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Form Paragraphs

2.01    Definition of Division

This application appears to be a division of Application No. [1], filed [2]. A later application for a distinct or independent invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or “division.” The divisional application should set forth the portion of the earlier disclosure that is germane to the invention as claimed in the divisional application.

Examiner Note:

  • 1. In bracket 1, insert the Application No.(series code and serial no.) of the parent application.
  • 2. In bracket 2, insert the filing date of the parent application.
  • 3. An application claiming the benefits of a provisional application under 35 U.S.C. 119(e) should not be called a “division” of the provisional application since the application will have its patent term calculated from its filing date, whereas an application filed under 35 U.S.C. 120 , 121 , or 365(c) will have its term calculated from the date on which the earliest application was filed, provided a specific reference is made to the earlier filed application(s), 35 U.S.C. 154(a)(2) and (a)(3).

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2.03    Affidavits or Declarations in Prior Application

Applicant refers to an affidavit or declaration filed in the prior application. Affidavits or declarations, such as those submitted under 37 CFR 1.130 , 1.131 and 1.132 , filed during the prosecution of the prior application do not automatically become a part of this application. Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit or declaration filed in the prior application.

Examiner Note:

This form paragraph is to be used in applications filed under 37 CFR 1.53(b) . Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130 , 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automatically become a part of the 37 CFR 1.53(d) application.

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2.05    Possible Status as Continuation

This application discloses and claims only subject matter disclosed in prior application no [1], filed [2 ], and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or division. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120 and 37 CFR 1.78 .

Examiner Note:

  • 1. This form paragraph should only be used if it appears that the application may be a continuation, but priority has not been properly established.
  • 2. An application claiming the benefits of a provisional application under 35 U.S.C. 119(e) should not be called a “continuation” of the provisional application since an application that claims benefit of a provisional application is a nonprovisional application of a provisional application, not a continuation, division, or continuation-in-part of the provisional application.
  • 3. In bracket 1, insert the application number (series code and serial number) of the prior application.
  • 4. In bracket 2, insert the filing date of the prior application.

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2.06    Possible Status as Continuation-in-Part

This application repeats a substantial portion of prior Application No. [1], filed [2], and adds and claims additional disclosure not presented in the prior application. Since this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120 and 37 CFR 1.78 .

Examiner Note:

  • 1. This form paragraph should only be used when it appears that the application may qualify as a continuation-in-part, but no priority claim has been perfected.
  • 2. An application claiming the benefits of a provisional application under 35 U.S.C. 119(e) should not be called a “continuation-in-part” of the provisional application since an application that claims benefit of a provisional application is a nonprovisional application of a provisional application, not a continuation, division, or continuation-in-part of the provisional application.
  • 3. In bracket 1, insert the application number (series code and serial number) of the prior application.
  • 4. In bracket 2, insert the filing date of the prior application.

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2.07    Definition of a Substitute

Applicant refers to this application as a “substitute” of Application No. [1], filed [2]. The use of the term “substitute” to designate an application which is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. A “substitute” does not obtain the benefit of the filing date of the prior application.

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2.09    Heading for Conditions for Benefit Claims Under 35 U.S.C. 119(e) , 120 , 121 , or 365 (c)

Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120 , 121 , or 365(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. [1] as follows:

Examiner Note:

  • 1. In bracket 1, insert either or both --119(e)-- or --120--.
  • 2. One or more of form paragraphs 2.10 to 2.11.01 or 2.38 to 2.40 must follow depending upon the circumstances.

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2.10    Disclosure of Prior-Filed Application Does Not Provide Support for Claimed Subject Matter

The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112 , except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc ., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).

The disclosure of the prior-filed application, Application No. [1], fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph for one or more claims of this application. [2]

Examiner Note:

  • 1. This form paragraph must be preceded by heading form paragraph 2.09 .
  • 2. This form paragraph may be used when there is lack of support or enablement in the prior-filed application for the claims in the application that is claiming the benefit of the prior-filed application under 35 U.S.C. 120 , 121 , or 365(c) or under 35 U.S.C. 119(e) . The prior-filed application can be a provisional application or a nonprovisional application.
  • 3. In bracket 1, insert the application number of the prior-filed application.
  • 4. In bracket 2, provide an explanation of lack of support or enablement. If only some of the claims are not entitled to the benefit of the filing date of the prior application, the examiner should include a list of those claims after the explanation (e.g., “Accordingly, claims 1-10 are not entitled to the benefit of the prior application.”).

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2.10.01    Continuation or Divisional Application Contains New Matter Relative to the Prior-Filed Application

Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: [1].

