examiner does not agree with the Patentability Report or any portion thereof, he or she may consult with the primary examiner responsible for the report. If agreement as to the resulting action cannot be reached, the primary examiner having jurisdiction of the case need not rely on the Patentability Report but may make his or her own action on the referred claims, in which case the Patentability Report should be removed from the file. APPEAL TAKEN When an appeal is taken from the rejection of claims, all of which are examinable in the group preparing a Patentability Report, and the application is otherwise allowable, formal transfer of the application to said group should be made for the purpose of appeal only. The receiving group will take jurisdiction of the application and prepare the examiner's answer. At the time of allowance, the application may be sent to issue by said group with its classification determined by the controlling claims remaining in the case. ---SECTION---705.01(b) Sequence of Examination In the event that the supervisory patent examiners concerned in a P.R. case cannot agree as to the order of examination by their groups, the supervisory patent examiner having jurisdiction of the application will direct that a complete search be made of the art relevant to his or her claims prior to referring the application to another group for report. The group to which the application is referred will be advised of the results of this search. If the supervisory patent examiners are of the opinion that a different sequence of search is expedient, the order of search should be correspondingly modified. ---SECTION---705.01(c) Counting and Recording P.R.'s The forwarding of the application for a Patentability Report is not to be treated as a transfer by the forwarding group. When the P.R. is completed and the application is ready for return to the forwarding group, it is not counted either as a receipt or action by transfer. Credit, however, is given for the time spent. The date status of the application in the reporting group will be determined on the basis of the dates in the group of original jurisdiction. To ensure orderly progress in the reported dates, a timely reminder should be furnished to the group making the P.R. ---SECTION---705.01(d) Duplicate Prints of Drawings In Patentability Report applications having drawings, the examiner to whom the case is assigned will furnish to the group to which the application is referred, prints of such sheets of the drawings as are applicable, for interference search purposes. That this has been done may be indicated by a pencil notation on the file wrapper. When an application that has had Patentability Report prosecution is passed for issue or becomes abandoned, NOTIFICATION of this fact will AT ONCE be given by the group having jurisdiction of the application to each group that submitted a Patentability Report. The examiner of each such reporting group will note the date of allowance or abandonment on the duplicate set of prints. At such time as these prints become of no value to the reporting group, they may be destroyed. ---SECTION---705.01(e) Limitation as to Use The above outlined Patentability Report practice is not obligatory and should be resorted to only where it will save total examiner time or result in improved quality of action due to specialized knowledge. A saving of total examiner time that is required to give a complete examination of an application is of primary importance. Patentability Report practice is based on the proposition that when plural, indivisible inventions are claimed, in some instances either less time is required for examination, or the results are of better quality, when specialists on each character of claimed invention treat the claims directed to their specialty. However, in many instances a single examiner can give a complete examination of as good quality on all claims, and in less total examiner time than would be consumed by the use of the Patentability Report practice. Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper. Exemplary situation where Patentability Reports are ordinarily not proper are as follows: (A) Where the claims are related as a manufacturing process and a product defined by the process of manufacture. The examiner having jurisdiction of the process can usually give a complete, adequate examination in less total examiner time than would be consumed by the use of a Patentability Report. (B) Where the claims are related as product and a process which involves merely the fact that a product having certain characteristics is made. The examiner having jurisdiction of the product can usually make a complete and adequate examination. (C) Where the claims are related as a combination distinguished solely by the characteristics of a subcombination and such subcombination, per se. The examiner having jurisdiction of the subcombination can usually make a complete and adequate examination. Where it can be shown that a Patentability Report will save total examiner time, one is permitted with the approval of the Group Director of the group to which the application is assigned. The "Approved" stamp should be impressed on the memorandum requesting the Patentability Report. ---SECTION---705.01(f) Interviews With Applicants In situations where an interview is held on an application in which a Patentability Report has been adopted, the reporting group may be called on for assistance at the interview when it concerns claims treated by them. See MPEP Section 713 to Section 713.10 regarding interviews in general. ---SECTION---706 Rejection of Claims After the application has been read and the claimed invention understood, a prior art search for the claimed invention is made. With the results of the prior art search, including any references provided by the applicant, the patent application should be reviewed and analyzed in conjunction with the state of the prior art to determine whether the claims define a useful, novel, nonobvious, and enabled invention that has been clearly described in the specification. The goal of examination is to clearly articulate any rejection early in the prosecution process so that the applicant has the opportunity to provide evidence of patentability and otherwise reply completely at the earliest opportunity. The examiner then reviews all the evidence, including arguments and evidence responsive to any rejection before issuing the next Office action. Although this part of the Manual explains the procedure in rejecting claims, the examiner should never overlook the importance of his or her role in allowing claims which properly define the invention. 37 CFR 1.104 Nature of examination. +++ (c) Rejection of claims. (1) If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected. (2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. (3) In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section. (4) Subject matter which is developed by another person which qualifies as prior art only under 35 U.S.C. 102(f) or (g) may be used as prior art under 35 U.S.C. 103 against a claimed invention unless the entire rights to the subject matter and the claimed invention were commonly owned by the same person or organization or subject to an obligation of assignment to the same person or organization at the time the claimed invention was made. (5) The claims in any original application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the same subject matter is claimed in the application and the statutory invention registration. The claims in any reissue application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the reissue application seeks to claim subject matter: (i) Which was not covered by claims issued in the patent prior to the date of publication of the statutory invention registration; and (ii) Which was the same subject matter waived in the statutory invention registration. +++ UNIFORM APPLICATION OF THE PATENTABILITY STANDARD The standards of patentability applied in the examination of claims must be the same throughout the Office. In every art, whether it be considered "complex," "newly developed," "crowded," or "competitive," all of the requirements for patentability (e.g., novelty, usefulness and unobviousness, as provided in 35 U.S.C. 101, 102, and 103) must be met before a claim is allowed. The mere fact that a claim recites in detail all of the features of an invention (i.e., is a "picture" claim) is never, in itself, justification for the allowance of such a claim. An application should not be allowed , unless and until issues pertinent to patentability have been raised and resolved in the course of examination and prosecution, since otherwise the resultant patent would not justify the statutory presumption of validity (35 U.S.C. 282), nor would it "strictly adhere" to the requirements laid down by Congress in the 1952 Act as interpreted by the Supreme Court. The standard to be applied in all cases is the "preponderance of the evidence" test. In other words, an examiner should reject a claim if, in view of the prior art and evidence of record, it is more likely than not that the claim is unpatentable. DEFECTS IN FORM OR OMISSION OF A LIMITATION; CLAIMS OTHERWISE ALLOWABLE When an application discloses patentable subject matter and it is apparent from the claims and the 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. PATENTABLE SUBJECT MATTER DISCLOSED BUT NOT CLAIMED 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, he or she 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. RECONSIDERATION OF CLAIMS AFTER REPLY BY APPLICANT 37 CFR 1.112 Reconsideration before final action. After reply by applicant or patent owner (Section 1.111) to a non-final action, the application or patent under reexamination will be reconsidered and again examined. The applicant or patent owner will be notified if claims are rejected, or objections or requirements made, in the same manner as after the first examination. Applicant or patent owner may reply to such Office action in the same manner provided in Section 1.111, with or without amendment, unless such Office action indicates that it is made final (Section 1.113). 37 CFR 1.112 provides for the reconsideration and continued examination of an application or a patent under reexamination after reply by the applicant or the patent owner. If claims are rejected, or objections or requirements made, applicant or patent owner will be notified in the same manner as after the first examination. Applicant or patent owner may reply to such Office action in the same manner provided in 37 CFR 1.111, with or without amendment, unless such Office action indicates that it is made final (37 CFR 1.113). REJECTIONS IN STATUTORY INVENTION REGISTRATIONS See MPEP Chapter 1100 for rejection of claims in an application for a Statutory Invention Registration. ---SECTION---706.01 Contrasted With Objections The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a "rejection." The term "rejected" must be applied to such claims in the examiner's action. If the form of the claim (as distinguished from its substance) is improper, an "objection" is made. An example of a matter of form as to which objection is made is dependency of a claim on a rejected claim, if the dependent claim is otherwise allowable. See MPEP Section 608.01(n). The practical difference between a rejection and an objection is that a rejection, involving the merits of the claim, is subject to review by the Board of Patent Appeals and Interferences, while an objection, if persisted, may be reviewed only by way of petition to the Commissioner. Similarly, the Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board. These formal matters should not be combined in appeals to the Board. ---SECTION---706.02 Rejection on Prior Art 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless - (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States, or (c) he has abandoned the invention, or (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or (e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent, or (f) he did not himself invent the subject matter sought to be patented, or (g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. 35 U.S.C. 103 Conditions for patentability; non-obvious subject matter. (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. (b)(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if- (A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and (B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person. (2) A patent issued on a process under paragraph (1)- (A) shall also contain the claims to the composition of matter used in or made by that process, or (B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154 (3) For purposes of paragraph (1), the term `biotechnological process' means- (A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to- (i) express an exogenous nucleotide sequence, (ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence or (iii) express a specific physiological characteristic not naturally associated with said organism; (B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and (C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B). (c) Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. By far the most frequent ground of rejection is on the ground of unpatentability in view of the prior art, that is, that the claimed subject matter is either not novel under 35 U.S.C. 102, or else it is obvious under 35 U.S.C. 103. The language to be used in rejecting claims should be unequivocal. See MPEP Section 707.07(d). CHOICE OF PRIOR ART; BEST AVAILABLE Prior art rejections should ordinarily be confined strictly to the best available art. Exceptions may properly be made, for example, where: (A) the propriety of a 35 U.S.C. 102 or 103 rejection depends on a particular interpretation of a claim; (B) a claim is met only in terms by a reference which does not disclose the inventive concept involved; or (C) the most pertinent reference seems likely to be antedated by a 37 CFR 1.131 affidavit or declaration. Such rejections should be backed up by the best other art rejections available. Merely cumulative rejections, i.e., those which would clearly fall if the primary rejection were not sustained, should be avoided. See also MPEP Section 707.05. REEXAMINATION For scope of rejections in reexamination proceedings see MPEP Section 2258. DISTINCTION BETWEEN 35 U.S.C. 102 AND 103 The distinction between rejections based on 35 U.S.C. 102 and those based on 35 U.S.C. 103 should be kept in mind. Under the former, the claim is anticipated by the reference. No question of obviousness is present. In other words, for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention either explicitly or impliedly. Any feature not directly taught must be inherently present. Whereas, in a rejection based on 35 U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. The modification must be one which would have been obvious to one of ordinary skill in the art at the time the invention was made. See MPEP Section 2131 - Section 2146 for guidance on patentability determinations under 35 U.S.C. 102 and 103. DETERMINING THE EFFECTIVE FILING DATE OF THE APPLICATION The effective filing date of a U.S. application may be determined as follows: (A) If the application is a continuation or divisional of one or more earlier U.S. applications and if the requirements of 35 U.S.C. 120 have been satisfied, the effective filing date is the same as the earliest filing date in the line of continuation or divisional applications. (B) If the application is a continuation-in-part of an earlier U.S. application, any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the filing date of the new application. Any claims which are fully supported under 35 U.S.C. 112 by the earlier parent application have the effective filing date of that earlier parent application. (C) If the application claims foreign priority under 35 U.S.C. 119(a)-(d), the effective filing date is the filing date of the U.S. application, unless situation 1 or 2 as set forth above applies. The filing date of the foreign priority document is not the effective filing date, although the filing date of the foreign priority document may be used to overcome certain references. See MPEP Section 706.02(b) and Section 2136.05. (D) If the application is entitled to priority under 35 U.S.C. 119(e) from a provisional application, the effective filing date is the filing date of the provisional application. See MPEP Section 1893.03(b) for determining the effective filing date of an application filed under 35 U.S.C. 371. See MPEP Section 201.11(a) and Section 1895 for determining the effective filing date of a continuation, divisional, or continuation-in-part of a PCT application designating the U.S. See also MPEP Section 1895.01 and Section 1896 which discuss differences between applications filed under 35 U.S.C. 111(a) and 35 U.S.C. 371. ---SECTION---706.02(a) Rejections Under 35 U.S.C. 102(a), (b), or (e); Printed Publication or Patent Once the examiner conducts a search and finds a printed publication or patent which discloses the claimed invention, the examiner should determine whether the rejection should be made under 35 U.S.C. 102(a), (b), or (e). In order to determine which section of 35 U.S.C. 102 applies, the effective filing date of the application must be determined and compared with the date of the reference. See MPEP Section 706.02 regarding determination of effective filing date of the application. DETERMINING THE REFERENCE ISSUE OR PUBLICATION DATE The examiner must also determine the issue or publication date of the reference so that a proper comparison between the application and reference dates can be made. Where the last day of the year dated from the date of publication falls on a Saturday, Sunday or Federal holiday, the publication is not a statutory bar under 35 U.S.C. 102(b) if the application was filed on the next succeeding business day. Ex parte Olah, 131 USPQ 41 (Bd. App. 1960) (The Board in Olah held that 35 U.S.C. 21(b) is applicable to the filing of an original application for patent and that applicant's own activity will not bar a patent if the 1-year grace period expires on a Saturday, Sunday, or Federal holiday and the application's U.S. filing date is the next succeeding business day.) Despite changes to 37 CFR 1.6(a)(2) and 1.10 which permit the PTO to accord a filing date to an application as of the date of deposit as "Express Mail" with the U.S. Postal Service in accordance with 37 CFR 1.10 (e.g., a Saturday filing date), the rule changes do not affect applicant's concurrent right to defer the filing of an application until the next business day when the last day for "taking any action" falls on a Saturday, Sunday, or Federal holiday (e.g., the last day of the 1-year grace period falls on a Saturday). It should also be noted that a magazine is effective as a printed publication under 35 U.S.C. 102(b) as of the date it reached the addressee and not the date it was placed in the mail. Protein Foundation Inc. v. Brenner, 260 F. Supp. 519, 151 USPQ 561 (D.D.C. 1966). See MPEP Section 707.05(f). For foreign patents see MPEP Section 901.05. See MPEP Section 2124, Section 2126, and Section 2128 - Section 2128.02 for case law relevant to reference date determination. DETERMINING WHETHER TO APPLY 35 U.S.C. 102(a), (b), or (e) First, the examiner should consider whether the reference qualifies as prior art under 35 U.S.C. 102(b) because this section results in a statutory bar to obtaining a patent. If the publication or issue date of the reference is more than 1 year prior to the effective filing date of the application (MPEP Section 706.02), the reference qualifies as prior art under 35 U.S.C. 102(b). If the publication or issue date of the reference is too recent for 35 U.S.C. 102(b) to apply, then the examiner should consider 35 U.S.C. 102(e). For 35 U.S.C. 102(e) to apply: (A) The reference must be a U.S. Patent with a filing date earlier than the effective filing date of the application. Note that, for purposes of 35 U.S.C. 102(e), the filing date of the reference patent which has issued on an application entitled to priority from a provisional application under 35 U.S.C. 119(e) is the filing date of the provisional application, except for a patent granted on an international application (PCT) in which applicant has fulfilled the requirements of paragraphs (1), (2) and (4) of 35 U.S.C. 371. The filing date of a patent granted on such a 35 U.S.C. 371 application is the date on which paragraphs (1), (2) and (4) of 35 U.S.C. 371 have been fulfilled; and (B) The inventive entity of the application must be different than that of the reference. Note that, where there are joint inventors, only one inventor need be different for the inventive entities to be different and a rejection under 35 U.S.C. 102(e) is applicable even if there are some common inventors. If 35 U.S.C. 102(e) does not apply, then the examiner should consider 35 U.S.C. 102(a). For 35 U.S.C. 102(a) to apply, the reference must have a publication date earlier in time than the effective filing date of the application, and must not be applicant's own work. ---SECTION---706.02(b) Overcoming a 35 U.S.C. 102 Rejection Based on a Printed Publication or Patent A rejection based on 35 U.S.C. 102(b) can be overcome by: (A) Persuasively arguing that the claims are patentably distinguishable from the prior art; or (B) Amending the claims to patentably distinguish over the prior art. A rejection based on 35 U.S.C. 102(e) can be overcome by: (A) Persuasively arguing that the claims are patentably distinguishable from the prior art; (B) Amending the claims to patentably distinguish over the prior art; (C) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by "another." See MPEP Section 715.01(a), Section 715.01(c), and Section 716.10; (D) Filing an affidavit or declaration under 37 CFR 1.131 showing prior invention, if the reference is not a U.S. patent (or application in the case of a provisional rejection) claiming the same patentable invention as defined in 37 CFR 1.601(n). See MPEP Section 715 for more information on 37 CFR 1.131 affidavits. When the claims of the reference and the application are directed to the same invention or are obvious variants, an affidavit or declaration under 37 CFR 1.131 is not an acceptable method of overcoming the rejection. Under these circumstances, the examiner must determine whether a double patenting rejection or interference is appropriate. If there is a common assignee or inventor between the application and patent, a double patenting rejection must be made. See MPEP Section 804. If there is no common assignee or inventor and the rejection under 35 U.S.C. 102(e) is the only possible rejection, the examiner must determine whether an interference should be declared. See MPEP Chapter 2300 for more information regarding interferences; (E) Perfecting a claim to priority under 35 U.S.C. 119(a)-(d). The foreign priority filing date must antedate the reference and be perfected. The filing date of the priority document is not perfected unless applicant has filed a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55) and the examiner has established that the priority document satisfies the enablement and description requirements of 35 U.S.C. 112, first paragraph; or (F) Perfecting priority under 35 U.S.C. 119(e) by amending the specification of the application to contain a specific reference to a provisional application in accordance with 37 CFR 1.78(a)(4). A rejection based on 35 U.S.C. 102(a) can be overcome by: (A) Persuasively arguing that the claims are patentably distinguishable from the prior art; (B) Amending the claims to patentably distinguish over the prior art; (C) Filing an affidavit or declaration under 37 CFR 1.131. See MPEP Section 715 for information on the requirements of 37 CFR 1.131 affidavits. (D) Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by "another." See MPEP Section 715.01(a), Section 715.01(c), and Section 716.10; (E) Perfecting a claim to priority under 35 U.S.C. 119(a)-(d) as explained in reference to 35 U.S.C. 102(e) above; (F) Perfecting priority under 35 U.S.C. 119(e) by amending the specification of the application to contain a specific reference to a provisional application in accordance with 37 CFR 1.78(a)(4). ---SECTION---706.02(c) Rejections Under 35 U.S.C. 102(a) or (b); Knowledge by Others or Public Use or Sale An applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant or known by others in this country. The language "in this country" means in the United States only and does not include other WTO or NAFTA member countries. In these cases the examiner must determine if 35 U.S.C. 102(a) or 102(b) applies. See MPEP Section 2133.03 for a discussion of case law treating the "public use" and "on sale" statutory bars. If the activity is by an entity other than the inventors or assignee, such as sale by another, manufacture by another or disclosure of the invention by applicant to another then both 35 U.S.C. 102(a) and (b) may be applicable. If the evidence only points to knowledge within the year prior to the effective filing date then 35 U.S.C. 102(a) applies. However, no rejection under 35 U.S.C. 102(a) should be made if there is evidence that applicant made the invention and only disclosed it to others within the year prior to the effective filing date. 35 U.S.C. 102(b) is applicable if the activity occurred more than 1 year prior to the effective filing date of the application. See MPEP Section 2133.03 for a discussion of "on sale" and "public use" bars under 35 U.S.C. 102(b). Note that as an aid to resolving public use or on sale issues, as well as to other related matters of 35 U.S.C. 102(b) activity, an applicant may be required to answer specific questions posed by the examiner and to explain or supplement any evidence of record. See 35 U.S.C. 132, 37 CFR 1.104(a)(2). Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. A 1- or 2-month time period should be set by the examiner for any reply to the requirement, unless the requirement is part of an Office action having a shortened statutory period, in which case the period for reply to the Office action will also apply to the requirement. If applicant fails to reply in a timely fashion to a requirement for information, the application will be regarded as abandoned. 35 U.S.C. 133. See MPEP Section 2133.03. If there is not enough information on which to base a public use or on sale rejection, the examiner should make a requirement for more information. Form paragraph 7.104 can be used. 7.104 Requirement for Information, Public Use or Sale An issue of public use or on sale activity has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under 35 U.S.C. 102(b), additional information regarding this issue is required as follows: [1] Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment. Examiner Note: 1. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. See MPEP Section 2133.03. 2. A one or two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having an SSP, in which case the period for reply will apply also to the requirement. 3. If sufficient evidence already exists to establish a prima facie case of public use or on sale, use form paragraph 7.16 to make a rejection under 35 U.S.C. 102(b). See MPEP Section 2133.03. ---SECTION---706.02(d) Rejections Under 35 U.S.C. 102(c) Under 35 U.S.C. 102(c), abandonment of the "invention" (as distinguished from abandonment of an application) results in loss of right to a patent. See MPEP Section 2134 for case law which sets forth the criteria for abandonment under 35 U.S.C. 102(c). ---SECTION---706.02(e) Rejections Under 35 U.S.C. 102(d) 35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a statutory bar against the granting of a patent in this country: (A) The foreign application must be filed more than 12 months before the effective filing date of the United States application. See MPEP Section 706.02 regarding determination of the effective filing date of the application. (B) The foreign and United States applications must be filed by the same applicant, his or her legal representatives or assigns. (C) The foreign application must have actually issued as a patent or inventor's certificate (e.g., granted by sealing of the papers in Great Britain) before the filing in the United States. It need not be published but the patent rights granted must be enforceable. (D) The same invention must be involved. If such a foreign patent or inventor's certificate is discovered by the examiner, the rejection is made under 35 U.S.C. 102(d) on the ground of statutory bar. See MPEP Section 2135.01 for case law which further clarifies each of the four requirements of 35 U.S.C. 102(d). SEARCHING FOR 35 U.S.C. 102(d) PRIOR ART The examiner should only undertake a search for an issued foreign patent for use as 35 U.S.C. 102(d) prior art if there is a reasonable possibility that a foreign patent covering the same subject matter as the U.S. application has been granted to the same inventive entity before the U.S. effective filing date, i.e., the time period between foreign and U.S. filings is greater than the usual time it takes for a patent to issue in the foreign country. Normally, the probability of the inventor's foreign patent issuing before the U.S. filing date is so slight as to make such a search unproductive. However, it should be kept in mind that the average pendency varies greatly between foreign countries. In Belgium, for instance, a patent may be granted in just a month after its filing, while in Japan the patent may not issue for a decade. The search for a granted patent can be accomplished on an electronic database either by the examiner or by the staff of the Scientific and Technical Information Center. See MPEP Section 901.06(a), paragraph IV.B., for more information on online searching. The document must be a patent or inventor's certificate and not merely a published or laid open application. ---SECTION---706.02(f) Provisional Rejections Under 35 U.S.C. 102(e); Reference Is a Copending U.S. Patent Application If a copending U.S. patent application discloses subject matter which would anticipate the claims in another pending U.S. application which has a different inventive entity, the examiner should determine whether a provisional 35 U.S.C. 102(e) rejection can be made. I. COPENDING U.S. APPLICATIONS HAVING AT LEAST ONE COMMON INVENTOR OR ARE COMMONLY ASSIGNED If (1) at least one common inventor exists between the applications or the applications are commonly assigned and (2) the effective filing dates are different, then a provisional rejection of the later filed application should be made. The provisional rejection is appropriate because if the earlier filed application becomes a patent it would constitute actual prior art under 35 U.S.C. 102. Since neither application is published at the time of the provisional rejection, the rejection must be made under 35 U.S.C. 102(e). A provisional rejection under 35 U.S.C. 102(e) can be overcome in the same manner that a 35 U.S.C. 102(e) rejection can be overcome. See MPEP Section 706.02(b). The provisional rejection can also be overcome by abandoning the applications and filing a new application containing the subject matter of both. Form paragraph 7.15.01 should be used when making a provisional rejection under 35 U.S.C. 102(e). 7.15.01 Provisional Rejection, 35 U.S.C. 102(e) - Common Assignee or At Least One Common Inventor Claim [1] provisionally rejected under 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(e), if patented. This provisional rejection under 35 U.S.C. 102(e) is based upon a presumption of future patenting of the copending application. [4]. This provisional rejection under 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention "by another," or by an appropriate showing under 37 CFR 1.131. This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). Examiner Note: 1. This paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses the claimed invention. The copending application must have either a common assignee or at least one common inventor. 2. If the claims are obvious over the invention disclosed in the other copending application, use paragraph 7.21.01. 3. In bracket 3, insert either --assignee-- or --inventor--. 4. In bracket 4, an appropriate explanation may be provided in support of the examiner's position on anticipation, if necessary. 5. If the claims of the copending application conflict with the claims of the instant application, a provisional double patenting rejection should also be given using paragraphs 8.30 and 8.32. 6. If evidence is additionally of record to show that either invention is prior art unto the other under 35 U.S.C. 102(f) or (g), a rejection using paragraphs 7.13 and/or 7.14 should also be made. II. COPENDING APPLICATIONS HAVING NO COMMON INVENTOR OR ASSIGNEE If there is no common assignee or common inventor, the confidential status of applications under 35 U.S.C. 122 must be maintained and no rejection can be made relying on the earlier filed application as prior art under 35 U.S.C. 102(e). If the filing dates of the applications are within 6 months of each other (3 months for simple subject matter) then interference may be proper. See MPEP Chapter 2300. Otherwise, the application with the earliest effective U.S. filing date must be allowed to issue. After the allowed application is published, it can be used as a reference in a rejection under 35 U.S.C. 102(e) in the still pending application. ---SECTION---706.02(g) Rejections Under 35 U.S.C. 102(f) 35 U.S.C. 102(f) bars the issuance of a patent where an applicant did not invent the subject matter being claimed and sought to be patented. See also, 35 U.S.C. 101, which requires that whoever invents or discovers is the party who may obtain a patent for the particular invention or discovery. The examiner must presume the applicants are the proper inventors unless there is proof that another made the invention and that applicant derived the invention from the true inventor. See MPEP Section 2137 - Section 2137.02 for more information on the substantive requirements of rejections under 35 U.S.C. 102(f). ---SECTION---706.02(h) Rejections Under 35 U.S.C. 102(g) 35 U.S.C. 102(g) bars the issuance of a patent where another made the invention in the United States before applicant and had not abandoned, suppressed, or concealed it. This section of 35 U.S.C. 102 forms a basis for interference practice. See MPEP Chapter 2300 for more information on interference procedure. See MPEP Section 2138 - Section 2138.07 for more information on the requirements of 35 U.S.C. 102(g). ---SECTION---706.02(i) Form Paragraphs for Use in Rejections Under 35 U.S.C. 102 The following form paragraphs should be used in making the appropriate rejections. Note that the particular part of the refence relied upon to support the rejection should be identified. 7.07 Statement of Statutory Basis, 35 U.S.C. 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless -- Examiner Note: 1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103. 2. Paragraphs 7.07 to 7.14 are to be used ONLY ONCE in a given Office action. 7.08 102(a), Activity by Another Before Invention by Applicant (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent. Examiner Note: This paragraph must be preceded by paragraph 7.07. 7.09 102(b), Activity More Than One Year Prior to Filing (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States. Examiner Note: This paragraph must be preceded by paragraph 7.07, and may be preceded by paragraph 7.08. 7.10 102(c), Invention Abandoned (c) he has abandoned the invention. Examiner Note: This paragraph must be preceded by paragraph 7.07, and may be preceded by one or more of paragraphs 7.08 and 7.09. 7.11 102(d), Foreign Patenting (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States. Examiner Note: This paragraph must be preceded by paragraph 7.07, and may be preceded by one or more of paragraphs 7.08 to 7.10. 7.12 102(e), Patent to Another with Earlier Filing Date (e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent. Examiner Note: This paragraph must be preceded by paragraph 7.07, and may be preceded by one or more of paragraphs 7.07 to 7.11. 7.13 102(f), Applicant Not the Inventor (f) he did not himself invent the subject matter sought to be patented. Examiner Note: This paragraph must be preceded by paragraph 7.07, and may be preceded by one or more of paragraphs 7.08 to 7.12. 7.14 102(g), Priority of Invention (g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. Examiner Note: This paragraph must be preceded by paragraph 7.07, and may be preceded by one or more of paragraphs 7.08 to 7.13. 7.15 Rejection, 35 U.S.C. 102(a), (b) Patent or Publication, and (g) Claim [1] rejected under 35 U.S.C. 102([2]) as being [3] by [4]. Examiner Note: 1. In bracket 2, insert the appropriate paragraph letter or letters of 35 U.S.C 102 in parentheses. If paragraph (e) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.02. 2. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph. 3. In bracket 4, insert the prior art relied upon. 4. This rejection must be preceded either by paragraph 7.07 and paragraphs 7.08, 7.09, and 7.14 as appropriate, or by paragraph 7.103. 5. If 35 U.S.C. 102(e) is also being applied, this paragraph must be followed by either form paragraph 7.15.02 or 7.15.03. 7.15.01 Provisional Rejection, 35 U.S.C. 102(e) - Common Assignee or At Least One Common Inventor Claim [1] provisionally rejected under 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(e), if patented. This provisional rejection under 35 U.S.C. 102(e) is based upon a presumption of future patenting of the copending application. [4]. This provisional rejection under 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention "by another," or by an appropriate showing under 37 CFR 1.131. This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). Examiner Note: 1. This paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses the claimed invention. The copending application must have either a common assignee or at least one common inventor. 2. If the claims are obvious over the invention disclosed in the other copending application, use paragraph 7.21.01. 3. In bracket 3, insert either --assignee-- or --inventor--. 4. In bracket 4, an appropriate explanation may be provided in support of the examiner's position on anticipation, if necessary. 5. If the claims of the copending application conflict with the claims of the instant application, a provisional double patenting rejection should also be given using paragraphs 8.30 and 8.32. 6. If evidence is additionally of record to show that either invention is prior art unto the other under 35 U.S.C. 102(f) or (g), a rejection using paragraphs 7.13 and/or 7.14 should also be made. 7.15.02 Rejection, 35 U.S.C. 102(e), Common Assignee or Inventor(s) Claim [1] rejected under 35 U.S.C. 102(e) as being anticipated by [2]. The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not the invention "by another," or by an appropriate showing under 37 CFR 1.131. Examiner Note: 1. This paragraph is used to reject over a patent with an earlier filing date that discloses but does not claim the same invention. The patent must have either a common assignee or a common inventor. 2. In bracket 3, insert either --assignee-- or --inventor--. 7.15.03 Rejection, 35 U.S.C. 102(e), No Common Assignee or Inventor(s) Claim [1] rejected under 35 U.S.C. 102(e) as being [2] by [3]. Examiner Note: 1. This paragraph is used to reject over a patent with an earlier filing date that discloses but does not claim the same invention. The patent must have neither a common assignee nor a common inventor. 2. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph. 3. In bracket 3, insert the prior art relied upon. 7.16 Rejection, 35 U.S.C. 102(b), Public Use or on Sale Claim [1] rejected under 35 U.S.C. 102(b) based upon a public use or sale of the invention. [2] Examiner Note: 1. This paragraph must be preceded either by paragraphs 7.07 and 7.09 or by paragraph 7.103. 2. A full explanation of the evidence establishing a public use or sale must be provided in bracket 2. 7.17 Rejection, 35 U.S.C. 102(c), Abandonment of Invention Claim [1] rejected under 35 U.S.C. 102(c) because the invention has been abandoned. [2] Examiner Note: 1. This paragraph must be preceded either by paragraph 7.07 and 7.10 or by paragraph 7.103. 2. In bracket 2, insert a full explanation of the evidence establishing abandonment of the invention. See MPEP Section 2134. 7.18 Rejection, 35 U.S.C. 102(d), Foreign Patenting Claim [1] rejected under 35 U.S.C. 102(d) as being barred by applicant's [2]. [3] Examiner Note: 1. This paragraph must be preceded either by paragraphs 7.07 and 7.11 or by paragraph 7.103. 2. In bracket 3, insert an explanation of this rejection which must include appropriate dates and how they make the foreign patent available under 35 U.S.C. 102(d). 3. Refer to MPEP Section 2135 for applicable 35 U.S.C. 102(d) prior art. 7.19 Rejection, 35 U.S.C. 102(f), Applicant Not the Inventor Claim [1] rejected under 35 U.S.C. 102(f) because the applicant did not invent the claimed subject matter. [2] Examiner Note: 1. This paragraph must be preceded either by paragraphs 7.07 and 7.13 or by paragraph 7.103. 2. In bracket 2, insert an explanation of the supporting evidence establishing that applicant was not the inventor. See MPEP Section 2137. ---SECTION---706.02(j) Contents of a 35 U.S.C. 103 Rejection 35 U.S.C. 103 authorizes a rejection where, to meet the claim, it is necessary to modify a single reference or to combine it with one or more other references. After indicating that the rejection is under 35 U.S.C. 103, the examiner should set forth in the Office action: (A) the relevant teachings of the prior art relied upon, preferably with reference to the relevant column or page number(s) and line number(s) where appropriate, (B) the difference or differences in the claim over the applied reference(s), (C) the proposed modification of the applied reference(s) necessary to arrive at the claimed subject matter, and (D) an explanation why one of ordinary skill in the art at the time the invention was made would have been motivated to make the proposed modification. To establish a prima facie case of obviousness, three basic criteria must be met. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art and not based on applicant's disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). See MPEP Section 2143 - Section 2143.03 for decisions pertinent to each of these criteria. The initial burden is on the examiner to provide some suggestion of the desirability of doing what the inventor has done. "To support the conclusion that the claimed invention is directed to obvious subject matter, either the references must expressly or impliedly suggest the claimed invention or the examiner must present a convincing line of reasoning as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references." Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Inter. 1985). See MPEP Section 2144 - Section 2144.09 for examples of reasoning supporting obviousness rejections. Where a reference is relied on to support a rejection, whether or not in a minor capacity, that reference should be positively included in the statement of the rejection. See In re Hoch, 428 F.2d 1341, 1342 n.3 166 USPQ 406, 407 n. 3 (CCPA 1970). It is important for an examiner to properly communicate the basis for a rejection so that the issues can be identified early and the applicant can be given fair opportunity to reply. Furthermore, if an initially rejected application issues as a patent, the rationale behind an earlier rejection may be important in interpreting the scope of the patent claims. Since issued patents are presumed valid (35 U.S.C. 282) and constitute a property right (35 U.S.C. 261), the written record must be clear as to the basis for the grant. Since patent examiners cannot normally be compelled to testify in legal proceedings regarding their mental processes (see MPEP Section 1701.01), it is important that the written record clearly explain the rationale for decisions made during prosecution of the application. See MPEP Section 2141 - Section 2144.09 generally for guidance on patentability determinations under 35 U.S.C. 103, including a discussion of the requirements of Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 (1966). See MPEP Section 2145 for consideration of applicant's rebuttal arguments. See MPEP Section 706.02(l) for a discussion of 35 U.S.C. 103(c). ---SECTION---706.02(k) Provisional Rejection (Obviousness) Under 35 U.S.C. 102(e)/103 Where two applications of different inventive entities are copending and the filing dates differ, a provisional rejection under 35 U.S.C. 102(e)/103 should be made in the later filed application if the applications have a common assignee or a common inventor. Otherwise the confidential status of applications under 35 U.S.C. 122 must be maintained. Such a rejection alerts the applicant that he or she can expect an actual rejection on the same ground if one of the applications issues and also lets applicant know that action must be taken to avoid the rejection. This gives applicant the opportunity to analyze the propriety of the rejection and possibly avoid the loss of rights to desired subject matter. Provisional rejections of the obviousness type under 35 U.S.C. 102(e)/103 are rejections applied to copending applications having different effective filing dates wherein each application has a common assignee or a common inventor. The earlier filed application, if patented, would constitute prior art under 35 U.S.C. 102(e). The rejection can be overcome by: (A) Arguing patentability over the earlier filed application; (B) Combining the subject matter of the copending applications into a single application claiming benefit under 35 U.S.C. 120 of the prior applications and abandoning the copending applications (Note that a claim in a subsequently filed application that relies on a combination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 since 35 U.S.C. 120 requires that the earlier filed application contain a disclosure which complies with 35 U.S.C. 112, first paragraph for each claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 42 USPQ2d 1674 (Fed. Cir. 1997).); (C) Filing an affidavit or declaration under 37 CFR 1.132 showing that any unclaimed invention disclosed in the copending application was derived from the inventor of the other application and is thus not invention "by another" (see MPEP Section 715.01(a), Section 715.01(c), and Section 716.10); or (D) Filing an affidavit or declaration under 37 CFR 1.131 showing a date of invention prior to the effective U.S. filing date of the copending application. See MPEP Section 715. Where the applications are claiming the same patentable invention, a terminal disclaimer and an affidavit or declaration under 37 CFR 1.130 may be used to overcome a rejection under 35 U.S.C. 103 in a common ownership situation if the earlier filed application has matured into a patent. See MPEP Section 718. If a provisional rejection is made and the copending applications are combined into a single application and the resulting single application is subject to a restriction requirement, the divisional application would not be subject to a provisional or actual rejection under 35 U.S.C. 102(e)/103 since the provisions of 35 U.S.C. 121 preclude the use of a patent issuing therefrom as a reference against the other application. Additionally, the resulting continuation-in-part is entitled to 35 U.S.C. 120 benefit of each of the prior applications. This is illustrated in Example 2, below. The following examples are instructive as to the application of 35 U.S.C. 102(e)/103: Example 1. Assumption: Employees A and B work for C, each with knowledge of the other's work, and with obligation to assign inventions to C while employed. SITUATIONS RESULTS 1. A invents X and later files application. This is permissible. 2. B modifies X to XY. B files application before A's filing No 35 U.S.C. 102(f)/103 or 102(g)/103 rejection; provisional 35 U.S.C. 102(e)/103 rejection applies. Provisional double patenting rejection made. 3. B's patent issues. A's claims rejected under 35 U.S.C. 102(e)/103 and double patenting. 4. A files 37 CFR 1.130 affidavit to disqualify B's patent as prior art where the same patentable invention is being claimed. Terminal disclaimer filed under 37 CFR 1.321(c). Rejection under 35 U.S.C. 102(e)/103 may be overcome and double patenting rejection may be overcome if inventions X and XY are commonly owned and all requirements of 37 CFR 1.130 and 1.321 are met. In situation (2.) above, the result is a provisional rejection by the examiner under 35 U.S.C. 102(e)/103. The rejection is provisional since the subject matter and the prior art are pending applications. Example 2. Assumption: Employees A and B work for C, each with knowledge of the other's work, and with obligation to assign inventions to C while employed. SITUATIONS RESULTS 1. A invents X and files application. This is permissible. 2. B modifies X to XY after A's application is filed. B files application establishing that A and B were both under obligation to assign inventions to C at the time the inventions were made. Provisional 35 U.S.C. 102(e)/103 rejection made; provisional double patenting rejection made; no 35 U.S.C. 102(f)/103 or 102(g)/103 rejection made. 3. A and B file continuing application claiming priority to their earlier applications and abandon the earlier applications. Assume it is proper that restriction be required between X and XY. 4. X is elected and patent issues on X with divisional application being timely filed on XY. No rejection of divisional application under 35 U.S.C. 102(e)/103 in view of 35 U.S.C. 121. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP IS ESTABLISHED The disclosure of an earlier filed patent application which issues as a patent continues to be prior art under 35 U.S.C. 102(e) against a later invented and filed application of another inventor even though the patent and the later invention were owned by, or subject to, an obligation of assignment to the same person at the time the later invention was made. See MPEP Section 706.02(l) for examination of applications of different inventive entities where common ownership has not been established. Once the examiner checks the applications and it is established from the record that common ownership existed at the time the later invention was made, he or she should: (A) examine the applications as to all grounds except 35 U.S.C. 102(f) and (g) as they apply through 35 U.S.C. 103, (B) examine the applications for double patenting, including double patenting of the obviousness type, and make a provisional double patenting rejection, if appropriate (See In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976)), (C) examine the later filed application under 35 U.S.C. 102(e) as it applies through 35 U.S.C. 103 and make a provisional rejection under 35 U.S.C. 102(e)/ 35 U.S.C. 103 in the later filed application, if appropriate, and (D) permit the applicant of the later filed application to file an affidavit or declaration under 37 CFR 1.131, or a terminal disclaimer and an affidavit or declaration under 37 CFR 1.130 if the same patentable invention is being claimed (see MPEP Section 715.05 and Section 718), or an affidavit or declaration under 37 CFR 1.132 showing the invention is not "by another," to overcome the provisional or actual 35 U.S.C. 102(e)/ 35 U.S.C. 103 rejection, if appropriate, and a terminal disclaimer to overcome the provisional or actual rejection on double patenting of the obviousness type. An affidavit or declaration under 37 CFR 1.130 cannot be used to overcome a provisional 35 U.S.C. 102(e)/103 rejection. See MPEP Section 718. The practice of rejecting claims on the ground of double patenting in commonly owned applications of different inventive entities is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See MPEP Section 804 for guidance on double patenting issues. In accordance with established patent law doctrines, double patenting rejections can be overcome in certain circumstances by disclaiming, pursuant to the existing provisions of 37 CFR 1.321, the terminal portion of the term of the later patent and including in the disclaimer a provision that the patent shall be enforceable only for and during the period the patent is commonly owned with the application or patent which formed the basis for the rejection, thereby eliminating the problem of extending patent life. The following example is illustrative: ASSUMPTION: Employees A and B work for C, each with knowledge of the other's work, and with obligation to assign inventions to C while employed: SITUATIONS RESULTS 1. A invents X and files application with assignment to C recorded in PTO showing C's ownership at the time the invention X was made. This is permissible. 2. A and B modify X to XY and file application with assignment recorded in PTO showing C's ownership at the time the invention XY was made. Provisional double patenting rejections of the obviousness type may be made. Provisional rejection under 35 U.S.C. 102(e)/103 may be made in later filed application. 3. A and B file terminal disclaimers to overcome provisional double patenting and insufficient 37 CFR 1.131 affidavit to overcome provisional 35 U.S.C. 102(e)/103 rejection. Examiner finds 37 CFR 1.131 affidavit insufficient; accepts terminal disclaimers. 