Examiner Note:

  • 1. This form paragraph should be used when an application claims the benefit of a prior-filed application under 35 U.S.C. 120, 121 , or 365(c) , contains new matter, and purports to be a “continuation,” “division,” or “divisional application” of the prior-filed application. Do not use this form paragraph if the applicant is claiming the benefit of a provisional application under 35 U.S.C. 119(e) .
  • 2. In bracket 1, provide an example of the matter not disclosed in the prior-filed application.

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2.11    Application Must Be Copending With Parent

This application is claiming the benefit of prior-filed nonprovisional application No. [1] under 35 U.S.C. 120 , 121 , or 365(c) . Copendency between the current application and the prior application is required. Since the applications are not copending, the benefit claim to the prior-filed nonprovisional application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.

Examiner Note:

  • 1. This form paragraph must be preceded by heading form paragraph 2.09 .
  • 2. Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications.
  • 3. In bracket 1, insert the application number of the prior-filed nonprovisional application.

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2.11.01    Application Must Be Filed Within 12 Months From the Provisional Application

This application is claiming the benefit of provisional application No. [1] under 35 U.S.C. 119(e) . However, this application was not filed within twelve months from the filing date of the provisional application, and there is no indication of an intermediate nonprovisional application that is directly claiming the benefit of the provisional application and filed within 12 months of the filing date of the provisional application.

Note: If the day that is 12 months after the filing date of the provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the nonprovisional application claiming the benefit of the provisional application may be filed on the next succeeding business day.

Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application, was filed within 12 months of the filing date of the provisional application.

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2.13    Correction of Inventorship Under 37 CFR 1.48(a) , Insufficient

The request to correct the inventorship of this nonprovisional application under 37 CFR 1.48(a) is deficient because:

Examiner Note:

  • 1. This form paragraph should only be used in response to requests to correct an error in the naming of the prior inventors in nonprovisional applications. If the request is merely to delete an inventor because claims were canceled or amended such that the deleted inventor is no longer an actual inventor of any claim in the application, use form paragraph 2.13.01 instead of this form paragraph.
    Potential rejections
    A rejection under 35 U.S.C. 102(f) or (g) must be considered if the request is denied.
    The grant or denial of the request may result in the loss of inventorship overlap between a parent application and a continuing application and an inability to claim benefit in the continuing application of the parent application’s filing date under 35 U.S.C. 120 . Intervening references must then be considered.
  • 2. A primary examiner may not decide the request if the request is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.48(a) (typically a refusal of one of the inventors to be added or deleted to execute the required statement of facts) – the request for correction of inventorship and request for waiver of the rules should be forwarded to the Office of Petitions.
  • 3. One or more of form paragraphs 2.13a - 2.13e should follow this form paragraph, as applicable.
  • 4. Where it appears that: 1) the inventor(s) to be added or deleted may be hostile and will not execute a required statement of facts; and 2) the actual inventorship would overlap the original inventorship ( 37 CFR 1.78 ), follow this form paragraph with form paragraph 2.13f .
  • 5. Requests under 37 CFR 1.41 to change inventorship where an executed oath or declaration has not been filed are to be acted upon by OIPE.
  • 6. Where there is a correction in a person’s name, e.g., due to misspelling, or marriage, a request under 37 CFR 1.48 is inappropriate. See MPEP § 605.04(b) and (c) for name changes.
  • 7. An initial executed oath or declaration under 37 CFR 1.63 may change the inventorship as originally set forth when the application is filed without an executed oath or declaration without request for correction of inventorship ( 37 CFR 1.48(f) ).

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2.13.01    Correction of Inventorship Under 37 CFR 1.48(b), Insufficient

The request for the deletion of an inventor in this nonprovisional application under 37 CFR 1.48(b) is deficient because:

Examiner Note:

  • 1. This form paragraph should only be used when the inventorship was previously correct when originally executed but an inventor is being deleted because claims have been amended or canceled such that he or she is no longer an inventor of any remaining claim in the non-provisional application. If the inventorship is being corrected because of an error in naming the correct inventors, use form paragraph 2.13 instead of this form paragraph.
  • 2. Follow this form paragraph with one or both of form paragraphs 2.13c and 2.13g .
  • 3. See note 1 of form paragraph 2.13 , Potential rejections.

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2.13.02    Correction of Inventorship Under 37 CFR 1.48(c), Insufficient

The request to correct the inventorship in this nonprovisional application under 37 CFR 1.48(c) requesting addition of an inventor(s) is deficient because:

Examiner Note:

  • 1. This form paragraph should only be used when the inventorship was previously correct when the application was originally executed, but the inventorship now needs to be changed due to subsequent addition of subject matter from the specification to the claims, which subject matter was contributed by a party not originally named as an inventor.
  • 2. See note 2 of form paragraph 2.13 .
  • 3. Follow this form paragraph with any of form paragraphs 2.13b - 2.13e or 2.13h .
  • 4. See note 1 of form paragraph 2.13 , Potential rejections.
  • 5. See notes 4-7 of form paragraph 2.13 .

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2.13a    Statement of Facts Problem (for Use Following FP 2.13 , If Applicable)

The statement of facts by an inventor or inventors to be added or deleted does not explicitly state that the inventorship error occurred without deceptive intent on his or her part or cannot be construed to so state.

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2.13b    No New Oath or Declaration (for Use Following FP 2.13 or 2.13.02 , If Applicable)

An oath or declaration by each actual inventor or inventors listing the entire inventive entity has not been submitted.

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2.13c    Required Fee Not Submitted (for Use Following FP 2.13 , 2.13.01 or 2.13.02 , If Applicable)

It lacks the required fee under 37 CFR 1.17(i) .

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2.13d    Written Consent Missing (for Use Following FP 2.13 or 2.13.02 , If Applicable)

It lacks the written consent of any assignee of one of the originally named inventors.

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2.13e    37 CFR 3.73(b) Submission (for Use Following FP 2.13 or 2.13.02 , If Applicable)

A 37 CFR 3.73(b) submission has not been received to support action by the assignee.

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2.13f    Hostile Inventor(s)/Inventorship Overlap (for Use Following FP 2.13 , If Applicable)

As it appears that a party required by 37 CFR 1.48(a) (2) to submit a statement of facts may not be willing to submit such statement, applicant should consider either: a) submission of a petition under 37 CFR 1.183 to waive that requirement if the original named inventor(s) has assigned the entire right and interest to an assignee who has given its consent to the requested inventorship correction, MPEP § 201.03 , Statement of Lack of Deceptive Intention, or b) refiling the application (where addition is needed under 37 CFR 1.53(b) with a new oath or declaration and any necessary petition under 37 CFR 1.47 , or where only deletion is needed, either under 37 CFR 1.53(b) utilizing a copy of a prior oath or declaration under 37 CFR 1.63(d) (1)(iv), or under 37 CFR 1.53(d) ) (design applications only), thereby eliminating the need for a 37 CFR 1.48 request.

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2.13g    Statement Under 37 CFR 1.48(b)(2) Problem (for Use Following FP 2.13.01 , If Applicable)

The request was not accompanied by the statement required under 37 CFR 1.48 (b)(2).

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2.13h    Statement of Facts, Added Inventor (for Use Following FP 2.13.02 , If Applicable)

The statement of facts by the inventor(s) to be added does not explicitly state that the amendment of the inventorship is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intent on the part of the inventor(s) to be added, or cannot be construed to so state.

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2.14    Correction of Inventorship Under 37 CFR 1.48(a) or (c) Filed Before Sept. 16, 2012, Sufficient

In view of the request to correct inventorship under 37 CFR 1.48 and the accompanying papers filed before September 16, 2012, it has been found that this nonprovisional application, as filed, through error and without deceptive intent, improperly set forth the inventorship, and accordingly, this application has been corrected in compliance with 37 CFR 1.48 ( [1]). The inventorship of this application has been changed by [2].

The application will be forwarded to the Office of Patent Application Processing (OPAP) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as corrected.

Examiner Note:

  • 1. In bracket 1, insert --a-- or --c--, as appropriate.
  • 2. In bracket 2, insert explanation of correction made, including addition or deletion of appropriate names.
  • 3. This form paragraph should only be used if the request to correct inventorship was filed before September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16, 2012, are handled by the Office of Patent Application Processing.

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2.14.01    Correction of Inventorship Under 37 CFR 1.48(b) Filed Before Sept. 16, 2012, Sufficient

In view of the request to correct inventorship under 37 CFR 1.48(b) and accompanying papers filed before September 16, 2012, the inventorship of this nonprovisional application has been changed by the deletion of [1].

The application will be forwarded to the Office of Patent Application Processing (OPAP) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as corrected.

Examiner Note:

  • 1. This form paragraph is to be used only for 37 CFR 1.48(b) corrections.
  • 2. In bracket 1, insert the names of the deleted inventor(s).
  • 3. This form paragraph should only be used if the request to correct inventorship was filed before September 16, 2012. Requests under 37 CFR 1.48 filed on or after September 16, 2012, are handled by the Office of Patent Application Processing.

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2.14.01    Correction of Inventorship Under 37 CFR 1.48(b), Sufficient

In view of the papers filed [1], the inventorship of this nonprovisional application has been changed by the deletion of [2].

The application will be forwarded to the Office of Initial Patent Examination (OIPE) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as corrected.