4. A and B file continuing application disclosing and claiming both X and XY and claiming 35 U.S.C. 120 benefit of both prior applications; both prior applications are then abandoned. This is permissible. EXAMINATION OF CONTINUING APPLICATION COMMONLY OWNED WITH ABANDONED PARENT APPLICATION TO WHICH BENEFIT IS CLAIMED UNDER 35 U.S.C. 120 An application claiming the benefit of a prior filed copending national or international application under 35 U.S.C. 120 must name as an inventor at least one inventor named in the prior filed application. The prior filed application must also disclose the named inventor's invention claimed in at least one claim of the later filed application in the manner provided by the first paragraph of 35 U.S.C. 112. This practice contrasts with the practice in effect prior to November 8, 1984 (the date of enactment of Public Law 98-622) where the inventorship entity in each of the applications was required to be the same for benefit under 35 U.S.C. 120. So long as the applications have at least one inventor in common and the other requirements are met, the Office will permit a claim for 35 U.S.C. 120 benefit without any additional submissions or notifications from applicants regarding inventorship differences. In addition to the normal examination conducted by the examiner, he or she must examine the earlier filed application to determine if the earlier and later applications have at least one inventor in common and that the other 35 U.S.C. 120 requirements are met. The claim for 35 U.S.C. 120 benefit will be permitted without examination of the earlier application for disclosure and support of at least one claim of the later filed application under 35 U.S.C. 112, first paragraph unless it becomes necessary to do so, for example, because of an intervening reference. EXAMINATION OF COMMONLY OWNED PENDING APPLICATIONS HAVING DIFFERENT INVENTIVE ENTITIES CLAIMING BENEFIT UNDER 35 U.S.C. 120 See MPEP Section 706.02(l) for examination of applications of different inventive entities where common ownership is not established. Commonly owned applications of different inventive entities may be rejected on the ground of double patenting. Despite the fact that a later filed application claims 35 U.S.C. 120 benefit to an earlier application, a double patenting rejection may also be appropriate so long as at least one inventor is common to each application. The rejection based on a pending application would be a provisional rejection since no patent has issued. If the applications are commonly owned, a rejection of the applications on the ground of double patenting can be overcome by an appropriate terminal disclaimer as long as the identical invention is not being claimed. See In re Robeson, 331 F.2d 610, 141 USPQ 485 (CCPA 1964) and In re Kaye, 332 F.2d 816, 141 USPQ 829 (CCPA 1964). The following example is illustrative: ASSUMPTION: Employees A and B work for C, each with knowledge of the other's work, and with obligation to assign inventions to C while employed. SITUATIONS RESULTS 1. A invents X, A and B together invent XY. This is permissible. 2. A later files application on X with assignment to C. This is permissible. 3. A and B later file application on XY with assignment to C. Examiner may make provisional rejection of A and B's application on grounds of double patenting and 35 U.S.C. 102(e)/103 in view of A's application. 4. A and B file 37 CFR 1.130 affidavit to disqualify A's application as prior art where same patentable invention claimed, and terminal disclaimers in both applications. An affidavit under 37 CFR 1.130 cannot be used to overcome a provisional rejection. ---SECTION---706.02(l) Rejections Under 35 U.S.C. 102(f)/103 and 35 U.S.C. 102(g)/103; 35 U.S.C. 103(c) 37 CFR 1.104 Nature of examination. +++ (c) Rejection of claims. +++ (4) Subject matter which is developed by another person which qualifies as prior art only under 35 U.S.C. 102(f) or (g) may be used as prior art under 35 U.S.C. 103 against a claimed invention unless the entire rights to the subject matter and the claimed invention were commonly owned by the same person or organization or subject to an obligation of assignment to the same person or organization at the time the claimed invention was made. +++ 37 CFR 1.104(c)(4) basically reiterates the requirements of 35 U.S.C. 103(c) which provides that subject matter developed by another which qualifies as "prior art" only under subsections 35 U.S.C. 102(f) or 35 U.S.C. 102(g) is not to be considered when determining whether an invention sought to be patented is obvious under 35 U.S.C. 103, provided the subject matter and the claimed invention were commonly owned at the time the invention was made. Note that if the prior art is published and the inventive entity is not identical then 35 U.S.C. 102(e)/103 will apply and the prior art will not be disqualified under 35 U.S.C. 103(c). The subject matter that is disqualified as prior art under 35 U.S.C. 103 is strictly limited to subject matter that A) qualifies as prior art only under 35 U.S.C. 102(f) or 35 U.S.C. 102(g), and B) was commonly owned with the claimed invention at the time the invention was made. If the subject matter that qualifies as prior art only under 35 U.S.C. 102(f) or 35 U.S.C. 102(g) was not commonly owned at the time of the invention, the subject matter is not disqualified as prior art under 35 U.S.C. 103. See OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1403-04, 43 USPQ2d 1641, 1646 (Fed. Cir. 1997) ("We therefore hold that subject matter derived from another not only is itself unpatentable to the party who derived it under Section 102(f), but, when combined with other prior art, may make a resulting obvious invention unpatentable to that party under a combination of Section Section 102(f) and 103.") If the subject matter qualifies as prior art under any other subsection (e.g., subsection 35 U.S.C. 102(a), 35 U.S.C. 102(b), or 35 U.S.C. 102(e)) it will not be disqualified as prior art under 35 U.S.C. 103(c). It is important to recognize that 35 U.S.C. 103(c) applies only to consideration of prior art for purposes of obviousness under 35 U.S.C. 103. It does not apply to or affect subject matter which qualifies as prior art under 35 U.S.C. 102. A patent applicant urging that subject matter is disqualified has the burden of establishing that it was commonly owned at the time the claimed invention was made. Absent proper evidence of common ownership at the time the later invention was made, the appropriate rejection under 35 U.S.C. 102(f) or 35 U.S.C. 102(g) as it applies through 35 U.S.C. 103 should be made. Information learned from or transmitted to persons outside the organization is not disqualified as prior art. The term "subject matter" will be construed broadly, in the same manner the term is construed in the remainder of 35 U.S.C. 103. The term "another" as used in 35 U.S.C. 103 means any inventive entity other than the inventor and would include the inventor and any other persons. The term "developed" is to be read broadly and is not limited by the manner in which the development occurred. The term "commonly owned" means wholly owned by the same person, persons, or organization at the time the invention was made. Inventors of subject matter not commonly owned at the time of the invention, but currently commonly owned, may file as joint inventors in a single application. However, the claims in such an application are not protected from a 35 U.S.C. 102(f)/103 or 35 U.S.C. 102(g)/103 rejection. Applicants in such cases have an obligation pursuant to 37 CFR 1.56 to point out the inventor and invention dates of each claim and the lack of common ownership at the time the later invention was made to enable the examiner to consider the applicability of a 35 U.S.C. 102(f)/103 or 35 U.S.C. 102(g)/103 rejection. The examiner will assume, unless there is evidence to the contrary, that applicants are complying with their duty of disclosure. Foreign applicants will sometimes combine the subject matter of two or more related applications with different inventors into a single U.S. application naming joint inventors. The examiner will make the assumption, absent contrary evidence, that the applicants are complying with their duty of disclosure if no information is provided relative to invention dates and common ownership at the time the later invention was made. Such a claim for 35 U.S.C. 119(a)-(d) benefit based upon the foreign filed applications is appropriate and 35 U.S.C. 119(a)-(d) benefit can be accorded based upon each of the foreign filed applications. I. DEFINITION OF COMMON OWNERSHIP In order to be disqualified as prior art under 35 U.S.C. 103(c), the subject matter which would otherwise be prior art to the claimed invention and the claimed invention must be commonly owned at the time the claimed invention was made. The term "commonly owned" is intended to mean that the subject matter which would otherwise be prior art to the claimed invention and the claimed invention are entirely or wholly owned by the same person, persons, or organization at the time the claimed invention was made. If the person, persons, or organization owned less than 100 percent of the subject matter which would otherwise be prior art to the claimed invention, or less than 100 percent of the claimed invention, then common ownership would not exist. Common ownership requires that the person, persons, or organization own 100 percent of the subject matter and 100 percent of the claimed invention. As long as principal ownership rights to either the subject matter or the claimed invention reside in different persons or organizations common ownership does not exist. A license of the claimed invention to another by the owner where basic ownership rights are retained would not defeat ownership. The requirement for common ownership at the time the claimed invention was made is intended to preclude obtaining ownership of subject matter after the claimed invention was made in order to disqualify that subject matter as prior art against the claimed invention. The question of whether common ownership exists at the time the claimed invention was made is to be determined on the facts of the particular case in question. Actual ownership of the subject matter and the claimed invention by the same individual or organization or a legal obligation to assign both the subject matter and the claimed invention to the same individual or organization must be in existence at the time the claimed invention was made in order for the subject matter to be disqualified as prior art. A moral or unenforceable obligation would not evidence common ownership. Under 35 U.S.C. 103(c), an applicant's admission that subject matter was developed prior to applicant's invention would not make the subject matter prior art to applicant if the subject matter qualifies as prior art only under sections 35 U.S.C. 102(f) or 35 U.S.C. 102(g), and if the subject matter and the claimed invention were commonly owned at the time the invention was made. See In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982), for a decision involving an applicants' admission which was used as prior art against their application. If the subject matter and invention were not commonly owned, an admission that the subject matter is prior art would be usable under 35 U.S.C. 103. The burden of establishing that subject matter is disqualified as prior art under 35 U.S.C. 103(c) is intended to be placed and reside upon the person or persons urging that the subject matter is disqualified. For example, a patent applicant urging that subject matter is disqualified as prior art under 35 U.S.C. 103(c), would have the burden of establishing that it was commonly owned at the time the claimed invention was made. The patentee in litigation would likewise properly bear the same burden placed upon the applicant before the Patent and Trademark Office. To place the burden upon the patent examiner or the defendant in litigation would not be appropriate since evidence as to common ownership at the time the claimed invention was made might not be available to the patent examiner or the defendant in litigation, but such evidence, if it exists, should be readily available to the patent applicant or the patentee. In view of 35 U.S.C. 103(c), the Commissioner has reinstituted in appropriate circumstances the practice of rejecting claims in commonly owned applications of different inventive entities on the grounds of double patenting. Such rejections can be overcome in appropriate circumstances by the filing of terminal disclaimers. This practice has been judicially authorized. See In re Bowers, 359 F.2d 886, 149 USPQ 57 (CCPA 1966). The use of double patenting rejections which then could be overcome by terminal disclaimers preclude patent protection from being improperly extended while still permitting inventors and their assignees to obtain the legitimate benefits from their contributions. See also MPEP Section 804. The following examples are provided for illustration only: Example 1 Parent Company owns 100% of Subsidiaries A and B - inventions of A and B are commonly owned. Example 2 Parent Company owns 100% of Subsidiary A and 90% of Subsidiary B - inventions of A and B not commonly owned. Example 3 If same person owns subject matter and invention at time invention was made, license to another may be made without the subject matter becoming prior art. Example 4 Different Government inventors retaining certain rights (e.g. foreign filing rights) in separate inventions owned by Government precludes common ownership of inventions. Example 5 Company A and Company B form joint venture Company C. Employees of A while working for C with an obligation to assign inventions to C, invent invention #1, employees of B while working for C with an obligation to assign inventions to C, invent invention #2, with knowledge of #1. Question: Are #1 and #2 commonly owned at the time the later invention was made so as to preclude a rejection under 35 U.S.C. 102(f) or (g) in view of 35 U.S.C. 103? Answer: Yes-An official of company C can sign an affidavit that C owned both inventions. The examiner must examine the application as to all grounds except 35 U.S.C. 102(f) and (g) as they apply through 35 U.S.C. 103 only if the application file(s) establishes common ownership at the time the later invention was made. Thus, it is necessary to look to the time at which common ownership exists. If common ownership does not exist at the time the later invention was made, the earlier invention is not disqualified as potential prior art under 35 U.S.C. 102(f) and (g) as they apply through 35 U.S.C. 103. An invention is "made" when conception is complete as defined in Mergenthaler v. Scudder, 11 App. D.C. 264, 81 O.G. 1417, 1897 C.D. 724 (D.C. Cir. 1897); In re Tansel, 253 F.2d 241, 117 USPQ 188 (CCPA 1958). Common ownership at the time the invention was made for purposes of obviating a 35 U.S.C. 102(f)/ 35 U.S.C. 103 or 35 U.S.C. 102(g)/ 35 U.S.C. 103 rejection may be established irrespective of whether the invention was made in the United States or abroad. The provisions of 35 U.S.C. 104, however, will continue to apply to other proceedings in the Patent and Trademark Office, e.g. in an interference proceeding, with regard to establishing a date of invention by knowledge or use thereof, or other activity with respect thereto, in a foreign country. The foreign filing date will continue to be used for interference purposes under 35 U.S.C. 119(a)-(d) and 35 U.S.C. 365. II. EVIDENCE REQUIRED TO ESTABLISH COMMON OWNERSHIP It is important to recognize just what constitutes sufficient evidence to establish common ownership at the time the invention was made. The common ownership must be shown to exist at the time the later invention was made. A statement of present common ownership is not sufficient. In re Onda, 229 USPQ 235 (Comm'r Pat. 1985). A. Nature of the Showing 37 CFR 1.104 Nature of examination. (a) Examiner's action. +++ (5) Copending applications will be considered by the examiner to be owned by, or subject to an obligation of assignment to, the same person if: (i) The application files refer to assignments recorded in the Patent and Trademark Office in accordance with Part 3 of this chapter which convey the entire rights in the applications to the same person or organization; or (ii) Copies of unrecorded assignments which convey the entire rights in the applications to the same person or organization are filed in each of the applications; or (iii) An affidavit or declaration by the common owner is filed which states that there is common ownership and states facts which explain why the affiant or declarant believes there is common ownership, which affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization; or (iv) Other evidence is submitted which establishes common ownership of the applications. +++ 37 CFR 1.104(a)(5) specifies the nature of the showing necessary before the examiner would consider copending applications to be owned by, or subject to an obligation of assignment to, the same person for purposes of 35 U.S.C. 102(f)/103, 35 U.S.C. 102(g)/103 and 37 CFR 1.104(c)(4). If common ownership does not exist at the time the later invention was made, the earlier invention is not disqualified as potential prior art under 35 U.S.C. 102(f) and (g) as they apply through 35 U.S.C. 103. The rule permits the necessary showing to be made in different alternative ways. The necessary showing will be considered by the examiner to be present if the application files refer to assignments which are recorded in the Patent and Trademark Office in accordance with 37 CFR Part 3 as long as the assignments conveyed the entire rights in the applications to the same person or organization. A second alternative which can be used, if assignments have not been recorded, permits the examiner to consider copies of unrecorded assignments filed in each of the applications by the applicants as long as the unrecorded assignments convey the entire rights in the applications to the same person or organization. The submission of copies of assignment agreements that were filed in the Office and that were executed at the time the application was filed would not be sufficient to disqualify the earlier invention as potential prior art against the later invention unless the assignment document itself contained language which indicate the relevant dates involved and established that the inventions were commonly owned at the time the later invention was made. Absent specific language in the assignment document which would establish that the inventions claimed in the applications were commonly owned at the time the later invention was made, the attorney/applicants would have to supply additional evidence or showings establishing common ownership at the time the later invention was made. This additional evidence or showing might take the form of an affidavit or declaration by the common owner which refers to the assignment and further avers that the inventors of the subject matter of the applications were all under an obligation to assign the inventions to the common owner at the time the later invention was made, e.g., by virtue of employment agreements. The affidavit or declaration might also include copies of the employment agreements although the submission of the copies of the employment agreements would not be essential as long as unqualified averments are made that the inventions were commonly owned at the time the later invention was made. A third alternative permits an affidavit or declaration to be filed by the common owner stating that there is common ownership and stating facts which explain why the affiant or declarant believes there is common ownership. Under this alternative, sufficient facts will have to be presented in order to enable the examiner to conclude that a prima facie case of common ownership exists. It is expected that the most common form of submission to establish common ownership at the time the later invention was made will be verified statements, i.e., oaths or declarations from the common owner. It should be emphasized that such oaths or declarations must be executed by the common owner or someone empowered to act on behalf of the common owner. The fourth alternative permits other evidence to be used which would establish common ownership of the applications, e.g., a court decision determining the owner. B. Showing by Affidavit or Declaration; Who May Sign on Behalf of an Organization The terms "person" and "organization" in the rule would include circumstances where the ownership resided in more than one person and/or organization as long as the applications are owned jointly by the same owners. 37 CFR 1.104(a)(5)(iii) also provides that where the common owner is a corporation or other organization an affidavit or declaration averring common ownership may be signed by an official of the corporation or organization who is empowered to act on behalf of the corporation or organization. The requirements of 37 CFR 3.73(b) do not apply. A mere power of attorney to prosecute a patent application will not make an individual an official of the corporation or organization or empower the individual to act on behalf of the corporation or organization for purposes of averring common ownership. However, such an affidavit could be made by a patent attorney, patent agent, or other individual if the attorney, agent, or other individual has been appointed in writing by the corporation or organization as an official of the corporation or organization specifically empowered to make affidavits or declarations on its behalf averring to common ownership. In circumstances where such a written appointment has been given to a patent attorney, patent agent, or other individual, that person could then make affidavits or declarations averring to common ownership as long as the affidavit or declaration referred to an attached copy of the written appointment and averred that the authority is still in effect. Under this practice the original signed copy of the written appointment would be retained by the affiant or declarant unless the Patent and Trademark Office specifically required it to be filed. Unless some question arose as to the authority of the individual to make the averment as to common ownership, the Patent and Trademark Office would ordinarily not need to require the original signed copy of the written appointment. While this practice should simplify the establishing of common ownership by necessitating only one original signed written appointment, corporations and other organizations must exercise care that the written appointment is only given to those persons who are in a position to know that common ownership does in fact exist and can therefore properly make affirmative representations to that effect to the Patent and Trademark Office. III. EXAMINATION OF APPLICATIONS OF DIFFERENT INVENTIVE ENTITIES WHERE COMMON OWNERSHIP IS NOT ESTABLISHED See MPEP Section 706.02(k) for examination of applications of different inventive entities where common ownership is established. Where the applications do not establish common ownership, the examiner will: (A) assume that the applications are not commonly owned; (B) examine the applications on all grounds other than any conflict between the applications; (C) consider the applicability of 35 U.S.C. 102(f)/103 or 35 U.S.C. 102(g)/103 if one application refers to the other or if one inventor is common to both applications. If there is no cross-reference or common inventor between the applications it would be inappropriate for the examiner to refer to one application in the other in view of 35 U.S.C. 122; (D) consider interference if appropriate; and (E) suspend the later filed application if it is otherwise allowable until the earlier filed application is abandoned or issues as a patent and then reject the later filed application under 35 U.S.C. 102(e)/103, if appropriate. ---SECTION---706.02(m) Form Paragraphs for Use in Rejections Under 35 U.S.C. 103 The following form paragraphs should be used in making the appropriate rejections under 35 U.S.C. 103. 7.20 Statement of Statutory Basis, 35 U.S.C. 103(a) The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. Examiner Note: 1. The statute is not to be cited in all Office actions. It is only required in first actions on the merits employing 35 U.S.C. 103(a) and final rejections. Where the statute is being applied, but is not cited in an action on the merits, use paragraph 7.103. 2. This paragraph should only be used ONCE in a given Office action. 3. This paragraph must precede paragraphs 7.20.01 - 7.22 when this paragraph is used to cite the statute in first actions and final rejections. 7.20.01 103(a) Rejection Using Art Disqualified Under 102 (f) or (g) Applicant has provided evidence in this file showing that the invention was owned by, or subject to an obligation of assignment to, the same entity as [1] at the time this invention was made. Accordingly, [2] is disqualified as prior art through 35 U.S.C. 102(f) or (g) in any rejection under 35 U.S.C. 103(a) in this application. However, this applied art additionally qualifies as prior art under subsection [3] of 35 U.S.C. 102 and accordingly is not disqualified as prior art under 35 U.S.C. 103(a). Applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the invention of this application, and is therefore, not the invention "by another," or by antedating the applied art under 37 CFR 1.131. Examiner Note: 1. This paragraph must be included following paragraph 7.20 in all actions containing rejections under 35 U.S.C. 103(a) using art that is disqualified under 103(c) using 102(f) or (g), but which qualifies under another section of 35 U.S.C. 102. 2. In brackets 1 and 2, identify the commonly owned applied art (patent or co-pending application). 3. In bracket 3, insert --(a)-- or --(e)-- as appropriate. 7.20.02 Joint Inventors, Common Ownership Presumed This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(f) or (g) prior art under 35 U.S.C. 103(a). Examiner Note: This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application). 7.21 Rejection, 35 U.S.C. 103(a) Claim [1] rejected under 35 U.S.C. 103(a) as being unpatentable over [2]. Examiner Note: 1. This paragraph must be preceded by either form paragraph 7.20 or form paragraph 7.103. 2. An explanation of the rejection applying the Graham v. Deere test must follow this form paragraph. 3. If this rejection relies upon art that is disqualified under 35 U.S.C. 102(f) or (g) based upon the common ownership of the invention, paragraph 7.20.01 must follow this paragraph. 4. If this rejection is a provisional 35 U.S.C. 103(a) rejection based upon a copending application that would comprise prior art under 35 U.S.C. 102(e) if patented, use paragraph 7.21.01 instead of this paragraph. 7.21.01 Provisional Rejection, 35 U.S.C. 103(a), Common Assignee or at Least One Common Inventor Claim [1] provisionally rejected under 35 U.S.C. 103(a) as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(e) if patented. This provisional rejection under 35 U.S.C. 103(a) is based upon a presumption of future patenting of the conflicting application. [4] This provisional rejection might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention "by another," or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the copending application under 37 CFR 1.131. Examiner Note: 1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier U.S. filing date and also having either a common assignee or at least one common inventor. 2. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01. 3. In bracket 3, insert either --assignee-- or --inventor--. 4. In bracket 4, insert explanation of obviousness. 5. If the claimed invention is also claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using paragraph 8.33 and 8.37. 6. If evidence indicates that the copending application is also prior art under 35 U.S.C. 102(f) or (g) and the copending application has not been disqualified as prior art in a 35 U.S.C. 103(a) rejection based upon common ownership, a rejection should additionally be made under 35 U.S.C. 103(a) using paragraph 7.21 (e.g., applicant has named the prior inventor in response to a requirement made using paragraph 8.28). 7.21.02 Rejection, 35 U.S.C. 103(a), Common Assignee or at Least One Common Inventor Claim [1] rejected under 35 U.S.C. 103(a) as being obvious over [2]. The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention "by another"; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). [4] Examiner Note: 1. This paragraph is used to reject over a patent with an earlier filing date that discloses the claimed invention. The patent must have either a common assignee or at least one common inventor. 2. In bracket 3, insert either --assignee-- or --inventor--. 3. In bracket 4, insert explanation of obviousness. 7.22 Rejection, 35 U.S.C. 103(a), Further in View Of Claim [1] rejected under 35 U.S.C. 103(a) as being unpatentable over [2] as applied to claim [3] above, and further in view of [4]. Examiner Note: 1. This paragraph must be preceded by paragraph 7.21. 2. An explanation of the rejection applying the Graham v. Deere test must follow this form paragraph. 7.23 Graham v. Deere, Test for Obviousness The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. Examiner Note: This paragraph may be used, if appropriate, in response to an argument of the use of Graham v. Deere. 7.27 Rejection, 35 U.S.C. 102 or 103(a) Claim [1] rejected under 35 U.S.C. 102([2]) as anticipated by or, in the alternative, under 35 U.S.C. 103(a) as obvious over [3]. Examiner Note: 1. This paragraph is NOT intended to be commonly used as a substitute for a rejection under 35 U.S.C. 102. In other words, a single rejection under either 35 U.S.C. 102 or 35 U.S.C. 103(a) should be made whenever possible using appropriate form paragraphs 7.15 to 7.19, 7.21 and 7.22. Examples of circumstances where this paragraph may be used are as follows: a. When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under 35 U.S.C. 102 is appro priate and given another interpretation, a rejection under 35 U.S.C. 103(a) is appropriate. See MPEP Section Section 2111- 2116.01 for guidelines on claim interpretation. b. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP Section Section 2112- 2112.02. c. When the reference teaches a small genus which places a claimed species in the possession of the public as in In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102. See MPEP Section Section 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus. d. When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP Section 2113. e. When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain wheth er the element disclosed in the reference is an equivalent to the claimed element and therefore anticipatory, or whether the prior art element is an obvious variant of the claimed element. See MPEP Section Section 2183- 2184. f. When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range. See the concurring opinion in Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See MPEP Section 2131.03. 2. If the interpretation of the claim(s) renders the claim(s) indefinite, a rejection under 35 U.S.C. 112, 2nd paragraph, may be appropriate. 3. In bracket 2, insert the appropriate paragraph letter(s) in parenthesis. 4. A full explanation should follow this form paragraph. 5. This paragraph must be preceded by 7.07, one or more of paragraphs 7.08 to 7.14 as appropriate, and paragraph 7.20 or paragraph 7.103. ---SECTION---706.02(n) Biotechnology Process Applications; 35 U.S.C. 103(b) 35 U.S.C. 103 Conditions for patentability; non-obvious subject matter. +++ (b)(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if- (A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and (B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person. (2) A patent issued on a process under paragraph (1)- (A) shall also contain the claims to the composition of matter used in or made by that process, or (B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154. (3) For purposes of paragraph (1), the term "biotechnological process" means- (A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to- (i) express an exogenous nucleotide sequence, (ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence or (iii) express a specific physiological characteristic not naturally associated with said organism; (B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and (C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B). +++ 35 U.S.C. 103(b) is applicable to biotechnological processes only. 35 U.S.C. 103(b) precludes a rejection of process claims which involve the use or making of certain nonobvious biotechnological compositions of matter under 35 U.S.C. 103(a). 35 U.S.C. 103(b) requires that: (A) the biotechnological process and composition of matter be contained in either the same application or in separate applications having the same effective filing date; (B) both the biotechnological process and composition of matter be owned or subject to an assignment to the same person at the time the process was invented; (C) a patent issued on the process also contain the claims to the composition of matter used in or made by the process, or, if the process and composition of matter are in different patents, the patents expire on the same date; (D) the biotechnological process falls within the definition set forth in 35 U.S.C. 103(b); and (E) a timely election be made to proceed under the provisions of 35 U.S.C. 103(b). An election to proceed under 35 U.S.C. 103(b) shall be made by way of petition under 37 CFR 1.182. The petition must establish that all the requirements set forth in 35 U.S.C. 103(b) have been satisfied. An election will normally be considered timely if it is made no later than the earlier of either the payment of the issue fee or the filing of an appeal brief in an application which contains a composition of matter claim which has not been rejected under 35 U.S.C. 102 or 103. In an application where at least one composition of matter claim has not been rejected under 35 U.S.C. 102 or 103, a 35 U.S.C. 103(b) election may be made by submitting the petition and an amendment requesting entry of process claims which correspond to the composition of matter claim. For applications pending on or after November 1, 1995, in which the issue fee has been paid prior to March 26, 1996, the timeliness requirement for an election under 35 U.S.C. 103(b) will be considered satisfied if the conditions of 37 CFR 1.312(b) are met. However, if a patent is granted on an application entitled to the benefit of 35 U.S.C. 103(b) without an election having been made as a result of error without deceptive intent, patentees may file a reissue application to permit consideration of process claims which qualify for 35 U.S.C. 103(b) treatment. See MPEP Section 2116.01 for a discussion of the Federal Circuit's decisions in In re Ochiai, 71 F.3d 1565, 37 USPQ 1127 (Fed. Cir. 1995) and In re Brouwer, 77 F.3d 422, 37 USPQ2d 1663 (Fed. Cir. 1996) which address the general issue of whether an otherwise conventional process could be patented if it were limited to making or using a nonobvious product. In view of the Federal Circuit's decisions in Ochiai and Brouwer, an applicant's need to rely upon 35 U.S.C. 103(b) should be rare. See also 1184 O G 86 (Comm'r Pat. 1996). See 35 U.S.C. 282 for the effect of a determination of nonobviousness under 35 U.S.C. 103(b)(1) on the presumption of validity. ---SECTION---706.03 Rejections Not Based on Prior Art The primary object of the examination of an application is to determine whether or not the claims are patentable over the prior art. This consideration should not be relegated to a secondary position while undue emphasis is given to nonprior art or "technical" rejections. Effort in examining should be concentrated on truly essential matters, minimizing or eliminating effort on technical rejections which are not really critical. Where a major technical rejection is proper (e.g., lack of proper disclosure, undue breadth, utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion coupled with some stereotyped expression. Rejections based on nonstatutory subject matter are explained in MPEP Section 706.03(a), Section 2105, Section 2106 - Section 2106.02, and Section 2107 - Section 2107.02. Rejections based on subject matter barred by the Atomic Energy Act are explained in MPEP Section 706.03(b). Rejections based on duplicate claims are addressed in MPEP Section 706.03(k), and double patenting rejections are addressed in MPEP Section 804. See MPEP Section 706.03(o) for rejections based on new matter. Foreign filing without a license is discussed in MPEP Section 706.03(s). Disclaimer, after interference or public use proceeding, res judicata, and reissue are explained in MPEP Section 706.03(u) to Section 706.03(x). Rejections based on 35 U.S.C. 112 are discussed in MPEP Section 2161 - Section 2174. IF THE LANGUAGE IN THE FORM PARAGRAPHS IS INCORPORATED IN THE LETTER TO STATE THE REJECTION, THERE WILL BE LESS CHANCE OF A MISUNDERSTANDING AS TO THE GROUNDS OF REJECTION. ---SECTION---706.03(a) Rejections under 35 U.S.C. 101 Patents are not granted for all new and useful inventions and discoveries. The subject matter of the invention or discovery must come within the boundaries set forth by 35 U.S.C. 101, which permits patents to be granted only for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The term "process" as defined in 35 U.S.C. 100, means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. See MPEP Section 2105 for patentability of microorganisms and MPEP Section 2106 - Section 2106.02 for patentability of mathematical algorithms or computer programs. LACK OF UTILITY A rejection on the ground of lack of utility includes the more specific grounds of inoperativeness, involving perpetual motion, frivolous, fraudulent, and against public policy. The statutory basis for this rejection is 35 U.S.C. 101. See MPEP Section 706.03(a)(1) for guidelines governing rejections for lack of utility. See MPEP Section 2107 - Section 2107.02 for legal precedent governing the utility requirement. Decisions have determined the limits of the statutory classes. Examples of subject matter not patentable under the Statute follow: PRINTED MATTER For example, a mere arrangement of printed matter, though seemingly a "manufacture," is rejected as not being within the statutory classes. See In re Miller, 418 F.2d 1392, 164 USPQ 46 (CCPA 1969); Ex parte Gwinn, 112 USPQ 439 (Bd. App. 1955); and In re Jones, 373 F.2d 1007, 153 USPQ 77 (CCPA 1967). NATURALLY OCCURRING ARTICLE Similarly, a thing occurring in nature, which is substantially unaltered, is not a "manufacture." A shrimp with the head and digestive tract removed is an example. Ex parte Grayson, 51 USPQ 413 (Bd. App. 1941). SCIENTIFIC PRINCIPLE A scientific principle, divorced from any tangible structure, can be rejected as not within the statutory classes. O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854). This subject matter is further limited by the Atomic Energy Act explained in MPEP Section 706.03(b). Use Form Paragraphs 7.04 through 7.05.03 to reject under 35 U.S.C. 101. 7.04 Statement of Statutory Basis, 35 U.S.C. 101 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Examiner Note: This paragraph must precede the first use of 35 U.S.C. 101 in all first actions on the merits and final rejections. 7.05 Rejection, 35 U.S.C. 101, -Heading Only- (Utility, Non-Statutory, Inoperative) Claim [1] rejected under 35 U.S.C. 101 because Examiner Note: 1. This form paragraph must be followed by any one of paragraphs 7.05.01- 7.05.03 or another appropriate reason. 2. Explain the rejection following the recitation of the statute and the use of form paragraphs 7.05.01-7.05.03 or other reason. 3. See MPEP Section Section 706.03(a) and 2105- 2107.02 for other situations. 4. This paragraph must be preceded by paragraph 7.04 in first actions and final rejections. 7.05.01 Rejection, 35 U.S.C. 101, Non-Statutory the claimed invention is directed to non-statutory subject matter. [1] Examiner Note: In bracket 1, insert identification of non-statutory subject matter. 7.05.02 Rejection, 35 U.S.C. 101, Utility Lacking the claimed invention lacks patentable utility. [1] Examiner Note: In bracket 1, provide explanation of lack of utility, such as, for example, that which is frivolous, fraudulent, against public policy, or lacks proper chemical specificity, etc. See MPEP Section Section 706.03(a) and 2105- 2107.02. 7.05.03 Rejection, 35 U.S.C. 101, Inoperative the disclosed invention is inoperative and therefore lacks utility. [1] Examiner Note: In bracket 1, explain why invention is inoperative. 7.05.04 Utility Rejections Under 35 U.S.C. 101 and 35 U.S.C. 112, First Paragraph Claim [1] rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a [2] asserted utility or a well established utility. [3] Claim [4] also rejected under 35 U.S.C. 112, first paragraph. Specifically, since the claimed invention is not supported by either a [5] asserted utility or a well established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention. Examiner Note: Format A: (a) Insert the same claim numbers in brackets 1 and 4. (b) Insert --specific-- in inserts 2 and 5. (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific asserted utility or a well established utility. Include within the insert the following statement: --Note, because the claimed invention is not supported by a specific asserted utility for the reasons set forth above, credibility cannot be assessed.--. (d) Format A is to be used when there is no asserted utility and when there is an asserted utility but that utility is not specific. Format B: (a) Insert the same claim numbers in brackets 1 and 4. (b) Insert --credible-- in inserts 2 and 5. (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a credible asserted utility or a well established utility. For claims that have multiple utilities, some of which are not specific, some of which are not credible, but none of which are specific and credible: (a) Insert the same claim numbers in brackets 1 and 4. (b) Insert --specific asserted utility, a credible-- in inserts 2 and 5. (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific asserted utility, a credible asserted utility or a well established utility. Each utility should be addressed. Include within the insert the following statement for those utilities which are not specific: --Note, because such a utility for the claimed invention is not specific for the reasons set forth above, credibility cannot be assessed for that utility.--. 1. In each case, a separate rejection under 35 U.S.C. 112, first paragraph, enablement should be made using the factors set forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) and an undue experimentation analysis. See MPEP Section Section 2164- 2164.08(c). 2. A utility that is inoperative should be treated as being not credible since a utility that is inoperative cannot be credible. ---SECTION---706.03(a)(1) Guidelines For Examination of Applications for Compliance With the Utility Requirement of 35 U.S.C. 101 and 35 U.S.C. 112 The following guidelines establish the policies and procedures to be followed by Office personnel when examining applications for compliance with the utility requirements of 35 U.S.C. 101 and 35 U.S.C. 112. The guidelines also address issues that may arise during examination of applications claiming protection for inventions in the field of biotechnology and human therapy. See MPEP Section 2107- Section 2107.02 for a discussion of the legal precedent governing utility rejections. GUIDELINES Office personnel must adhere to the following procedures when reviewing applications for compliance with the useful invention (utility) requirement of 35 U.S.C. 101 and 35 U.S.C. 112, first paragraph: (A) Determine what the applicant has invented and is seeking to patent: (1) Ensure that the claims define statutory subject matter (e.g., a process, a machine, a manufacture, or a composition of matter); and (2) Review the complete specification, including the detailed description of the invention, any specific embodiments that have been disclosed, the claims, and any specific utilities that have been asserted for the invention. (B) Review the specification and claims to determine if the applicant has asserted any credible utility for the claimed invention. (1) If the applicant has asserted that the claimed invention is useful for any particular purpose (i.e., a "specific utility") and that assertion would be considered credible by a person of ordinary skill in the art, do not impose a rejection based on lack of utility. Credibility is to be assessed from the perspective of one of ordinary skill in the art in view of any evidence of record (e.g., data, statements, opinions, references, etc.) that is relevant to the applicant's assertions. An applicant must provide only one credible assertion of specific utility for any claimed invention to satisfy the utility requirement. (2) If the invention has a well-established utility, regardless of any assertion made by the applicant, do not impose a rejection based on lack of utility. An invention has a well-established utility if a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (e.g., properties of a product or obvious application of a process). (3) If the applicant has not asserted any specific utility for the claimed invention and it does not have a well-established utility, impose a rejection under 35 U.S.C. 101, emphasizing that the applicant has not disclosed a specific utility for the invention. Also impose a separate rejection under 35 U.S.C. 112, first paragraph, on the basis that the applicant has not shown how to use the invention due to lack of disclosure of a specific utility. The 35 U.S.C. 101 and 112 rejections should shift the burden to the applicant to: (i) explicitly identify a specific utility for the claimed invention, and (ii) indicate where support for the asserted utility can be found in the specification. Review the subsequently asserted utility by the applicant using the standard outlined in paragraph (B)(1) above, and ensure that it is fully supported by the original disclosure. (C) If no assertion of specific utility for the claimed invention made by the applicant is credible, and the claimed invention does not have a well-established utility, reject the claim(s) under 35 U.S.C. 101 on the grounds that the invention as claimed lacks utility. Also reject the claims under 35 U.S.C. 112, first paragraph, on the basis that the disclosure fails to teach how to use the invention as claimed. The 35 U.S.C. 112, first paragraph, rejection imposed in conjunction with a 35 U.S.C. 101 rejection should incorporate by reference the grounds of the corresponding 35 U.S.C. 101 rejection and should be set out as a rejection distinct from any other rejection under 35 U.S.C. 112, first paragraph, not based on lack of utility for the claimed invention. To be considered appropriate by the Office, any rejection based on lack of utility must include the following elements: (1) A prima facie showing that the claimed invention has no utility. A prima facie showing of no utility must establish that it is more likely than not that a person skilled in the art would not consider credible any specific utility asserted by the applicant for the claimed invention. A prima facie showing must contain the following elements: (i) a well-reasoned statement that clearly sets forth the reasoning used in concluding that the asserted utility is not credible; (ii) support for factual findings relied upon in reaching this conclusion; and (iii) support for any conclusions regarding evidence provided by the applicant in support of an asserted utility. (2) Specific evidence that supports any fact-based assertions needed to establish the prima facie showing. Whenever possible, Office personnel must provide documentary evidence (e.g., scientific or technical journals, excerpts from treatises or books, or U.S. or foreign patents) as the form of support used in establishing the factual basis of a prima facie showing of no utility according to items (1)(ii) and (1)(iii) above. If documentary evidence is not available, Office personnel shall note this fact and specifically explain the scientific basis for the factual conclusions relied on in sections (1)(ii) and (1)(iii). (D) A rejection based on lack of utility should not be maintained if an asserted utility for the claimed invention would be considered credible by a person of ordinary skill in the art in view of all evidence of record. Once a prima facie showing of no utility has been properly established, the applicant bears the burden of rebutting it. The applicant can do this by amending the claims, by providing reasoning or arguments, or by providing evidence in the form of a declaration under 37 CFR 1.132 or a printed publication, that rebuts the basis or logic of the prima facie showing. If the applicant replies to the prima facie rejection, Office personnel shall review the original disclosure, any evidence relied upon in establishing the prima facie showing, any claim amendments and any new reasoning or evidence provided by the applicant in support of an asserted utility. It is essential for Office personnel to recognize, fully consider and respond to each substantive element of any reply to a rejection based on lack of utility. Only where the totality of the record continues to show that the asserted utility is not credible should a rejection based on lack of utility be maintained. If the applicant satisfactorily rebuts a prima facie rejection based on lack of utility under 35 U.S.C. 101, withdraw the 35 U.S.C. 101 rejection and the corresponding rejection imposed under 35 U.S.C. 112, first paragraph, per paragraph (C) above. Office personnel are reminded that they must treat as true a statement of fact made by an applicant in relation to an asserted utility, unless countervailing evidence can be provided that shows that one of ordinary skill in the art would have a legitimate basis to doubt the credibility of such a statement. Similarly, Office personnel must accept an opinion from a qualified expert that is based upon relevant facts whose accuracy is not being questioned; it is improper to disregard the opinion solely because of a disagreement over the significance or meaning of the facts offered. ---SECTION---706.03(b) Barred by Atomic Energy Act A limitation on what can be patented is imposed by the Atomic Energy Act of 1954. Section 151(a) (42 U.S.C. 2181(a) thereof reads in part as follows: No patent shall hereafter be granted for any invention or discovery which is useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon. The terms "atomic energy" and "special nuclear material" are defined in Section 11 of the Act (42 U.S.C. 2014). Sections 151(c) and 151(d) (42 U.S.C. 2181(c) and (d)) set up categories of pending applications relating to atomic energy that must be brought to the attention of the Department of Energy. Under 37 CFR 1.14(c), applications for patents which disclose or which appear to disclose, or which purport to disclose, inventions or discoveries relating to atomic energy are reported to the Department of Energy and the Department will be given access to such applications, but such reporting does not constitute a determination that the subject matter of each application so reported is in fact useful or an invention or discovery or that such application in fact discloses subject matter in categories specified by the Atomic Energy Act. All applications received in the Patent and Trademark Office are screened by Group 3640 personnel, under 37 CFR 1.14(c), in order for the Commissioner to fulfill his responsibilities under section 151(d) (42 U.S.C. 2181(d) of the Atomic Energy Act. Papers subsequently added must be inspected promptly by the examiner when received to determine whether the application has been amended to relate to atomic energy and those so related must be promptly forwarded to Licensing and Review in Group 3640. All rejections based upon sections 151(a)(42 U.S.C. 2181(a), 152 (42 U.S.C. 2182), and 155 (42 U.S.C. 2185) of the Atomic Energy Act must be made only by Group 3640 personnel. ---SECTION---706.03(c) Rejections Under 35 U.S.C. 112, First Paragraph Rejections based on the first paragraph of 35 U.S.C. 112 are discussed in MPEP Section 2161 - Section 2165.04. For a discussion of the utility requirements of 35 U.S.C. 112, first paragraph, and 35 U.S.C. 101, see MPEP Section 706.03(a)(1) and Section 2107 - Section 2107.02. The appropriate form paragraphs 7.30.01 and 7.31.01 through 7.33.01 should be used in making rejections under 35 U.S.C. 112, first paragraph. 7.30.01 Statement of Statutory Basis, 35 U.S.C. 112, First Paragraph The following is a quotation of the first paragraph of 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention. Examiner Note: 1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103. 2. Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action. 7.31.01 Rejection, 35 U.S.C. 112, 1st Paragraph, Description Requirement, Including New Matter Situations Claim [1] rejected under 35 U.S.C. 112, first paragraph, as containing subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. [2] Examiner Note: 1. This rejection must be preceded by form paragraph 7.30.01 or 7.103. 