Examiner Note:

  • 1. This form paragraph is to be used only for 37 CFR 1.48(b) corrections.
  • 2. In bracket 2, insert the names of the deleted inventor(s).

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2.15    Reference to Prior Application, 35 U.S.C. 119(e), 120, 121 or 365(c) Benefit

This application makes reference to or appears to claim subject matter disclosed in Application No. [1], filed [2]. If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e) , 120 , 121 or 365(c) , the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78 . If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120 , 121 or 365(c) , the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

If the instant application is a utility or plant application filed under 35 U.S.C. 111(a) , the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a utility or plant application entering the national stage from an international application under 35 U.S.C. 371 , the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) or sixteen months from the filing date of the prior application. See 37 CFR 1.78 . This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120 , where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e) , 120 , 121 and 365(c) . A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) , 120 , 121 and 365(c) . The petition must be accompanied by (1) the reference required by 35 U.S.C. 120 or 119(e) and by 37 CFR 1.78 to the prior application (unless previously submitted), (2) a surcharge under 37 CFR 1.17(t) , and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the surcharge under 37 CFR 1.17(t) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an ADS with the reference (or, if the application was filed before September 16, 2012, by filling either an amendment to the first sentence(s) of the specification or an ADS with the reference. See MPEP § 201.11 .

Examiner Note:

  • 1. Use this paragraph when an application does not claim the benefit of a prior-filed application, but makes a reference to, or appears to claim subject matter disclosed in, the prior-filed application.
  • 2. In bracket 1, insert the application number of the prior-filed application.
  • 3. In bracket 2, insert the filing date of the prior-filed application.
  • 4. In a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (design applications only), a specific reference in the first sentence(s) of the specification, or in an application data sheet, to the prior application is not required and may not be made. The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA. 37 CFR 1.53(d)(2)(iv) and 1.53(d)(7) .

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2.18    Right of Priority Under 35 U.S.C. 119(a)-(d) and (f)

Applicant is advised of possible benefits under 35 U.S.C. 119(a) - (d) and (f) , wherein an application for patent filed in the United States may be entitled to the benefit of the filing date of a prior claim priority to an application filed in a foreign country.

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2.19    Overcome Rejection by Translation

Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55 . See MPEP § 201.15 .

Examiner Note:

This paragraph should follow a rejection based on an intervening reference.

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2.20    Certified Copies of Priority Papers in Parent or Related (Reissue Situation) - Application

Applicant is reminded that in order for a patent issuing on the instant application to obtain priority under 35 U.S.C. 119(a) -(d) or (f) , based on priority papers filed in parent or related Application No. [1] (to which the present application claims the benefit under 35 U.S.C. 120 , 121 , of 365(c) ), a claim for such foreign priority must be timely made in this application. To satisfy the requirement of 35 U.S.C. 155 for a certified copy of the foreign application, applicant may simply identify the application containing the certified copy.

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2.21.01    35 U.S.C. 119(a)-(d) or (f) or 365(a) Foreign Priority Claim is Untimely

The foreign priority claim filed on [1] was not entered because the foreign priority claim was not filed during the time period set forth in 37 CFR 1.55 . For original applications filed under 35 U.S.C. 111(a) (other than a design application) on or after November 29, 2000, the time period is during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. In addition, if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet. For applications that have entered national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371 , the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT. See 37 CFR 1.55 . If applicant desires priority under 35 U.S.C. 119(a)-(d), (f) or 365(a) based upon a prior foreign application, applicant must file a petition for an unintentionally delayed priority claim ( 37 CFR 1.55 ). The petition must be accompanied by (1) the claim (i.e., the claim required by 35 U.S.C. 119(a)-(d) and (f) and 37 CFR 1.55 ) for priority to the prior foreign application, unless previously submitted; (2) a surcharge under 37 CFR 1.17(t) ; and (3) a statement that the entire delay between the date the claim was due under 37 CFR 1.55 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Examiner Note:

  • 1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000. DO NOT use for design applications.
  • 2. In bracket 1, insert the date the amendment or paper containing the foreign priority claim was filed.

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2.22    Certified Copy Filed, But NoProper Claim Not Made

Receipt is acknowledged of a certified copy of foreign application [1]. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d), applicant should also file a claim for such priority as required by 35 U.S.C. 119(b) . If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.

If the application being examined is an original application filed under 35 U.S.C. 111(a) (other than a design application), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55 . If the application being examined is a utility or plant application entering the national stage from an international application under 35 U.S.C. 371 , the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and Regulations of the PCT. See 37 CFR 1.55 . Any claim for priority under 35 U.S.C. 119(a)-(d) or (f) or 365(a) or (b) not presented within the time period set forth in 37 CFR 1.55 is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55 , the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition to accept an unintentionally delayed claim for priority. See 37 CFR 1.55 .

Examiner Note:

In bracket 1, insert the application number of the foreign application.

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2.23    Foreign Filing More Than 12 Months Earlier

Acknowledgment is made of applicant's claim for priority under 35 U.S.C. 119(a) - (d) based upon an application filed in [1] on [2]. A claim for priority under 35 U.S.C. 119(a) - (d) cannot be based on said application, since the United States application was filed more than twelve months thereafter.

Examiner Note:

  • 1. In bracket 1, insert the country name.
  • 2. In bracket 2, insert the filing date of the foreign application.

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2.25    Claimed Foreign Priority, No Papers Certified Copy Filed

Acknowledgment is made of applicant's claim for foreign priority based on an application filed in [1] on [2]. It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 37 CFR 1.55 .

Examiner Note:

  • 1. In bracket 1, insert the country name.
  • 2. In bracket 2, insert the filing date of the foreign application.
  • 3. In bracket 3, insert the application number of the foreign application.

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2.26    Claimed Foreign Priority - Certified Copy Filed

Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a) - (d) , which papers have been placed of record in the file.

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2.27    Acknowledge Certified Copy of Foreign Priority Paper in Parent

Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119(a) - (d) . The certified copy has been filed in parent Application No. [1], filed on [2].

Examiner Note:

  • 1. For problems with foreign priority, see form paragraphs 2.18 to 2.24 .
  • 2. In bracket 1, insert series code and serial no. of parent.

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2.30    CPA Status Acceptable (for Design Applications)

The request filed on [1] for a Continued Prosecution Application (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.

Examiner Note:

  • 1. Use this form paragraph in the first Office action of a CPA to advise the applicant that a request for a CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA. If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h) .
  • 2. In bracket 1 insert the filing date of the request for a CPA.
  • 3. In bracket 2 insert the Application Number of the parent application.

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2.31    CPA Status Not Acceptable - Request Not on Separate Paper (for Design Applications)

Receipt is acknowledged of the request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on Application No. [2]. However, because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2) , the request is not acceptable and no CPA has been established.

Examiner Note:

  • 1. Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established.
  • 2. In bracket 1 insert the filing date of the paper containing the request for a CPA.
  • 3. In bracket 2 insert the Application Number identified in the CPA request.

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2.32    Request To Delete a Named Inventor in CPA (for Design Applications)

Receipt is acknowledged of the statement requesting that [1] be deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

Examiner Note:

  • 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48 .
  • 2. In bracket 1 insert the name or names of the inventor(s) requested to be deleted.
  • 3. In bracket 2 insert the filing date of the CPA.

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2.33    New Inventor Identified in CPA (for Design Applications)

It is noted that [1] identified as a named inventor in the Continued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48 , as is required, was filed to correct the inventorship. Any request to add an inventor must be in the form of a request under 37 CFR 1.48 . Otherwise, the inventorship in the CPA shall be the same as in the prior application.

Examiner Note:

  • 1. Use this form paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were not named as inventors in the prior application on the filing date of the CPA.
  • 2. In bracket 1 insert the name or names of the inventor(s) requested to be added followed by either --was-- or --were--, as appropriate.
  • 3. In bracket 2 insert the filing date of the CPA.

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2.34    Reference in CPA to Prior Application (by Amendment to the Specification; for Design Applications)

The amendment filed [1] requesting that the specification be amended to refer to the present Continued Prosecution Application (CPA) as a [2] application of Application No. [3] has not been entered. As set forth in 37 CFR 1.53(d)(7) , a request for a CPA is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment shall be denied entry.

Examiner Note:

  • 1. Use this form paragraph to inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again.
  • 2. In bracket 1, insert the filing date of the amendment.
  • 3. In bracket 2, insert either --continuation-- or --divisional--.
  • 4. In bracket 3, insert the Application Number of the prior nonprovisional application.

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2.35    CPA Status Acceptable - Conditional Request (for Design Applications)

Receipt is acknowledged of the “conditional” request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on prior Application No. [2]. Any “conditional” request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA. Accordingly, the request for a CPA application is acceptable and a CPA has been established. An action on the CPA follows.

Examiner Note:

  • 1. Use this form paragraph in the first Office action of a CPA to advise the applicant that a “conditional” request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA. If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h) .
  • 2. In bracket 1 insert the filing date of the request for a CPA.
  • 3. In bracket 2 insert the Application Number identified in the CPA request.

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2.38    Claiming Benefit to a Non-English Language Provisional Application

This application claims benefit to provisional application No. [1], filed on [2], in a language other than English. An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No. [3]. See 37 CFR 1.78 . The [4] required by 37 CFR 1.78 is missing. Accordingly, applicant must supply 1) the missing [5] in provisional application No. [6] and 2) in the present application, a confirmation that the translation and statement were filed in the provisional application. If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78 .