2. In bracket 2, identify (by suitable reference to page and line numbers and/or drawing figures) the subject matter not properly described in the application as filed, and provide an explanation of your position. The explanation should include any questions the examiner asked which were not satisfactorily resolved and consequently raise doubt as to possession of the claimed invention at the time of filing. Form Paragraph 7.31.02 should be used when it is the examiner's position that nothing within the scope of the claims is enabled. In such a rejection, the examiner should explain all the reasons why nothing within the scope of the claim is enabled. To make sure all relevant issues are raised, this should include any issues regarding the breadth of the claims relative to the guidance in the disclosure. 7.31.02 Rejection, 35 U.S.C. 112, 1st Paragraph: Enablement Claim [1] rejected under 35 U.S.C. 112, first paragraph, as containing subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. [2] Examiner Note: 1. This rejection must be preceded by form paragraph 7.30.01 or 7.103. 2. If the problem is one of scope, form paragraph 7.31.03 should be used. 3. In bracket 2, identify the claimed subject matter for which the specification is not enabling along with an explanation as to why the specification is not enabling. The explanation should include any questions the examiner may have asked which were not satisfactorily resolved and consequently raise doubt as to enablement. 4. Where an essential component or step of the invention is not recited in the claims, use form paragraph 7.33.01. Form paragraph 7.31.03 should be used when it is the examiner's position that something within the scope of the claims is enabled but the claims are not limited to that scope. 7.31.03 Rejection, 35 U.S.C. 112, 1st Paragraph: Scope of Enablement Claim [1] rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for [2], does not reasonably provide enablement for [3]. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to [4] the invention commensurate in scope with these claims. [5] Examiner Note: 1. This rejection must be preceded by form paragraph 7.30.01 or 7.103. 2. This paragraph is to be used when the scope of the claims is not commensurate with the scope of the enabling disclosure. 3. In bracket 2, identify the claimed subject matter for which the specification is enabling. This may be by reference to specific portions of the specification. 4. In bracket 3, identify aspect(s) of the claim(s) for which the specification is not enabling. 5. In bracket 4, fill in only the appropriate portion of the statute, i.e., one of the following: --make--, --use--, or --make and use--. 6. In bracket 5, identify the problem along with an explanation as to why the specification is not enabling. The explanation should include any questions posed by the examiner which were not satisfactorily resolved and consequently raise doubt as to enablement. 7.31.04 Rejection, 35 U.S.C. 112, 1st Paragraph: Best Mode Requirement Claim [1] rejected under 35 U.S.C. 112, first paragraph, because the best mode contemplated by the inventor has not been disclosed. Evidence of concealment of the best mode is based upon [2]. Examiner Note: 1. This rejection must be preceded by form paragraph 7.30.01 or 7.103. 2. In bracket 2, insert the basis for holding that the best mode has been concealed, e.g., the quality of applicant's disclosure is so poor as to effectively result in concealment. 3. Use of this form paragraph should be rare. See MPEP Section Section 2165- 2165.04. Form paragraph 7.33.01 should be used when it is the examiner's position that a feature considered critical or essential by applicant to the practice of the claimed invention is missing from the claim. 7.33.01 Rejection, 35 U.S.C. 112, 1st Paragraph, Essential Subject Matter Missing From Claims (Enablement) Claim [1] rejected under 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. [2] critical or essential to the practice of the invention, but not included in the claim(s) is not enabled by the disclosure. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). [3] Examiner Note: 1. This rejection must be preceded by form paragraph 7.30.01 or 7.103. 2. In bracket 2, recite the subject matter omitted from the claims. 3. In bracket 3, give the rationale for considering the omitted subject matter critical or essential. 4. The examiner shall cite the statement, argument, date, drawing, or other evidence which demonstrates that a particular feature was considered essential by the applicant, is not reflected in the claims which are rejected. ---SECTION---706.03(d) Rejections Under 35 U.S.C. 112, Second Paragraph Rejections under 35 U.S.C. 112, second paragraph, are discussed in MPEP Section 2171 - Section 2174. Form paragraphs 7.30.02 and 7.34 through 7.35.01 should be used to reject under 35 U.S.C. 112, second paragraph. 7.30.02 Statement of Statutory Basis, 35 U.S.C. 112, Second Paragraph The following is a quotation of the second paragraph of 35 U.S.C. 112: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Examiner Note: 1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103. 2. Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action. 7.34 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure To Claim Applicant's Invention Claim [1] rejected under 35 U.S.C. 112, second paragraph, as failing to set forth the subject matter which applicant(s) regard as their invention. Evidence that claim [2] fail(s) to correspond in scope with that which applicant(s) regard as the invention can be found in Paper No. [3] filed [4]. In that paper, applicant has stated [5], and this statement indicates that the invention is different from what is defined in the claim(s) because [6]. Examiner Note: 1. This rejection must be preceded by form paragraph 7.30.02 or 7.103. 2. This paragraph is to be used only where applicant has stated, somewhere other than in the application, as filed, that the invention is something different from what is defined in the claim(s). 3. In brackets 3 and 4, identify the submission by applicant (which is not the application, as filed, but may be in the remarks by applicant, in the brief, in an affidavit, etc.) by Paper No. and the date the paper was filed in the PTO. 4. In bracket 5, set forth what applicant has stated in the submission to indicate a different invention. 5. In bracket 6, explain how the statement indicates an invention other than what is being claimed. 7.34.01 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim (Indefinite) Claim [1] rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Examiner Note: 1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.2. This paragraph should be followed by one or more of the following form paragraphs 7.34.02 - 7.34.06, as applicable. If none of these form paragraphs are appropriate, a full explanation of the deficiency of the claims should be supplied. Whenever possible, identify the particular term(s) or limitation(s) which render the claim(s) indefinite and state why such term or limitation renders the claim indefinite. If the scope of the claimed subject matter can be determined by one having ordinary skill in the art, a rejection using this form paragraph would not be appropriate. See MPEP Section Section 2171- 2174 for guidance. See also form paragraph 17.07 for Pro Se applicants. 7.34.02 Terminology Used Inconsistent with Accepted Meaning While applicant may be his or her own lexicographer, a term in a claim may not be given a meaning repugnant to the usual meaning of that term. See In re Hill, 161 F.2d 367, 73 USPQ 482 (CCPA 1947). The term " [1]" in claim [2] is used by the claim to mean " [3]", while the accepted meaning is " [4]." Examiner Note: 1. In bracket 3, point out the meaning that is assigned to the term by applicant's claims, taking into account the entire disclosure. 2. In bracket 4, point out the accepted meaning of the term. Support for the examiner's stated accepted meaning should be provided through the citation of an appropriate reference source, e.g., textbook or dictionary. See MPEP Section 2173.05(a). 3. This form paragraph must be preceded by form paragraph 7.34.01. 7.34.03 Relative Term - Term of Degree Rendering Claim Indefinite The term " [1]" in claim [2] is a relative term which renders the claim indefinite. The term " [1]" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. [3] Examiner Note: 1. In bracket 3, explain which parameter, quantity, or other limitation in the claim has been rendered indefinite by the use of the term appearing in bracket 1. 2. This form paragraph must be preceded by form paragraph 7.34.01. 7.34.04 Broader Range/Limitation And Narrow Range/Limitation in Same Claim A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In the present instance, claim [1] recites the broad recitation [2], and the claim also recites [3] which is the narrower statement of the range/limitation. Examiner Note: 1. In bracket 2, insert the broader range/limitation and where it appears in the claim; in bracket 3, insert the narrow range/limitation and where it appears. This form paragraph may be modified to fit other instances of indefiniteness in the claims. 2. This form paragraph must be preceded by form paragraph 7.34.01. 7.34.05 Lack of Antecedent Basis in the Claims Claim [1] recites the limitation [2] in [3]. There is insufficient antecedent basis for this limitation in the claim. Examiner Note: 1. In bracket 2, insert the limitation which lacks antecedent basis, for example --said lever-- or --the lever--. 2. In bracket 3, identify where in the claim(s) the limitation appears, for example, --line 3--, --the 3rd paragraph of the claim--, --the last 2 lines of the claim--, etc. 3. This form paragraph should ONLY be used in aggravated situations where the lack of antecedent basis makes the scope of the claim indeterminate. It must be preceded by form paragraph 7.34.01. 7.34.06 Use Claims Claim [1] provides for the use of [2], but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claim [3] is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). Examiner Note: 1. In bracket 2, insert what is being used. For example, insert --the monoclonal antibodies of claim 4--, where the claim recites "a method for using monoclonal antibodies of claim 4 to purify interferon." 2. See MPEP Section 2173.05(q). 3. This form paragraph must be preceded by form paragraph 7.34.01. 7.34.07 Claims Are a Literal Translation The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. Examiner Note: This form paragraph must be preceded by form paragraph 7.34.01. 7.34.08 Indefinite Claim Language: "For Example" Regarding claim [1], the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP Section 2173.05(d). Examiner Note: This form paragraph must be preceded by form paragraph 7.34.01. 7.34.09 Indefinite Claim Language: "Or The Like" Regarding claim [1], the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP Section 2173.05(d). Examiner Note: This form paragraph must be preceded by form paragraph 7.34.01. 7.34.10 Indefinite Claim Language: "Such As" Regarding claim [1], the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP Section 2173.05(d). Examiner Note: This form paragraph must be preceded by form paragraph 7.34.01. 7.34.11 Modifier of "Means" Lacks Function Regarding claim [1], the word "means" is preceded by the word(s) " [2]" in an attempt to use a "means" clause to recite a claim element as a means for performing a specified function. However, since no function is specified by the word(s) preceding "means," it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112, sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967). Examiner Note: 1. It is necessary for the words which precede "means" to convey a function to be performed. For example, the phrase "latch means" is definite because the word "latch" conveys the function "latching." In general, if the phrase can be restated as "means for ________," and it still makes sense, it is definite. In the above example, "latch means" can be restated as "means for latching. "This is clearly definite. However, if "conduit means" is restated as "means for conduiting, " the phrase makes no sense because the word "conduit" has no functional connotation, and the phrase is indefinite. 2. This form paragraph must be preceded by form paragraph 7.34.01. 7.34.12 Essential Steps Omitted Claim [1] rejected under 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP Section 2172.01. The omitted steps are: [2] Examiner Note: 1. This rejection must be preceded by form paragraph 7.30.02 or 7.103. 2. In bracket 2, recite the steps omitted from the claims. 3. Give the rationale for considering the omitted steps critical or essential. 7.34.13 Essential Elements Omitted Claim [1] rejected under 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP Section 2172.01. The omitted elements are: [2] Examiner Note: 1. This rejection must be preceded by form paragraph 7.30.02 or 7.103. 2. In bracket 2, recite the elements omitted from the claims. 3. Give the rationale for considering the omitted elements critical or essential. 7.34.14 Essential Cooperative Relationships Omitted Claim [1] rejected under 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP Section 2172.01. The omitted structural cooperative relationships are: [2] Examiner Note: 1. This rejection must be preceded by form paragraph 7.30.02 or 7.103. 2. In bracket 2, recite the structural cooperative relationships of elements omitted from the claims. 3. Give the rationale for considering the omitted structural cooperative relationships of elements being critical or essential. 7.35 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point Out And Distinctly Claim - Omnibus Claim Claim [1] rejected under 35 U.S.C. 112, second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim. Examiner Note: 1. This rejection must be preceded by form paragraph 7.30.02 or 7.103. 2. Use this paragraph to reject an "omnibus" type claim. No further explanation is necessary. 3. See MPEP Section 1302.04(b) for cancellation of such a claim by examiner's amendment upon allowance. 4. An example of an omnibus claim is: "A device substantially as shown and described." 7.35.01 Trademark or Trade Name as a Limitation in the Claim Claim [1] contains the trademark/trade name [2]. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/description is indefinite. Examiner Note: 1. In bracket 2, insert the trademark/trade name and where it is used in the claim. 2. In bracket 3, specify the material or product which is identified or described in the claim by the trademark/trade name. ---SECTION---706.03(k) Duplicate Claims Inasmuch as a patent is supposed to be limited to only one invention or, at most, several closely related indivisible inventions, limiting an application to a single claim, or a single claim to each of the related inventions might appear to be logical as well as convenient. However, court decisions have confirmed applicant's right to restate (i.e., by plural claiming) the invention in a reasonable number of ways. Indeed, a mere difference in scope between claims has been held to be enough. Nevertheless, when two claims in an application are duplicates, or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other claim under 37 CFR 1.75 as being a substantial duplicate of the allowed claim. Form paragraphs 7.05.05 and 7.05.06 may be used where duplicate claims are present in an application. 7.05.05 Duplicate Claims, Warning Applicant is advised that should claim [1] be found allowable, claim [2] will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP Section 706.03(k). Examiner Note: 1. Use this form paragraph whenever two claims are found to be substantial duplicates, but they are not allowable. This will give the applicant an opportunity to correct the problem and avoid a later objection. 2. If the claims are allowable, use form paragraph 7.05.06. 7.05.06 Duplicate Claims, Objection Claim [1] objected under 37 CFR 1.75 as being a substantial duplicate of claim [2]. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP Section 706.03(k). Examiner Note: If the duplicate claims are not allowable, use form paragraph 7.05.05. See MPEP Section 804 for double patenting rejections of inventions not patentable over each other. ---SECTION---706.03(m) Nonelected Inventions See MPEP Section 821 to Section 821.03 for treatment of claims held to be drawn to nonelected inventions. ---SECTION---706.03(o) New Matter 35 U.S.C. 132 Notice of rejection; reexamination. Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Commissioner shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention. In amended cases, subject matter not disclosed in the original application is sometimes added and a claim directed thereto. Such a claim is rejected on the ground that it recites elements without support in the original disclosure under 35 U.S.C. 112, first paragraph, Waldemar Link, GmbH & Co. v. Osteonics Corp. 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). See MPEP Section 2163.06 - Section 2163.07(b) for a discussion of the relationship of new matter to 35 U.S.C. 112, first paragraph. New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method. See MPEP Section 608.04 to Section 608.04(c). See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP Section 2163.05 for guidance in determining whether the addition of specific percentages or compounds after a broader original disclosure constitutes new matter. In the examination of an application following amendment thereof, the examiner must be on the alert to detect new matter. 35 U.S.C. 132 should be employed as a basis for objection to amendments to the abstract, specification, or drawings attempting to add new disclosure to that originally disclosed on filing. If subject matter capable of illustration is originally claimed and it is not shown in the drawing, the claim is not rejected but applicant is required to add it to the drawing. See MPEP Section 608.01(l). If new matter is added to the specification, it should be objected to by using Form Paragraph 7.28. 7.28 Objection to New Matter Added to Specification The amendment filed [1] is objected to under 35 U.S.C. 132 because it introduces new matter into the disclosure. 35 U.S.C. 132 states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: [2]. Applicant is required to cancel the new matter in the reply to this Office action. Examiner Note: 1. This form paragraph is not to be used in reissue applications; use form paragraph 14.22.01 instead. 2. In bracket 2, identify the new matter by page and the line numbers and/or drawing figures and provide an appropriate explanation of your position. This explanation should address any statement by applicant to support the position that the subject matter is described in the specification as filed. It should further include any unresolved questions which raise a doubt as to the possession of the claimed invention at the time of filing. 3. If new matter is added to the claims, or affects the claims, a rejection under 35 U.S.C. 112, first paragraph, using form paragraph 7.31.01 should also be made. If new matter is added only to a claim, an objection using this paragraph should not be made, but the claim should be rejected using form paragraph 7.31.01. As to any other appropriate prior art or 35 U.S.C. 112 rejection, the new matter must be considered as part of the claimed subject matter and can not be ignored. ---SECTION---706.03(s) Foreign Filing Without License 35 U.S.C. 182 Abandonment of invention for unauthorized disclosure. The invention disclosed in an application for patent subject to an order made pursuant to section 181 of this title may be held abandoned upon its being established by the Commissioner that in violation of said order the invention has been published or disclosed or that an application for a patent therefor has been filed in a foreign country by the inventor, his successors, assigns, or legal representatives, or anyone in privity with him or them, without the consent of the Commissioner. The abandonment shall be held to have occurred as of the time of violation. The consent of the Commissioner shall not be given without the concurrence of the heads of the departments and the chief officers of the agencies who caused the order to be issued. A holding of abandonment shall constitute forfeiture by the applicant, his successors, assigns, or legal representatives, or anyone in privity with him or them, of all claims against the United States based upon such invention. 35 U.S.C. 184 Filing of application in foreign country. Except when authorized by a license obtained from the Commissioner a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner pursuant to section 181 of this title without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and without deceptive intent and the application does not disclose an invention within the scope of section 181 of this title. The term "application" when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof. The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181 of this title and if such modifications, amendments, and supplements do not change the general nature of the invention in a manner which would require such application to be made available for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States application was not required to be made available for inspection under section 181 and if such modifications, amendments, and supplements do not, or did not, change the general nature of the invention in a manner which would require the United States application to have been made available for inspection under such section 181. 35 U.S.C. 185 Patent barred for filing without license. Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives,shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184 of this title, have made, or consented to or assisted another's making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error and without deceptive intent, and the patent does not disclose subject matter within the scope of section 181 of this title. If, upon examining an application, the examiner learns of the existence of a corresponding foreign application which appears to have been filed before the United States application had been on file for 6 months, and if the invention apparently was made in this country, he shall refer the application to Licensing and Review Section of Group 3640, calling attention to the foreign application. Pending investigation of the possible violation, the application may be returned to the examining group for prosecution on the merits. When it is otherwise in condition for allowance, the application will be again submitted to Licensing and Review Section of Group 3640 unless the latter has already reported that the foreign filing involves no bar to the United States application. If it should be necessary to take action under 35 U.S.C. 185, Licensing and Review Section of Group 3640 will request transfer of the application to it. ---SECTION---706.03(u) Disclaimer Claims may be rejected on the ground that applicant has disclaimed the subject matter involved. Such disclaimer may arise, for example, from the applicant's failure to: (A) make claims suggested for interference with another application under 37 CFR 1.605 (See MPEP Section 2305.02), (B) copy a claim from a patent when suggested by the examiner (MPEP Section 2305.02), or (C) respond or appeal, within the time limit fixed, to the examiner's rejection of claims copied from a patent (see MPEP Section 2307.02). The rejection on disclaimer applies to all claims not patentably distinct from the disclaimed subject matter as well as to the claims directly involved. Rejections based on disclaimer should be made by using one of Form Paragraphs 7.48 and 7.49. 7.48 Failure To Present Claims for Interference Claim [1] rejected under 35 U.S.C. [2] based upon claim [3] of Patent No. [4]. Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975). Examiner Note: 1. This paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims. 2. In bracket 2, insert --102(g)-- or --102(g)/103(a)--. 3. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under 35 U.S.C. 103(a), the examiner's basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Section 2306. 7.49 Rejection, Disclaimer, Failure To Appeal Claim [1] stand finally disposed of for failure to reply to or appeal from the examiner's rejection of such claim(s) presented for interference within the specified time. See 37 CFR 1.661 and 1.663. ---SECTION---706.03(v) After Interference or Public Use Proceeding For rejections following an interference, see MPEP Section 2363.03. The outcome of public use proceedings may also be the basis of a rejection. See 37 CFR 1.292 and In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983). Upon termination of a public use proceeding including a case also involved in an interference, in order for a prompt resumption of the interference proceedings, a notice should be sent to the Board of Patent Appeals and Interferences notifying them of the disposition of the public use proceeding. ---SECTION---706.03(w) Res Judicata Res judicata may constitute a proper ground for rejection. However, as noted below, the Court of Customs and Patent Appeals has materially restricted the use of res judicata rejections. It should be applied only when the earlier decision was a decision of the Board of Appeals or any one of the reviewing courts and when there is no opportunity for further court review of the earlier decision. The timely filing of a second application copending with an earlier application does not preclude the use of res judicata as a ground of rejection for the second application claims. When making a rejection on res judicata, action should ordinarily be made also on the basis of prior art, especially in continuing applications. In most situations the same prior art which was relied upon in the earlier decision would again be applicable. In the following cases a rejection of a claim on the ground of res judicata was sustained where it was based on a prior adjudication, against the inventor on the same claim, a patentably nondistinct claim, or a claim involving the same issue. In re Freeman, 30 F.3d 1459, 31 USPQ 2d 1444 (Fed. Cir. 1994). Edgerton v. Kingland, 168 F. 2d 121, 75 USPQ 307 (D.C. Cir. 1947). In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963). In re Katz, 467 F.2d 939, 167 USPQ 487 (CCPA 1970) (prior decision by District Court). In the following cases for various reasons, res judicata rejections were reversed. In re Fried, 312 F.2d 930, 136 USPQ 429 (CCPA 1963) (differences in claims). In re Szwarc, 319 F.2d 277, 138 USPQ 208 (CCPA 1963) (differences in claim). In re Hellbaum, 371 F.2d 1022, 152 USPQ 571 (CCPA 1967) (differences in claims). In re Herr, 377 F.2d 610, 153 USPQ 548 (CCPA 1967) (same claims, new evidence, prior decision by CCPA). In re Kaghan, 387 F.2d 398, 156 USPQ 130 (CCPA 1967) (prior decision by Board of Appeals, final rejection on prior art withdrawn by examiner "to simplify the issue," differences in claims; holding of waiver based on language in MPEP at the time). In re Craig, 411 F.2d 1333, 162 USPQ 157 (CCPA 1969) (Board of Appeals held second set of claims patentable over prior art). In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970) (difference in claims). In re Russell, 439 F.2d 1228, 169 USPQ 426 (CCPA 1971) (new evidence, rejection on prior art reversed by court). In re Ackermann, 444 F.2d 1172, 170 USPQ 340 (CCPA 1971) (prior decision by Board of Appeals, new evidence, rejection on prior art reversed by court). Plastic Contact Lens Co. v. Gottschalk, 484 F.2d 837, 179 USPQ 262 (D.C. Cir. 1973) (follows In re Kaghan). ---SECTION---706.03(x) Reissue The examination of reissue applications is covered in MPEP Chapter 1400. 35 U.S.C. 251 forbids the granting of a reissue "enlarging the scope of the claims of the original patent" unless the reissue is applied for within 2 years from the grant of the original patent. This is an absolute bar and cannot be excused. This prohibition has been interpreted to apply to any claim which is broader in any respect than the claims of the original patent. Such claims may be rejected as being barred by 35 U.S.C. 251. However, when the reissue is applied for within 2 years, the examiner does not go into the question of undue delay. The same section permits the filing of a reissue application by the assignee of the entire interest only in cases where it does not "enlarge the scope of the claims of the original patent." Such claims which do enlarge the scope may also be rejected as barred by the statute. In In re Bennett, 766 F.2d 524, 226 USPQ 413 (Fed. Cir. 1985), however, the court permitted the erroneous filing by the assignee in such a case to be corrected. A defective reissue oath affords a ground for rejecting all the claims in the reissue application. See MPEP Section 1444. Note that a reissue application is "special" and remains so even if applicant does not make a prompt reply. ---SECTION---706.04 Rejection of Previously Allowed Claims A claim noted as allowable shall thereafter be rejected only after the proposed rejection has been submitted to the primary examiner for consideration of all the facts and approval of the proposed action. Great care should be exercised in authorizing such a rejection. See Ex parte Grier, 1923 C.D. 27, 309 O.G. 223 (Comm'r Pat. 1923); Ex parte Hay, 1909 C.D. 18, 139 O.G. 197 (Comm'r Pat. 1909). PREVIOUS ACTION BY DIFFERENT EXAMINER Full faith and credit should be given to the search and action of a previous examiner unless there is a clear error in the previous action or knowledge of other prior art. In general, an examiner should not take an entirely new approach or attempt to reorient the point of view of a previous examiner, or make a new search in the mere hope of finding something. Because it is unusual to reject a previously allowed claim, the examiner should point out in his or her letter that the claim now being rejected was previously allowed by using Form Paragraph 7.50. 7.50 Claims Previously Allowed, Now Rejected, New Art The indicated allowability of claim [1] is withdrawn in view of the newly discovered reference(s) to [2]. Rejection(s) based on the newly cited reference(s) follow. Examiner Note: 1. In bracket 2, insert the name(s) of the newly discovered reference. 2. Any action including this form paragraph requires the signature of a Primary Examiner. MPEP Section 1004. ---SECTION---706.05 Rejection After Allowance of Application See MPEP Section 1308.01 for a rejection based on a reference. ---SECTION---706.06 Rejection of Claims Copied From Patent See MPEP Section 2307.02. ---SECTION---706.07 Final Rejection 37 CFR 1.113 Final rejection or action. (a) On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant's or patent owner's reply is limited to appeal in the case of rejection of any claim (Section 1.191), or to amendment as specified in Section 1.116. Petition may be taken to the Commissioner in the case of objections or requirements not involved in the rejection of any claim (Section 1.181). Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each rejected claim. If any claim stands allowed, the reply to a final rejection or action must comply with any requirements or objections as to form. (b) In making such final rejection, the examiner shall repeat or state all grounds of rejection then considered applicable to the claims in the application, clearly stating the reasons in support thereof. Before final rejection is in order a clear issue should be developed between the examiner and applicant. To bring the prosecution to as speedy conclusion as possible and at the same time to deal justly by both the applicant and the public, the invention as disclosed and claimed should be thoroughly searched in the first action and the references fully applied; and in reply to this action the applicant should amend with a view to avoiding all the grounds of rejection and objection. Switching from one subject matter to another in the claims presented by applicant in successive amendments, or from one set of references to another by the examiner in rejecting in successive actions claims of substantially the same subject matter, will alike tend to defeat attaining the goal of reaching a clearly defined issue for an early termination, i.e., either an allowance of the case or a final rejection. While the rules no longer give to an applicant the right to "amend as often as the examiner presents new references or reasons for rejection," present practice does not sanction hasty and ill-considered final rejections. The applicant who is seeking to define his or her invention in claims that will give him or her the patent protection to which he or she is justly entitled should receive the cooperation of the examiner to that end, and not be prematurely cut off in the prosecution of his or her application. But the applicant who dallies in the prosecution of his or her application, resorting to technical or other obvious subterfuges in order to keep the application pending before the primary examiner, can no longer find a refuge in the rules to ward off a final rejection. The examiner should never lose sight of the fact that in every case the applicant is entitled to a full and fair hearing, and that a clear issue between applicant and examiner should be developed, if possible, before appeal. However, it is to the interest of the applicants as a class as well as to that of the public that prosecution of an application be confined to as few actions as is consistent with a thorough consideration of its merits. Neither the statutes nor the Rules of Practice confer any right on an applicant to an extended prosecution; Ex parte Hoogendam, 1939 C.D. 3, 499 O.G.3, 40 USPQ 389 (Comm'r Pat. 1939). STATEMENT OF GROUNDS In making the final rejection, all outstanding grounds of rejection of record should be carefully reviewed, and any such grounds relied on in the final rejection should be reiterated. They must also be clearly developed to such an extent that applicant may readily judge the advisability of an appeal unless a single previous Office action contains a complete statement supporting the rejection. However, where a single previous Office action contains a complete statement of a ground of rejection, the final rejection may refer to such a statement and also should include a rebuttal of any arguments raised in the applicant's reply. If appeal is taken in such a case, the examiner's answer should contain a complete statement of the examiner's position. The final rejection letter should conclude with Form Paragraph 7.39. 7.39 Action Is Final THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Examiner Note: 1. This paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months). 2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings. The Office Action Summary Form PTOL-326 should be used in all Office actions up to and including final rejections. For amendments filed after final rejection, see MPEP Section 714.12 and Section 714.13. For final rejection practice in reexamination proceedings see MPEP Section 2271. ---SECTION---706.07(a) Final Rejection, When Proper on Second Action Due to the change in practice as affecting final rejections, older decisions on questions of prematureness of final rejection or admission of subsequent amendments do not necessarily reflect present practice. Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). Where information is submitted in an information disclosure statement during the period set forth in 37 CFR 1.97(c) with a fee, the examiner may use the information submitted, e.g., a printed publication or evidence of public use, and make the next Office action final whether or not the claims have been amended, provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner. See MPEP Section 609 paragraph (B)(2). Furthermore, a second or any subsequent action on the merits in any application or patent undergoing reexamination proceedings will not be made final if it includes a rejection, on newly cited art, other than information submitted in an information disclosure statement filed under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17 (p), of any claim not amended by applicant or patent owner in spite of the fact that other claims may have been amended to require newly cited art. A second or any subsequent action on the merits in any application or patent involved in reexamination proceedings should not be made final if it includes a rejection, on prior art not of record, of any claim amended to include limitations which should reasonably have been expected to be claimed. See MPEP Section 904 et seq. For example, one would reasonably expect that a rejection under 35 U.S.C. 112 for the reason of incompleteness would be replied to by an amendment supplying the omitted element. See MPEP Section 809.02(a) for actions which indicate generic claims as not allowable. In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the examiner should be on guard not to allow such claims. See MPEP Section 714.04. The claims may be finally rejected if, in the opinion of the examiner, they are clearly open to rejection on grounds of record. Form Paragraph 7.40 should be used where an action is made final including new grounds of rejection necessitated by applicant's amendment. 7.40 Action Is Final, Necessitated by Amendment Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP Section 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Examiner Note: 1. This paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months). 2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings. 7.40.01 Action Is Final, Necessitated by IDS With Fee Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) on [1] prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP Section 609(B)(2)(i). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Examiner Note: 1. This paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner which was not necessitated by amendment to the claims. 2. In bracket 1, insert the filing date of the information disclosure statement containing the identification of the item of information used in the new ground of rejection. ---SECTION---706.07(b) Final Rejection, When Proper on First Action The claims of a new application may be finally rejected in the first Office action in those situations where (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are drawn to the same invention claimed in the earlier application, and (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. However, it would not be proper to make final a first Office action in a continuing or substitute application where that application contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was raised. Further, it would not be proper to make final a first Office action in a continuation-in-part application where any claim includes subject matter not present in the earlier application. A request for an interview prior to first action on a continuing or substitute application should ordinarily be granted. A first action final rejection should be made by using Form Paragraphs 7.41 or 7.41.03, as appropriate. 7.41 Action Is Final, First Action This is a [1] of applicant's earlier Application No. [2]. All claims are drawn to the same invention claimed in the earlier application and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP Section 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Examiner Note: 1. In bracket 1, insert either --continuation-- or --substitute--, as appropriate. 2. If an amendment was refused entry in the parent case on the grounds that it raised new issues or new matter, this paragraph cannot be used. See MPEP Section 706.07(b). 3. This paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP-1 or 2 months). 4. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings. 7.41.03 Action Is Final, First Action Following Submission Under 37 CFR 1.53(d), Continued Prosecution Application (CPA) All claims are drawn to the same invention claimed in the parent application prior to the filing of this Continued Prosecution Application under 37 CFR 1.53(d) and could have been finally rejected on the grounds and art of record in the next Office action. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the fil ing under 37 CFR 1.53(d). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Examiner Note: 1. This form paragraph is for a first action final rejection in a Continued Prosecution Application filed under 37 CFR 1.53(d). 2. This form paragraph must be preceded by one of form paragraphs 2.30 or 2.35, as appropriate. ---SECTION---706.07(c) Final Rejection, Premature Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This is purely a question of practice, wholly distinct from the tenability of the rejection. It may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Board of Patent Appeals and Interferences. It is reviewable by petition under 37 CFR 1.181. See MPEP Section 1002.02(c). ---SECTION---706.07(d) Final Rejection, Withdrawal of, Premature If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. Form Paragraph 7.42 should be used when withdrawing the finality of the rejection of the last Office action. 7.42 Withdrawal of Finality of Last Office Action Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn. ---SECTION---706.07(e) Withdrawal of Final Rejection, General See MPEP Section 714.12 and Section 714.13 for amendments after final rejection. Once a final rejection that is not premature has been entered in an application/reexamination proceeding, it should not be withdrawn at the applicant's or patent owner's request except on a showing under 37 CFR 1.116(b). Further amendment or argument will be considered in certain instances. An amendment that will place the case either in condition for allowance or in better form for appeal may be admitted. Also, amendments complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(a). The examiner may withdraw the rejection of finally rejected claims. If new facts or reasons are presented such as to convince the examiner that the previously rejected claims are in fact allowable or patentable in the case of reexamination, then the final rejection should be withdrawn. Occasionally, the finality of a rejection may be withdrawn in order to apply a new ground of rejection. Although it is permissible to withdraw a final rejection for the purpose of entering a new ground of rejection, this practice is to be limited to situations where a new reference either fully meets at least one claim or meets it except for differences which are shown to be completely obvious. Normally, the previous rejection should be withdrawn with respect to the claim or claims involved. The practice should not be used for application of subsidiary references, or of cumulative references, or of references which are merely considered to be better than those of record. When a final rejection is withdrawn, all amendments filed after the final rejection are ordinarily entered. New grounds of rejection made in an Office action reopening prosecution after the filing of an appeal brief require the approval of the supervisory patent examiner. See MPEP Section 1002.02(d). ---SECTION---706.07(f) Time for Reply to Final Rejection The time for reply to a final rejection is as follows: (A) All final rejections setting a 3-month shortened statutory period (SSP) for reply should contain one of form paragraphs 7.39, 7.40, 7.40.01, 7.41, or 7.41.03 advising applicant that if the reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later. Thus, a variable reply period will be established. In no event can the statutory period for reply expire later than 6 months from the date of the final rejection. (B) If the form paragraph setting a variable reply period is inadvertently not included in the final Office action, the SSP for reply will end 3 months from the date of the final Office action and cannot be extended other than by making a petition and paying a fee pursuant to 37 CFR 1.136(a). However, if an advisory action is mailed in such a case where the reply to the final action has been filed within 2 months, the examiner should vacate the original SSP and reset the period for reply to correspond with the Office policy set forth in the Notice entitled "Procedure for Handling Amendments Under 37 CFR 1.116," 1027 O.G. 71 (Feb. 8, 1983). See paragraph (F) below. (C) This procedure of setting a variable reply period in the final rejection dependent on when applicant files a first reply to a final Office action does not apply to situations where a SSP less than 3 months is set, e.g., reissue litigation applications (1-month SSP) or any reexamination proceeding. ADVISORY ACTIONS (D) Where the final Office action sets a variable reply period as set forth in paragraph (A) above AND applicant files a complete first reply to the final Office action within 2 months of the date of the final Office action, the examiner must determine if the reply: (1) places the application in condition for allowance - then the application should be processed as an allowance and no extension fees are due; (2) places the application in condition for allowance except for matters of form which the examiner can change without authorization from applicant, MPEP Section 1302.04 - then the application should be amended as required and processed as an allowance and no extension fees are due; or (3) does not place the application in condition for allowance - then the advisory action should inform applicant that the SSP for reply expires 3 months from the date of the final rejection or as of the mailing date of the advisory action, whichever is later, by checking the appropriate box at the top portion of the Advisory Action form, PTOL-303. If PTOL-303 is not used, then use Form Paragraph 7.67.01 on all advisory actions where a first complete reply has been filed within 2 months of the date of the final Office action. 7.67.01 Advisory After Final, Heading, 1st Reply Filed Within 2 Months The shortened statutory period for reply expires THREE MONTHS from the mailing date of the final rejection or as of the mailing date of this advisory action, whichever is later. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection. Any extension fee required pursuant to 37 CFR 1.17 will be calculated from the date that the shortened statutory period for reply expires as set forth above. Examiner Note: 1. This paragraph should be used in all advisory actions if: a. it was the FIRST reply to the to the final rejection, and b. it was filed within two months of the date of the final rejection. 2. If a notice of appeal has been filed, also use paragraph 7.68. 3. DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION PROCEEDINGS. 4. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable. (E) Where the final Office action sets a variable reply period as set forth in paragraph (A) above, and applicant does NOT file a complete first reply to the final Office action within 2 months, examiners should use Form Paragraph 7.67. (F) Where the final Office action does not set a variable reply period as set forth in paragraph (A) above AND applicant does file a complete first reply to the final Office action within 2 months, and if an advisory action is necessary and cannot be mailed within 3 months of the final Office action, the examiner should vacate the original SSP and reset the reply period to expire on the mailing date of the advisory action by using form paragraph 7.67.02. In no case can the statutory period for reply expire later than 6 months from the date of the final Office action. Note that Form Paragraph 7.67.02 can be used with the advisory action (preferable) or after the advisory action is mailed to correct the error of not setting a variable reply period. 7.67.02 Advisory After Final, Heading, No Variable SSP Set in Final Since the first reply to the final Office action was filed within TWO MONTHS of the mailing date of that action and the advisory action was not mailed within THREE MONTHS of that date, the THREE-MONTH shortened statutory period for reply set in the final Office action is hereby vacated and reset to expire as of the mailing date of this advisory action. See Notice entitled "Procedure for Handling Amendments Under 37 CFR 1.116," published in the Official Gazette at 1027 O.G. 71, February 8, 1983. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final Office action. Any extension fee required pursuant to 37 CFR 1.17 will be calculated from the mailing date of the advisory action. Examiner Note: 1. This paragraph should be used in all advisory actions where: a. the reply is a first reply to the final action; b. the reply was filed within two months of the mailing date of the final; and c. the final action failed to inform applicant of a variable SSP beyond the normal three month period, as is set forth in form paragraphs 7.39 to 7.41. 2. If the final action set a variable SSP, do not use this paragraph, use paragraph 7.67.01 instead. 3. If a notice of appeal has been filed, also use paragraph 7.68. 4. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable. (G) When an advisory action properly contains either form paragraph 7.67.01 or 7.67.02, the time for applicant to take further action (including the calculation of extension fees under 37 CFR 1.136(a)) begins to run 3 months from the date of the final rejection, or from the date of the advisory action, whichever is later. Extension fees cannot be prorated for portions of a month. In no event can the statutory period for reply expire later than 6 months from the date of the final rejection. For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such case, any extension fee would then be calculated from the end of the 3-month period. If the examiner, however, does not mail an advisory action until after the end of the 3-month period, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension fee would be calculated from that date. EXAMINER'S AMENDMENTS (H) Where a complete first reply to a final Office action has been filed within 2 months of the final Office action, an examiner's amendment to place the application in condition for allowance may be made without the payment of extension fees even if the examiner's amendment is made more than 3 months from the date of the final Office action. Note that an examiner's amendment may not be made more than 6 months from the date of the final Office action, as the application would be abandoned at that point by operation of law. (I) Where a complete first reply to a final Office action has not been filed within 2 months of the final Office action, applicant's authorization to make an amendment to place the application in condition for allowance must be made either within the 3 month shortened statutory period or within an extended period for reply that has been petitioned and paid for by applicant pursuant to 37 CFR 1.136(a). However, an examiner's amendment correcting only formal matters which are identified for the first time after a reply is made to a final Office action would not require any extension fee, since the reply to the final Office action put the application in condition for allowance except for the correction of formal matters, the correction of which had not yet been required by the examiner. (J) An extension of time under 37 CFR 1.136(a) requires a petition for an extension and the appropriate fee provided for in 37 CFR 1.17. Where an extension of time is necessary to place an application in condition for allowance (e.g., when an examiner's amendment is necessary after the shortened statutory period for reply has expired), applicant may file the required petition and fee or give authorization to the examiner to make the petition of record and charge a specified fee to a deposit account. When authorization to make a petition for an extension of time of record is given to the examiner, the authorization must be given before the extended period expires. The authorization must be made of record in an examiner's amendment by indicating the name of the person making the authorization, when the authorization was given, the deposit account number to be charged, the length of the extension requested and the amount of the fee to be charged to the deposit account. Form Paragraph 13.02.02 should be used. 13.02.02 Extension of Time and Examiner's Amendment Authorized by Telephone An extension of time under 37 CFR 1.136(a) is required in order to make an examiner's amendment which places 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 Commissioner 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. Examiner Note: See MPEP Section 706.07(f), item 10 which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance. PRACTICE AFTER FINAL (K) Replies after final should be processed and considered promptly by all Office personnel. (L) Replies after final should not be considered by the examiner unless they are filed within the SSP or are accompanied by a petition for an extension of time and the appropriate fee (37 CFR 1.17 and 37 CFR 1.136(a)). See also MPEP Section 710.02(e). This requirement also applies to supplemental replies filed after the first reply. (M) Interviews may be conducted after the expiration of the shortened statutory period for reply to a final Office action but within the 6-month statutory period for reply without the payment of an extension fee. (N) Formal matters which are identified for the first time after a reply is made to a final Office action and which require action by applicant to correct may be required in an Ex parte Quayle action if the application is otherwise in condition for allowance. No extension fees would be required since the reply puts the application in condition for allowance except for the correction of formal matters - the correction of which had not yet been required by the examiner. (O) If prosecution is to be reopened after a final Office action has been replied to, the finality of the previous Office action should be withdrawn to avoid the issue of abandonment and the payment of extension fees. For example, if a new reference comes to the attention of the examiner which renders unpatentable a claim indicated to be allowable, the Office action should begin with a statement to the effect: "The finality of the Office action mailed is hereby withdrawn in view of the new ground of rejection set forth below." Form Paragraph 7.42 could be used in addition to this statement. ---SECTION---706.07(g) Transitional After-Final Practice 37 CFR 1.129 Transitional procedures for limited examination after final rejection and restriction practice. (a) An applicant in an application, other than for reissue or a design patent, that has been pending for at least two years as of June 8, 1995, taking into account any reference made in such application to any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is entitled to have a first submission entered and considered on the merits after final rejection under the following circumstances: The Office will consider such a submission, if the first submission and the fee set forth in Section 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in Section 1.17(r). If a subsequent final rejection is made in the application, applicant is entitled to have a second submission entered and considered on the merits after the subsequent final rejection under the following circumstances: The Office will consider such a submission, if the second submission and a second fee set forth in Section 1.17(r) are filed prior to the filing of an appeal brief and prior to abandonment of the application. The finality of the subsequent final rejection is automatically withdrawn upon the timely filing of the submission and payment of the second fee set forth in Section 1.17(r). Any submission filed after a final rejection made in an application subsequent to the fee set forth in Section 1.17(r) having been twice paid will be treated as set forth in Section 1.116. A submission as used in this paragraph includes, but is not limited to, an information disclosure statement, an amendment to the written description, claims or drawings and a new substantive argument or new evidence in support of patentability. +++ (c) The provisions of this section shall not be applicable to any application filed after June 8, 1995. In order to facilitate the completion of prosecution of applications pending in the PTO as of June 8, 1995 and to ease the transition between a 17-year patent term and a 20-year patent term, Public Law 103-465 provided for the further limited reexamination of an application pending for 2 years or longer as of June 8, 1995, taking into account any reference made in the application to any earlier filed application under 35 U.S.C. 120, 121, or 365(c). The further limited reexamination permits applicants to present for consideration, as a matter of right upon payment of a fee, a submission after a final rejection has been issued on an application. An applicant will be able to take advantage of this provision on two separate occasions provided the submission and fee are presented prior to the filing of the Appeal Brief and prior to abandonment of the application. This will have the effect of enabling an applicant to essentially reopen prosecution of the pending application on two separate occasions by paying a fee for each occasion, and avoid the impact of refiling the application to obtain consideration of additional claims and/or information relative to the claimed subject matter. The transitional after-final practice is only available to applications filed on or before June 8, 1995 and it is not available for reissue or design applications or reexamination proceedings. The following flowchart illustrates the transitional after-final procedures set forth in 37 CFR 1.129(a). [GRAPHIC] Effective June 8, 1995, in any pending application having an actual or effective filing date of June 8, 1993 or earlier, applicant is entitled, under 37 CFR 1.129(a), to have a first submission after final rejection entered and considered on the merits, if the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an Appeal Brief under 37 CFR 1.192 and prior to abandonment. For an application entering national stage under 35 U.S.C. 371 or an application filed under 35 U.S.C. 111(a) claiming benefit under 35 U.S.C. 120 of a PCT application designating the U.S., the PCT internation al filing date will be used to determine whether the ap plication has been pending for at least 2 years as of June 8, 1995. Form Paragraph 7.41.01 may be used to notify ap plicant that the application qualifies under 37 CFR 1.129(a). 7.41.01 Transitional After Final Practice, First Submission (37 CFR 1.129(a)) This application is subject to the provisions of Public Law 103-465, effective June 8, 1995. Accordingly, since this application has been pending for at least two years as of June 8, 1995, taking into account any reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), applicant, under 37 CFR 1.129(a), is entitled to have a first submission entered and considered on the merits if, prior to abandonment, the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 1.192. Upon the timely filing of a first submission and the appropriate fee of $ [1] for a [2] entity under 37 CFR 1.17(r), the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 1.17(e) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant will be construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). In view of 35 U.S.C. 132, no amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application. If applicant has filed multiple proposed amendments which, when entered, would conflict with one another, specific instructions for entry or non-entry of each such amendment should be provided upon payment of any fee under 37 CFR 1.17(r). Examiner Note: 1. This form paragraph may follow any of form paragraphs 7.39- 7.41, 7.67-7.67.02, 7.72-7.78 or 7.80 in any application filed prior to June 9, 1995, which has been pending for at least two years as of June 8, 1995, taking into account any reference under 35 U.S.C. 120, 121 or 365(c) to a previously filed application and no previous fee has been paid under 37 CFR 1.17(r). 2. This form paragraph should NOT be used in a design or reissue application, or in a reexamination proceeding. 3. In bracket 1, insert the current fee for a large or small entity, as appropriate. 4. In bracket 2, insert --small-- or --large--, depending on the current status of the application. The submission under 37 CFR 1.129(a) may comprise, but is not limited to, an information disclosure statement, an amendment to the written description, claims or drawings, a new substantive argument and/or new evidence. No amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application. 35 U.S.C. 132. In view of the fee set forth in 37 CFR 1.17(r), any information disclosure statement previously refused consideration in the application because of applicant's failure to comply with 37 CFR 1.97(c) or (d) will be treated as though it has been filed within one of the time periods set forth in 37 CFR 1.97(b) and will be considered without the petition and petition fee required in 37 CFR 1.97(d), if it complies with the requirements of 37 CFR 1.98. If the application qualifies under 37 CFR 1.129(a), that is, it was filed on or before June 8, 1995 and the application has an effective U.S. filing date of June 8, 1993 or earlier, the examiner must check to see if the submission and 37 CFR 1.17(r) fee were filed prior to the filing of the Appeal Brief and prior to abandonment of the application. If an amendment was timely filed in reply to the final rejection but the fee set forth in 37 CFR 1.17(r) did not accompany the amendment, examiners will continue to consider these amendments in an expedited manner as set forth in MPEP Section 714.13 and issue an advisory action notifying applicant whether the amendment has been entered. If the examiner indicated in an advisory action that the amendment has not been entered, applicant may then pay the fee set forth in 37 CFR 1.17(r) and any necessary fee to avoid abandonment of the application and obtain entry and consideration of the amendment as a submission under 37 CFR 1.129(a). If the submission and the fee set forth in 37 CFR 1.17(r) were timely filed in reply to the final rejection and no advisory action has been issued prior to the payment of the fee set forth in 37 CFR 1.17(r), no advisory action will be necessary. The examiner will notify applicant that the finality of the previous office action has been withdrawn pursuant to 37 CFR 1.129(a). It is noted that if the submission is accompanied by a "conditional" payment of the fee set forth in 37 CFR 1.17(r), i.e., an authorization to charge the fee set forth in 37 CFR 1.17(r) to a deposit account in the event that the submission would not otherwise be entered, the PTO will treat the conditional payment as an unconditional payment of the 37 CFR 1.17(r) fee. The finality of the final rejection is automatically withdrawn upon the timely filing of the submission and payment of the fee set forth in 37 CFR 1.17(r). Upon the timely payment of the fee set forth in 37 CFR 1.17(r), all previously unentered submissions, submissions filed with the 37 CFR 1.17(r) fee, and any submissions filed prior to the mailing of the next Office action will be entered. Any conflicting amendments should be clarified for entry by the applicant upon payment of the 37 CFR 1.17(r) fee. Absent specific instructions for entry, all submissions filed as of the date of the withdrawal of the finality of the previous final action will be entered in the order in which they were filed. Form paragraph 7.42.01 should be used to notify applicant that the finality of the previous Office action has been withdrawn. 7.42.01 Withdrawal of Finality of Last Office Action - Transitional Application Under 37 CFR 1.129(a) Since this application is eligible for the transitional procedure of 37 CFR 1.129(a), and the fee set forth in 37 CFR 1.17(r) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.129(a). Applicant's [1] submission after final filed on [2] has been entered. Examiner Note: Insert --first-- or --second-- in bracket 1. If a Notice of Appeal and the appeal fee set forth in 37 CFR 1.17(b) were filed prior to or with the payment of the fee set forth 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant is construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). Upon the timely payment of the fee set forth in 37 CFR 1.17(r), if the examiner determines that the submission is not fully responsive to the previous Office action, e.g., if the submission only includes an information disclosure statement, applicant will be given a new shortened statutory period of 1 month or 30 days, whichever is longer, to submit a complete reply. Form Paragraph 7.42.02 should be used. 7.42.02 Nonresponsive Submission Filed Under 37 CFR 1.129(a) The timely submission under 37 CFR 1.129(a) filed on [1] is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of ONE MONTH or THIRTY DAYS from the mailing date of this letter, whichever is longer, to submit a complete reply. This shortened statutory period supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a). If a notice of appeal and the appeal fee set forth in 37 CFR 1.17(e) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant is construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). The appeal stands dismissed. Examiner Note: The reasons why the examiner considers the submission not to be fully responsive must be set forth in bracket 2. After submission and payment of the fee set forth in 37 CFR 1.17(r), the next Office action on the merits may be made final only under the conditions for making a first action in a continuing application final set forth in MPEP Section 706.07(b). Form Paragraph 7.42.03 may be used if it is appropriate to make the first action final following a submission under 37 CFR 1.129(a). 7.42.03 Action Is Final, First Action Following Submission Under 37 CFR 1.129(a) All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.129(a) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.129(a). Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the submission under 37 CFR 1.129(a). See MPEP Section 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Examiner Note: Also use form paragraph 7.41.02 if this is a final rejection following a first submission under 37 CFR 1.129(a). If a subsequent final rejection is made in the application, applicant would be entitled to have a second submission entered and considered on the merits under the same conditions set forth for consideration of the first submission. Form Paragraph 7.41.02 should be used. 7.41.02 Transitional After Final Practice, Second Submission (37 CFR 1.129(a)) Since the fee set forth in 37 CFR 1.17(r) for a first submission subsequent to a final rejection has been previously paid, applicant, under 37 CFR 1.129(a), is entitled to have a second submission entered and considered on the merits if, prior to abandonment, the second submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 1.192. Upon the timely filing of a second submission and the appropriate fee of $ [1] for a [2] entity under 37 CFR 1.17(r), the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 1.17(e) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant will be construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). In view of 35 U.S.C. 132, no amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application. Examiner Note: 1. This form paragraph is to follow any of form paragraphs 7.39- 7.41 in any application filed prior to June 9, 1995, which has been pending for at least two years as of June 8, 1995, taking into account any reference under 35 U.S.C. 120, 121 or 365(c) to a previously filed application and a first submission fee has been previously paid under 37 CFR 1.17(r). 2. This form paragraph should NOT be used in a design or reissue application or in a reexamination proceeding. 3. In bracket 1, insert the current fee for a large or small entity, as appropriate. 4. In bracket 2, insert --small-- or --large--, depending on the current status of the application. 5. If the fee set forth in 37 CFR 1.17(r) has been twice paid, the provisions of 37 CFR 1.129(a) are no longer available. Any submission filed after a final rejection made in the application subsequent to the fee set forth in 37 CFR 1.17(r) having been twice paid will be treated in accordance with the current after-final practice set forth in 37 CFR 1.116. ---SECTION---707 Examiner's Letter or Action 37 CFR 1.104 Nature of examination. (a) Examiner's action. (1) On taking up an application for examination or a patent in a reexamination proceeding, the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention. The examination shall be complete with respect both to compliance of the application or patent under reexamination with the applicable statutes and rules and to the patentability of the invention as claimed, as well as with respect to matters of form, unless otherwise indicated. (2) The applicant, or in the case of a reexamination proceeding, both the patent owner and the requester, will be notified of the examiner's action. The reasons for any adverse action or any objection or requirement will be stated and such information or references will be given as may be useful in aiding the applicant, or in the case of a reexamination proceeding the patent owner, to judge the propriety of continuing the prosecution. (3) An international-type search will be made in all national applications filed on and after June 1, 1978. (4) Any national application may also have an international-type search report prepared thereon at the time of the national examination on the merits, upon specific written request therefor and payment of the international-type search report fee set forth in Section 1.21(e). The Patent and Trademark Office does not require that a formal report of an international-type search be prepared in order to obtain a search fee refund in a later filed international application. (5) Copending applications will be considered by the examiner to be owned by, or subject to an obligation of assignment to, the same person if: (i) The application files refer to assignments recorded in the Patent and Trademark Office in accordance with Part 3 of this chapter which convey the entire rights in the applications to the same person or organization; or (ii) Copies of unrecorded assignments which convey the entire rights in the applications to the same person or organization are filed in each of the applications; or (iii) An affidavit or declaration by the common owner is filed which states that there is common ownership and states facts which explain why the affiant or declarant believes there is common ownership, which affidavit or declaration may be signed by an official of the corporation or organization empowered to act on behalf of the corporation or organization when the common owner is a corporation or other organization; or (iv) Other evidence is submitted which establishes common ownership of the applications. (b) Completeness of examiner's action. The examiner's action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable. (c) Rejection of claims. (1) If the invention is not considered patentable, or not considered patentable as claimed, the claims, or those considered unpatentable will be rejected. (2) In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. (3) In rejecting claims the examiner may rely upon admissions by the applicant, or the patent owner in a reexamination proceeding, as to any matter affecting patentability and, insofar as rejections in applications are concerned, may also rely upon facts within his or her knowledge pursuant to paragraph (d)(2) of this section. (4) Subject matter which is developed by another person which qualifies as prior art only under 35 U.S.C. 102(f) or (g) may be used as prior art under 35 U.S.C. 103 against a claimed invention unless the entire rights to the subject matter and the claimed invention were commonly owned by the same person or organization or subject to an obligation of assignment to the same person or organization at the time the claimed invention was made. (5) The claims in any original application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the same subject matter is claimed in the application and the statutory invention registration. The claims in any reissue application naming an inventor will be rejected as being precluded by a waiver in a published statutory invention registration naming that inventor if the reissue application seeks to claim subject matter: (i) Which was not covered by claims issued in the patent prior to the date of publication of the statutory invention registration; and (ii) Which was the same subject matter waived in the statutory invention registration. (d) Citation of references. (1) If domestic patents are cited by the examiner, their numbers and dates, and the names of the patentees must be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees must be stated, and such other data must be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon must be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, shall be given. (2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons. (e) Reasons for allowance. If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an Office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. Failure to file such a statement does not give rise to any implication that the applicant or patent owner agrees with or acquiesces in the reasoning of the examiner. For Office actions in reexamination proceedings, see MPEP Section 2260. Under the current first action procedure, the examiner signifies on the Office Action Summary Form PTOL-326 certain information including the period set for reply, any attachments, and a "Summary of Action," which is the position taken on all the claims. Current procedure also allows the examiner, in the exercise of his or her professional judgment to indicate that a discussion with applicant's or patent owner's representative may result in agreements whereby the application or patent under reexamination may be placed in condition for allowance and that the examiner will telephone the representative within about 2 weeks. Under this practice the applicant's or patent owner's representative can be adequately prepared to conduct such a discussion. Any resulting amendment may be made either by the applicant's or patent owner's attorney or agent or by the examiner in an examiner's amendment. It should be recognized that when extensive amendments are necessary it would be preferable if they were filed by the attorney or agent of record, thereby reducing the professional and clerical workload in the Office and also providing the file wrapper with a better record, including applicant's arguments for allowability as required by 37 CFR 1.111. The list of references cited appears on a separate form, Notice of References Cited, PTO-892 (copy in MPEP Section 707.05) attached to applicant's copies of the action. Where applicable, Notice of Draftsperson's Patent Drawing Revision, PTO-948 and Notice of Informal Patent Application, PTO-152 are attached to the first action. The attachments have the same paper number and are to be considered as part of the Office action. Replies to Office actions should include the 4-digit art unit number and the examiner's name to expedite handling within the Office. In accordance with the patent statute, "Whenever, on examination, any claim for a patent is rejected, or any objection . . . made", notification of the reasons for rejection and/or objection together with such information and references as may be useful in judging the propriety of continuing the prosecution (35 U.S.C. 132) should be given. When considered necessary for adequate information, the particular figure(s) of the drawing(s), and/or page(s) or paragraph(s) of the reference(s), and/or any relevant comments briefly stated should be included. For rejections under 35 U.S.C. 103, the way in which a reference is modified or plural references are combined should be set out. In exceptional cases, as to satisfy the more stringent requirements under 37 CFR 1.104(c)(2), and in pro se cases where the inventor is unfamiliar with patent law and practice, a more complete explanation may be needed. Objections to the disclosure, explanation of references cited but not applied, indication of allowable subject matter, requirements (including requirements for restriction if applicable) and any other pertinent comments may be included. Office Action Summary form PTOL-326, which serves as the first page of the Office action (although a Form PTOL-90 may be used as a coversheet for the correspondence address and the mail date of the Office action), is to be used with all first actions and will identify any allowed claims. One of Form Paragraphs 7.100, 7.101 should conclude all actions. 7.100 Name And Number of Examiner To Be Contacted Any inquiry concerning this communication should be directed to [1] at telephone number (703) [2]. Examiner Note: 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 phone number of the examiner to be contacted. 7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is (703) [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 on (703) [7]. The fax phone number for the organization where this application or proceeding is assigned is (703) [8]. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (703) [9]. Examiner Note: 1. In bracket 1, insert your name. 2. In bracket 2, insert your individual 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." Do not insert the core hours . 5. In bracket 6, insert your SPE's name. 6. In bracket 7, insert your SPE's phone number. 7. In bracket 8, insert the appropriate fax number for your organization. 8. In bracket 9, insert the telephone number for your receptionist. 7.102 Telephone Inquiry Contacts- 5/4/9 Schedule Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is (703) [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 on (703) [8]. The fax phone number for the organization where this application or proceeding is assigned is (703) [9]. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (703) [10]. Examiner Note: 1. In bracket 1, insert your name. 2. In bracket 2, insert your individual 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." Do not insert the core hours. 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 phone number. 8. In bracket 9, insert the appropriate fax number for your organization. 9. In bracket 10, insert the telephone number for your receptionist. 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. 7.103 Statute Cited in Prior Action The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Form PTO-326. Office Action Summary[GRAPHIC] ---SECTION---707.01 Primary Examiner Indicates Action for New Assistant 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 go into the case 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, the examiner may indicate how the references are to be applied in cases where the claim is to be rejected, or authorize allowance if it is not met in the references and no further field of search is known. ---SECTION---707.02(a) Applications Up for Third Action and 5-Year Applications The supervisory patent examiners should impress their assistants with the fact 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 official action with a view to finally concluding its prosecution. Any application that has been pending five years should be carefully studied by the supervisory patent examiner and every effort made to terminate its prosecution. In order to accomplish this result, the application is to be considered "special" by the examiner. ---SECTION---707.05 Citation of References 37 CFR 1.104 Nature of examination. +++ (d) Citation of references. (1) If domestic patents are cited by the examiner, their numbers and dates, and the names of the patentees must be stated. If foreign published applications or patents are cited, their nationality or country, numbers and dates, and the names of the patentees must be stated, and such other data must be furnished as may be necessary to enable the applicant, or in the case of a reexamination proceeding, the patent owner, to identify the published applications or patents cited. In citing foreign published applications or patents, in case only a part of the document is involved, the particular pages and sheets containing the parts relied upon must be identified. If printed publications are cited, the author (if any), title, date, pages or plates, and place of publication, or place where a copy can be found, shall be given. (2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons. 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 fully consider all the prior art references (alone and in combination) cited in the appli cation or reexamination, including those cited by the ap plicant in a properly submitted Information Disclosure Statement. Form Paragraph 7.96 may be used as an introductory sentence. 7.96 Citation of Relevant Prior Art The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. [1] Examiner Note: When such prior art is cited, its relevance should be explained in bracket 1 in accordance with MPEP Section 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. As a result of the 20-year patent term, it is expected, in certain circumstances, that applicants may cancel their claim to priority 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 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 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 a case to issue with no art cited. In the case where no prior art is cited, the examiner must write "None" on a form PTO-892 and insert it in the 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 Section 1302.12. In a continued prosecution application filed under 37 CFR 1.53(d) or a file wrapper continuing application filed under former 37 CFR 1.62, it is not necessary to prepare a new form PTO-892 since the form from the parent application is in the same file wrapper and will be used by the printer. In all continuation and continuation-in-part applications, the parent applications should be reviewed for pertinent prior art. Applicants and/or applicants' attorney 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 Section 707.05(a). That is, copies of documents cited by the examiner will be provided to applicant except where the documents: (A) are cited by applicant in accordance with MPEP Section 609, Section 707.05(b), and Section 708.02; (B) have been referred to in applicant's disclosure statement; (C) are cited and have been provided in a parent application; or (D) are U. S. Patents which are cited at allowance (MPEP Section 1302.04). ---SECTION---707.05(a) Copies of Cited References Copies of cited 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 references cited by applicant in accordance with MPEP Section 609, Section 707.05(b) and Section 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 copies of the same will also be retained in the file. 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 continuation 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 references, the examiner should: (A) Write the citation of the references on form PTO-892, "Notice of References Cited"; (B) Place the form PTO-892 in the front of the file wrapper; (C) Include in the application file wrapper all of the references cited by the examiner which are to be furnished to the applicant and which have been obtained from the classified search file; (D) Make two copies of each reference which is to be supplied and which has been located in a place other than the classified search file (e.g., textbooks, bound magazines, personal search material, etc.). Using red ink identify one copy as "File Copy" and the other copy as "Applicant's Copy". Both copies should be placed in the application file wrapper; (E) Turn the application in to the Technical Support Staff for counting. Any application which is handed in without all of the required references will be returned to the examiner. The missing reference(s) should be obtained and the file returned to the Technical support Staff as quickly as possible. In the case of design applications, procedures are the same as set forth in MPEP Section 707.05 (a)-(g) except that less than the entire disclosure of a cited U.S. utility patent may be supplied with the action by the Design Group. Copies of all sheets of drawings relied on and of the first page of the specification are furnished without charge. Any other subject matter, including additional pages of specification relied on by the examiner will be provided without charge. Where an applicant desires a complete copyof a cited U.S. patent, it may be obtained through Patent and Trademark Copy Sales at the usual charge. Form PTO-892. Notice of References Cited[GRAPHIC] ---SECTION---707.05(b) Citation of Related Art by Applicants MPEP Section 609 sets forth positive guidelines for applicants, their attorneys and agents who desire to submit prior art for consideration by the 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 pertinent prior art of which they may be aware, whether or not such art is cited by the applicant. Prior art submitted by applicant in the manner provided in MPEP Section 609 will not be supplied with an Office action. ---SECTION---707.05(c) Order of Listing 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 Section 609 and Section 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 Section 1302.12. ---SECTION---707.05(d) Reference Cited in Subsequent Actions 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 PTO-1449 that has been initialled by the examiner. ---SECTION---707.05(e) Data Used in Citing References 37 CFR 1.104(d) (see also MPEP Section 707.05 and Section 901.05(a)) requires the examiner to give certain data when citing references. The patent number, patent date, name of the patentee, class and subclass are to be given in the citation of U.S. patents. This information is listed on the "Notice of References Cited" form PTO-892 (Copy at MPEP Section 707.05). See MPEP Section 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. In the rare instance where no art is cited ina 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 Section 707.05(a). CROSS-REFERENCES Official cross-references should be marked "X". FOREIGN PATENTS AND PUBLISHED APPLICATIONS In citing foreign patents, the patent number, citation date, name of the country, name of the patentee, and U.S. class and subclass, if appropriate, must be given. Foreign patents searched in those Examining Groups filing by International Patent Classification (IPC) will be cited using the appropriate IPC subclass/group/subgroup. On the file wrapper "Searched" box and PTO-892, the IPC subclass shall be cited in the space provided for "Class", and IPC group/subgroup shall be cited in the space provided for "Subclass". In actions where references are furnished, and less than the entire disclosure 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 included, and the appropriate columns on the PTO-892 are left blank. Publications such as German allowed applications and Belgian and Netherlands printed specifications should be similarly handled. See MPEP Section 901.05(a) for a chart in which foreign language terms indicative of foreign patent and publication dates to be cited are listed. PUBLICATIONS See MPEP Section 711.06(a) for citation of abstracts, abbreviatures and defensive publications. See MPEP Section 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 Section 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 Scientific Library, 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 group making the action (there may be no call number), the additional information, "Copy in Group - -" 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. Titles of books and periodicals SHOULD NOT be abbreviated. A citation to P.S.E.B.M. is meaningless. References are to be cited so that anyone reading a patent may identify and retrieve the publications cited. Give as much bibliographic information as possible, but at least enough to identify the publication. 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. 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. ---SECTION---707.05(f) Effective Dates of Declassified Printed Matter In using declassified material as references there are usually two pertinent dates to be considered, namely, the printing date and the publication date. The printing date in some instances will appear on the material and may be considered as that date when the material was prepared for limited distribution. The publication date is the date of release when the material was made available to the public. See Ex parte Harris, 79 USPQ 439 (Comm'r Pat. 1948). If the date of release does not appear on the material, this date may be determined by reference to the Office of Technical Services, Department of Commerce. In the use of any of the above noted material as an anticipatory publication, the date of release following declassification is the effective date of publication within the meaning of the statute. For the purpose of anticipation predicated upon prior knowledge under 35 U.S.C. 102(a) the above noted declassified material may be taken as prima facie evidence of such prior knowledge as of its printing date even though such material was classified at that time. When so used the material does not constitute an absolute statutory bar and its printing date may be antedated by an affidavit or declaration under 37 CFR 1.131. ---SECTION---707.05(g) Incorrect Citation of References 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 Section 710.06. Where the error is discovered by the examiner, applicant is also notified and the period for reply restarted. In either case, the examiner is directed to correct the error, in ink, in the paper in which the error appears, and place his or her initials on the margin of such paper, together with a notation of the paper number of the action in which the citation has been correctly given. See MPEP Section 710.06. Form paragraphs 7.81-7.83 may be used to correct citations or copies of references cited. 7.81 Correction Letter Re Last Office Action 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. Examiner Note: 1. In bracket 1, insert --telephone inquiry of _____-- or --communication dated ______--. 2. In bracket 2, insert new period for reply. 3. This paragraph must be followed by one or more of paragraphs 7.82, 7.82.01 or 7.83. 4. Before restarting the period, the SPE should be consulted. 7.82 Correction of Reference Citation The reference [1] was not correctly cited in the last Office action. The correct citation is shown on the attached PTO-892. Examiner Note: 1. Every correction MUST be reflected on a corrected or new PTO-892. 2. This paragraph must follow paragraph 7.81. 3. If a copy of the PTO-892 is being provided without correction, use paragraph 7.83 instead of this paragraph. 4. Also use form paragraph 7.82.01 if reference copies are being supplied. 7.82.01 Copy of Reference(s) Furnished Copies of the following references not previously supplied are enclosed: Examiner Note: 1. The reference copies being supplied must be listed following this paragraph. 2. This paragraph must be preceded by paragraph 7.81 and may also be used with paragraphs 7.82 or 7.83 7.83 Copy of Office Action Supplied [1] of the last Office action is enclosed. Examiner Note: 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 paragraph should follow paragraph 7.81 and may follow paragraphs 7.82 and 7.82.01. In any case 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. ---SECTION---707.06 Citation of Decisions, Orders Memorandums, and Notices In citing court decisions, the USPQ citation should be given and, when it is convenient to do so, the U.S., CCPA or Federal Reporter citation should also be provided. The citation of manuscript 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 manuscript 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 Board of Patent Appeals and Interferences 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 Board of Patent Appeals and Interferences, 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 Commissioner'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 Journal of the Patent and Trademark Office Society or of the Official Gazette in which the same may be found, should also be given. ---SECTION---707.07 Completeness and Clarity of Examiner's Action 37 CFR 1.104 Nature of examination. +++ (b) Completeness of examiner's action. The examiner's action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before further action is made. However, matters of form need not be raised by the examiner until a claim is found allowable. +++ Form Paragraphs 7.37 through 7.38 may be used where applicant's arguments are not persuasive or are moot. 7.37 Arguments Are Not Persuasive Applicant's arguments filed [1] have been fully considered but they are not persuasive. [2] Examiner Note: 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. 7.38 Arguments Are Moot Because of New Ground(s) of Rejection Applicant's arguments with respect to claim [1] have been considered but are moot in view of the new ground(s) of rejection. Examiner Note: The examiner must, however, address any arguments presented by the applicant which are still relevant to any references being applied. 7.37.01 Unpersuasive Argument: Age of Reference(s) 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). Examiner Note: This form paragraph must be preceded by form paragraph 7.37. 7.37.02 Unpersuasive Argument: Bodily Incorporation 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). Examiner Note: 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. 7.37.03 Unpersuasive Argument: Hindsight Reasoning 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). Examiner Note: This form paragraph must be preceded by form paragraph 7.37. 7.37.04 Unpersuasive Argument: No Suggestion To Combine In response to applicant's argument that there is no suggestion to combine the references, the examiner recognizes that obviousness can only 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) and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). In this case, [1]. Examiner Note: 1. In bracket 1, explain where the 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. 7.37.05 Unpersuasive Argument: Nonanalogous Art 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 applicant's endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant 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]. Examiner Note: 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. 7.37.06 Unpersuasive Argument: Number of References 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). Examiner Note: This form paragraph must be preceded by form paragraph 7.37. 7.37.07 Unpersuasive Argument: Applicant Obtains Result Not Contemplated by Prior Art In response to applicant's argument that [1], the fact that applicant 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). Examiner Note: 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. 7.37.08 Unpersuasive Argument: Arguing Limitations Which Are Not Claimed In response to applicant's argument that the references fail to show certain features of applicant's 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). Examiner Note: 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. 7.37.09 Unpersuasive Argument: Intended Use 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. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Examiner Note: 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. 7.37.10 Unpersuasive Argument: Limitation(s) in Preamble In response to applicant's arguments, the recitation [1] has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Examiner Note: 1. In bracket 1, briefly restate the recitation about which applicant is arguing. 2. This form paragraph must be preceded by form paragraph 7.37. 7.37.11 Unpersuasive Argument: General Allegation of Patentability 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. Examiner Note: This form paragraph must be preceded by form paragraph 7.37. 7.37.12 Unpersuasive Argument: Novelty Not Clearly Pointed Out 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. Examiner Note: This form paragraph must be preceded by form paragraph 7.37. 7.37.13 Unpersuasive Argument: Arguing Against References Individually 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). Examiner Note: This form paragraph must be preceded by form paragraph 7.37. ---SECTION---707.07(a) Complete Action on Formal Matters Forms are placed in informal applications listing informalities noted by the Draftsperson (form PTO-948) and the Office of Initial Patent Examination (form PTO-152). Each of these forms comprises an original for the file record and a copy to be mailed to applicant as a part of the examiners first action. They are specifically referred to as attachments to the action and are marked with its paper number. In every instance where these forms are to be used, they should be mailed with the examiner's first action, 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. 7.43.03 Allowable Subject Matter, Formal Requirements Outstanding 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 Section 707.07(a). Examiner Note: This paragraph would be appropriate when changes must be made prior to allowance. For example, when there is a requirement for drawing corrections that have to be submitted for approval or when corrections to the specification have to be made prior to allowance. ---SECTION---707.07(b) Requiring New Oath See MPEP Section 602.02. ---SECTION---707.07(c) Draftsperson's Requirement See MPEP Section 707.07(a); also MPEP Section 608.02(a), (e), and (s). ---SECTION---707.07(d) Language To Be Used In Rejecting Claims 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. If the claim is rejected as too broad, the reason for so holding should be given; 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. See MPEP Section 706.02 (i), (j), and (m) 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 the claims allowed. 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. If the examiner does not do this, then by implication it will be understood by the applicant or his or her attorney or agent that in the examiner's opinion, as presently advised, there appears to be no allowable claim nor anything patentable in the subject matter to which the claims are directed. IMPROPERLY EXPRESSED REJECTIONS An omnibus rejection of the claim "on the references and for the reasons of record" is stereotyped and usually not informative and should therefore be avoided. This is especially true where certain claims have been rejected on one ground and other claims on another ground. A plurality of claims should never be grouped together in a common rejection, unless that rejection is equally applicable to all claims in the group. ---SECTION---707.07(e) Note All Outstanding Requirements 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. As soon as allowable subject matter is found, correction of all informalities then present should be required. ---SECTION---707.07(f) Answer All Material Traversed Where the requirements are traversed, or suspension thereof requested, the examiner should make proper reference thereto in his or her action on the amendment. Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant's argument and answer the substance of it. 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. ANSWERING ASSERTED ADVANTAGES 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 without significance in determining patentability of the rejected claims, he or she should state the reasons for his or her 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 Board of Patent Appeals and Interferences will also be advised. The importance of answering such 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 of Appeals, 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). ---SECTION---707.07(g) Piecemeal Examination Piecemeal examination should be avoided as much as possible. The examiner ordinarily should reject each claim on all valid grounds available, avoiding, how ever, undue multiplication of references. (See MPEP Section 904.02.) Major technical rejections on grounds such as lack of proper disclosure, undue breadth, serious 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 major technical rejection is proper, it should be stated with a full development of reasons rather than by a mere conclusion coupled with some stereotyped expression. In cases where there exists a sound rejection on the basis of prior art which discloses the "heart" of the invention (as distinguished from prior art which merely meets the terms of the claims), secondary rejections on minor technical grounds should ordinarily not be made. 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 mode of definition. 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: (A) Where an application is too informal for a complete action on the merits. See MPEP Section 702.01; (B) Where there is an undue multiplicity of claims, and there has been no successful telephone request for election of a limited number of claims for full examination. See MPEP Section 2173.05(n); (C) Where there is a misjoinder of inventions and there has been no successful telephone request for election. See MPEP Section 803, Section 806.02, Section 812.01; (D) Where disclosure is directed to perpetual motion. See Ex parte Payne, 1904 C.D. 42, 108 O.G. 1049 (Comm'r Pat. 1903). However, in such cases, the best prior art readily available should be cited and its pertinency pointed out without specifically applying it to the claims. 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. ---SECTION---707.07(h) Notify of Inaccuracies in Amendment See MPEP Section 714.23. ---SECTION---707.07(i) Each Claim To Be Mentioned in Each Letter In every letter, 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 conclude with a summary of all claims presented for examination. Claims retained under 37 CFR 1.142 and claims retained under 37 CFR 1.146 should be treated as set out in MPEP Section 821 to Section 821.03 and Section 809.02(c). See MPEP Section 2363.03 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 Section 719.04. ---SECTION---707.07(j) State When Claims Are Allowable INVENTOR FILED APPLICATIONS 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 will be expected to be applied in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications. ALLOWABLE EXCEPT AS TO FORM 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. EARLY ALLOWANCE OF CLAIMS 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. 7.43 Objection to Claims, 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. 7.43.01 Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112, Second Paragraph, Independent Claim Claim [1] would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, set forth in this Office action. Examiner Note: This form paragraph is to be used only when the noted independent claim(s) have been rejected solely on the basis of 35 U.S.C. 112, second paragraph, and would be allowable if amended to overcome the rejection. 7.43.02 Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112, Second Paragraph, Dependent Claim Claim [1] would be allowable if rewritten to overcome the rejection(s) under 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. Examiner Note: This form paragraph is to be used only when the noted dependent claim(s) have been rejected solely on the basis of 35 U.S.C. 112, second paragraph, and would be allowable if amended as indicated. Form Paragraph 7.97 may be used to indicate allowance of claims. 7.97 Claims Allowed Claim [1] allowed. ---SECTION---707.07(k) Numbering Paragraphs It is good practice to number the paragraphs of the letter consecutively. This facilitates their identification in the future prosecution of the case. ---SECTION---707.07(l) Comment on Examples The results of the tests and examples should not normally be questioned by the examiner unless there is reasonable basis for questioning the results. If the examiner questions the results, the appropriate claims should be rejected as being based on an insufficient disclosure under 35 U.S.C. 112, first paragraph. In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). The applicant must reply to the rejection or it will be repeated, for example, by providing the results of an actual test or example which has been conducted, or by providing relevant arguments that there is strong reason to believe that the result would be as predicted. Care should be taken that new matter is not entered into the application. If questions are present as to operability or utility, consideration should be given to the applicability of a rejection under 35 U.S.C. 101. ---SECTION---707.08 Reviewing and Initialing by Assistant Examiner The full surname of the examiner who prepares the Office action will, in all cases, be typed at the end of the action. The telephone number below this should be called if the application is to be discussed or an interview arranged. Form paragraph 7.100, 7.101 or 7.102 should be used. 7.100 Name And Number of Examiner To Be Contacted Any inquiry concerning this communication should be directed to [1] at telephone number (703) [2]. Examiner Note: 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 phone number of the examiner to be contacted. 7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is (703) [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 on (703) [7]. The fax phone number for the organization where this application or proceeding is assigned is (703) [8]. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (703) [9]. Examiner Note: 1. In bracket 1, insert your name. 2. In bracket 2, insert your individual 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." Do not insert the core hours . 5. In bracket 6, insert your SPE's name. 6. In bracket 7, insert your SPE's phone number. 7. In bracket 8, insert the appropriate fax number for your organization. 8. In bracket 9, insert the telephone number for your receptionist. 7.102 Telephone Inquiry Contacts- 5/4/9 Schedule Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is (703) [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 on (703) [8]. The fax phone number for the organization where this application or proceeding is assigned is (703) [9]. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is (703) [10]. Examiner Note: 1. In bracket 1, insert your name. 2. In bracket 2, insert your individual 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." Do not insert the core hours. 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 phone number. 8. In bracket 9, insert the appropriate fax number for your organization. 