Examiner Note:

  • 1. Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required. Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005.
  • 2. In brackets 1 and 3, insert the application number of the non-English language provisional application.
  • 3. In bracket 2, insert the filing date of the prior provisional application.
  • 4. In brackets 4 and 5, insert --English translation and a statement that the translation is accurate-- or --statement that the translation is accurate--, where appropriate.

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2.39    35 U.S.C. 119(e) , 120 , 121 or 365(c) Benefit Claim is Untimely

The benefit claim filed on [1] was not entered because the required reference was not timely filed within the time period set forth in 37 CFR 1.78 . If the application is an application filed under 35 U.S.C. 111(a) , the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371 , the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) or sixteen months from the filing date of the prior application. If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120 , 121 or 365(c) , the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications. See 37 CFR 1.78.

If applicant desires the benefit under 35 U.S.C. [2] based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78 . The petition must be accompanied by: (1) the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted); (2) a surcharge under 37 CFR 1.17(t) ; and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Examiner Note:

  • 1. Use this form paragraph only for utility or plant applications filed on or after November 29, 2000.
  • 2. In bracket 1, insert the filing date of the amendment or paper containing the benefit claim.
  • 3. In bracket 2, insert --119(e)--, --120--, --121--, or --365(c)--.
  • 4. Do not use this form paragraph if the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 , but not in the location of the application as required by 37 CFR 1.78 (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt. In this situation, the petition under 37 CFR 1.78 and the surcharge under 37 CFR 1.17(t) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an amendment to the first sentence(s) of the specification (only if the application was filed before September 16, 2012) or an ADS. The reference is required in the ADS if the application was filed on or after September 16, 2012. See MPEP § 201.11 .

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2.40    Prior-Filed Application Not Entitled to a Filing Date or Basic Filing Fee Was Not Paid

This application claims the benefit of prior-filed application No. [1] under 120 , 121 , or 365(c) or under 35 U.S.C. 119(e) . If the prior-filed application is an international application designating the United States of America, it must be entitled to a filing date in accordance with PCT Article 11 . See 37 CFR 1.78 . If the prior-filed application is a nonprovisional application, the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(b) or 1.53(d) and include the basic filing fee set forth in 37 CFR 1.16 . See 37 CFR 1.78 . If the prior-filed application is a provisional application, the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee must be paid within the time period set forth in 37 CFR 1.53(g) . See 37 CFR 1.78 .

This application is not entitled to the benefit of the prior-filed application because the prior-filed application [2]. Applicant is required to delete the reference to the prior-filed application.

Examiner Note:

  • 1. Use this form paragraph to notify applicant that the application is not entitled to the benefit of the prior-filed application because the prior-filed application was not entitled to a filing date and/or did not include the basic filing fee.
  • 2. In bracket 1, insert the application number of the prior-filed application.
  • 3. In bracket 2, insert “was not entitled to a filing date”; “did not include the basic filing fee”; or “was not entitled to a filing date and did not include the basic filing fee”.

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4.01    Dual Correspondence

Applicant has appointed an attorney or agent to conduct all business before the Patent and Trademark Office. Double correspondence with an applicant and applicant"s attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33 .

Examiner Note:

  • 1. The first time a reply is received directly from applicant, include this paragraph in the Office action and send a copy of the action to the applicant. See MPEP §§ 403 and 714.01 .
  • 2. Should applicant file additional replies, do not send copies of subsequent Office actions to the applicant.
  • 3. Status letters from the applicant may be acknowledged in isolated instances.

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4.03    Death of Patent Practitioner

Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, this action is being mailed to the office of the patent practitioner and to the party who originally appointed the deceased patent practitioner. A new registered attorney or agent may be appointed.

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4.07    Attorney/Agent Suspended (Sole Practitioner)

The instant application contains a power of attorney to [1] who has been [2] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice. Accordingly, the Office action is being mailed to the address of the applicant first named in the application. Applicant(s) may file a new power of attorney in the application to have a registered attorney or agent represent them before the Office.

In the absence of an attorney or agent of record, for applications filed before September 16, 2012, all papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34 .

For applications filed on or after September 16, 2012, all papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34 ; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.

Applicants may obtain a list of registered patent attorneys and agents located in their area by consulting the USPTO web site, https://oedci.uspto.gov/OEDCI/ , or by calling the Office of Enrollment and Discipline at (571) 272-4097.