9. In bracket 10, insert the telephone number for your receptionist. After the action is typed, the examiner who prepared the action reviews it for correctness. The surname or initials of the examiner who prepared the action and the date on which the action was typed should appear below the action. If this examiner does not have the authority to sign the action, he or she should initial above the typed name or initials, and forward the action to the authorized signatory examiner for signing. ---SECTION---707.09 Signing by Primary or Other Authorized Examiner Although only the original is signed, the word "Examiner" and the name of the signer should appear on the original and copies. All letters and issues should be signed promptly. ---SECTION---707.10 Entry The original, signed by the authorized examiner, is the copy which is placed in the file wrapper. The character of the action, its paper number and the date of mailing are entered in black ink on the outside of the file wrapper under "Contents". ---SECTION---707.11 Date The mailing date should not be typed when the letter is written, but should be stamped or printed on all copies of the letter after it has been signed by the authorized signatory examiner and the copies are about to be mailed. ---SECTION---707.12 Mailing Copies of the examiner's action are mailed by the group after the original, initialed by the assistant examiner and signed by the authorized signatory examiner, has been placed in the file. After the copies are mailed the original is returned for placement in the file. ---SECTION---707.13 Returned Office Action Letters are sometimes returned to the Office because the United States Postal Service has not been able to deliver them. The examiner should use every reasonable means to ascertain the correct address and forward the letter again, after stamping it "remailed" with the date thereof and redirecting it if there be any reason to believe that the letter would reach applicant at such new address. If the Office letter was addressed to an attorney, a letter may be written to the inventor or assignee informing him or her of the returned letter. The period running against the application begins with the date of remailing. Ex parte Gourtoff, 1924 C.D. 153, 329 O.G. 536 (Comm'r Pat. 1924). If the Office is not finally successful in delivering the letter, it is placed, with the envelope, in the file wrapper. If the period dating from the remailing elapses with no communication from applicant, the case is forwarded to the Abandoned Files Repository. ---SECTION---708 Order of Examination Nonprovisional applications filed in the Patent and Trademark Office and accepted as complete applications are assigned for examination to the respective examining groups having the classes of inventions to which the applications relate. Nonprovisional applications shall be taken up for examination by the examiner to whom they have been assigned in the order in which they have been filed except for those applications in which examination has been advanced pursuant to 37 CFR 1.102. See 37 CFR 1.496 for order of examination of international applications in the national stage. Applications which have been acted upon by the examiner, and which have been placed by the applicant in condition for further action by the examiner (amended applications) shall be taken up for action in such order as shall be determined by the Commissioner. Each examiner will give priority to that application in his or her docket, whether amended or new, which has the oldest effective U.S. filing date. Except as rare circumstances may justify Group Directors in granting individual exceptions, this basic policy applies to all applications. The actual filing date of a continuation-in-part application is used for docketing purposes. However, the examiner may act on a continuation-in-part application by using the effective filing date, if desired. If at any time an examiner determines that the "effective filing date" status of any application differs from what the records show, the technical support staff should be informed, who should promptly amend the records to show the correct status, with the date of correction. The order of examination for each examiner is to give priority to reissue applications and to reexamination proceedings, with top priority to reissue applications in which litigation has been stayed (MPEP Section 1442.03) and to reexamination proceedings involved in litigation (MPEP Section 2261), then to those special cases having a fixed 30-day due date, such as examiner's answers and decisions on motions. Most other cases in the "special" category (for example, interference cases, cases made special by petition, cases ready for final conclusion, etc.) will continue in this category, with the first effective U.S. filing date among them normally controlling priority. All amendments before final rejection should be responded to within two months of receipt. ---SECTION---708.01 List of Special Cases 37 CFR 1.102 Advancement of examination. (a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Commissioner to expedite the business of the Office, or upon filing of a request under paragraph (b) of this section or upon filing a petition under paragraphs (c) or (d) of this section with a showing which, in the opinion of the Commissioner, will justify so advancing it. (b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination. (c) A petition to make an application special may be filed without a fee if the basis for the petition is the applicant's age or health or that the invention will materially enhance the quality of the environment or materially contribute to the development or conservation of energy resources. (d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the petition fee set forth in Section 1.17(i). Certain procedures by the examiners take precedence over actions even on special cases. For example, all papers typed and ready for signature should be completed and mailed. All issue cases returned with a "Printer Waiting" slip must be processed and returned within the period indicated. Reissue applications, particularly those involved in stayed litigation, should be given priority. Applications in which practice requires that the examiner act within a set period, such as 2 months after appellants brief to furnish the examiner's answers (MPEP Section 1208), necessarily take priority over special cases without specific time limits. If an examiner has a case in which he or she is satisfied that it is in condition for allowance, or in which he or she is satisfied will have to be finally rejected, he or she should give such action forthwith instead of making the case await its turn. The following is a list of special cases (those which are advanced out of turn for examination): (A) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and when for that reason the head of some department of the Government requests immediate action and the Commissioner so orders (37 CFR 1.102). (B) Applications made special as a result of a petition. (See MPEP Section 708.02.) Subject alone to diligent prosecution by the applicant, an application for patent that has once been made special and advanced out of turn for examination by reason of a ruling made in that particular case (by the Commissioner or an Assistant Commissioner) will continue to be special throughout its entire course of prosecution in the Patent and Trademark Office, including appeal, if any, to the Board of Patent Appeals and Interferences. (C) Applications for reissues, particularly those involved in stayed litigation (37 CFR 1.176). (D) Applications remanded by an appellate tribunal for further action. (E) An application, once taken up for action by an examiner according to its effective filing date, should be treated as special by an examiner, art unit or group to which it may subsequently be transferred; exemplary situations include new cases transferred as the result of a telephone election and cases transferred as the result of a timely reply to any official action. (F) Applications which appear to interfere with other applications previously considered and found to be allowable, or which will be placed in interference with an unexpired patent or patents. (G) Applications ready for allowance, or ready for allowance except as to formal matters. (H) Applications which are in condition for final rejection. (I) Applications pending more than 5 years, including those which, by relation to a prior United States application, have an effective pendency of more than 5 years. See MPEP Section 707.02(a). (J) Reexamination proceedings, MPEP Section 2261. See also MPEP Section 714.13, Section 1207 and Section 1309. ---SECTION---708.02 Petition To Make Special 37 CFR 1.102 Advancement of examination. (a) Applications will not be advanced out of turn for examination or for further action except as provided by this part, or upon order of the Commissioner to expedite the business of the Office, or upon filing of a request under paragraph (b) of this section or upon filing a petition under paragraphs (c) or (d) of this section with a showing which, in the opinion of the Commissioner, will justify so advancing it. (b) Applications wherein the inventions are deemed of peculiar importance to some branch of the public service and the head of some department of the Government requests immediate action for that reason, may be advanced for examination. (c) A petition to make an application special may be filed without a fee if the basis for the petition is the applicant's age or health or that the invention will materially enhance the quality of the environment or materially contribute to the development or conservation of energy resources. (d) A petition to make an application special on grounds other than those referred to in paragraph (c) of this section must be accompanied by the petition fee set forth in Section 1.17(i). New applications ordinarily are taken up for examination in the order of their effective United States filing dates. Certain exceptions are made by way of petitions to make special, which may be granted under the conditions set forth below. I. MANUFACTURE An application may be made special on the ground of prospective manufacture upon the filing of a petition accompanied by the fee under 37 CFR 1.17(i) and a statement by the applicant, assignee or an attorney/agent registered to practice before the PTO alleging: (A) The possession by the prospective manufacturer of sufficient presently available capital (stating approximately the amount) and facilities (stating briefly the nature thereof) to manufacture the invention in quantity or that sufficient capital and facilities will be made available if a patent is granted; If the prospective manufacturer is an individual, there must be a corroborating statement from some responsible party, as for example, an officer of a bank, showing that said individual has the required available capital to manufacture; (B) That the prospective manufacturer will not manufacture, or will not increase present manufacture, unless certain that the patent will be granted; (C) That the prospective manufacturer obligates himself, herself or itself, to manufacture the invention, in the United States or its possessions, in quantity immediately upon the allowance of claims or issuance of a patent which will protect the investment of capital and facilities; and (D) That the applicant or assignee has made or caused to be made a careful and thorough search of the prior art, or has a good knowledge of the pertinent prior art. Applicant must provide one copy of each of the references deemed most closely related to the subject matter encompassed by the claims if said references are not already of record. II. INFRINGEMENT Subject to a requirement for a further showing as may be necessitated by the facts of a particular case, an application may be made special because of actual infringement (but not for prospective infringement) upon payment of the fee under 37 CFR 1.17(i) and the filing of a petition accompanied by a statement by the applicant, assignee, or an attorney/agent registered to practice before the PTO alleging: (A) That there is an infringing device or product actually on the market or method in use; (B) That a rigid comparison of the alleged infringing device, product, or method with the claims of the application has been made, and that, in his or her opinion, some of the claims are unquestionably infringed; and (C) That he or she has made or caused to be made a careful and thorough search of the prior art or has a good knowledge of the pertinent prior art. Applicant must provide one copy of each of the references deemed most closely related to the subject matter encompassed by the claims if said references are not already of record. Models or specimens of the infringing product or that of the application should not be submitted unless requested. III. APPLICANT'S HEALTH An application may be made special upon a petition by applicant accompanied by any evidence showing that the state of health of the applicant is such that he might not be available to assist in the prosecution of the application if it were to run its normal course, such as a doctor's certificate or other medical certificate. No fee is required for such a petition. See 37 CFR 1.102(c). IV. APPLICANT'S AGE An application may be made special upon filing a petition including any evidence showing that the applicant is 65 years of age, or more, such as a birth certificate or applicant's statement. No fee is required with such a petition. See 37 CFR 1.102(c). V. ENVIRONMENTAL QUALITY The Patent and Trademark Office will accord "special" status to all patent applications for inventions which materially enhance the quality of the environment of mankind by contributing to the restoration or maintenance of the basic life-sustaining natural elements, i.e., air, water, and soil. All applicants desiring to participate in this program should petition that their applications be accorded "special" status. Such petitions should be accompanied by statements under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the PTO explaining how the inventions contribute to the restoration or maintenance of one of these life-sustaining elements. No fee is required for such a petition. See 37 CFR 1.102(c). VI. ENERGY The Patent and Trademark Office will, on petition, accord "special" status to all patent applications for inventions which materially contribute to (A) the discovery or development of energy resources, or (B) the more efficient utilization and conservation of energy resources. Examples of inventions in category (A) would be developments in fossil fuels (natural gas, coal, and petroleum), nuclear energy, solar energy, etc. Category (B) would include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, household appliances, etc. All applicants desiring to participate in this program should petition that their applications be accorded "special" status. Such petitions should be accompanied by statements under 37 CFR 1.102 by the applicant, assignee, or an attorney/agent registered to practice before the PTO explaining how the invention materially contributes to category (A) or (B) set forth above. No fee is required for such a petition, 37 CFR 1.102(c). VII. INVENTIONS RELATING TO RECOMBINANT DNA In recent years revolutionary genetic research has been conducted involving recombinant deoxyribonu cleic acid ("recombinant DNA"). Recombinant DNA research appears to have extraordinary potential benefit for mankind. It has been suggested, for example, that research in this field might lead to ways of controlling or treating cancer and hereditary defects. The technology also has possible applications in agriculture and industry. It has been likened in importance to the discovery of nuclear fission and fusion. At the same time, concern has been expressed over the safety of this type of research. The National Institutes of Health (NIH) has released guidelines for the conduct of research concerning recombinant DNA. These "Guidelines for Research Involving Recombination DNA Molecules," were published in the Federal Register of July 7, 1976, 41 FR 27902-27943. NIH is sponsoring experimental work to identify possible hazards and safety practices and procedures. In view of the exceptional importance of recombinant DNA and the desirability of prompt disclosure of developments in the field, the Patent and Trademark Office will accord "special" status to patent applications relating to safety of research in the field of recombinant DNA. Upon appropriate petition and payment of the fee under 37 CFR 1.17(i), the Office will make special patent applications for inventions relating to safety of research in the field of recombinant DNA. Petitions for special status should be accompanied by statements under 37 CFR 1.102 by the applicant, assignee, or statements by an attorney/agent registered to practice before the PTO explaining the relationship of the invention to safety of research in the field of recombinant DNA research. The fee set forth under 37 CFR 1.17(i) must also be paid. VIII. SPECIAL EXAMINING PROCEDURE FOR CERTAIN NEW APPLICATIONS - ACCELERATED EXAMINATION A new application (one which has not received any examination by the examiner) may be granted special status provided that applicant (and this term includes applicant's attorney or agent) complies with each of the following items: (A) Submits a petition to make special accompanied by the fee set forth in 37 CFR 1.17(i); (B) Presents all claims directed to a single invention, or if the Office determines that all the claims presented are not obviously directed to a single invention, will make an election without traverse as a prerequisite to the grant of special status. The election may be made by applicant at the time of filing the petition for special status. Should applicant fail to include an election with the original papers or petition and the Office determines that a requirement should be made, the established telephone restriction practice will be followed. If otherwise proper, examination on the merits will proceed on claims drawn to the elected invention. If applicant refuses to make an election without traverse, the application will not be further examined at that time. The petition will be denied on the ground that the claims are not directed to a single invention, and the application will await action in its regular turn. Divisional applications directed to the nonelected inventions will not automatically be given special status based on papers filed with the petition in the parent case. Each such application must meet on its own all requirements for the new special status; (C) Submits a statement(s) that a pre-examination search was made, listing the field of search by class and subclass, publication, Chemical Abstracts, foreign patents, etc. A search made by a foreign patent office satisfies this requirement; (D) Submits one copy each of the references deemed most closely related to the subject matter encompassed by the claims if said references are not already of record; and (E) Submits a detailed discussion of the references, which discussion points out, with the particularity required by 37 CFR 1.111 (b) and (c), how the claimed subject matter is patentable over the references. In those instances where the request for this special status does not meet all the prerequisites set forth above, applicant will be notified and the defects in the request will be stated. The application will remain in the status of a new application awaiting action in its regular turn. In those instances where a request is defective in one or more respects, applicant will be given one opportunity to perfect the request in a renewed petition to make special. If perfected, the request will then be granted. If not perfected in the first renewed petition, any additional renewed petitions to make special may or may not be considered at the discretion of the Group Special Program Examiner. Once a request has been granted, prosecution will proceed according to the procedure set forth below; there is no provision for "withdrawal" from this special status. The special examining procedure of VIII (accelerated examination) involves the following procedures: (A) The new application, having been granted special status as a result of compliance with the requirements set out above will be taken up by the examiner before all other categories of applications except those clearly in condition for allowance and those with set time limits, such as examiner's answers, etc., and will be given a complete first action which will include allessential matters of merit as to all claims. The examiner's search will be restricted to the subject matter encompassed by the claims. A first action rejection will set a 3-month shortened period for reply. (B) During the 3-month period for reply, applicant is encouraged to arrange for an interview with the examiner in order to resolve, with finality, as many issues as possible. In order to afford the examiner time for reflective consideration before the interview, applicant or his or her representative should cause to be placed in the hands of the examiner at least one working day prior to the interview, a copy (clearly denoted as such) of the amendment that he proposes to file in response to the examiner's action. Such a paper will not become a part of the file, but will form a basis for discussion at the interview. (C) Subsequent to the interview, or responsive to the examiner's first action if no interview was had, applicant will file the "record" reply. The reply at this stage, to be proper, must be restricted to the rejections, objections, and requirements made. Any amendment which would require broadening the search field will be treated as an improper reply. (D) The examiner will, within 1 month from the date of receipt of applicant's formal reply, take up the application for final disposition. This disposition will constitute either a final action which terminates with the setting of a 3-month period for reply, or a notice of allowance. The examiner's reply to any amendment submitted after final rejection should be prompt and by way of form PTOL-303 or PTOL-327, by passing the case to issue, or by an examiner's answer should applicant choose to file an appeal brief at this time. The use of these forms is not intended to open the door to further prosecution. Of course, where relatively minor issues or deficiencies might be easily resolved, the examiner may use the telephone to inform the applicant of such. (E) A personal interview after a final Office action will not be permitted unless requested by the examiner. However, telephonic interviews will be permitted where appropriate for the purpose of correcting any minor outstanding matters. After allowance, these applications are given top priority for printing. See MPEP Section 1309. IX. SPECIAL STATUS FOR PATENT APPLICATIONS RELATING TO SUPERCONDUCTIVITY In accordance with the President's mandate directing the Patent and Trademark Office to accelerate the processing of patent applications and adjudication of disputes involving superconductivity technologies when requested by the applicant to do so, the Patent and Trademark Office will, on request, accord "special" status to all patent applications for inventions involving superconductivity materials. Examples of such inventions would include those directed to superconductive materials themselves as well as to their manufacture and application. In order that the Patent and Trademark Office may implement this procedure, we invite all applicants desiring to participate in this program to request that their applications be accorded "special" status. Such requests should be accompanied by a statement under 37 CFR 1.102 that the invention involves superconductive materials. No fee is required. X. INVENTIONS RELATING TO HIV/AIDS AND CANCER In view of the importance of developing treatments and cures for HIV/AIDS and cancer and the desirability of prompt disclosure of advances made in these fields, the Patent and Trademark Office will accord "special" status to patent applications relating to HIV/AIDS and cancer. Applicants who desire that an application relating to HIV/AIDS or cancer be made special should file a petition and the fee under 37 CFR 1.17(i) requesting the Patent and Trademark Office to make the application special. The petition for special status should be accompanied by a statement explaining how the invention contributes to the diagnosis, treatment or prevention of HIV/AIDS or cancer. XI. INVENTIONS FOR COUNTERING TERRORISM In view of the importance of developing technologies for countering terrorism and the desirability of prompt disclosure of advances made in these fields, the Patent and Trademark Office will accord "special" status to patent applications relating to counter-terrorism inventions. International terrorism as defined in 18 U.S.C. 2331 includes "activities that - (A) involve violent acts or acts dangerous to human life that are a violation of the criminal laws of the United States or of any State, or that would be a criminal violation if committed within the jurisdiction of the United States or of any State; [and] (B) appear to be intended - (i) to intimidate or coerce a civilian population; (ii) to influence the policy of a government by intimidation or coercion; or (iii) to affect the conduct of a government by assassination or kidnapping..." The types of technology for countering terrorism could include, but are not limited to, systems for detecting/identifying explosives, aircraft sensors/security systems, and vehicular barricades/disabling systems. Applicants who desire that an application relating to inventions for countering terrorism be made special should file a petition with the petition fee under 37 CFR 1.17(i) requesting the Patent and Trademark Office to make the application special. The petition for special status should be accompanied by a statement explaining how the invention contributes to countering terrorism. XII. SPECIAL STATUS FOR APPLICATIONS RELATING TO BIOTECHNOLOGY FILED BY APPLICANTS WHO ARE SMALL ENTITIES Applicants who are small entities may request that their biotechnology applications be granted "special" status. Applicant must file a petition with the petition fee under 37 CFR 1.17(i) requesting the special status and must: (A) state that small entity status has been established or include a statement establishing small entity status; (B) state that the subject of the patent application is a major asset of the small entity; and (C) state that the development of the technology will be significantly impaired if examination of the patent application is delayed, including an explanation of the basis for making the statement. FORMAL REQUIREMENTS OF PETITION TO MAKE SPECIAL Any petition to make special should: (A) be in writing; and (B) identify the application by application number and filing date. HANDLING OF PETITIONS TO MAKE SPECIAL Applications which have been made special will be advanced out of turn for examination and will continue to be treated as special throughout the entire prosecution in the PTO. Each petition to make special, regardless of the ground upon which the petition is based and the nature of the decision, is made of record in the application file, together with the decision thereon. The part of the Office that rules on a petition is responsible for properly entering that petition and the resulting decision in the file record. The petition, with any attached papers and supporting affidavits, will be given a single paper number and so entered in the "Contents" of the file. The decision will be accorded a separate paper number and similarly entered. To ensure entries in the "Contents" in proper order, the technical support staff in the examining group will make certain that all papers prior to a petition have been entered and/or listed in the application file before forwarding it for consideration of the petition. Note MPEP Section 1002.02 (s). Petitions to make special are decided by the Special Program Examiner of the patent examining group to which the application is assigned. ---SECTION---708.03 Examiner Tenders Resignation Whenever an examiner tenders his or her resignation, the supervisory patent examiner should see that the remaining time as far as possible is used in winding up the old complicated cases or those with involved records and getting as many of his or her amended cases as possible ready for final disposition. If the examiner has considerable experience in his or her particular art, it is also advantageous to the Office if he or she indicates (in pencil) in the file wrappers of application in his or her docket, the field of search or other pertinent data that he or she considers appropriate. ---SECTION---709 Suspension of Action 37 CFR 1.103 Suspension of action. (a) Suspension of action by the Office will be granted for good and sufficient cause and for a reasonable time specified upon petition by the applicant and, if such cause is not the fault of the Office, the payment of the fee set forth in Section 1.17(i). Action will not be suspended when a reply by applicant to an Office action is required. (b) If action by the Office on an application is suspended when not requested by the applicant, the applicant shall be notified of the reasons thereof. (c) Action on applications in which the Office has accepted a request to publish a defensive publication will be suspended for the entire pendency of these applications except for purposes relating to patent interference proceeding under Subpart E. (d) Action on applications in which the Office has accepted a request to publish a defensive publication will be suspended for the entire pendency of these applications except for purposes relating to patent interference proceedings under Subpart E. Suspension of action (37 CFR 1.103) should not be confused with extension of time for reply (37 CFR 1.136). It is to be noted that a suspension of action applies to an impending Office action by the examiner whereas an extension of time for reply applies to action by the applicant. In other words, the action cannot be suspended in an application which contains an outstanding Office action or requirement awaiting reply by the applicant. It is only the action by the examiner which can be suspended under 37 CFR 1.103. A request that action in an application be delayed will be granted only under the provisions of 37 CFR 1.103, which provides for "Suspension of Action." A petition for suspension of action must be presented as a separate paper accompanied by the petition fee, must request a specific and reasonable period of suspension not greater than 6 months, and must present good and sufficient reasons why the suspension is necessary. If the requirements of 37 CFR 1.103 are not met, applicants should except that their applications, whether new or amended, will be taken up for action by the examiner in order provided in MPEP Section 708, Order of Examination. A petition for suspension of action to allow applicant time to submit an information disclosure statement will be denied as failing to present good and sufficient reasons, since 37 CFR 1.97 provides adequate recourse for the timely submission of prior art for consideration by the examiner. In new applications, the mere inclusion in the transmittal form letter of a request that action be delayed cannot be relied upon to avoid immediate action in the application. Many group art units and examiners have short pendency to first action, and new applications may be taken up for action before preliminary amendments are filed in those applications. Where a preliminary amendment and petition to suspend action have been filed, it would be helpful to telephone the examiner in that regard to avoid having the amendment and the first office action cross in the mail. 37 CFR 1.103(b) provides for a suspension of Office action by the examiner on his or her own initiative, as in MPEP Section 709.01 and Section 2315.01. The primary examiner may grant an initial suspension of action for a maximum period of 6 months. This time limitation applies to both suspensions granted at the request of the applicant and suspensions imposed sua sponte by the examiner. Any second or subsequent suspension of action in patent applications under 37 CFR 1.103 are decided by the Group Director. See MPEP Section 1003. Suspension of action under 37 CFR 1.103(c) is decided by the Director of Group 3640. The following form paragraphs should be used in actions relating to suspension of action. 7.52 Suspension of Action, Awaiting New Reference A reference relevant to the examination of this application may soon become available. Ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application. Examiner Note: 1. Maximum period for suspension is six months. 2. The Group Director must approve all second or subsequent suspensions, see MPEP Section 1003. 7.53 Suspension of Action, Possible Interference All claims are allowable. However, due to a potential interference, ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application. Examiner Note: 1. Maximum period for suspension is 6 months. 2. The Group Director must approve all second or subsequent suspensions, see MPEP Section 1003. 3. Director's approval must appear on the letter granting any second or subsequent suspension. 7.54 Suspension of Action, Applicant's Request Pursuant to applicant's request filed on [1], action by the Office is suspended on this application under 37 CFR 1.103(a) for a period of [2] months. At the end of this period, applicant is required to notify the examiner and request continuance of prosecution or a further suspension. See MPEP Section 709. Examiner Note: 1. Maximum period for suspension is 6 months. 2. Only the Group Director can grant second or subsequent suspensions, see MPEP Section 1003. Such approval must appear on the Office letter. 7.56 Request for Suspension, Denied, Outstanding Office Action Applicant's request filed [1], for suspension of action in this application under 37 CFR 1.103(a), is denied as being improper. Action cannot be suspended in an application awaiting a reply by the applicant. See MPEP Section 709. ---SECTION---709.01 Overlapping Applications by Same Applicant or Owned by Same Assignee Examiners should not consider ex parte, when raised by an applicant, questions which are pending before the Office in inter partes proceedings involving the same applicant. See Ex parte Jones, 1924 C.D. 59, 327 O.G. 681 (Comm'r Pat. 1924). Because of this, where one of several applications of the same inventor which contain overlapping claims gets into an interference, it was formerly the practice to suspend action by the Office on the applications not in the interference in accordance with Ex parte McCormick, 1904 C.D. 575, 113 O.G. 2508 (Comm'r Pat 1924). However, the better practice would appear to be to reject claims in an application related to another application in interference over the counts of the interference and in the event said claims are not canceled in the outside application, prosecution of said application should be suspended pending the final determination of priority in the interference. If, on the other hand, applicant wishes to prosecute the outside application, and presents good reasons in support, prosecution should be continued. Ex parte Bullier, 1899 C.D. 155, 88 O.G. 1161 (Comm'r Pat 1899); In re Seebach, 88 F.2d 722, 33 USPQ 149 (CCPA 1937); In re Hammell, 332 F.2d 796, 141 USPQ 832 (CCPA 1964). See MPEP Section 804.03. ---SECTION---710 Period for Reply 35 U.S.C. 133 Time for prosecuting application. Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Commissioner in such action, the application shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner that such delay was unavoidable. 35 U.S.C. 267 Time for taking action in Government applications. Notwithstanding the provisions of sections 133 and 151 of this title, the Commissioner may extend the time for taking any action to three years, when an application has become the property of the United States and the head of the appropriate department or agency of the Government has certified to the Commissioner that the invention disclosed therein is important to the armament or defense of the United States. See MPEP Chapter 1200 for period for reply when appeal is taken or court review sought. Extension of time under 35 U.S.C. 267 is decided by the Director of Group 3640. ---SECTION---710.01 Statutory Period 37 CFR 1.135 Abandonment for failure to reply within time period. (a) If an applicant of a patent application fails to reply within the time period provided under Section 1.134 and Section 1.136, the application will become abandoned unless an Office action indicates otherwise. (b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment. (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under Section 1.134 to supply the omission. The maximum statutory period for reply to an Office action is 6 months, 35 U.S.C. 133. Shortened periods are currently used in practically all cases, see MPEP Section 710.02(b). 37 CFR 1.135 provides that if no reply is filed within the time set in the Office action under 37 CFR 1.134 or as it may be extended under 37 CFR 1.136, the application will be abandoned unless an Office action indicates that another consequence, such as disclaimer, will take place. 37 CFR 1.135(b) has been amended to clarify that: (A) the admission of, or refusal to admit, any amendment after final rejection, or any related proceedings, will not operate to save the application from abandonment; and (B) the admission of, or refusal to admit, any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment. 37 CFR 1.135(c) has been amended to change the practice of providing a non-statutory time limit (generally 1 month) during which an applicant may supply an omission to a previous reply. Under the new practice, the examiner may set a shortened statutory time period (generally 1 month) during which an applicant must supply the omission to the previous reply to avoid abandonment. The prior practice under 37 CFR 1.135(c) was to set a time limit during which the applicant could supply the omission to the previous reply. Failure to supply the omission resulted in the abandonment of the application as of the due date for the previous reply. Filing a new application during the time limit, but beyond the due date for the previous reply, could have caused a loss of patent rights due to the lack of copendency between the applications. 37 CFR 1.135(c) now authorizes the examiner to accept a reply to a non-final Office action that is bona fide and is substantially complete but for an inadvertent omission as an adequate reply to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135. When a bona fide attempt to reply includes an inadvertent omission that precludes action on the merits of the application (e.g., an amendment is unsigned or improperly signed, or presents an amendment with additional claims so as to require additional fees pursuant to 37 CFR 1.16(b), (c), or (d)), the examiner may consider that reply adequate to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135, and give the applicant a shortened statutory time period of 1 month to correct the omission (e.g ., provide a duplicate paper or ratification, or submit the additional claims fees or cancel the claims so that no fee is due). The failure to timely supply the omission will result in abandonment under 35 U.S.C. 133 and 37 CFR 1.135. Extensions of time under 37 CFR 1.136(a) or (b) will be available, unless the action setting the shortened statutory period indicates otherwise. When a bona fide attempt to reply includes an omission that does not preclude action on the merits of the application (e.g ., a reply fails to address a rejection or objection), the examiner may waive the deficiency in the reply and act on the application. The examiner may repeat and make final the rejection, objection, or requirement that was the subject of the omission. Thus, a reply to a non-final Office action that is bona fide but includes an omission may be treated by: (A) issuing an Office action that does not treat the reply on its merits but requires the applicant to supply the omission to avoid abandonment; or (B) issuing an Office action that does treat the reply on its merits (and which can also require the applicant to supply the omission to avoid abandonment). Finally, whether a 1-month shortened statutory time period is provided to the applicant to supply the omission to the previous reply is within the discretion of the examiner. Where the examiner determines that the omission was not inadvertent (e.g ., the applicant is abusing the provisions of 37 CFR 1.135(c) to gain additional time to file a proper reply or to delay examination of the application), the examiner should notify the applicant of the omission in the reply and advise the applicant that the omission to the previous reply must be supplied within the period for reply to the prior action, including extensions of time under 37 CFR 1.136(a), if permitted. See also MPEP Section 714.03. ---SECTION---710.01(a) Statutory Period, How Computed The actual time taken for reply is computed from the date stamped or printed on the Office action to the date of receipt by the Office of applicant's reply. No cognizance is taken of fractions of a day and applicant's reply is due on the corresponding day of the month 6 months or any lesser number of months specified after the Office action. For example, reply to an Office action with a 3-month shortened statutory period, dated November 30 is due on the following February 28 (or 29 if it is a leap year), while a reply to an Office action dated February 28 is due on May 28 and not on the last day of May. Ex parte Messick, 7 USPQ 57 (Comm'r Pat. 1930) . A 1-month extension of time extends the time for reply to the date corresponding to the Office action date in the following month. For example, a reply to an Office action mailed on January 31 with a 3-month shortened statutory period would be due on April 30. If a 1-month extension of time were given, the reply would be due by May 31. The fact that April 30 may have been a Saturday, Sunday, or Federal holiday has no effect on the extension of time. Where the period for reply is extended by some time period other than "1-month" or an even multiple thereof, the person granting the extension should indicate the date upon which the extended period for reply will expire. When a timely reply is ultimately not filed, the application is regarded as abandoned after midnight of the date the period for reply expired. In the above example where May 31 is not a Saturday, Sunday, or Federal holiday and no further extensions of time are obtained prior to the end of the 6-month statutory period, the application would be abandoned as of June 1. The fact that June 1 may be a Saturday, Sunday, or Federal holiday does not change the abandonment date since the reply was due on May 31, a business day. See MPEP Section 711.04(a) regarding the pulling and forwarding of abandoned applications. A 30-day period for reply in the Office means 30 calendar days including Saturdays, Sundays, and federal holidays. However, if the period ends on a Saturday, Sunday, or Federal holiday, the reply is timely if it is filed on the next succeeding business day. If the period for reply is extended, the time extended is added to the last calendar day of the original period, as opposed to being added to the day it would have been due when said last day is a Saturday, Sunday, or Federal holiday. The date of receipt of a reply to an Office action is given by the "Office date" stamp which appears on the reply paper. In some cases the examiner's letter does not determine the beginning of a statutory reply period. In all cases where the statutory reply period runs from the date of a previous action, a statement to that effect should be included. Since extensions of time are available pursuant to 37 CFR 1.136(a), it is incumbent upon applicants to recognize the date for reply so that the proper fee for any extension will be submitted. Thus, the date upon which any reply is due will normally be indicated only in those instances where the provisions of 37 CFR 1.136(a) are not available. See MPEP Chapter 2200 for reexamination proceedings. ---SECTION---710.02 Shortened Statutory Period and Time Limit Actions Computed 37 CFR 1.136 Extensions of time. (a)(1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in Section 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to Section 1.193(b); (iii) The reply is a request for an oral hearing submitted pursuant to Section 1.194(b); (iv) The reply is to a decision by the Board of Patent Appeals and Interferences pursuant to Section 1.196, Section 1.197 or Section 1.304; or (v) The application is involved in an interference declared pursuant to Section 1.611. (2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (Section 1.135), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of this paragraph are available. See Section 1.136(b) for extensions of time relating to proceedings pursuant to Section Section 1.193(b), 1.194, 1.196 or 1.197; Section 1.304 for extension of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action; Section 1.550(c) for extension of time in reexamination proceedings; and Section 1.645 for extension of time in interference proceedings. (3) A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under Section 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in Section 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission. (b) When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. See Section 1.304 for extension of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action; Section 1.645 for extension of time in interference proceedings; and Section 1.550(c) for extension of time in reexamination proceedings. 37 CFR 1.136 implements 35 U.S.C. 41(a)(8) which directs the Commissioner to charge fees for extensions of time to take action in patent applications. Under 37 CFR 1.136 (35 U.S.C. 133) an applicant may be required to reply in a shorter period than 6 months, not less than 30 days. Some situations in which shortened periods for reply are used are listed in MPEP Section 710.02(b). In other situations, for example, the rejection of a copied patent claim, the examiner may require applicant to reply on or before a specified date. These are known as time limit actions and are established under authority of 35 U.S.C. 6. Some situations in which time limits are set are noted in MPEP Section 710.02(c). The time limit requirement should be typed in capital letters where required. An indication of a shortened time for reply should appear prominently on the first page of all copies of actions in which a shortened time for reply has been set so that a person merely scanning the action can easily see it. Shortened statutory periods are subject to the provisions of 37 CFR 1.136(a) unless applicant is notified otherwise in an Office action. See MPEP Section 710.02(e) for a discussion of extensions of time. See Chapter 2200 for reexamination proceedings. ---SECTION---710.02(b) Shortened Statutory Period: Situations In Which Used Under the authority given him by 35 U.S.C. 133, the Commissioner has directed the examiner to set a shortened period for reply to every action. The length of the shortened statutory period to be used depends on the type of reply required. Some specific cases of shortened statutory periods for reply are given below. These periods may be changed under special, rarely occurring circumstances. A shortened statutory period may not be less than 30 days (35 U.S.C. 133). 1 MONTH (NOT LESS THAN 30 DAYS) (A) Requirement for restriction or election of species only (no action on the merits) ...... MPEP Section 809.02(a) and Section 817. (B) When a reply by an applicant for a nonfinal Office action is bona fide but includes an inadvertent omission, the examiner may set a 1 month (not less than 30 days) shortened statutory time period to correct the omission .... MPEP Section 710.01 and Section 714.03. 2 MONTHS (A) Winning party in a terminated interference to reply to an unanswered Office action ...... MPEP Section 2363.02. Where, after the termination of an interference proceeding, the application of the winning party contains an unanswered Office action, final rejection or any other action, the primary examiner notifies the applicant of this fact. In this case reply to the Office action is required within a shortened statutory period running from the date of such notice. See Ex parte Peterson, 49 USPQ 119, 1941 C.D. 8, 525 O.G. 3 (Comm'r Pat. 1941). (B) To reply to an Ex parte Quayle Office action ......... MPEP Section 714.14. When an application is in condition for allowance, except as to matters of form, such as correction of the specification, a new oath, etc., the application will be considered special and prompt action taken to require correction of formal matters. Such action should include an indication on the Office Action Summary form PTOL-326 that prosecution on the merits is closed in accordance with the decision in Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). A 2-month shortened statutory period for reply should be set. (C) Multiplicity rejection - no other rejection ........ MPEP Section 2173.05(n). 3 MONTHS To reply to any Office action on the merits. PERIOD FOR REPLY RESTARTED Incorrect citation by examiner - regardless of time remaining in original period .... MPEP Section 710.06. ---SECTION---710.02(c) Specified Time Limits: Situations In Which Used There are certain situations in which the examiner specifies a time for the applicant to take some action, and the applicant's failure to timely take the specified action results in a consequence other than abandonment. Situations in which a specified time limit for taking an action is set are as follows: (A) Where a member of the public files a petition under 37 CFR 1.14(e) for access to an application, the PTO may give the applicant a specified time (usually 3 weeks) within which to state any objections to the granting of the petition for access and the reasons why it should be denied. The failure to timely reply will not affect the prosecution of the application (assuming that it is still pending), but will result in the PTO rendering a decision on the petition for access without considering any objections by the applicant. See MPEP Section 103. (B) Where an information disclosure statement complies with the requirements set forth in 37 CFR 1.97 (including the requirement for fees or statement under 37 CFR 1.97(e) based upon the time of filing), but part of the content requirement of 37 CFR 1.98 has been inadvertently omitted, the examiner may set a 1-month time limit for completion of the information disclosure statement. The failure to timely comply will not result in abandonment of the application, but will result in the information disclosure statement being placed in the application file with the noncomplying information not being considered. See MPEP Section 609. (C) Where an application is otherwise allowable but contains a traverse of a restriction requirement, the applicant may be given a specified time (e.g., a 1-month time limit) to cancel claims to the nonelected invention or species or take other appropriate action (i.e., petition the restriction requirement under 37 CFR 1.144). The failure to timely file a petition under 37 CFR 1.144 (or cancel the claims to the nonelected invention or species) will not result in abandonment of the application, but will be treated as authorization to cancel the claims to the non-elected invention or species, and the application will be passed to issue. See 37 CFR 1.141 and 1.144, and MPEP Section 809.02(c) and Section 821.01. (D) A portion of 37 CFR 1.605(a) provides that in suggesting claims for interference: The applicant to whom the claim is suggested shall amend the application by presenting the suggested claim within a time specified by the examiner, not less than one month. Failure or refusal of an applicant to timely present the suggested claim shall be taken without further action as a disclaimer by the applicant of the invention defined by the suggested claim. The failure to timely present the suggested claim will not result in abandonment of the application, but will be treated as a disclaimer by the applicant of the invention defined by the suggested claim. See MPEP Section 2305.02. Where the failure to take the specified action may result in abandonment (e.g., filing a new complete appeal brief correcting the deficiencies in a prior appeal brief), a time period should be set for taking the specified action. Where the condition of the application requires that such action not be subject to extensions under 37 CFR 1.136, the action should specify that the provisions of 37 CFR 1.136 (or 1.136(a)) do not apply to the time period for taking action (i.e ., a specified time limit should not be set simply to exclude the possibility of extending the period for reply under 37 CFR 1.136). ---SECTION---710.02(d) Difference Between Shortened Statutory Periods for Reply and Specified Time Limits Examiners and applicants should not lose sight of the distinction between a specified time for a particular action and a shortened statutory period for reply under 35 U.S.C. 133: (A) The penalty attaching to failure to take a particular action within a specified time is a loss of rights in regard to the particular matter (e.g ., the failure to timely copy suggested claims results in a disclaimer of the involved subject matter). On the other hand, a failure to reply within the set statutory period under 35 U.S.C. 133 results in abandonment of the entire application. Abandonment of an application is not appealable, but a petition to revive may be granted if the delay was unavoidable (37 CFR 1.137(a)) or unintentional (37 CFR 1.137(b)). (B) As a specified time or time limit is not a shortened statutory period under 35 U.S.C. 133, the Office may specify a time for taking action (or a time limit) of less than the 30 day minimum specified in 35 U.S.C. 133. See MPEP Section 103. (C) Where an applicant replies a day or two after the specified time, the delay may be excused by the examiner if satisfactorily explained. The examiner may use his or her discretion to request an explanation for the delay if the reason for the delay is not apparent from the reply. A reply 1 day late in an application carrying a shortened statutory period under 35 U.S.C. 133, no matter what the excuse, results in abandonment. Extensions of the statutory period under 35 U.S.C. 133 may be obtained under 37 CFR 1.136, provided the extension does not go beyond the 6-month statutory period from the date of the Office action (35 U.S.C. 133). The 2-month time period for filing an appeal brief on appeal to the Board of Patent Appeals and Interferences (37 CFR 1.192(a)) and the 1-month time period for filing a new appeal brief to correct the deficiencies in a defective appeal brief (37 CFR 1.192(d)) are time periods, but are not (shortened) statutory periods for reply set pursuant to 35 U.S.C. 133. Thus, these periods are, unless otherwise provided, extendable by up to 5 months under 37 CFR 1.136(a), and, in an exceptional situation, further extendable under 37 CFR 1.136(b) (i.e., these periods are not statutory periods subject to the 6-month maximum set in 35 U.S.C. 133). In addition, the failure to file an appeal brief (or a new appeal brief) within the time period set in 37 CFR 1.192(a) (or (d)) results in dismissal of the appeal. The dismissal of an appeal results in abandonment, unless there is any allowed claim(s) (see MPEP Section 1215.04), in which case the examiner should cancel the nonallowed claims and issue the application. ---SECTION---710.02(e) Extension of Time 37 CFR 1.136 Extensions of time. (a)(1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in Section 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to Section 1.193(b); (iii) The reply is a request for an oral hearing submitted pursuant to Section 1.194(b); (iv) The reply is to a decision by the Board of Patent Appeals and Interferences pursuant to Section 1.196, Section 1.197 or Section 1.304; or (v) The application is involved in an interference declared pursuant to Section 1.611. (2) The date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The expiration of the time period is determined by the amount of the fee paid. A reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application (Section 1.135), but in no situation may an applicant reply later than the maximum time period set by statute, or be granted an extension of time under paragraph (b) of this section when the provisions of this paragraph are available. See Section 1.136(b) for extensions of time relating to proceedings pursuant to Section Section 1.193(b), 1.194, 1.196 or 1.197; Section 1.304 for extension of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action; Section 1.550(c) for extension of time in reexamination proceedings; and Section 1.645 for extension of time in interference proceedings. (3) A written request may be submitted in an application that is an authorization to treat any concurrent or future reply, requiring a petition for an extension of time under this paragraph for its timely submission, as incorporating a petition for extension of time for the appropriate length of time. An authorization to charge all required fees, fees under Section 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under this paragraph for its timely submission. Submission of the fee set forth in Section 1.17(a) will also be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under this paragraph for its timely submission. (b) When a reply cannot be filed within the time period set for such reply and the provisions of paragraph (a) of this section are not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under this paragraph must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension under this paragraph. In no situation can any extension carry the date on which reply is due beyond the maximum time period set by statute. See Section 1.304 for extension of time to appeal to the U.S. Court of Appeals for the Federal Circuit or to commence a civil action; Section 1.645 for extension of time in interference proceedings; and Section (c) for extension of time in reexamination proceedings. 37 CFR 1.136 provides for two distinct procedures to extend the period for action or reply in particular situations. The procedure which is available for use in a particular situation will depend upon the circumstances. 37 CFR 1.136(a) permits an applicant to file a petition for extension of time and a fee as set forth in 37 CFR 1.17(a) up to 5 months after the end of the time period set to take action except: (A) where prohibited by statute, (B) where prohibited by one of the items listed in the rule, or (C) where applicant has been notified otherwise in an Office action. The petition and fee must be filed within the extended time period for reply requested in the petition and can be filed prior to, with, or without the reply. The filing of the petition and fee will extend the time period to take action up to 5 months dependent on the amount of the fee paid except in those circumstances noted above. 37 CFR 1.136(a) will effectively reduce the amount of paperwork required by applicants and the Office since the extension will be effective upon filing of the petition and payment of the appropriate fee and without acknowledgment or action by the Office and since the petition and fee can be filed with or without the reply. 37 CFR 1.136(b) provides for requests for extensions of time upon a showing of sufficient cause when the procedure of 37 CFR 1.136(a) is not available. Although the petition and fee procedure of 37 CFR 1.136(a) will normally be available within 5 months after a set period for reply has expired, an extension request for cause under 37 CFR 1.136(b) must be filed during the set period for reply. Extensions of time in interference proceedings are governed by 37 CFR 1.645. It should be very carefully noted that neither the primary examiner nor the Commissioner has authority to extend the shortened statutory period unless a petition for the extension is filed. While the shortened period may be extended within the limits of the statutory 6 months period, no extension can operate to extend the time beyond the 6 months. Any request under 37 CFR 1.136(b) for extension of time for reply must state a reason in support thereof. Such extensions will only be granted for sufficient cause and must be filed prior to the end of the set period for reply. Extensions of time with the payment of a fee pursuant to 37 CFR 1.136 are possible in reply to most Office actions of the examiner. Exceptions include: (A) all extensions in a reexamination proceeding (see 37 CFR 1.550(c) and MPEP Section 2265); (B) all extensions during an interference proceeding (but not preparatory to an interference where a claim is suggested for interference); (C) those specific situations where an Office action states that the provisions of 37 CFR 1.136(a) are not applicable (e.g., in reissue applications associated with litigation, or where an application in allowable condition has nonelected claims and time is set to cancel such claims); and (D) those limited instances where applicant is given a specified time limit to take certain actions. The fees for extensions of time are set forth in 37 CFR 1.17(a) and are subject to a 50% reduction for persons or concerns qualifying as small entities. The fees itemized at 37 CFR 1.17(a) are cumulative. Thus, if an applicant has paid an extension fee in the amount set forth in 37 CFR 1.17(a)(l) for a 1-month extension of time and thereafter decides that an additional 1 month is needed, the proper fee would be the amount set forth in 37 CFR 1.17(a)(2) less the amount set forth in 37 CFR 1.17(a)(l) which was previously paid. 37 CFR 1.136(a)(3) provides that: (A) a written request may be submitted in an application that is an authorization to treat any concurrent or future reply that requires a petition for an extension of time under 37 CFR 1.136(a) to be timely, as incorporating a petition for extension of time for the appropriate length of time; (B) an authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time under 37 CFR 1.136(a) to be timely; and (C) submission of the fee set forth in 37 CFR 1.17(a) will be treated as a constructive petition for an extension of time in any concurrent reply requiring a petition for an extension of time under 37 CFR 1.136(a) to be timely. This is a change in practice, in that applicants were previously required to file a petition (some writing that manifested an intent to obtain an extension of time) in reply to the Office action for which the extension was requested. 37 CFR 1.136(a)(3) is a "safety net" to avoid a potential loss of patent rights for applicants who inadvertently omitted a petition, but who had: (A) previously filed a written request to treat a reply requiring an extension of time as incorporating a petition for such extension of time; (B) previously filed an authorization to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees; or (C) submitted the fee set forth in 37 CFR 1.17(a) with the reply. The Office strongly recommends including a written petition for any desired extension of time in reply to the Office action for which the extension was requested to avoid processing delays. A proper petition may be a mere sentence such as The applicant herewith petitions the Commissioner of Patents and Trademarks to extend the time for reply to the Office action dated ____ for ____ month(s) from ____ to ____ . Submitted herewith is a check for $____ to cover the cost of the extension [Please Charge my deposit account number ____ , in the amount of $ ____ to cover the cost of the extension. Any deficiency or overpayment should be charged or credited to the above numbered deposit account.] 37 CFR 1.136(a)(2) provides, in part, that "[t]he date on which the petition and the fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee." Thus, a petition under 37 CFR 1.136(a) need not be accompanied by a reply (e.g ., in situations in which the extension is necessary for copendency with a continuing application). 37 CFR 1.136(a)(2), however, clarifies that "[a] reply must be filed prior to the expiration of the period of extension to avoid abandonment of the application" under 35 U.S.C. 133 and 37 CFR 1.135 (e.g., where the extension is obtained solely for the purpose of copendency with a continuing application, and no reply is filed, the application will become abandoned upon expiration of the so-extended period for reply). To facilitate processing, any petition for an extension of time (or petition to revive under 37 CFR 1.137) in which a continuing application is filed in lieu of a reply should specifically refer to the filing of the continuing application and also should include an express abandonment of the prior application conditioned upon the granting of the petition and the granting of a filing date to the continuing application. Applicants are cautioned that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application. This is because the petition for an extension of time (or constructive petition under 37 CFR 1.136(a)(3)) must be directed toward and filed in the application to which it pertains in accordance with 37 CFR 1.4 and 1.5. Where a reply is filed after the set period for reply has expired and no petition or fee accompanies it, the reply will not be accepted as timely until the petition (which may be a constructive petition under 37 CFR 1.136(a)(3)) and the appropriate fee are submitted. For example, if an Office action sets a 3-month period for reply and applicant replies in the 4th month and includes only the petition for a 1-month extension of time, the reply is not acceptable until the fee is filed. If the fee is not filed until the 5th month, an additional fee for the 2nd month extension would also be required in order to render the reply timely. An extension of time under 37 CFR 1.136 is not necessary when submitting a supplemental reply to an Office action if a complete first reply was timely filed in reply to the Office action. When the provisions of 37 CFR 1.136(a) are not applicable, extensions of time for cause pursuant to 37 CFR 1.136(b) are possible. Any such extension must be filed on or before the day on which the reply is due. The mere filing of such a request will not effect any extension. All such requests are to be decided by the Group Director. No extension can operate to extend the time beyond the 6-month statutory period. If a request for extension of time under 37 CFR 1.136(b) is filed in duplicate and accompanied by a stamped return-addressed envelope, the Office will indicate the action taken on the duplicate and return it promptly in the envelope. Utilization of this procedure is optional on the part of applicant. In this procedure, the action taken on the request should be noted on the original and on the copy which is to be returned. The notation on the original, which becomes a part of the file record, should be signed by the person granting or denying the extension, and the name and title of that person should also appear in the notation on the copy which is returned to the person requesting the extension. When the request is granted, no further action by the Office is necessary. When the request is granted in part, the extent of the extension granted will be clearly indicated on both the original and on the copy which is to be returned. When the request is denied, the reason for the denial will be indicated on both the original and on the copy which is to be returned or a formal decision letter giving the reason for the denial will be forwarded promptly after the mailing of the duplicate. If the request for extension of time is granted, the due date is computed from the date stamped or printed on the action, as opposed to the original due date. See MPEP Section 710.01(a). For example, a reply to an action with a 3-month shortened statutory period, dated November 30, is due on the following February 28 (or 29, if it is a leap year). If the period for reply is extended an additional month, the reply becomes due on March 30, not on March 28. For purposes of convenience, a request for an extension of time may be personally delivered and left with the appropriate area to become an official paper in the file without routing through the Mail Center. The person who accepts the request for an extension of time will have it date stamped. If duplicate copies of a request for an extension of time under 37 CFR 1.136(b) are hand delivered to an examining group, both copies are dated, either stamped approved or indicated as being approved in part or denied, and signed. The duplicate copy is returned to the delivering person regardless of whether the request was signed by a registered attorney or agent, either of record or acting in a representative capacity, the applicant or the assignee of record of the entire interest. If the request for extension under 37 CFR 1.136(b) is not presented in duplicate, the applicant should be advised promptly by way of form PTOL-327 regarding action taken on the request so that the file record will be complete. Form Paragraph 7.98 may be used where a reply is filed late but an extension of time is possible. 7.98 Reply Is Late, Extension of Time Suggested Applicant's reply was received in the Office on [1], which is after the expiration of the period for reply set in the last Office action mailed on [2]. This application will become abandoned unless applicant obtains an extension of time to reply to the last Office action under 37 CFR 1.136(a). Examiner Note: Since the provisions of 37 CFR 1.136(a) do not apply to reexamination proceedings or to litigation related reissue applications, do not use this paragraph in these cases. FINAL REJECTION - TIME FOR REPLY If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection. This procedure applies only to a first reply to a final rejection. The following language must be included by the examiner in each final rejection. A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST REPLY IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE THREE-MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 CFR 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR REPLY EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION. For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, any extension fee would then be calculated from the end of the 3month period. If the examiner, however, does not mail an advisory action until after the end of 3 months, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension fee may be calculated from that date. See also MPEP Section 706.07(f). EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS AFTER FINAL REJECTION Frequently, applicants request an extension of time, stating as a reason therefor that more time is needed in which to submit an affidavit. When such a request is filed after final rejection, the granting of the request for extension of time is without prejudice to the right of the examiner to question why the affidavit is now necessary and why it was not earlier presented. If applicant's showing is insufficient, the examiner may deny entry of the affidavit, notwithstanding the previous grant of an extension of time to submit it. The grant of an extension of time in these circumstances serves merely to keep the case from becoming abandoned while allowing the applicant the opportunity to present the affidavit or to take other appropriate action. Moreover, prosecution of the application to save it from abandonment must include such timely, complete and proper action as required by 37 CFR 1.113. The admission of the affidavit for purposes other than allowance of the application, or the refusal to admit the affidavit, and any proceedings relative thereto, shall not operate to save the application from abandonment. Implicit in the above practice is the fact that affidavits submitted after final rejection are subject to the same treatment as amendments submitted after final rejection. In re Affidavit Filed After Final Rejection, 152 USPQ 292 (Comm'r Pat. 1966). Failure to file a reply during the shortened statutory period results in abandonment of the application. Extensions of time to appeal to the courts under 37 CFR 1.304 is covered in MPEP Section 1216. EXTENSION OF TIME AFTER PAYMENT OF ISSUE FEE The statutory (nonextendable) time period for payment of the issue fee is 3 months from the date of the Notice of Allowance (35 U.S.C. 151). In situations where informalities such as drawing corrections or submission of supplemental or corrected declarations are outstanding at the time of allowance, applicants will be notified on the PTOL-37 (Notice of Allowability) of such informalities. While extensions of time under 37 CFR 1.136(a) are available to correct such informalities, the issue fee must be paid within the 3-month period. ---SECTION---710.04 Two Periods Running There sometimes arises a situation where two different periods for reply are running against an application, the one limited by the regular statutory period, the other by the limited period set in a subsequent Office action. The running of the first period is not suspended nor affected by an ex parte limited time action or even by an appeal therefrom. For an exception involving suggested claims, see MPEP Section 2305.03. ---SECTION---710.04(a) Copying Patent Claims Where, in an application in which there is an unanswered rejection of record, claims are copied from a patent and all of these claims are rejected there results a situation where two different periods for reply are running against the application. One period, the first, is the regular statutory period of the unanswered rejection of record, the other period is the limited period set for reply to the rejection (either first or final). The date of the last unanswered Office action on the claims other than the copied patent claims is the controlling date of the statutory period. See Ex parte Milton, 63 USPQ 132 (P.O. Super Exam. 1938). See also MPEP Section 2305.02. ---SECTION---710.05 Period Ending on Saturday, Sunday, or a Federal Holiday 35 U.S.C. 21 Filing date and day for taking action. +++ (b) When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia the action may be taken, or the fee paid, on the next succeeding secular or business day. 37 CFR 1.7 Times for taking action; Expiration on Saturday, Sunday, or Federal holiday. Whenever periods of time are specified in this part in days, calendar days are intended. When the day, or the last day fixed by statute or by or under this part for taking any action or paying any fee in the Patent and Trademark Office falls on Saturday, Sunday, or on a Federal holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding day which is not a Saturday, Sunday, or a Federal holiday. See Section 1.304 for time for appeal or for commencing civil action. The Federal holidays are New Year's Day, January 1; Martin Luther King's birthday, the third Monday in January; Washington's Birthday, the third Monday in February; Memorial Day, the last Monday in May; Independence Day, July 4; Labor Day, the first Monday in September; Columbus Day, the second Monday in October; Veteran's Day, November 11; Thanksgiving Day, the fourth Thursday in November; Christmas Day, December 25; Inauguration day (January 20, every 4 years). Whenever a Federal holiday falls on a Sunday, the following day (Monday) is also a Federal holiday. Exec. Order No. 10,358, 17 Fed. Reg., 5269; 5 U.S.C. 6103. When a Federal holiday falls on a Saturday, the preceding day, Friday, is considered to be a Federal holiday and the Patent and Trademark Office will be closed for business on that day (5 U.S.C. 6103). Accordingly, any action or fee due on such a Federal holiday Friday or Saturday is to be considered timely if the action is taken, or the fee paid, on the next succeeding day which is not a Saturday, Sunday, or a Federal holiday. When an amendment is filed a day or two later than the expiration of the period fixed by statute, care should be taken to ascertain whether the last day of that period was Saturday, Sunday, or a Federal holiday and if so, whetherthe amendment was filed or the fee paid on the next succeeding day which is not a Saturday, Sunday, or a Federal holiday. An amendment received on such succeeding day which was due on Saturday, Sunday, or Federal holiday is endorsed on the file wrapper with the date of receipt. The Saturday, Sunday, or Federal holiday is also indicated. ---SECTION---710.06 Situations When Reply Period Is Reset or Restarted Where the citation of a reference is incorrect or an Office action contains some other defect and this error is called to the attention of the Office within 1 month of the mail date of the action, the Office will restart the previously set period for reply to run from the date the error is corrected, if requested to do so by applicant. If the error is brought to the attention of the Office within the period for reply set in the Office action but more than 1 month after the date of the Office action, the Office will set a new period for reply, if requested to do so by the applicant, to substantially equal the time remaining in the reply period. For example, if the error is brought to the attention of the Office 5 weeks after mailing the action, then the Office would set a new 2-month period for reply. The new period for reply must be at least 1 month and would run from the date the error is corrected. See MPEP Section 707.05(g) for the manner of correcting the record where there has been an erroneous citation. Where for any reason it becomes necessary to remail any action (MPEP Section 707.13), the action should be correspondingly redated, as it is the remailing date that establishes the beginning of the period for reply. Ex parte Gourtoff, 1924 C.D. 153, 329 O.G. 536 (Comm'r Pat. 1924). A supplementary action after a rejection explaining the references more explicitly or giving the reasons more fully, even though no further references are cited, establishes a new date from which the statutory period runs. If the error in citation or other defective Office action is called to the attention of the Office after the expiration of the period for reply, the period will not be restarted and any appropriate extension fee will be required to render a reply timely. The Office letter correcting the error will note that the time period for reply remains as set forth in the previous Office action. See MPEP Section 505, Section 512, and Section 513 for Patent and Trademark Office practice on date stamping documents. In the event that correspondence from the Office is received late (A) due to delays in the U.S. Postal Service, or (B) because the mail was delayed in leaving the PTO (the postmark date is later than the mail date printed on the correspondence), applicants may petition to reset the period for reply, which petition shall be evaluated according to the guidelines which follow. Where the PTO action involved in the petition was mailed by an examining group, the authority to decide such petitions has been delegated to the Group Director. See Notice entitled "Petition to reset a period for response due to late receipt of a PTO action," 1160 O.G. 14 (March 1, 1994). PETITIONS TO RESET A PERIOD FOR REPLY DUE TO LATE RECEIPT OF A PTO ACTION The PTO will grant a petition to restart the previously set period for reply to a PTO action to run from the date of receipt of the PTO action at the correspondence address when the following criteria are met: (A) the petition is filed within 2 weeks of the date of receipt of the PTO action at the correspondence address; (B) a substantial portion of the set reply period had elapsed on the date of receipt (e.g., at least 1 month of a 2- or 3-month reply period had elapsed); and (C) the petition includes (1) evidence showing the date of receipt of the PTO action at the correspondence address (e.g., a copy of the PTO action having the date of receipt of the PTO action at the correspondence address stamped thereon, a copy of the envelope (which contained the PTO action) having the date of receipt of the PTO action at the correspondence address stamped thereon, etc.), and (2) a statement setting forth the date of receipt of the PTO action at the correspondence address and explaining how the evidence being presented establishes the date of receipt of the PTO action at the correspondence address. There is no statutory requirement that a shortened statutory period of longer than 30 days to reply to a PTO action be reset due to delay in the mail or in the PTO. However, when a substantial portion of the set reply period had elapsed on the date of receipt at the correspondence address (e.g., at least 1 month of a 2- or 3-month period had elapsed), the procedures set forth above for late receipt of a PTO action are available. Where a PTO action was received with less than 2 months remaining in a shortened statutory period of 3 months the period may be restarted from the date of receipt. Where the period remaining is between 2 and 3 months, the period will be reset only in extraordinary situations, e.g., complex PTO action suggesting submission of comparative data. PETITIONS TO RESET A PERIOD FOR REPLY DUE TO A POSTMARK DATE LATER THAN THE MAIL DATE PRINTED ON A PTO ACTION The PTO will grant a petition to restart the previously set period for reply to a PTO action to run from the postmark date shown on the PTO mailing envelope which contained the PTO action when the following criteria are met: (A) the petition is filed within 2 weeks of the date of receipt of the PTO action at the correspondence address; (B) the reply period was for payment of the issue fee, or the reply period set was 1 month or 30 days; and (C) the petition includes (1) evidence showing address (e.g., copy of the PTO action having the date of receipt of the PTO action at the correspondence address stamped thereon, etc.), (2) a copy of the envelope which contained the PTO action showing the postmark date, and (3) a statement setting forth the date of receipt of the PTO action at the correspondence address and stating that the PTO action was received in the postmarked envelope. The provisions of 37 CFR 1.8 and 1.10 apply to the filing of the above-noted petitions with regard to the requirement that the petition be filed within 2 weeks of the date of receipt of the PTO action. The showings outlined above may not be sufficient if there are circumstances that point to a conclusion that the PTO action may have been delayed after receipt rather than a conclusion that the PTO action was delayed in the mail or in the PTO. ---SECTION---711 Abandonment 37 CFR 1.135 Abandonment for failure to reply within time period. (a) If an applicant of a patent application fails to reply within the time period provided under Section 1.134 and Section 1.136, the application will become abandoned unless an Office action indicates otherwise. (b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment. (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under Section 1.134 to supply the omission. 37 CFR 1.138 Express abandonment. An application may be expressly abandoned by filing in the Patent and Trademark Office a written declaration of abandonment signed by the applicant and the assignee of record, if any, and identifying the application. An application may also be expressly abandoned by filing a written declaration of abandonment signed by the attorney or agent of record. A registered attorney or agent acting under the provision of Section 1.34(a), or of record, may also expressly abandon a prior application as of the filing date granted to a continuing application when filing such a continuing application. Express abandonment of the application may not be recognized by the Office unless it is actually received by appropriate officials in time to act thereon before the date of issue. Abandonment may be either of the invention or of an application. This discussion is concerned with abandonment of the application for patent. An abandoned application, in accordance with 37 CFR 1.135 and 1.138, is one which is removed from the Office docket of pending applications through: (A) formal abandonment (1) by the applicant (acquiesced in by the assignee if there is one), or (2) by the attorney or agent of record including an associate attorney or agent appointed by the principal attorney or agent and whose power is of record but not including a registered attorney or agent acting in a representative capacity under 37 CFR 1.34(a) except where a continuing application is filed; or (B) failure of applicant to take appropriate action within a specified time at some stage in the prosecution of the application. Where an applicant, himself or herself, formally abandons an application and there is a corporate assignee, the acquiescence must be made through an officer whose official position is indicated. ---SECTION---711.01 Express or Formal Abandonment The applicant (acquiesced in by an assignee of record), or the attorney/agent of record, if any, can sign an express abandonment. It is imperative that the attorney or agent of record exercise every precaution in ascertaining that the abandonment of the application is in accordance with the desires and best interests of the applicant prior to signing a letter of express abandonment of a patent application. Moreover, special care should be taken to ensure that the appropriate application is correctly identified in the letter of abandonment. A letter of abandonment properly signed becomes effective when an appropriate official of the Office takes action thereon. When so recognized, the date of abandonment may be the date of recognition or a different date if so specified in the letter itself. For example, where a continuing application is filed with a request to abandon the prior application as of the filing date accorded the continuing application, the date of the abandonment of the prior application will be in accordance with the request once it is recognized. Action in recognition of an express abandonment may take the form of an acknowledgment by the examiner or by the Publishing Division of the receipt of the express abandonment, indicating that it is in compliance with 37 CFR 1.138. It is suggested that divisional applications be reviewed before filing to ascertain whether the prior application should be abandoned. Care should be exercised in situations such as these as the Office looks on express abandonments as acts of deliberation, intentionally performed. Applications may be expressly abandoned as provided for in 37 CFR 1.138. When a letter expressly abandoning an application (not in issue) is received, the examiner should acknowledge receipt thereof, and indicate whether it does or does not comply with the requirements of 37 CFR 1.138. The filing of a request for a continued prosecution application (CPA) under 37 CFR 1.53(d) or a file wrapper continuing application under former 37 CFR 1.62(g) is considered to be a request to expressly abandon the prior application as of the filing date granted the continuing application. Form paragraph 7.88 may be used to acknowledge proper express abandonments. 7.88 Acknowledge Express Abandonment This application is abandoned in view of the letter of express abandonment complying with 37 CFR 1.138 filed on [1]. Examiner Note: 1. With the exception of express abandonments resulting from the filing of a continued prosecution application under 37 CFR 1.53(d) or a file wrapper continuation application under former 37 CFR 1.62 or when filed with a continuing application, all express abandonments must be signed by all of the inventors, the owners of the entire interest, or an attorney or agent of record. 2. The provisions of 37 CFR 1.34 do not apply to express abandonments unless filed with a continuing application. If the letter expressly abandoning the application does comply with 37 CFR 1.138, the examiner should respond by using a "Notice of Abandonment" form PTO-1432, and by checking the appropriate box(es). The examiner's signature should appear at the bottom of the form. If such a letter does not comply with the requirements of 37 CFR 1.138, a fully explanatory letter should be sent. Form Paragraph 7.89 may be used to acknowledge improper express abandonments. 7.89 Letter of Express Abandonment, Improper The letter filed on [1] does not comply with the requirements of 37 CFR 1.138, and therefore is not a proper letter of express abandonment. Examiner Note: The reasons why the letter fails to comply with 37 CFR 1.138 must be fully explained, e.g., the individual signing the express abandonment is not of record. See the "Examiner Note" of form paragraph 7.88. A letter of express abandonment which is not timely filed (because it was not filed within the period for reply), is not acceptable to expressly abandon the application. The letter of express abandonment should be endorsed on the file wrapper and placed in the application file but not formally entered. The application should be pulled for abandonment after expiration of the minimum permitted period for reply (see MPEP Section 711.04(a)) and applicant notified of the abandonment for failure to reply within the statutory period. See MPEP Section 711.02 and Section 711.04(c). In view of the doctrine set forth in Ex parte Lasscell, 1884 C.D. 66, 29 O.G. 861 (Comm'r Pat. 1884), an amendment canceling all of the claims, even though said amendment is signed by the applicant himself/herself and the assignee, is not an express abandonment. Such an amendment is regarded as nonresponsive and should not be entered, and applicant should be notified as explained in MPEP Section 714.03 to Section 714.05. An attorney or agent not of record in an application may file a withdrawal of an appeal under 37 CFR 1.34(a) except in those instances where such withdrawal would result in abandonment of the application. In such instances the withdrawal of appeal is in fact an express abandonment. AFTER NOTICE OF ALLOWANCE Letters of abandonment of allowed applications are acknowledged by the Publishing Division. 37 CFR 1.313 provides that an allowed application will not be withdrawn from issue except by approval of the Commissioner, and that after the issue fee has been paid, it will not be withdrawn for any reason except: (A) mistake on the part of the Office; (B) a violation of 37 CFR 1.56 or illegality in the application; (C) unpatentability of one or more claims; (D) for interference; or (E) for abandonment to permit consideration of an information disclosure statement under 37 CFR 1.97 in a continuing application. See MPEP Section 711.05 and Section 1308. In cases where 37 CFR 1.313 precludes giving effect to an express abandonment, the appropriate remedy is a petition, with fee, under 37 CFR 1.183, showing an extraordinary situation where justice requires suspension of 37 CFR 1.313. APPLICATION IN INTERFERENCE A written declaration of abandonment of the application signed only by an attorney or agent of record, when the application sought to be expressly or formally abandoned is the subject of an interference proceeding under 35 U.S.C. 135, is not effective to terminate the interference, and will not be considered until after ex parte prosecution is resumed. In order to be effective to terminate an interference proceeding, an abandonment of the application must be signed by the inventor with the written consent of the assignee where there has been an assignment. A copy of an appropriate form for use in filing an express abandonment under 37 CFR 1.138 in favor of a continuing application is reproduced below. Form PTO/SB/24. Express Abandonment under 37 CFR 1.138[GRAPHIC] ---SECTION---711.02 Failure To Take Required Action During Statutory Period 37 CFR 1.135(a) specifies that an application becomes abandoned if applicant "fails to reply" to an office action within the fixed statutory period. This failure may result either from (A) failure to reply within the statutory period, or (B) insufficiency of reply, i.e., failure to file a "complete and proper reply, as the condition of the case may require" within the statutory period (37 CFR 1.135(b)). When an amendment is filed after the expiration of the statutory period, the application is abandoned and the remedy is to petition to revive it. The examiner should notify the applicant or attorney at once that the application has been abandoned by using form PTOL-1432. The proper boxes on the form should be checked and the blanks for the dates of the proposed amendment and the Office action completed. The late amendment is endorsed on the file wrapper but not formally entered. See MPEP Section 714.17. Form Paragraph 7.90 may also be used. 7.90 Abandonment, Failure to Reply This application is abandoned in view of applicant's failure to submit a proper reply to the Office action mailed on [1] within the required period for reply. Examiner Note: 1. A letter of abandonment should not be mailed until after the period for requesting an extension of time under 37 CFR 1.136(a) has expired. 2. In pro se cases see form paragraph 17.10. To pass on questions of abandonment, it is essential that the examiner know the dates that mark the beginning and end of the statutory period under varying situations. Applicant's reply must reach the Office within the set shortened statutory period for reply dating from the date stamped or printed on the Office letter or within the extended time period obtained under 37 CFR 1.136. (See MPEP Section 710 to Section 710.06.) For a petition to withdraw a holding of abandonment based upon failure to receive an Office action, see MPEP Section 711.03(c). ---SECTION---711.02(a) Insufficiency of Reply Abandonment may result from a situation where applicant's reply is within the period for reply but is not fully responsive to the Office action. But see MPEP Section 710.02(c). See also MPEP Section 714.02 to Section 714.04. 7.91 Reply Is Not Fully Responsive, Extension of Time Suggested The reply filed on [1] is not to be fully responsive to the prior Office action because: [2]. Since the period for reply set forth in the prior Office action has expired, this application will become abandoned unless applicant corrects the deficiency and obtains an extension of time under 37 CFR 1.136(a). The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. In no case may an applicant reply outside the SIX (6) MONTH statutory period or obtain an extension for more than FIVE (5) MONTHS beyond the date for reply set forth in an Office action. A fully responsive reply must be timely filed to avoid abandonment of this application. Examiner Note: 1. In bracket 2, set forth why the examiner considers there to be a failure to take "complete and proper action" within the statutory period. 2. If the reply appears to be a bona fide attempt to respond with an inadvertent omission, do not use this paragraph; instead use form paragraph 7.95. ---SECTION---711.02(b) Special Situations Involving Abandonment The following situations involving questions of abandonment often arise, and should be specially noted: (A) Copying claims from a patent when not suggested by the Patent and Trademark Office does not constitute a response to the last Office action and will not save the case from abandonment, unless the last Office action relied solely on the patent for the rejection of all the claims rejected in that action. (B) An application may become abandoned through withdrawal of, or failure to prosecute, an appeal to the Board of Patent Appeals and Interferences. See MPEP Section 1215.01 to Section 1215.04. (C) An application may become abandoned through dismissal of appeal to the Court of Appeals for the Federal Circuit or civil action, where there was not filed prior to such dismissal an amendment putting the case in condition for issue or fully responsive to the Board's decision. Abandonment results from failure to perfect an appeal as required by the Court of Appeals for the Federal Circuit. See MPEP Section 1215.05 and Section 1216.01. (D) Where claims are suggested for interference near the end of the period for reply running against the case, see MPEP Section 2305. (E) Where an FWC application under former 37 CFR 1.62 was filed. See MPEP Section 201.06(b) and Section 711.01. (F) Where a continued prosecution application (CPA) under 37 CFR 1.53(d) is filed. See MPEP Section 201.06(d) and Section 711.01. ---SECTION---711.02(c) Termination of Proceedings "Termination of proceedings" is an expression found in 35 U.S.C. 120. As there stated, a second application is considered to be copending with an earlier application if it is filed before (A) the patenting, (B) the abandonment of, or (C) termination of proceedings on the earlier application. "Before" has consistently been interpreted, in this context, to mean "not later than." In each of the following situations, proceedings are terminated: (A) When the issue fee is not paid and the application is abandoned for failure to pay the issue fee, proceedings are terminated as of the date the issue fee was due and the application is the same as if it were abandoned after midnight on that date (but if the issue fee is later accepted, on petition, the application is revived). See MPEP Section 711.03(c). (B) If an application is in interference wherein all the claims present in the application correspond to the counts and the application loses the interference as to all the claims, then proceedings on that application are terminated as of the date appeal or review by civil action was due if no appeal or civil action was filed. (C) Proceedings are terminated in an application after decision by the Board of Patent Appeals and Interferences as explained in MPEP Section 1214.06. (D) Proceedings are terminated after a decision by the court as explained in MPEP Section 1216.01. ---SECTION---711.03 Reconsideration of Holding of Abandonment; Revival When advised of the abandonment of his or her application, applicant may either ask for reconsideration of such holding, if he or she disagrees with it on the basis that there is no abandonment in fact; or petition for revival under 37 CFR 1.137. ---SECTION---711.03(a) Holding Based on Insufficiency of Response Applicant may deny that the reply was incomplete. While the primary examiner has no authority to act upon an application in which no action by applicant was taken during the period for reply, he or she may reverse his or her holding as to whether or not an amendment received during such period was responsive and act on a case of such character which he or she has previously held abandoned. This is not a revival of an abandoned application but merely a holding that the case was never abandoned. See also MPEP Section 714.03. ---SECTION---711.03(b) Holding Based on Failure To Reply Within Period When an amendment reaches the Patent and Trademark Office after the expiration of the period for reply and there is no dispute as to the dates involved, no question of reconsideration of a holding of abandonment can be presented. However, the examiner and the applicant may disagree as to the date on which the period for reply commenced to run or ends. In this situation, as in the situation involving sufficiency of reply, the applicant may take issue with the examiner and point out to him or her that his or her holding was erroneous. ---SECTION---711.03(c) Petitions Relating to Abandonment 37 CFR 1.135 Abandonment for failure to reply within time period. (a) If an applicant of a patent application fails to reply within the time period provided under Section 1.134 and Section 1.136, the application will become abandoned unless an Office action indicates otherwise. (b) Prosecution of an application to save it from abandonment pursuant to paragraph (a) of this section must include such complete and proper reply as the condition of the application may require. The admission of, or refusal to admit, any amendment after final rejection or any amendment not responsive to the last action, or any related proceedings, will not operate to save the application from abandonment. (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under Section 1.134 to supply the omission. 37 CFR 1.137 Revival of abandoned application or lapsed patent. (a) Unavoidable. Where the delay in reply was unavoidable, a petition may be filed to revive an abandoned application or a lapsed patent pursuant to this paragraph. A grantable petition pursuant to this paragraph must be accompanied by: (1) The required reply, unless previously filed. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In an application or patent, abandoned or lapsed for failure to pay the issue fee or any portion thereof, the required reply must be the payment of the issue fee or any outstanding balance thereof; (2) The petition fee as set forth in Section 1.17(l); (3) A showing to the satisfaction of the Commissioner that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unavoidable; and (4) Any terminal disclaimer (and fee as set forth in Section 1.20(d)) required pursuant to paragraph (c) of this section. (b) Unintentional. Where the delay in reply was unintentional, a petition may be filed to revive an abandoned application or a lapsed patent pursuant to this paragraph. A grantable petition pursuant to this paragraph must be accompanied by: (1) The required reply, unless previously filed. In a nonprovisional application abandoned for failure to prosecute, the required reply may be met by the filing of a continuing application. In an application or patent, abandoned or lapsed for failure to pay the issue fee or any portion thereof, the required reply must be the payment of the issue fee or any outstanding balance thereof; (2) The petition fee as set forth in Section 1.17(m); (3) A statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this paragraph was unintentional. The Commissioner may require additional information where there is a question whether the delay was unintentional; and (4) Any terminal disclaimer (and fee as set forth in Section 1.20(d)) required pursuant to paragraph (c) of this section. (c) In a design application, a utility application filed before June 8, 1995, or a plant application filed before June 8, 1995, any petition to revive pursuant to this section must be accompanied by a terminal disclaimer and fee as set forth in Section 1.321 dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application. Any terminal disclaimer pursuant to this paragraph must also apply to any patent granted on any continuing application that contains a specific reference under 35 U.S.C. 120, 121, or 365(c) to the application for which revival is sought. The provisions of this paragraph do not apply to lapsed patents. (d) Any request for reconsideration or review of a decision refusing to revive an abandoned application or lapsed patent upon petition filed pursuant to this section, to be considered timely, must be filed within two months of the decision refusing to revive or within such time as set in the decision. Unless a decision indicates otherwise, this time period may be extended under the provisions of Section 1.136. (e) A provisional application, abandoned for failure to timely respond to an Office requirement, may be revived pursuant to this section so as to be pending for a period of no longer than twelve months from its filing date. Under no circumstances will a provisional application be regarded as pending after twelve months from its filing date. 37 CFR 1.181 Petition to the Commissioner. (a) Petition may be taken to the Commissioner: (1) From any action or requirement of any examiner in the ex parte prosecution of an application which is not subject to appeal to the Board of Patent Appeals and Interferences or to the court; (2) In cases in which a statute or the rules specify that the matter is to be determined directly by or reviewed by the Commissioner; and (3) To invoke the supervisory authority of the Commissioner in appropriate circumstances. For petitions in interferences, see Section 1.644. +++ (f) Except as otherwise provided in these rules, any such petition not filed within 2 months from the action complained of, may be dismissed as untimely. The mere filing of a petition will not stay the period for reply to an Examiner's action which may be running against an application, nor act as a stay of other proceedings. +++ I. PETITION TO WITHDRAW HOLDING OF ABANDONMENT A petition to revive an abandoned application (discussed below) should not be confused with a petition from an examiner's holding of abandonment. Where an applicant contends that the application is not in fact abandoned (e.g., there is disagreement as to the sufficiency of the reply, or as to controlling dates), a petition under 37 CFR 1.181(a) requesting withdrawal of the holding of abandonment is the appropriate course of action, and such petition does not require a fee. Where there is no dispute as to whether an application is abandoned (e.g., the applicant's contentions merely involve the cause of abandonment), a petition under 37 CFR 1.137 (accompanied by the appropriate petition fee) is necessary to revive the abandoned application. 37 CFR 1.181(f) provides that, inter alia, except as otherwise provided, any petition not filed within 2 months from the action complained of may be dismissed as untimely. Therefore, any petition (under 37 CFR 1.181) to withdraw the holding of abandonment not filed within 2 months of the mail date of a notice of abandonment (the action complained of) may be dismissed as untimely. 