Examiner Note:

  • 1. In bracket 1, insert the name of the suspended or excluded practitioner.
  • 2. In bracket 2, insert either --suspended-- or --excluded--.
  • 3. This form paragraph should be used when the suspended or excluded practitioner is the only practitioner of record.
  • 4. The Office action is to be mailed only to the applicant first named in the application at that applicant’s current address of record.

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4.08    Attorney/Agent Suspended (Plural Practitioners)

The present application was filed containing a power of attorney to [1] and [2]. A correspondence address was supplied for [3]. No address was supplied for [4].

[5] was [6] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.

As a correspondence address, other than to [7], is not of record, this Office action is being mailed to [8] at his/her last known address as listed on the register of patent attorneys and agents. To ensure that a copy of this Office action is received in a timely manner to allow for a timely reply, a copy of the Office action is being mailed directly to the address of the applicant first named in the application. Any reply by applicant(s) should be by way of the remaining practitioner(s) of record and should include a new correspondence address.

Examiner Note:

  • 1. In brackets 1, 3, 5 and 7 insert the name of the suspended or excluded practitioner.
  • 2. In brackets 2, 4 and 8, insert the name of the first named unsuspended (unexcluded) registered practitioner of record.
  • 3. In bracket 6, insert either --suspended-- or --excluded--.
  • 4. This form paragraph should be used when there is at least one registered practitioner still of record who has not been suspended or excluded from practice. Use form paragraph 4.07 if there are no remaining registered attorneys or agents of record.
  • 5. The Office action is to be mailed both to the first named registered attorney or agent of record (who is not suspended or excluded) at the address currently listed in the Attorney’s Roster, and to the applicant first named in the application at that applicant’s current address of record.

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4.09    Unregistered Attorney or Agent

An examination of this application reveals that applicant has attempted to appoint an attorney or agent who is neither registered to practice before the U.S. Patent and Trademark Office in patent matters nor named as an inventor in the application, contrary to the Code of Federal Regulations, 37 CFR 1.31 and 1.32 . Therefore, the appointment is void, ab initio, and the Office will not recognize the appointment. All communications from the Office will be addressed to the first named applicant, unless specific instructions to the contrary are supplied by the applicant(s) for patent or owner(s).

For applications filed before September 16, 2012, in the absence of the appointment of a registered practitioner, all papers filed in the application must be signed: (1) by all named applicants unless one named applicant has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the provisions of 37 CFR 1.34

For applications filed on or after September 16, 2012, all papers must be signed by: (1) a patent practitioner of record; (2) a patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34 ; or (3) the applicant, except that papers submitted on behalf of a juristic entity applicant must be signed by a patent practitioner.

While an applicant (other than a juristic entity) may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is, therefore, encouraged to secure the services of a registered patent attorney or agent (i.e., registered to practice before the U.S. Patent and Trademark Office) to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecution.

The Office cannot aid you in selecting a registered attorney or agent, however, a list of attorneys and agents registered to practice before the U.S. Patent and Trademark Office is available at https://oedci.uspto.gov/OEDCI/. For assistance locating this information, contact the Office of Enrollment and Discipline at (571) 272-4097 or call the Inventors Assistance Center toll-free number, 1(800)786-9199.

Examiner Note:

This form paragraph is to be used ONLY after ensuring that the named representative is not registered with the Office. A PALM inquiry should be first made and if no listing is given, the Office of Enrollment and Discipline should be contacted to determine the current “recognition” status of the individual named by the applicant in a “power of attorney.” If the named individual is NOT registered or otherwise recognized by the Office, the correspondence address of record should be promptly changed to that of the first named applicant unless applicant specifically provides a different “correspondence address.” A copy of the Office communication incorporating this form paragraph should also be mailed to the unregistered individual named by the applicant in the “power of attorney.”

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4.10    Employ Services of Attorney or Agent

An examination of this application reveals that applicant is unfamiliar with patent prosecution procedure. While an applicant may prosecute the application (except that a juristic entity must be represented by a patent practitioner, 37 CFR 1.31 ), lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting an attorney or agent.

A listing of registered patent attorneys and agents is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent attorneys and agents located in their area by writing to the Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

Examiner Note:

The examiner should not suggest that applicant employ an attorney or agent if the application appears to contain no patentable subject matter.

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5.01    Proper Heading for Incoming Papers

It would be of great assistance to the Office if all incoming papers pertaining to a filed application carried the following items:

1. Application number (checked for accuracy, including series code and serial no.).

2. Art Unit number (copied from most recent Office communication).

3. Filing date.

4. Name of the examiner who prepared the most recent Office action.

5. Title of invention.

6. Confirmation number (see MPEP § 503 ).

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5.01.01    Separate Paper Required

The [1] submitted [2] should have been submitted as a separate paper as required by 37 CFR 1.4(c) . The paper has been entered. However, all future correspondence must comply with 37 CFR 1.4 .