37 CFR 1.181(f). Rather than dismiss an untimely petition to withdraw the holding of abandonment under 37 CFR 1.181(f), the Office may treat an untimely petition to withdraw the holding of abandonment on its merits on the condition that, in any design application, any utility application filed before June 8, 1995, or any plant application filed before June 8, 1995, the petition is accompanied by a terminal disclaimer dedicating to the public a terminal part of the term of any patent granted thereon equivalent to the period between the mail date of the notice of abandonment and the filing date of such petition to withdraw the holding of abandonment. See 37 CFR 1.183 (the Office may suspend or waive the requirements of 37 CFR 1.181(f), subject to such other requirements as may be imposed). The Office may treat an untimely petition to withdraw the holding of abandonment on its merits in a utility or plant application filed on or after June 8, 1995, on the condition that the petition is accompanied by a terminal disclaimer dedicating to the public a terminal part of the term of any patent granted thereon that would extend beyond the date 20 years from the filing date of the application, or the earliest application to which the application specifically refers under 35 U.S.C. 120, 121, or 365(c). In either case, the terminal disclaimer must also apply to any patent granted on any application that claims the benefit of the filing date of the application under 35 U.S.C. 120, 121, or 365(c). Such a terminal disclaimer is not required under 37 CFR 1.137(c) because abandonment of an application is a per se failure to exercise due diligence, and as such, an applicant cannot obtain patent term extension under 35 U.S.C. 154(b) due to prosecution delay caused by abandonment of the application. Where a petition to withdraw the holding of abandonment is granted, the application is considered to never have been abandoned and, as such, the prosecution delay caused by the treatment of the application as abandoned is not considered a per se failure to exercise due diligence. Thus a terminal disclaimer is required to avoid granting patent term extension under 35 U.S.C. 154(b) due to prosecution delay caused by the treatment of the application as abandoned. In any event, where the record indicates that the applicant intentionally delayed the filing of a petition to withdraw the holding of abandonment, the Office may simply dismiss the petition as untimely (37 CFR 1.181(f)) solely on the basis of such intentional delay in taking action in the application without further addressing the merits of the petition. Obviously, intentional delay in seeking the revival of an abandoned application precludes relief under 37 CFR 1.137(a) or (b) (discussed below). II. PETITION TO WITHDRAW HOLDING OF ABANDONMENT BASED ON FAILURE TO RECEIVE OFFICE ACTION In Delgar v. Schulyer, 172 USPQ 513 (D.D.C. 1971), the court decided that the Office should mail a new Notice of Allowance in view of the evidence presented in support of the contention that the applicant's representative did not receive the original Notice of Allowance. Under the reasoning of Delgar, an allegation that an Office action was never received may be considered in a petition to withdraw the holding of abandonment. If adequately supported, the Office may grant the petition to withdraw the holding of abandonment and remail the Office action. That is, the reasoning of Delgar is applicable regardless of whether an application is held abandoned for failure to timely pay the issue fee (35 U.S.C. 151) or for failure to prosecute (35 U.S.C. 133). To minimize costs and burdens to practitioners and the Office, the Office has modified the showing required to establish nonreceipt of an Office action. The showing required to establish nonreceipt of an Office communication must include a statement from the practitioner stating that the Office communication was not received by the practitioner and attesting to the fact that a search of the file jacket and docket records indicates that the Office communication was not received. A copy of the docket record where the nonreceived Office communication would have been entered had it been received and docketed must be attached to and referenced in practitioner's statement. See Notice entitled "Withdrawing the Holding of Abandonment When Office Actions Are Not Received," 1156 O.G. 53 (November 16, 1993). The showing outlined above may not be sufficient if there are circumstances that point to a conclusion that the Office action may have been lost after receipt rather than a conclusion that the Office action was lost in the mail (e.g., if the practitioner has a history of not receiving Office actions). Evidence of nonreceipt of an Office communication or action (e.g ., Notice of Abandonment or an advisory action) other than that action to which reply was required to avoid abandonment would not warrant withdrawal of the holding of abandonment. Abandonment takes place by operation of law for failure to reply to an Office action or timely pay the issue fee, not by operation of the mailing of a Notice of Abandonment. See Lorenz v. Finkl, 333 F.2d 885, 889-90, 142 USPQ 26, 29-30 (CCPA 1964); Krahn v. Commissioner, 15 USPQ2d 1823, 1824 (E.D. Va 1990); In re Application of Fischer, 6 USPQ2d 1573, 1574 (Comm'r Pat. 1988). Two additional procedures are available for reviving an application that has become abandoned due to a failure to reply to an Office Action: (1) a petition under 37 CFR 1.137(a) based upon unavoidable delay; and (2) a petition under 37 CFR 1.137(b) based on unintentional delay. III. PETITIONS TO REVIVE AN ABANDONED APPLICATION, OR ACCEPT LATE PAYMENT OF ISSUE FEE 37 CFR 1.137 provides for the revival of abandoned applications and lapsed patents for the failure: (A) to timely reply to an Office requirement in a provisional application; (B) to timely prosecute in a nonprovisional application; (C) to timely pay the issue fee for a design application; (D) to timely pay the issue fee for a utility or plant application; and (E) to timely pay any outstanding balance of the issue fee (lapsed patents). A petition under 37 CFR 1.137(a) requires: (A) the required reply, unless previously filed; (B) the petition fee as set forth in 37 CFR 1.17(l); (C) a showing to the satisfaction of the Commissioner that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(a) was unavoidable; and (D) any terminal disclaimer required pursuant to 37 CFR 1.137(c). A petition under 37 CFR 1.137(b) requires: (A) the required reply, unless previously filed; (B) the petition fee as set forth in 37 CFR 1.17(m); (C) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional; and (D) any terminal disclaimer required pursuant to 37 CFR 1.137(c). The Commissioner may require additional information where there is a question whether the delay was unintentional. A. Reply Requirement Unlike a petition to withdraw the holding of abandonment, a petition to revive under 37 CFR 1.137 must be accompanied by, inter alia, the required reply. See Ex parte Richardson, 1906 Dec. Comm'r Pat. 83 (1905) ("This Office has no authority to revive a case upon which no action has been taken within [the period for reply], but merely has authority to determine after an action is taken whether the delay in presenting it was unavoidable."). Generally, the required reply is the reply sufficient to have avoided abandonment, had such reply been timely filed. 1. Abandonment for Failure to Pay the Issue Fee While the revival of applications abandoned for failure to timely prosecute and for failure to timely pay the issue fee are incorporated together in 37 CFR 1.137, the statutory provisions for the revival of an application abandoned for failure to timely prosecute and for failure to timely submit the issue fee are mutually exclusive. See Brenner v. Ebbert, 398 F.2d 762, 157 USPQ 609 (D.C. Cir. 1968). 35 U.S.C. 151 authorizes the acceptance of a delayed payment of the issue fee, if the issue fee "is submitted ... and the delay in payment is shown to have been unavoidable." 35 U.S.C. 41(a)(7) likewise authorizes the acceptance of an "unintentionally delayed payment of the fee for issuing each patent." Thus, 35 U.S.C. 41(a)(7) and 151 each require payment of the issue fee as a condition of reviving an application abandoned or patent lapsed for failure to pay the issue fee. Therefore, the filing of a continuing application without payment of the issue fee or any outstanding balance thereof is not an acceptable reply in an application abandoned or patent lapsed for failure to pay the issue fee or any portion thereof. The Notice of Allowance requires the timely payment of the issue fee in effect on the date of its mailing to avoid abandonment of the application. In instances in which there is an increase in the issue fee by the time of payment of the issue fee required in the Notice of Allowance, the Office will mail a notice requiring payment of the balance of the issue fee then in effect. See In re Mills, 12 USPQ2d 1847, 1848 (Comm'r Pat. 1989). The phrase "for failure to pay the issue fee or any portion thereof" applies to those instances in which the applicant fails to pay either the issue fee required in the Notice of Allowance or the balance of the issue fee required in a subsequent notice. In such instances, the reply must be the issue fee then in effect, if no portion of the issue fee was previously submitted, or any outstanding balance of the issue fee then in effect, if a portion of the issue fee was previously submitted. 2. Abandonment for Failure to Reply in a Nonprovisional Application A reply to a non-final action in a nonprovisional application abandoned for failure to prosecute may be either an argument or an amendment under 37 CFR 1.111, whereas a reply under 37 CFR 1.113 to a final action "must include cancellation of, or appeal from the rejection of, each claim so rejected." Accordingly, in a nonprovisional application abandoned for failure to reply to a final action, the reply required for consideration of a petition to revive must be: (A) a Notice of Appeal (and appeal fee); (B) an amendment that cancels all the rejected claims or otherwise prima facie places the application in condition for allowance; or (C) the filing of a continuing application. When a notice of appeal is the reply filed pursuant to 37 CFR 1.137(a)(1) or 1.137(b)(1), the time period under 37 CFR 1.192 for filing the appeal brief will be set by the Commissioner in the decision granting the petition. In those situations where abandonment occurred because of the failure to file an appeal brief, the reply required pursuant to 37 CFR 1.137(a)(1) or 1.137(b)(1) must be either: (A) an appeal brief in compliance with 37 CFR 1.192(c) (and appeal brief fee); or (B) the filing of a continuing application. In a nonprovisional application abandoned for failure to prosecute, the filing of a continuing application is a permissive reply. An applicant in a nonprovisional application abandoned for failure to prosecute may file a reply under 37 CFR 1.111 to a non-final Office action or a reply under 37 CFR 1.113 (e.g., Notice of Appeal) to a final Office action, or may simply file a continuing application as the required reply. The Office, however, may require the filing of a continuing application (or request for further examination pursuant to 37 CFR 1.129(a)) to meet the reply requirement of 37 CFR 1.137(a)(1) (or 37 CFR 1.137(b)(1)) where, under the circumstances of the application, treating a reply under 37 CFR 1.111 or 1.113 would place an inordinate burden on the Office. Exemplary circumstances of when treating a reply under 37 CFR 1.111 or 1.113 may place an inordinate burden on the Office are where: (A) an application has been abandoned for an inordinate period of time; (B) an application file contains multiple or conflicting replies to the last Office action; and (C) the reply or replies submitted under 37 CFR 1.137(a)(1) (or 37 CFR 1.137(b)(1)) are questionable as to compliance with 37 CFR 1.111 or 1.113. An application subject to a final action in which a proposed amendment under 37 CFR 1.116 is filed as the required reply will normally be routed by the Office of Petitions to the examining group to determine whether a proposed amendment places the application in condition for allowance prior to granting any petition to revive such application. The patent examiner is instructed that if the reply places the application in condition for allowance, the patent examiner should write in the margin of the reply "OK to enter upon revival." If, on the other hand, the reply would not place the application in condition for allowance, the patent examiner is instructed to complete form PTOL-303 and return the unmailed form to the Office of Petitions with the application. If the petition is otherwise grantable and the patent examiner indicates that the reply places the application in condition for allowance, the petition will be granted. If such an amendment does not place the application into condition for allowance, the petition will not be granted. A copy of the form PTOL-303 is not mailed with the decision on the petition but merely serves as an advisory to the Office of Petitions regarding the decision of the patent examiner on the amendment after final rejection. The grant of a petition under 37 CFR 1.137 is not a determination that any reply under 37 CFR 1.111 is complete. Where the proposed reply is to a non-final Office action, the petition may be granted if the reply appears to be bona fide. After revival of the application, the patent examiner may, upon more detailed review, determine that the reply is lacking in some respect. In this limited situation, the patent examiner should send out a letter giving a 1-month shortened statutory period under 37 CFR 1.135(c) for correction of the error or omission. Extensions of time under 37 CFR 1.136(a) are permitted. If applicant does not correct the omission within the shortened statutory period (including any extension), the application is again abandoned. B. Petition Fee Requirement 35 U.S.C. 41(a)(7) provides that a petition for the revival of an unintentionally abandoned application or for the unintentionally delayed payment of the issue fee must be accompanied by a petition fee of $820 (current fee is set forth in 37 CFR 1.17(m)), unless the petition is filed under 35 U.S.C. 133 or 151 (on the basis of unavoidable delay), in which case the fee is $78 (current fee is set forth in 37 CFR 1.17(l)). Thus, unless the circumstances warrant the withdrawal of the holding of abandonment (i.e ., it is determined that the application is not properly held abandoned), the payment of a petition fee to obtain the revival of an abandoned application is a statutory prerequisite to revival of the abandoned application, and cannot be waived. In addition, the phrase "[o]n filing" in 35 U.S.C. 41(a)(7) means that the petition fee is required for the filing (and not merely the grant) of a petition under 37 CFR 1.137. See H.R. Rep. No. 542, 97th Cong., 2d Sess. 6 (1982), reprinted in 1982 U.S.C.C.A.N. 770 ("[t]he fees set forth in this section are due on filing the petition"). Therefore, the Office: (A) will not refund the petition fee required by 37 CFR 1.17(l) or 1.17(m), regardless of whether the petition under 37 CFR 1.137 is dismissed or denied; and (B) will not reach the merits of any petition under 37 CFR 1.137 lacking the requisite petition fee. The phrase "unless the petition is filed under [35 U.S.C.] 133 or 151" signifies that petitions to revive filed on the basis of "unavoidable" delay (under 35 U.S.C. 133 or 151) are a subset of petitions to revive filed on the basis of unintentional delay. That is, "unavoidable" delay and "unintentional" delay are not alternatives; "unavoidable" delay is the epitome of "unintentional" delay. Any petition to revive an abandoned application or lapsed patent must meet the minimal "unintentional" delay threshold, and an applicant need only pay the fee specified in 37 CFR 1.17(l) (rather than the fee specified in 37 CFR 1.17(m)) if the petition is also accompanied by an adequate showing that the entire delay in filing the required reply, from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(a), was unavoidable. C. Unintentional and Unavoidable Delay 1. Unintentional Delay The legislative history of Public Law 97-247, Section 3, 96 Stat. 317 (1982), reveals that the purpose of 35 U.S.C. 41(a)(7) is to permit the Office to have more discretion than in 35 U.S.C. 133 or 151 to revive abandoned applications in appropriate circumstances, but places a limit on this discretion stating that "[u]nder this section a petition accompanied by [the requisite fee] would not be granted where the abandonment or the failure to pay the fee for issuing the patent was intentional as opposed to being unintentional or unavoidable." H.R. Rep. No. 542, 97th Cong., 2d Sess. 6-7 (1982), reprinted in 1982 U.S.C.C.A.N. 770-71. A delay resulting from a deliberately chosen course of action on the part of the applicant is not an "unintentional" delay within the meaning of 37 CFR 1.137(b). Where the applicant deliberately permits an application to become abandoned (e.g., due to a conclusion that the claims are unpatentable, that a rejection in an Office action cannot be overcome, or that the invention lacks sufficient commercial value to justify continued prosecution), the abandonment of such application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as "unintentional" within the meaning of 37 CFR 1.137(b). See In re Application of G, 11 USPQ2d 1378, 1380 (Comm'r Pat. 1989). An intentional course of action is not rendered unintentional when, upon reconsideration, the applicant changes his or her mind as to the course of action that should have been taken. See In re Maldague, 10 USPQ2d 1477, 1478 (Comm'r Pat. 1988). A delay resulting from a deliberately chosen course of action on the part of the applicant does not become an "unintentional" delay within the meaning of 37 CFR 1.137(b) because: (A) the applicant does not consider the claims to be patentable over the references relied upon in an outstanding Office action; (B) the applicant does not consider the allowed or patentable claims to be of sufficient breadth or scope to justify the financial expense of obtaining a patent; (C) the applicant does not consider any patent to be of sufficient value to justify the financial expense of obtaining the patent; (D) the applicant does not consider any patent to be of sufficient value to maintain an interest in obtaining the patent; or (E) the applicant remains interested in eventually obtaining a patent, but simply seeks to defer patent fees and patent prosecution expenses. Likewise, a change in circumstances that occurred subsequent to the abandonment of an application does not render "unintentional" the delay resulting from a previous deliberate decision to permit an application to be abandoned. These matters simply confuse the question of whether there was a deliberate decision not to continue the prosecution of an application with why there was a deliberate decision not to continue the prosecution of an application. Form PTO/SB/64 may be used to file a petition for revival of an unintentionally abandoned application. Form PTO/SB/64. Petition for Revival of an Application for Patent Abandoned Unintentionally under 37 CFR 1.137(b)[GRAPHIC] [GRAPHIC] 2. Unavoidable Delay As discussed above, "unavoidable" delay is the epitome of "unintentional" delay. Thus, an intentional delay precludes revival under 37 CFR 1.137(a) ("unavoidable" delay) or 37 CFR 1.137(b) ("unintentional" delay). See Maldague, 10 USPQ2d at 1478. Decisions on reviving abandoned applications on the basis of "unavoidable" delay have adopted the reasonably prudent person standard in determining if the delay was unavoidable: The word "unavoidable" . . . is applicable to ordinary human affairs, and requires no more or greater care or diligence than is generally used and observed by prudent and careful men in relation to their most important business. It permits them in the exercise of this care to rely upon the ordinary and trustworthy agencies of mail and telegraph, worthy and reliable employees, and such other means and instrumentalities as are usually employed in such important business. If unexpectedly, or through the unforeseen fault or imperfection of these agencies and instrumentalities, there occurs a failure, it may properly be said to be unavoidable, all other conditions of promptness in its rectification being present. In re Mattullath, 38 App. D.C. 497, 514-15 (1912)(quoting Pratt, 1887 Dec. Comm'r Pat. 31, 32-33 (1887)); see also Winkler v. Ladd, 221 F. Supp. 550, 552, 138 USPQ 666, 667-68 (D.D.C. 1963), aff'd, 143 USPQ 172 (D.C. Cir. 1963); Ex parte Henrich, 1913 Dec. Comm'r Pat. 139, 141 (1913). In addition, decisions on revival are made on a "case-by-case basis, taking all the facts and circumstances into account." Smith v. Mossinghoff, 671 F.2d 533, 538, 213 USPQ 977, 982 (D.C. Cir. 1982). Finally, a petition cannot be granted where a petitioner has failed to meet his or her burden of establishing that the delay was "unavoidable." Haines v. Quigg, 673 F. Supp. 314, 316-17, 5 USPQ2d 1130, 1131-32 (N.D. Ind. 1987). A delay resulting from an error (e.g., a docketing error) on the part of an employee in the performance of a clerical function may provide the basis for a showing of "unavoidable" delay, provided it is shown that: (A) the error was the cause of the delay at issue; (B) there was in place a business routine for performing the clerical function that could reasonably be relied upon to avoid errors in its performance; and (C) the employee was sufficiently trained and experienced with regard to the function and routine for its performance that reliance upon such employee represented the exercise of due care. See In re Egbers, 6 USPQ2d 1869, 1872 (Comm'r Pat. 1988), rev'd on other grounds sub nom., Theodor Groz & Sohne & Ernst Bechert Nadelfabrik KG v. Quigg, 10 USPQ2d 1787 (D.D.C. 1988); In re Katrapat, 6 USPQ2d 1863, 1867-68 (Comm'r Pat. 1988). For example, where an application becomes abandoned as a consequence of a change of correspondence address (the Office action being mailed to the old, uncorrected address and failing to reach the applicant in sufficient time to permit a timely reply) an adequate showing of "unavoidable" delay will require a showing that due care was taken to adhere to the requirement for prompt notification in each concerned application of the change of address (see MPEP Section 601.03), and must include an adequate showing that a timely notification of the change of address was filed in the application concerned, and in a manner reasonably calculated to call attention to the fact that it was a notification of a change of address. The following do not constitute proper notification of a change in correspondence address: (A) the mere inclusion, in a paper filed in an application for another purpose, of an address differing from the previously provided correspondence address, without mention of the fact that an address change was being made; (B) the notification on a paper listing plural applications as being affected (except as provided for under the Customer Number practice - see MPEP Section 403); or (C) the lack of notification, or belated notification, to the Patent and Trademark Office of the change in correspondence address. Delay resulting from the lack of knowledge or improper application of the patent statute, rules of practice or the MPEP, however, does not constitute "unavoidable" delay. See Haines, 673 F. Supp. at 317, 5 USPQ2d at 1132; Vincent v. Mossinghoff, 230 USPQ 621, 624 (D.D.C. 1985); Smith v. Diamond, 209 USPQ 1091 (D.D.C. 1981); Potter v. Dann, 201 USPQ 574 (D.D.C. 1978); Ex parte Murray, 1891 Dec. Comm'r Pat. 130, 131 (1891). For example, as 37 CFR 1.116 and 1.135(b) are manifest that proceedings concerning an amendment after final rejection will not operate to avoid abandonment of the application in the absence of a timely and proper appeal, a delay is not "unavoidable" when the applicant simply permits the maximum extendable statutory period for reply to a final Office action to expire while awaiting a notice of allowance or other action. Likewise, as a "reasonably prudent person" would file papers or fees in compliance with 37 CFR 1.8 or 1.10 to ensure their timely filing in the PTO, as well as preserve adequate evidence of such filing, a delay caused by an applicant's failure to file papers or fees in compliance with 37 CFR 1.8 and 1.10 does not constitute "unavoidable" delay. See Krahn, 15 USPQ2d at 1825. Finally, a delay caused by an applicant's lack of knowledge or improper application of the patent statute, rules of practice or the MPEP is not rendered "unavoidable" due to: (A) the applicant's reliance upon oral advice from PTO employees; or (B) the PTO's failure to advise the applicant of any deficiency in sufficient time to permit the applicant to take corrective action. See In re Sivertz, 227 USPQ 255, 256 (Comm'r Pat. 1985). 35 U.S.C. 133 and 151 each require a showing that the "delay" was "unavoidable," which requires not only a showing that the delay which resulted in the abandonment of the application was unavoidable, but also a showing of unavoidable delay until the filing of a petition to revive. See In re Application of Takao, 17 USPQ2d 1155 (Comm'r Pat. 1990). The burden of continuing the process of presenting a grantable petition in a timely manner likewise remains with the applicant until the applicant is informed that the petition is granted. Id. at 1158. Thus, an applicant seeking to revive an "unavoidably" abandoned application must cause a petition under 37 CFR 1.137(a) to be filed without delay (i.e ., promptly upon becoming notified, or otherwise becoming aware, of the abandonment of the application). An applicant who fails to file a petition under 37 CFR 1.137(a) "promptly" upon becoming notified, or otherwise becoming aware, of the abandonment of the application will not be able to show that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(a) was unavoidable. The removal of the language in 37 CFR 1.137(a) requiring that any petition thereunder be "promptly filed after the applicant is notified of, or otherwise becomes aware of, the abandonment" should not be viewed as: (A) permitting an applicant, upon becoming notified, or otherwise becoming aware, of the abandonment of the application, to delay the filing of a petition under 37 CFR 1.137(a); or (B) changing (or modifying) the result in In re Application of S, 8 USPQ2d 1630 (Comm'r Pat. 1988), in which a petition under 37 CFR 1.137(a) was denied due to the applicant's deliberate deferral in filing a petition under 37 CFR 1.137. An applicant who deliberately chooses to delay the filing of a petition under 37 CFR 1.137 (as in Application of S, 8 USPQ2d at 1632) will not be able to show that "the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to [ 37 CFR 1.137(a)] was unavoidable" or even make an appropriate statement that "the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to [ 37 CFR 1.137(b)] was unintentional." The dismissal or denial of a petition under 37 CFR 1.137(a) does not preclude an applicant from obtaining relief pursuant to 37 CFR 1.137(b) on the basis of unintentional delay (unless the decision dismissing or denying the petition under 37 CFR 1.137(a) indicates otherwise). In such an instance, a petition under 37 CFR 1.137(b) may be filed accompanied by the fee set forth in 37 CFR 1.17(m), the required reply, a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional, and any terminal disclaimer required by 37 CFR 1.137(c). Form PTO/SB/61 may be used to file a petition for revival of an unavoidably abandoned application. Form PTO/SB/61. Petition for Revival of an Application for Patent Abandoned Unavoidably under 37 CFR 1.137(a)[GRAPHIC] [GRAPHIC] [GRAPHIC] D. Delay Until the Filing of a Grantable Petition There are three periods to be considered during the evaluation of a petition under 37 CFR 1.137: (A) the delay in reply that originally resulted in the abandonment; (B) the delay in filing an initial petition pursuant to 37 CFR 1.137 to revive the application; and (C) the delay in filing a grantable petition pursuant to 37 CFR 1.137 to revive the application. As discussed above, the abandonment of an application is considered to be a deliberately chosen course of action, and the resulting delay cannot be considered as "unintentional" within the meaning of 37 CFR 1.137(b), where the applicant deliberately permits the application to become abandoned. See Application of G, 11 USPQ2d at 1380. Likewise, where the applicant deliberately chooses not to seek or persist in seeking the revival of an abandoned application, or where the applicant deliberately chooses to delay seeking the revival of an abandoned application, the resulting delay in seeking revival of the abandoned application cannot be considered as "unintentional" within the meaning of 37 CFR 1.137(b). An intentional delay resulting from a deliberate course of action chosen by the applicant is not affected by: (A) the correctness of the applicant's (or applicant's representative's) decision to abandon the application or not to seek or persist in seeking revival of the application; (B) the correctness or propriety of a rejection, or other objection, requirement, or decision by the Office; or (C) the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision not to seek or persist in seeking revival. Obviously, delaying the revival of an abandoned application, by a deliberately chosen course of action, until the industry or a competitor shows an interest in the invention is the antithesis of an "unavoidable" or "unintentional" delay. An intentional abandonment of an application, or an intentional delay in seeking the revival of an abandoned application, precludes a finding of unavoidable or unintentional delay pursuant to 37 CFR 1.137. See Maldague, 10 USPQ2d at 1478. The Office does not generally question whether there has been an intentional or otherwise impermissible delay in filing an initial petition pursuant to 37 CFR 1.137(a) or (b), when such petition is filed: (A) within 3 months of the date theapplicant is first notified that the application is abandoned; and (2) within 1 year of the date of abandonment of the application. Thus, an applicant seeking revival of an abandoned application is advised to file a petition pursuant to 37 CFR 1.137 within 3 months of the first notification that the application is abandoned to avoid the question of intentional delay being raised by the Office (or by third parties seeking to challenge any patent issuing from the application). Where a petition pursuant to 37 CFR 1.137(a) or (b) is not filed within 3 months of the date the applicant is first notified that the application is abandoned, the Office will consider there to be a question as to whether the delay was unavoidable or unintentional. In such instances, the Office will require: (A) a showing as to how the delay between the date the applicant was first notified that the application was abandoned and the date a 37 CFR 1.137(a) petition was filed was "unavoidable"; or (B) further information as to the cause of the delay between the date the applicant was first notified that the application was abandoned and the date a 37 CFR 1.137(b) petition was filed, and how such delay was "unintentional." To avoid delay in the consideration of the merits of a petition under 37 CFR 1.137(a) or (b) in instances in which such petition was not filed within 3 months of the date the applicant was first notified that the application was abandoned, applicants should include a showing as to how the delay between the date the applicant was first notified by the Office that the application was abandoned and the filing of a petition under 37 CFR 1.137 was (A) "unavoidable" in a petition under 37 CFR 1.137(a); or (B) "unintentional" in a petition under 37 CFR 1.137(b). Where a petition pursuant to 37 CFR 1.137(a) or (b) is not filed within 1 year of the date of abandonment of the application (note that abandonment takes place by operation of law, rather than by the mailing of a Notice of Abandonment), the Office will require: (A) further information as to when the applicant (or the applicant's representative) first became aware of the abandonment of the application; and (B) a showing as to how the delay in discovering the abandoned status of the application occurred despite the exercise of due care or diligence on the part of the applicant (or applicant's representative) (see Pratt, 1887 Dec. Comm'r Pat. at 32-33). To avoid delay in the consideration of the merits of a petition under 37 CFR 1.137(a) or (b) in instances in which such petition was not filed within 1 year of the date of abandonment of the application, applicants should include: (A) the date that the applicant first became aware of the abandonment of the application; and (B) a showing as to how the delay in discovering the abandoned status of the application occurred despite the exercise of due care or diligence on the part of the applicant. In either instance, applicant's failure to carry the burden of proof to establish that the "entire" delay was "unavoidable" or "unintentional" may lead to the denial of a petition under 37 CFR 1.137(a) or 37 CFR 1.137(b), regardless of the circumstances that originally resulted in the abandonment of the application. E. Party Whose Delay is Relevant The question under 37 CFR 1.137 is whether the delay on the part of the party having the right or authority to reply to avoid abandonment (or not reply) was unavoidable or unintentional. When the applicant assigns the entire right, title, and interest in an invention to a third party (and thus does not retain any legal or equitable interest in the invention), the applicant's delay is irrelevant in evaluating whether the delay was unavoidable or even unintentional. See Kim v. Quigg, 718 F. Supp. 1280, 1284, 12 USPQ2d 1604, 1607-08 (E.D. Va. 1989). When an applicant assigns the application to a third party (e.g., the inventor/applicant's employer), and the third party decides not to file a reply to avoid abandonment, the applicant's actions, inactions or intentions are irrelevant under 37 CFR 1.137, unless the third party has reassigned the application to the applicant prior to the due date for the reply. Id. Likewise, where the applicant permits a third party (whether a partial assignee, licensee, or other party) to control the prosecution of an application, the third party's decision whether or not to file a reply to avoid abandonment is binding on the applicant. See Winkler, 221 F. Supp. at 552, 138 USPQ at 667. Where an applicant enters an agreement with a third party for the third party to take control of the prosecution of an application, the applicant will be considered to have given the third party the right and authority to prosecute the application to avoid abandonment (or not prosecute), unless, by the express terms of the contract between applicant and the third party, the third party is conducting the prosecution of the application for the applicant solely in a fiduciary capacity. See Futures Technology Ltd. v. Quigg, 684 F. Supp. 430, 431, 7 USPQ2d 1588, 1589 (E.D. Va. 1988). Otherwise, the applicant will be considered to have given the third party unbridled discretion to prosecute (or not prosecute) the application to avoid abandonment, and will be bound by the actions or inactions of such third party. F. Burden of Proof to Establish Unavoidable or Unintentional Delay 37 CFR 1.137(a)(3) requires a showing to the satisfaction of the Commissioner that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(a) was unavoidable. Therefore, the Office will require the applicant in every petition under 37 CFR 1.137(a) to carry the burden of proof to establish that the delay from the due date for the reply until the filing of a grantable petition was unavoidable. See Haines, 673 F. Supp. at 316-17, 5 USPQ2d at 1131-32. 37 CFR 1.137(b)(3) requires that a petition under 37 CFR 1.137(b) must be accompanied by a statement that the entire delay in providing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional, but also provides that "[t]he Commissioner may require additional information where there is a question whether the delay was unintentional." While the Office will generally require only the statement that the entire delay in providing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional, the Office may require an applicant to carry the burden of proof to establish that the delay from the due date for the reply until the filing of a grantable petition was unintentional within the meaning of 35 U.S.C. 41(a)(7) and 37 CFR 1.137(b) where there is a question whether the entire delay was unintentional. See Application of G, 11 USPQ2d at 1380. G. Terminal Disclaimer Requirement 37 CFR 1.137(c) requires that a petition under either 37 CFR 1.137(a) or 1.137(b) be accompanied by a terminal disclaimer (and fee), regardless of the period of abandonment, in: (A) a design application; (B) a nonprovisional utility application filed before June 8, 1995; or (C) a nonprovisional plant application filed before June 8, 1995. The terminal disclaimer must dedicate to the public a terminal part of the term of any patent granted thereon equivalent to the period of abandonment of the application, and must also apply to any patent granted on any continuing application entitled under 35 U.S.C. 120 to the benefit of the filing date of the application for which revival is sought. The terminal disclaimer requirement of 37 CFR 1.137(c) does not apply to lapsed patents. The filing of a terminal disclaimer is not a substitute for unavoidable or unintentional delay. See Application of Takao, 17 USPQ2d at 1159. The requirement that the entire delay have been unavoidable (37 CFR 1.137(a)) or at least unintentional (37 CFR 1.137(b)) is distinct from the requirement for a terminal disclaimer. Therefore, the filing of a terminal disclaimer cannot excuse an intentional delay in filing a petition or renewed petition to revive an abandoned application. Likewise, an unavoidable or unintentional delay in filing a petition or renewed petition to revive an abandoned application will not warrant waiver of the terminal disclaimer requirement of 37 CFR 1.137(c). In the event that an applicant considers the requirement for a terminal disclaimer to be inappropriate under the circumstances of the application at issue, the applicant should file a petition under 37 CFR 1.183 (and petition fee) to request a waiver of this requirement of 37 CFR 1.183. Such a petition may request waiver of this requirement in toto, or to the extent that such requirement exceeds the period considered by applicant as the appropriate period of disclaimer. The grant of such a petition, however, is strictly limited to situations wherein applicant has made a showing of an "extraordinary situation" in which "justice requires" the requested relief. Such situations are namely when: (A) the abandonment of the application caused no actual delay in prosecution (e.g., application revived solely for copendency with a continuing application whose prosecution was unaffected by the abandonment, or an application awaiting decision by the Board of Appeals and Interferences during period of abandonment); or (B) the patent term is otherwise capped by the 20-year patent term as set forth in 35 U.S.C. 154(b) (e.g ., revival of an application is sought solely for purposes of copendency with an application (other than for a design patent) filed on or after June 8, 1995, or the 20-year patent term provided by 35 U.S.C. 154(b) would be longer than 17 years from grant less the period of abandonment). Forms PTO/SB/62 and PTO/SB/63 may be used when filing a terminal disclaimer in accordance with 37 CFR 1.137(c). Form PTO/SB/62. Terminal Disclaimer to Accompany Petition (Period Specified)[GRAPHIC] Form PTO/SB/63. Terminal Disclaimer to Accompany Petition (Period of Disclaimer to be Completed by Petitions Examiner)[GRAPHIC] H. Request For Reconsideration 37 CFR 1.137(d) requires that any request for reconsideration or review of a decision refusing to revive an abandoned application or lapsed patent must be filed within 2 months of the decision refusing to revive or within such time as set in the decision. 37 CFR 1.137(d) further provides that, unless a decision indicates otherwise, this time period for requesting reconsideration or review may be extended under the provisions of 37 CFR 1.136. 37 CFR 1.137(d) specifies a time period within which a renewed petition pursuant to 37 CFR 1.137 must be filed to be considered timely. Where an applicant files a renewed petition, request for reconsideration, or other petition seeking review of a prior decision on a petition pursuant to 37 CFR 1.137 outside the time period specified in 37 CFR 1.137(d), the Office may require, inter alia, a specific showing as to how the entire delay was "unavoidable" (37 CFR 1.137(a)) or "unintentional" (37 CFR 1.137(b)). As discussed above, a delay resulting from the applicant deliberately choosing not to persist in seeking the revival of an abandoned application cannot be considered "unavoidable" or "unintentional" within the meaning of 37 CFR 1.137, and the correctness or propriety of the decision on the prior petition pursuant to 37 CFR 1.137, the correctness of the applicant's (or the applicant's representative's) decision not to persist in seeking revival, the discovery of new information or evidence, or other change in circumstances subsequent to the abandonment or decision to not persist in seeking revival are immaterial to such intentional delay caused by the deliberate course of action chosen by the applicant. I. Provisional Applications 37 CFR 1.137 is applicable to a provisional application abandoned for failure to reply to an Office requirement. A petition under 37 CFR 1.137(a) or (b) must be accompanied by any outstanding reply to an Office requirement, since 37 CFR 1.137(a)(1) and 1.137(b)(1) permit the filing of a continuing application in lieu of the required reply only in a nonprovisional application. 35 U.S.C. 111(b)(5) provides that a provisional application shall be regarded as abandoned 12 months after its filing date and shall not be subject to revival thereafter. Thus, 37 CFR 1.137(e) provides that a provisional application "may be revived pursuant to this section so as to be pending for a period of no longer than twelve months from its filing date" and that "[u]nder no circumstances will a provisional application be regarded as pending after twelve months from its filing date." A provisional application may be abandoned prior to 12 months from its filing date for failure to reply to an Office requirement (e.g ., failure to submit the filing fee and/or cover sheet). Applicant may petition to have an abandoned provisional application revived as a pending provisional application for a period of no longer than 12 months from the filing date of the provisional application where the delay was unavoidable or unintentional. It would be permissible to file a petition for revival later than 12 months from the filing date of the provisional application but only to revive the application for the 12-month period following the filing of the provisional application. Thus, even if the petition were granted to establish the pendency up to the end of the 12-month period, the provisional application would not be considered pending after 12 months from its filing date. ---SECTION---711.03(d) Examiner's Statement on Petition To Set Aside Examiner's Holding 37 CFR 1.181 states that the examiner "may be directed by the Commissioner to furnish a written statement within a specific time setting forth the reasons for his or her decision upon the matters averred in the petition, supplying a copy thereof to the petitioner." Unless requested, however, such a statement should not be prepared. See MPEP Section 1002.01. ---SECTION---711.04 Disposition of Abandoned Applications 37 CFR 1.14(b) states that "Complete applications (Section 1.51(a)) which are abandoned may be destroyed and hence may not be available for access or copies as permitted by paragraph (a)(3)(iv) of this section after 20 years from their filing date, except those to which particular attention has been called and which have been marked for preservation." As explained in MPEP Section 1302.07, a retention label is used to indicate applications not to be destroyed. ---SECTION---711.04(a) Pulling and Forwarding Abandoned Applications The files of abandoned applications are pulled and forwarded to the Files Repository on a biweekly basis 1 month after the full 6-month statutory period has expired. However, the date of abandonment is after midnight of the date on which the set shortened statutory period, including any extensions under 37 CFR 1.136, expired. The applications should be carefully scrutinized by the appropriate examiner to verify that they are actually abandoned. A check should be made of files containing a decision of the Board of Patent Appeals and Inteferences for the presence of allowed claims to avoid their being erroneously sent to the Files Repository. Although the abandoned files are not pulled until the maximum permissible period for which an extension of time under 37 CFR 1.136(a) plus 1 month has expired, the date of the abandonment is after midnight of the date the period for reply actually expired. This is normally the end of the 3 month shortened statutory period. ---SECTION---711.04(b) Ordering of Patented and Abandoned Files In examination of an application it is sometimes necessary to inspect the application papers of a previously patented or abandoned application. It is always necessary to do so in the examination of a reissue application. Recently patented and abandoned files are stored at the Files Repository located near the other PTO buildings in Crystal City (Arlington, VA). Older files are housed in warehouses located off site (outside of Crystal City). Patented and abandoned files are ordered by means of a PALM video display transaction. To place such an order, the examiner is required to input his/her PALM location code, employee number, and patent number(s) and/or application number(s) of the file(s) that are needed. After transmission of the request transaction by the examiner, a "response" screen appears on the video display terminal which informs him/her of the status of the request for each file. The examiner is informed that the request is: (A) accepted; (B) accepted, but for which the file is stored at a warehouse off site (in which case delivery time is increased); (C) not accepted since the file is not located at the repository or warehouse; (D) not accepted since a previous request for the file has not yet been filled; or (E) not accepted since the patent or application number inputted is not valid. Periodically each day, personnel at the Files Repository perform a PALM print transaction which produces a list of all accepted requests in patent number order and, for requests for abandoned files, in application number order. The printed record of each request is detached from the list when its associated file is found. It is then stapled to it. Throughout the day, periodic deliveries of files are made directly to the offices of their requestors by Files Repository personnel. Upon delivery of files at the various locations, files that are ready to be returned to the repository are picked up. With the exception of certain older files, the drawings of patented and abandoned files, if any, are now stored within their respective application file wrappers. Since it is desired not to separate one from the other, both the file and its drawings are delivered when a file is ordered. ---SECTION---711.04(c) Notifying Applicants of Abandonment The Patent Examining Corps currently mails to the correspondence address of record, a Notice of Abandonment form PTOL-1432 in all applications which become abandoned in the Corps for failure to prosecute. However, in no case will mere failure to receive a notice of abandonment affect the status of an abandoned application. This procedure should enable applicants to take appropriate and diligent action to reinstate an application inadvertently abandoned for failure to timely reply to an official communication. In most cases, a petition to revive under 37 CFR 1.137 will be the appropriate remedy. It may be that a reply to the Office action was mailed to the Office with a certificate of mailing declaration as a part thereof (MPEP Section 512) but was not received in the Office. In this instance, adequate relief may be available by means of a petition to withdraw the holding of abandonment. In any instance, if action is not taken promptly after receiving the notice of abandonment, appropriate relief may not be granted. If a lack of diligent action is predicated on the contention that neither the Office action nor the notice of abandonment was received, one may presume that there is a problem with the correspondence address of record. Accordingly, attention is directed to MPEP Section 402 and Section 601.03 dealing with changes of address. In essence, it is imperative that a paper notifying the Office of a change of address be filed promptly in each application in which the correspondence address is to be changed (except as provided for under Customer Number practice - see MPEP Section 403). ---SECTION---711.05 Letter of Abandonment Received After Application is Allowed Receipt of a letter of abandonment while an application is allowed is acknowledged by the Publishing Division. An express abandonment arriving after the issue fee has been paid will not be accepted without a showing of one of the reasons indicated in 37 CFR 1.313(b), or else a showing under 37 CFR 1.183 justifying suspension of 37 CFR 1.313. ---SECTION---711.06 Abstracts, Abbreviatures, and Defensive Publications Abstracts were prepared and published in accordance with the Notice of January 25, 1949, 619 O.G. 258. Each abstract includes a summary of the disclosure of the abandoned application, and in applications having drawings, a figure of the drawing. The publication of such abstracts was discontinued in 1953. ABBREVIATURES Abbreviatures were prepared and published in accordance with the procedure indicated in the Notice of October 13, 1964, 808 O.G. 1. Each abbreviature contains a specific portion of the disclosure of the abandoned application, preferably a detailed representative claim, and, in applications having drawings, a figure of the drawing. The publication of such abbreviatures was discontinued in 1965. DEFENSIVE PUBLICATIONS The Defensive Publication Program, which provided for the publication of the abstract of the technical disclosure of a pending application if the applicant waived his or her rights to an enforceable patent, was removed from the rules effective May 8, 1985, in view of the applicant's ability to obtain a Statutory Invention Registration. An application was laid open for public inspection laid open under the Defensive Publication Program and the applicant provisionally abandoned the application, retaining rights to an interference for a limited period of 5 years from the earliest effective U.S. filing date. The defensive publication of an application precluded a continuing application (divisional, continuation-in-part, or continuation) filed under 35 U.S.C. 120 from being entitled to the benefit of the filing date of the defensively published application unless a continuing application was filed within 30 months after the earliest effective U.S. Filing date. Where a similar application was not filed until after expiration of the 30month period, the application was examined, but it was not entitled to claim the benefit of the earlier filing date of the defensive publication application. If a first continuing application was filed within 30 months from the earliest U.S. effective filing date of the application published under the Defensive Publication Program, later copending continuing applications (such as divisions if restriction is required during the prosecution of the first continuing application) were not barred and could be filed during the pendency of the first continuing application, even though beyond the 30 month period, without loss of the right to claim the benefit of the filing date of the Defensive Publication application. The Defensive Publication Abstract and a selected figure of the drawing, if any, were published in the Official Gazette. Defensive Publication Search Copies, containing the defensive publication abstract and suitable drawings, if any, were provided for the application file, the Patent Search Room and the examiner's search files. The defensive publication application files are maintained in the File Information Unit (Record Room). Defensive Publication Number Distinct numbers are assigned to all Defensive Publications published December 16, 1969 through October 1980, for example. [GRAPHIC] For Defensive Publications published on and after November 4, 1980, a different numbering system is used. The revised numbering system is as follows: [GRAPHIC] Defensive Publications are included in subclass lists and subscription orders. The distinct numbers are used for all official reference and document copy requirements. A conversion table from the application serial number to the distinct number for all Defensive Publications published before December 16, 1969 appears at 869 O.G. 687. ---SECTION---711.06(a) Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References It is important that abstracts, abbreviatures, and defensive publications (O.G. Defensive Publication and Defensive Publication Search Copy) be referred to as publications. These printed publications are cited as prior art under 35 U.S.C. 102(a) or 102(b) effective from the date of publication in the Official Gazette. See Ex parte Osmond, 191 USPQ 334 (Bd. App. 1973) and In re Osmond, 191 USPQ 340 (Bd. App. 1976). An application or portion thereof from which an abstract, abbreviature or defensive publication has been prepared, in the sense that the application is evidence of prior knowledge, may be used as a reference under 35 U.S.C.102(a), effective from the actual date of filing in the United States. These publications may be used alone or in combination with other prior art in rejecting claims under 35 U.S.C. 102 and 103. Defensive Publications are listed with "U.S. Patent Documents." Abstracts and Abbreviatures are listed under "Other References" in the citation thereof as follows: (A) Abstracts and Abbreviatures Brown, (abstract or abbreviature) of Serial No. ........, filed ............., published in O.G. ........., on ........, (list classification). (B) Applications or designated portions thereof, abstracts, abbreviatures, and defensive publications Jones, Application Serial No. ........, filed ............., laid open to public inspection on ............... as noted at .......... O.G. (portion of application relied on), (list classification, if any). ---SECTION---713 Interviews The personal appearance of an applicant, attorney, or agent before the examiner or a telephone conversation or video conference between such parties presenting matters for the examiner's consideration is considered an interview. ---SECTION---713.01 General Policy, How Conducted 37 CFR 1.133 Interviews. (a) Interviews with examiners concerning applications and other matters pending before the Office must be had in the examiners' rooms at such times, within office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Commissioner. Interviews for the discussion of the patentability of pending applications will not be had before the first official action thereon. Interviews should be arranged for in advance. (b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in Section Section 1.111 and 1.135. Interviews are permissible on any working day except during periods of overtime work. VIDEO CONFERENCE CENTER In the interest of providing better service to its customers, the Patent and Trademark Office (PTO) has established a Video Conference Center (VCC) to expedite patent and trademark prosecution. The VCC is presently administered by the Patent Academy and is available for authorized official business during normal business hours (8:30 AM - 5:00 PM, EST). The VCC equipment includes a high resolution document camera, direct computer input, VCR display capability, and a high speed, high resolution G-4 facsimile machine. The Patent and Trademark Depository Library Program office maintains a current list of all the off-site locations where a video conference may be held. At this time, use of the VCC will be limited to our partnership Patent and Trademark Depository Libraries (PTDLs) located at Sunnyvale, Calif. and the Great Lakes Patent and Trademark Center at the Detroit Public Library, which have duplicate video equipment. Customers wishing to utilize the facilities at the above noted PTDLs, rather than coming to the PTO for a face-to-face interview, should contact the patent examiner or trademark examining attorney and identify two alternative dates and times for a video conference. The patent examiner or trademark examining attorney will then contact Patent Academy personnel who will, in turn, make all the arrangements. The customer will be notified as to the date and time of the video conference. SCHEDULING AND CONDUCTING AN INTERVIEW An interview should normally be arranged for in advance, as by letter, facsimile, telegram or telephone call, in order to insure that the primary examiner and/or the examiner in charge of the application will be present and available in the Office. An interview in the Video Conference Center must be arranged at least 3 days in advance. When a second art unit is involved (Patentability Report), the availability of the second examiner should also be checked. (See MPEP Section 705.01(f).) An appointment for interview once arranged should be kept. Many applicants and attorneys plan trips to Washington or off-site video conferencing locations in reliance upon such appointments. When, after an appointment has been made, circumstances compel the absence of the examiner or examiners necessary to an effective interview, the other party should be notified immediately so that substitute arrangements may be made. When a telephone call is made to an examiner and it becomes evident that a lengthy discussion will ensue or that the examiner needs time to restudy the situation, the call should be terminated with an agreement that the examiner will call back at a specified time. Such a call and all other calls originated by the examiner should be made through the FTS (Federal Telecommunications System) even though a collect call had been authorized. It is helpful if amendments and other papers, such as the letter of transmittal, include the complete telephone number with area code and extension, preferably near the signature of the writer. The unexpected appearance of an attorney or applicant requesting an interview without any previous notice to the examiner may well justify his or her refusal of the interview at that time, particularly in an involved case. An examiner's suggestion of allowable subject matter may justify indicating the possibility of an interview to accelerate early agreement on allowable claims. An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application. Thus, the attorney when presenting himself or herself for an interview should be fully prepared to discuss the issues raised in the Office action. When it is obvious that the attorney is not so prepared, an interview should not be permitted. It is desirable that the attorney or applicant indicate in advance what issues he or she desires to discuss at the interview by submitting, in writing, a proposed amendment. This would permit the examiner to prepare in advance for the interview and to focus on the matters set forth in the proposed amendment. Examiners should avoid unnecessary interruptions during interviews with attorneys or inventors. In this regard, examiners should notify their receptionist, immediately prior to an interview, to not complete incoming telephone calls unless such are of an emergency nature. As appropriate, examiners should familiarize themselves with the status and existing issues in an application or reexamination proceeding before an interview. The examiner should not hesitate to state, if such be the case, that claims presented for consideration at the interview require further search and study. Nor should the examiner hesitate to conclude an interview when it appears that no common ground can be reached nor when it becomes apparent that the application requires further amendment or an additional action by the examiner. However, the examiner should attempt to identify issues and resolve differences during the interview as much as possible. It is the responsibility of both parties to the interview to see that it is not extended beyond a reasonable period, usually not longer than 30 minutes. It is the duty of the primary examiner to see that an interview is not extended beyond a reasonable period even when he or she does not personally participate in the interview. During an interview with an applicant who is prosecuting his or her own case and is not familiar with Office procedure the examiner may make suggestions that will advance the prosecution of this case; this lies wholly within his or her discretion. Too much time, however, should not be allowed for such interviews. Examiners may grant one interview after final rejection. See MPEP Section 713.09. Where the reply to a first complete action includes a request for an interview, a telephone consultation to be initiated by the examiner or a video conference, or where an out-of-town attorney under similar circumstances requests that the examiner defer taking any further action on the case until the attorney's next visit to Washington (provided such visit is not beyond the date when the Office action would normally be given), the examiner, as soon as he or she has considered the effect of the reply, should grant such request if it appears that the interview or consultation would result in expediting the case to a final action. Where agreement is reached as a result of an interview, applicant's representative should be advised that an amendment pursuant to the agreement should be promptly submitted. If the amendment prepares the case for final action, the examiner should take the case up as special. If not, the case should await its turn. Consideration of a filed amendment may be had by hand delivery of a duplicate copy of said amendment. Early communication of the results of the consideration should be made to applicant; if requested, indicate on attorney's copy any agreement; initial and date both copies. Although entry of amendatory matter usually requires actual presence of the original paper, examiner and technical support staff processing should proceed as far as practicable based on the duplicate copy. The extent of processing will depend on each amendment. The substance of any interview, whether in person, by video conference, or by telephone must be made of record in the application. See MPEP Section 713.04. VIEWING OF VIDEO TAPES DURING INTERVIEWS The Patent and Trademark Office has video tape equipment available in the facilities of the Patent Academy for viewing video tapes from applicants during interviews with patent examiners. The video tape equipment may use VHS and UHS (3/4-inch tape) cassettes. Attorneys or applicants wishing to show a video tape during an examiner interview must be able to demonstrate that the content of the video tape has a bearing on an outstanding issue in the application and its viewing will advance the prosecution of the application. Prior approval of viewing of a video tape during an interview must be granted by the supervisory patent examiner. Also, use of the room and equipment must be granted by the Training Manager to avoid any conflict with the Patent Academy. Requests to use video tape viewing equipment for an interview should be made at least 1 week in advance to allow the Patent Academy staff sufficient time to ensure the availability and proper scheduling of both a room and equipment. Interviews using Office video tape equipment will be held only in the Patent Academy facilities located in Crystal Square Four, Suite 700. Attorneys or applicants should not contact the Patent Academy directly regarding availability and scheduling of video equipment. All scheduling of rooms and equipment should be done through and by the examiner conducting the interview. The substance of the interview, including a summary of the content of the video tape must be made of record in the application. See MPEP Section 713.04. EXAMINATION BY EXAMINER OTHER THAN THE ONE WHO CONDUCTED THE INTERVIEW Sometimes the examiner who conducted the interview is transferred to another group or resigns, and the examination is continued by another examiner. If there is an indication that an interview had been held, the second examiner should ascertain if any agreements were reached at the interview. Where conditions permit, as in the absence of a clear error or knowledge of other prior art, the second examiner should take a position consistent with the agreements previously reached. See MPEP Section 812.01 for a statement of telephone practice in restriction and election of species situations. ---SECTION---713.02 Interviews Prior to First Official Action Prior to filing, no interview is permitted. However, in the examiner's discretion, a limited amount of time may be spent in indicating the field of search to an attorney, searcher or inventor. A request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications. A request for an interview in all other applications before the first action is untimely and will not be acknowledged if written, or granted if oral. 37 CFR 1.133(a). SEARCHING IN GROUP Search in the group art unit should be permitted only with the consent of a primary examiner. EXPOUNDING PATENT LAW The Patent and Trademark Office cannot act as an expounder of the patent law, nor as a counsellor for individuals. ---SECTION---713.03 Interview for "Sounding Out" Examiner Not Permitted Interviews that are solely for the purpose of "sounding out" the examiner, as by a local attorney acting for an out-of-town attorney, should not be permitted when it is apparent that any agreement that would be reached is conditional upon being satisfactory to the principal attorney. ---SECTION---713.04 Substance of Interview Must Be Made of Record A complete written statement as to the substance of any face-to-face, video conference, or telephone interview with regard to the merits of an application must be made of record in the application, whether or not an agreement with the examiner was reached at the interview. See 37 CFR 1.133(b), MPEP Section 713.01. 37 CFR 1.133 Interviews +++ (b) In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in Section Section 1.111 and 1.135. 37 CFR 1.2 Business to be transacted in writing. All business with the Patent and Trademark Office should be transacted in writing. The personal attendance of applicants or their attorneys or agents at the Patent and Trademark Office is unnecessary. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office. No attention will be paid to any alleged oral promise, stipulation, or understanding in relation to which there is disagreement or doubt. The action of the Patent and Trademark Office cannot be based exclusively on the written record in the Office if that record is itself incomplete through the failure to record the substance of interviews. It is the responsibility of the applicant or the attorney or agent to make the substance of an interview of record in the application file, unless the examiner indicates he or she will do so. It is the examiner's responsibility to see that such a record is made and to correct material inaccuracies which bear directly on the question of patentability. Examiners must complete an Interview Summary form PTOL-413 for each interview where a matter of substance has been discussed during the interview by checking the appropriate boxes and filling in the blanks. Discussions regarding only procedural matters, directed solely to restriction requirements for which interview recordation is otherwise provided for in MPEP Section 812.01, or pointing out typographical errors in Office actions or the like, are excluded from the interview recordation procedures below. Where a complete record of the interview has been incorporated in an examiner's amendment, it will not be necessary for the examiner to complete an Interview Summary form. The Interview Summary form PTOL 413 shall be given an appropriate paper number, placed in the right hand portion of the file, and listed on the "Contents" list on the file wrapper. In a personal interview, the duplicate copy of the Interview Summary form is given to the applicant (or attorney or agent) at the conclusion of the interview. In the case of a telephonic or video conference interview, the copy is mailed to the applicant's correspondence address either with or prior to the next official communication. In addition, a copy of the form may be faxed to applicant (or applicant's attorney or agent) at the conclusion of the interview. If additional correspondence from the examiner is not likely before an allowance or if other circumstances dictate, the Interview Summary form should be mailed promptly after the telephonic or video conference interview rather than with the next official communication. The PTOL-413 form provides for recordation of the following information: (A) application number; (B) name of applicant; (C) name of examiner; (D) date of interview; (E) type of interview (personal, telephonic, or video conference); (F) name of participant(s) (applicant, attorney, or agent, etc.); (G) an indication whether or not an exhibit was shown or a demonstration conducted; (H) an identification of the claims discussed; (I) an identification of the specific prior art discussed; (J) an indication whether an agreement was reached and if so, a description of the general nature of the agreement (may be by attachment of a copy of amendments or claims agreed as being allowable). (Agreements as to allowability are tentative and do not restrict further action by the examiner to the contrary.); (K) the signature of the examiner who conducted the interview; (K) names of other Patent and Trademark Office personnel present. The PTOL 413 form also contains a statement reminding the applicant of his or her responsibility to record the substance of the interview. It is desirable that the examiner orally remind the applicant of his or her obligation to record the substance of the interview in each case unless both applicant and examiner agree that the examiner will record same. Where the examiner agrees to record the substance of the interview, or when it is adequately recorded on the Interview Summary form or in an attachment to the form, the examiner will check a box at the bottom of the form informing the applicant that he or she need not supplement the form by submitting a separate record of the substance of the interview. It should be noted, however, that the Interview Summary form will not be considered a complete and proper recordation of the interview unless it includes, or is supplemented by the applicant or the examiner to include, all of the applicable items required below concerning the substance of the interview. The complete and proper recordation of the substance of any interview should include at least the following applicable items: (A) a brief description of the nature of any exhibit shown or any demonstration conducted; (B) identification of the claims discussed; (C) identification of specific prior art discussed; (D) identification of the principal proposed amendments of a substantive nature discussed, unless these are already described on the Interview Summary form completed by the examiner; (E) the general thrust of the principal arguments of the applicant and the examiner should also be identified, even where the interview is initiated by the examiner. The identification of arguments need not be lengthy or elaborate. A verbatim or highly detailed description of the arguments is not required. The identification of the arguments is sufficient if the general nature or thrust of the principal arguments can be understood in the context of the application file. Of course, the applicant may desire to emphasize and fully describe those arguments which he or she feels were or might be persuasive to the examiner; (F) a general indication of any other pertinent matters discussed; and (G) if appropriate, the general results or outcome of the interview unless already described in the Interview Summary form completed by the examiner. Examiners are expected to carefully review the applicant's record of the substance of an interview. If the record is not complete or accurate, the examiner may give the applicant a 1-month time period to complete the reply under 37 CFR 1.135(c) where the record of the substance of the interview is in a reply to a nonfinal Office action. 7.84 Amendment Is Non-Responsive to Interview The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from the date of this notice, whichever is longer, within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a). Examiner Note: 1. In bracket 2, insert the date of the interview. 2. In bracket 3, explain the deficiencies. EXAMINER TO CHECK FOR ACCURACY Applicant's summary of what took place at the interview should be carefully checked to determine the accuracy of any argument or statement attributed to the examiner during the interview. If there is an inaccuracy and it bears directly on the question of patentability, it should be pointed out in the next Office letter. If the claims are allowable for other reasons of record, the examiner should send a letter setting forth his or her version of the statement attributed to him or her. If the record is complete and accurate, the examiner should place the indication "Interview record OK" on the paper recording the substance of the interview along with the date and the examiner's initials. ---SECTION---713.05 Interviews Prohibited or Granted, Special Situations Saturday interviews, see MPEP Section 713.01. Except in unusual situations, no interview is permitted after the brief on appeal is filed or after an application has been passed to issue. An interview may be appropriate before applicant's first reply when the examiner has suggested that allowable subject matter is present or where it will assist applicant in judging the propriety of continuing the prosecution. Office employees are forbidden to hold either oral or written communication with an unregistered or a suspended or excluded attorney or agent regarding an application unless it is one in which said attorney or agent is the applicant. See MPEP Section 105. Interviews are frequently requested by persons whose credentials are of such informal character that there is serious question as to whether such persons are entitled to any information under the provisions of 37 CFR 1.14. In general, interviews are not granted to persons who lack proper authority from the applicant or attorney of record in the form of a paper on file in the application or do not have in their possession a copy of the application file. A MERE POWER TO INSPECT IS NOT SUFFICIENT AUTHORITY FOR GRANTING AN INTERVIEW INVOLVING THE MERITS OF THE APPLICATION. However, interviews may be granted to registered individuals who are known to be the local representatives of the attorney in the application, even though a power of attorney to them is not of record in the particular application. When prompt action is important an interview with the local representative may be the only way to save the application from abandonment. See MPEP Section 408. If a registered individual seeking the interview has in his or her possession a copy of the application file, the examiner may accept his or her statement that he or she is authorized to represent the applicant under 37 CFR 1.34 or is the person named as the attorney of record. Interviews normally should not be granted unless the requesting party has authority to bind the principal concerned. The availability of personal interviews in the "Conference Period," which is the time between the filing of applicant's thorough first reply and a concluding action by the examiner, for attorneys resident or frequently in the Washington, D.C. area is obvious. For others, more remote, telephone or video conference interviews may prove valuable. However, present Office policy places great emphasis on telephone interviews initiated by the examiner to attorneys and agents of record. See MPEP Section 408. The examiner, by making a telephone call, may be able to suggest minor, probably quickly acceptable changes which would result in allowance. If there are major questions or suggestions, the call might state them concisely, and suggest a further telephone or personal interview, at a prearranged later time, giving applicant more time for consideration before discussing the points raised. For an interview with an examiner who does not have negotiation authority, arrangements should always include an examiner who does have such authority, and who is familiar with the case, so that authoritative agreement may be reached at the time of the interview. GROUPED INTERVIEWS For attorneys remote from the Washington, D.C. area who prefer personal or video conference interviews, the grouped interview practice is effective. If in any case there is a prearranged interview, with agreement to file a prompt supplemental amendment putting the case as nearly as may be in condition for concluding action, prompt filing of the supplemental amendment gives the application special status, and brings it up for immediate special action. ---SECTION---713.06 No Inter Partes Questions Discussed Ex Parte The examiner may not discuss inter partes questions ex parte with any of the interested parties. ---SECTION---713.07 Exposure of Other Cases Prior to an interview in the examiner's room, the examiner should arrange his or her desk so that all files, drawings and other papers, except those necessary in the interview, are placed out of view. See MPEP Section 101. ---SECTION---713.08 Demonstration, Exhibits, Models The invention in question may be exhibited or demonstrated during the interview by a model thereof. A model received by the examiner from the applicant or his or her attorney which complies with 37 CFR 1.91 and which is made part of the application record must be properly recorded on the "Contents" portion of the application file wrapper. See MPEP Section 608.03 and Section 608.03(a). Oftentimes a model or exhibit is not given into the custody of the Office but is brought directly into the group by the attorney solely for inspection or demonstration during the course of the interview. This is permissible. If the model or exhibit is merely used for demonstration purpose and is not made part of the record (does not comply with 37 CFR 1.91), a full description as to what was demonstrated/exhibited must be made of record in the application. See 37 CFR 1.133(b). Demonstrations of apparatus or exhibits too large to be brought into the Office may be viewed by the examiner outside of the Office (in the Washington, D.C. area) with the approval of the supervisory patent examiner. It is presumed that the witnessing of the demonstration or the reviewing of the exhibit is actually essential in the developing and clarifying of the issues involved in the application. ---SECTION---713.09 Finally Rejected Application Normally, one interview after final rejection is permitted. However, prior to the interview, the intended purpose and content of the interview should be presented briefly, preferably in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. See MPEP Section 714.13. Interviews may be held after the expiration of the shortened statutory period and prior to the maximum permitted statutory period of 6 months without an extension of time. See MPEP Section 706.07(f). A second or further interview after a final rejection may be held if the examiner is convinced that it will expedite the issues for appeal or disposal of the application. ---SECTION---713.10 Interview Preceding Filing Amendment Under 37 CFR 1.312 After an application is sent to issue, it is technically no longer under the jurisdiction of the primary examiner. 37 CFR 1.312. An interview with an examiner that would involve a detailed consideration of claims sought to be entered and perhaps entailing a discussion of the prior art for determining whether or not the claims are allowable should not be given. Obviously an applicant is not entitled to a greater degree of consideration in an amendment presented informally than is given an applicant in the consideration of an amendment when formally presented, particularly since consideration of an amendment filed under 37 CFR 1.312 cannot be demanded as a matter of right. Requests for interviews on cases where a notice of allowance has been mailed should be granted only with specific approval of the Group Director upon a showing in writing of extraordinary circumstances. ---SECTION---714 Amendments, Applicant's Action The applicant may amend: (A) before or after the first examination and action and also after the second or subsequent examination or reconsideration as specified in 37 CFR 1.112; (B) after final rejection, if the amendment meets the criteria of 37 CFR 1.116; and (C) when and as specifically required by the examiner. In patent-owner-filed reexaminations, the patent owner may amend at the time of the request for reexamination in accordance with 37 CFR 1.510(e). In any reexamination proceeding, no amendment or response can be filed between the date of the request for reexamination and the order for reexamination. See 37 CFR 1.530(a). Following the order for reexamination under 37 CFR 1.525 and prior to the examination phase of a reexamination proceeding, an amendment may be filed only with the patent owner's statement under 37 CFR 1.530(b). During the examination phase of the reexamination proceeding, an amendment may be filed: (A) after the first examination as specified in 37 CFR 1.112; (B) after final rejection, if the amendment meets the criteria of 37 CFR 1.116; and (C) when and as specifically required by the examiner. See also MPEP Section 714.12. For amendments in reexamination proceedings see MPEP Section 2250 and Section 2266. ---SECTION---714.01 Signatures to Amendments An amendment must be signed by a person having authority to prosecute the application. An unsigned or improperly signed amendment will not be entered. See MPEP Section 714.01(a). To facilitate any telephone call that may become necessary, it is recommended that the complete telephone number with area code and extension be given, preferably near the signature. ---SECTION---714.01(a) Unsigned or Improperly Signed Amendment 37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings +++ (b) Amendments and other papers filed in the application must be signed by: (1) An attorney or agent of record appointed in compliance with Section 1.34(b); (2) A registered attorney or agent not of record who acts in a representative capacity under the provisions of Section 1.34(a); (3) The assignee of record of the entire interest, if there is an assignee of record of the entire interest; (4) An assignee of record of an undivided part interest, and any assignee(s) of the remaining interest and any applicant retaining an interest, if there is an assignee of record of an undivided part interest; or (5) All of the applicants (Section Section 1.42, 1.43 and 1.47) for patent, unless there is an assignee of record of the entire interest and such assignee has taken action in the application in accordance with Section Section 3.71 and 3.73. +++ An unsigned amendment or one not properly signed by a person having authority to prosecute the case is not entered. This applies, for instance, where the amendment is signed by one only of two applicants and the one signing has not been given a power of attorney by the other applicant. If copies of papers which require an original signature as set forth in 37 CFR 1.4(e) are filed, the signature must be applied after the copies are made. MPEP Section 714.07. When an unsigned or improperly signed amendment is received the amendment will be listed on the file wrapper, but not entered. The examiner will notify applicant of the status of the application, advising him or her to furnish a duplicate amendment properly signed or to ratify the amendment already filed. In an application not under final rejection, applicant should be given a 1-month time period in which to ratify the previously filed amendment (37 CFR 1.135(c)). Applicants may be advised of unsigned amendments by use of Form Paragraph 7.84.01. 7.84.01 Paper Is Unsigned The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from the mailing date of this notice, whichever is longer, within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a). Sometimes problems arising from unsigned or improperly signed amendments may be disposed of by calling in the local representative of the attorney of record, since he or she may have the authority to sign the amendment. An amendment signed by a person whose name is known to have been removed from the registers of attorneys and agents under the provisions of 37 CFR 10.11 is not entered. The file and unentered amendment are submitted to the Office of Enrollment and Discipline for appropriate action. ---SECTION---714.01(c) Signed by Attorney Not of Record See MPEP Section 405. A registered attorney or agent acting in a representative capacity under 37 CFR 1.34, may sign amendments even though he does not have a power of attorney in the application. See MPEP Section 402. ---SECTION---714.01(d) Amendment Signed by Applicant But Not by Attorney of Record If an amendment signed by the applicant is received in an application in which there is a duly appointed attorney, the amendment should be entered and acted upon. Attention should be called to 37 CFR 1.33(a) in patent applications and to 37 CFR 1.33(c) in reexamination proceedings. Two copies of the action should be prepared, one being sent to the attorney and the other directly to the applicant. The notation: "Copy to applicant" should appear on the original and on both copies. ---SECTION---714.02 Must Be Fully Responsive 37 CFR 1.111 Reply by applicant or patent owner. (a) After the Office action, if adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply thereto and may request reconsideration or further examination, with or without amendment. (b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. 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 does not comply with the requirements of this section. (c) In amending in response to a rejection of claims in an application or patent undergoing reexamination, the applicant or patent owner must 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. He or she must also show how the amendments avoid such references or objections. (See Section Section 1.135 and 1.136 for time for reply.) In all cases where reply to a requirement is indicated as necessary to further consideration of the claims, or where allowable subject matter has been indicated in an application, a complete reply must either comply with the formal requirements or specifically traverse each one not complied with. Drawing and specification corrections, presentation of a new oath and the like are generally considered as formal matters. However, the line between formal matter and those touching the merits is not sharp, and the determination of the merits of a case may require that such corrections, new oath, etc., be insisted upon prior to any indication of allowable subject matter. The claims may be amended by canceling particular claims, by presenting new claims, or by rewriting particular claims as indicated in 37 CFR 1.121(a)(2) and (b)(2). The requirements of 37 CFR 1.111(b) must be complied with by pointing out the specific distinctions believed to render the claims patentable over the references in presenting arguments in support of new claims and amendments. An amendment submitted after a second or subsequent non-final action on the merits which is otherwise responsive but which increases the number of claims drawn to the invention previously acted upon is not to be held not fully responsible for that reason alone. (See 37 CFR 1.112, MPEP Section 706.) The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP Section 2163.06. An amendment attempting to "rewrite" a claim in the manner set forth in 37 CFR 1.121(a)(2)(ii) and (b)(2)(i)(C) may be held not fully responsible if it uses parentheses, ( ), where brackets, [ ], are called for. See MPEP Section 714.22. Replies to requirements to restrict are treated under MPEP Section 818. ---SECTION---714.03 Amendments Not Fully Responsive Action To Be Taken 37 CFR 1.135 Abandonment for failure to reply within time period. +++ (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under Section 1.134 to supply the omission. An examiner may treat an amendment not fully responsive to a non-final Office action by: (A) accepting the amendment as an adequate reply to the non-final Office action to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135; (B) notifying the applicant that the reply must be completed within the remaining period for reply to the non-final Office action (or within any extension pursuant to 37 CFR 1.136(a)) to avoid abandonment; or (C) setting a new time period for applicant to complete the reply pursuant to 37 CFR 1.135(c). The treatment to be given to the amendment depends upon: (A) whether the amendment is bona fide; (B) whether there is sufficient time for applicant's reply to be filed within the time period for reply to the non-final Office action; and (C) the nature of the deficiency. Where an amendment substantially responds to the rejections, objections, or requirements in a non-final Office action (and is a bona fide attempt to advance the application to final action) but contains a minor deficiency (e.g ., fails to treat every rejection, objection, or requirement), the examiner may simply act on the amendment and issue a new (non-final or final) Office action. The new Office action may simply reiterate the rejection, objection, or requirement not addressed by the amendment (or otherwise indicate that such rejection, objection, or requirement is no longer applicable). This course of action would not be appropriate in instances in which an amendment contains a serious deficiency (e.g., the amendment is unsigned or does not appear to have been filed in reply to the non-final Office action). Where the amendment is bona fide but contains a serious omission, the examiner should: A) if there is sufficient time remaining for applicant's reply to be filed within the time period for reply to the non-final Office action (or within any extension pursuant to 37 CFR 1.136(a)), notify applicant that the omission must be supplied within the time period for reply; or B) if there is insufficient time remaining, issue an Office action setting a 1-month time period to complete the reply pursuant to 37 CFR 1.135(c). In either event, the examiner should not further examine the application on its merits unless and until the omission is timely supplied. If a new time period for reply is set pursuant to 37 CFR 1.135(c), applicant must supply the omission within this new time period for reply (or any extensions under 37 CFR 1.136(a) thereof) in order to avoid abandonment of the application. The applicant, however, may file a continuing application during this period (in addition or as an alternative to supplying the omission), and may also file any further reply as permitted under 37 CFR 1.111. Where there is sufficient time remaining in the period for reply (including extensions under 37 CFR 1.136(a)), the applicant may simply be notified that the omission must be supplied within the remaining time period for reply. This notification should be made, if possible, by telephone, and, when such notification is made by telephone, an interview summary record (see MPEP Section 713.04) must be completed and entered into the file of the application to provide a record of such notification. When notification by telephone is not possible, the applicant must be notified in an Office communication that the omission must be supplied within the remaining time period for reply. For example, when an amendment is filed shortly after an Office action has been mailed, and it is apparent that the amendment was not filed in reply to such Office action, the examiner need only notify the applicant (preferably by telephone) that a reply responsive to the Office action must be supplied within the remaining time period for reply to such Office action. The practice set forth in 37 CFR 1.135(c) does not apply where there has been a deliberate omission of some necessary part of a complete reply; rather, 37 CFR 1.135(c) is applicable only when the missing matter or lack of compliance is considered by the examiner as being "inadvertently omitted." For example, if an election of species has been required and applicant does not make an election because he or she believes the requirement to be improper, the amendment on its face is not a "bona fide attempt to advance the application to final action" (37 CFR 1.135(c)), and the examiner is without authority to postpone decision as to abandonment. Likewise, once an inadvertent omission is brought to the attention of the applicant, the question of inadvertence no longer exists. Therefore, a second Office action giving another new (1 month) time period to supply the omission would not be appropriate under 37 CFR 1.135(c). 37 CFR 1.135(c) authorizes, but does not require, an examiner to give the applicant a new time period to supply an omission. Thus, where the examiner concludes that the applicant is attempting to abuse the practice under 37 CFR 1.135(c) to obtain additional time for filing a reply (or where there is sufficient time for applicant's reply to be filed within the time period for reply to the non-final Office action), the examiner need only indicate by telephone or in an Office communication (as discussed above) that the reply must be completed within the period for reply to the non-final Office action or within any extension pursuant to 37 CFR 1.136(a) to avoid abandonment. The practice under 37 CFR 1.135(c) of giving applicant a time period to supply an omission in a bona fide reply does not apply after a final Office action. Amendments after final are approved for entry only if they place the application in condition for allowance or in better form for appeal. Otherwise, they are not approved for entry. See MPEP Section 714.12 and Section 714.13. Thus, an amendment should be denied entry if some point necessary for a complete reply under 37 CFR 1.113 (after final) was omitted, even if the omission was through an apparent oversight or inadvertence. Where a submission after a final Office action or appeal (e.g ., an amendment under 37 CFR 1.116) does not place the application in condition for allowance, the period for reply under 37 CFR 1.113 continues to run until a reply under 37 CFR 1.113 (i.e., a notice of appeal or an amendment that places the application in condition for allowance) is filed. The nature of the omission (e.g ., whether the amendment raises new issues, or would place the application in condition for allowance but for it being unsigned or not in compliance with 37 CFR 1.121) is immaterial. The examiner cannot give the applicant a time period under 37 CFR 1.135(c) to supply the omission; however, applicant may obtain additional time under 37 CFR 1.136(a) to file another or supplemental amendment in order to supply the omission. When a reply to a final Office action substantially places the application in condition for allowance, an examiner may request that the applicant (or representative) authorize an examiner's amendment to correct the omission and place the application in condition for allowance, in which case the date of the reply is the date of such authorization (and not the date the incomplete reply was filed). An examiner also has the authority to enter the reply, withdraw the finality of the last Office action, and issue a new Office action, which may be a non-final Office action, a final Office action (if appropriate), or an action closing prosecution on the merits in an otherwise allowable application under Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11, 435 O.G. 213 (Comm`r Pat. 1935) (if appropriate). These courses of action, however, are solely within the discretion of the examiner. It is the applicant's responsibility to take the necessary action in an application under a final Office action to provide a complete reply under 37 CFR 1.113. Where there is an informality as to the fee in connection with an amendment to a non-final Office action presenting additional claims, the applicant is notified by the technical support staff on form PTOL-319. See MPEP Section 607 and Section 714.10. Form paragraph 7.95 may be used where a bona fide reply is not fully responsive. 7.95 Bona Fide, Non-Responsive Amendments The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from the mailing date of this notice, whichever is longer, within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a). Examiner Note: This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See paragraph 7.91. ---SECTION---714.04 Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the claims should not be allowed. See 37 CFR 1.111 and MPEP Section 714.02. An amendment failing to point out the patentable novelty which the applicant believes the claims present in view of the state of the art disclosed by the references cited or the objections made may be held to be not fully responsive and a time period set to furnish a proper reply if the statutory period has expired or almost expired (MPEP Section 714.03). However, if the claims as amended are clearly open to rejection on grounds of record, a final rejection should generally be made. ---SECTION---714.05 Examiner Should Immediately Inspect Actions by applicant, especially those filed near the end of the period for reply, should be inspected immediately upon filing to determine whether they are completely responsive to the preceding Office action so as to prevent abandonment of the application. If found inadequate, and sufficient time remains, applicant should be notified of the deficiencies and warned to complete the reply within the period. See MPEP Section 714.03. All amended applications put on the examiner's desk should be inspected at once to determine the following: (A) If the amendment is properly signed (MPEP Section 714.01(a)). (B) If the amendment has been filed within the statutory period, set shortened period, or time limit (MPEP Section 710 - Section 710.05). (C) If the amendment is fully responsive (MPEP Section 714.03 and Section 714.04). (D) If the changes made by the amendment warrant transfer (MPEP Section 903.08(d)). (E) If the case is special (MPEP Section 708.01). (F) If claims suggested to applicant for interference purposes have been copied. (G) If there is a traverse of a requirement for restriction (MPEP Section 818.03(a)). (H) If "easily erasable" paper or other nonpermanent method of preparation or reproduction has been used (MPEP Section 714.07). (I) If applicant has cited references (MPEP Section 707.05(b) and Section 1302.12). (J) If a terminal disclaimer has been filed (MPEP Section 508.01, Section 804.02, Section 804.03, and Section 1490). (K) If any matter involving security has been added (MPEP Section 115). ACTION CROSSES AMENDMENT A supplemental action is usually necessary when an amendment is filed on or before the mailing date of the regular action but reaches the examining group later. The supplemental action should be promptly prepared. It need not reiterate all portions of the previous action that are still applicable but it should specify which portions are to be disregarded, pointing out that the period for reply runs from the mailing of the supplemental action. The action should be headed "Responsive to amendment of (date) and supplemental to the action mailed (date)." ---SECTION---714.06 Amendments Sent to Wrong Group See MPEP Section 508.01. ---SECTION---714.07 Amendments Not in Permanent Ink 37 CFR 1.52(a) requires "permanent dark ink or its equivalent" to be used on papers which will become part of the record and In re Benson, 122 USPQ 279, 1959 C.D. 5, 744 O.G. 353 (Comm'r Pat. 1959), holds that documents on so-called "easily erasable" paper violate the requirement. The fact that 37 CFR 1.52(a) has not been complied with may be discovered as soon as the amendment reaches the examining group or later when the application is reached for action. In the first instance, applicant is promptly notified that the amendment is not entered and is required to file a permanent copy within 1 month or to order a copy to be made by the Patent and Trademark Office at his or her expense. Physical entry of the amendment will be made from the permanent copy. If there is no appropriate reply within the 1-month limit, a copy is made by the Patent and Trademark Office, applicant being notified and required to remit the charges or authorize charging them to his or her deposit account. In the second instance, when the nonpermanence of the amendment is discovered only when the application is reached for action, similar steps are taken, but action on the application is not held up, the requirement for a permanent copy of the amendment being included in the Office action. A good direct or indirect copy, such as photocopy or facsimile transmission, on satisfactory paper is acceptable. But see In re Application Papers Filed Jan. 20, 1956, 706 O.G. 4 (Comm'r Pat. 1956). Although a good copy is acceptable, signatures must be applied after the copy is made if the papers require an original signature as set forth in 37 CFR 1.4(e). See MPEP Section 608.01 for more discussion on acceptable copies. ---SECTION---714.08 Telegraphic Amendment When a telegraphic amendment is received, the telegram is placed in the file but not entered. Applicant will be notified that the telegram is not accepted as a reply to the previous Office action and is not entered. The time period for reply to the Office action continues to run and is extendable under 37 CFR 1.136. ---SECTION---714.09 Amendments Before First Office Action An amendment filed before the first Office action, but not filed along with the original application, does not enjoy the status of part of the original disclosure. See MPEP Section 608.04(b). However, an application will be accorded a filing date based upon the submission of a complete specification including claims and any required drawings. The oath or declaration and/or filing fee can be submitted later. Thus, in the instance where an application filed under 37 CFR 1.53(b) is filed without a signed oath or declaration and such application is accompanied by an amendment, that amendment is considered a part of the original disclosure. A subsequently filed oath or declaration must refer to both the application and the amendment. Any copy of the application as filed must include a copy of the amendment as well, particularly where certified copies for priority purposes are requested. Amendments should either accompany the application or be filed after the application has received its application number and filing date. See MPEP Section 502. Any amendment canceling claims in order to reduce the filing fee should be filed with the application. Since only amendments canceling claims are entered before the filing fee is calculated, any other changes to the claims and/or specification should be part of a separate amendment. See MPEP Section 506. ---SECTION---714.10 Claims Added in Excess of Filing Fee The patent statute provides for the presentation of claims added in excess of the filing fee. On payment of an additional fee (see MPEP Section 607), these excess claims may be presented any time after the application is filed, which of course, includes the time before the first action. ---SECTION---714.11 Amendment Filed During Interference Proceedings See MPEP Section 2364.01. ---SECTION---714.12 Amendments After Final Rejection or Action 37 CFR 1.116 Amendments after final action or appeal. (a) After a final rejection or other final action (Section 1.113), amendments may be made cancelling claims or complying with any requirement of form expressly set forth in a previous Office action. Amendments presenting rejected claims in better form for consideration on appeal may be admitted. The admission of, or refusal to admit, any amendment after final rejection, and any related proceedings, will not operate to relieve the application or patent under reexamination from its condition as subject to appeal or to save the application from abandonment under Section 1.135. (b) If amendments touching the merits of the application or patent under reexamination are presented after final rejection, or after appeal has been taken, or when such amendment might not otherwise be proper, they may be admitted upon showing of good and sufficient reasons why they are necessary and were not earlier presented. (c) No amendment can be made as a matter of right in appealed cases. After decision on appeal, amendments can only be made as provided in Section 1.198, or to carry into effect a recommendation under Section 1.196. Once a final rejection that is not premature has been entered in a case, applicant or patent owner no longer has any right to unrestricted further prosecution. This does not mean that no further amendment or argument will be considered. Any amendment that will place the case either in condition for allowance or in better form for appeal may be entered. Also, amendments complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(a). Ordinarily, amendments filed after the final action are not entered unless approved by the examiner. See MPEP Section 706.07(f), Section 714.13 and Section 1207. The prosecution of an application before the examiner should ordinarily be concluded with the final action. However, one personal interview by applicant may be entertained after such final action if circumstances warrant. Thus, only one request by applicant for a personal interview after final should be granted, but in exceptional circumstances, a second personal interview may be initiated by the examiner if in his or her judgment this would materially assist in placing the application in condition for allowance. Many of the difficulties encountered in the prosecution of patent applications after final rejection may be alleviated if each applicant includes, at the time of filing or no later than the first reply, claims varying from the broadest to which he or she believes he or she is entitled to the most detailed that he or she is willing to accept. ---SECTION---714.13 Amendments After Final Rejection or Action, Procedure Followed FINAL REJECTION - TIME FOR REPLY If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection. This procedure applies only to a first reply to a final rejection. The following language must be included by the examiner in each final rejection: A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST REPLY IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE THREE-MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 CFR 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR REPLY EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION. This wording is part of Form Paragraphs 7.39, 7.40, 7.40.01, 7.41 and 7.41.03. Form Paragraph 7.39 appears in MPEP Section 706.07. Form paragraphs 7.40 and 7.40.01 appear in MPEP Section 706.07(a). Form Paragraphs 7.41 and 7.41.03 appear in MPEP Section 706.07(b). For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, any extension fee would then be calculated from the end of the 3-month period. If the examiner, however, does not mail an advisory action until after the end of 3 months, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension fee may be calculated from that date. In the event that a first reply is not filed within 2 months of the mailing date of the final rejection, any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the end of the reply period set in the final reject