Examiner Note:

  • 1. In bracket 1, indicate the item required to be separately submitted, such as an affidavit, petition, or other appropriate document.
  • 2. If the applicant is a pro se inventor, include a copy of the rule.

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5.02    Format of Certificate of Mailing or Transmission

The following are suggested formats for either a Certificate of Mailing or Certificate of Transmission under 37 CFR 1.8(a) . The certification may be included with all correspondence concerning this application or proceeding to establish a date of mailing or transmission under 37 CFR 1.8(a) . Proper use of this procedure will result in such communication being considered as timely if the established date is within the required period for reply. The Certificate should be signed by the individual actually depositing or transmitting the correspondence or by an individual who, upon information and belief, expects the correspondence to be mailed or transmitted in the normal course of business by another no later than the date indicated.

Certificate of Mailing

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

on ___________.

(Date)

Typed or printed name of person signing this certificate:

_____________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Certificate of Transmission

I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office, Fax No. (___)_____ -_________ on _____________. (Date)

Typed or printed name of person signing this certificate:

_________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Certificate of EFS-Web Transmission

I hereby certify that this correspondence is being transmitted via the U.S. Patent and Trademark Office (USPTO) electronic filing system (EFS-Web) to the USPTO on _____________. (Date)

Typed or printed name of person signing this certificate:

_________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Please refer to 37 CFR 1.6(a)(4) , 1.6(d) and 1.8(a)(2) for filing limitations concerning transmissions via EFS-Web, facsimile transmissions and mailing, respectively.

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5.03    Reassignment Affecting Application Location

The Art Unit location of your application in the USPTO has changed. To aid in correlating any papers for this application, all further correspondence regarding this application should be directed to Art Unit [1].

Examiner Note:

This paragraph should be used in all Office actions when the location of an application is changed due to a reassignment of the art, transfer of the application to a different Art Unit, or transfer of an examiner and the examiner’s docket.

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5.04    Benefit of Certificate of Mailing Denied

The [1] filed [2] is not entitled to the benefits of 37 CFR 1. [3] since it was not deposited with the U. S. Postal Service for delivery to the U.S. Patent and Trademark Office. Therefore, the date of receipt in the U.S. Patent and Trademark Office has been used to determine the timeliness of the paper.

Examiner Note:

  • 1. This form paragraph is to be used in those situations where correspondence contains a Certificate of Mailing under 37 CFR 1.8 or requests the benefit of “Express Mail” under 37 CFR 1.10 , but the correspondence was not actually deposited with the U. S. Postal Service.
  • 2. In bracket 3, insert --8-- or --10--, as appropriate.

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5.05    Small Entity Status

This application may qualify for “Small Entity Status” and, therefore, applicant may be entitled to the payment of reduced fees. In order to establish small entity status for the purpose of paying small entity fees, applicant must make a determination of entitlement to small entity status under 37 CFR 1.27(f) and make an assertion of entitlement to small entity status in the manner set forth in 37 CFR 1.27(c)(1) or 37 CFR 1.27(c)(3) . Accordingly, if applicant meets the requirements of 37 CFR 1.27(a) , applicant must submit a written assertion of entitlement to small entity status under 37 CFR 1.27(c) before fees can be paid in the small entity amount. See 37 CFR 1.27(d) . The assertion must be signed, clearly identifiable, and convey the concept of entitlement to small entity status. See 37 CFR 1.27(c)(1) . No particular form is required. If applicant qualifies as a small entity under 37 CFR 1.27 , applicant may also qualify for “Micro Entity Status” under 35 U.S.C. 123 . See 37 CFR 1.29 for the requirements to establish micro entity status for the purpose of paying micro entity fees.

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6.01    Arrangement of the Sections of the Specification in a Utility Application

The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.

Arrangement of the Specification

As provided in 37 CFR 1.77(b) , the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:

(a) TITLE OF THE INVENTION.

(b) CROSS-REFERENCE TO RELATED APPLICATIONS.

(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.

(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.

(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A COMPACT DISC OR AS A TEXT FILE VIA THE OFFICE ELECTRONIC FILING SYSTEM (EFS-WEB).

(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.

(g) BACKGROUND OF THE INVENTION.

(1) Field of the Invention.

(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98 .

(h) BRIEF SUMMARY OF THE INVENTION.

(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).

(j) DETAILED DESCRIPTION OF THE INVENTION.

(k) CLAIM OR CLAIMS (commencing on a separate sheet).

(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).

(m) SEQUENCE LISTING. (See MPEP § 2424 and 37 CFR 1.821 - 1.825 . A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821 (a) and if the required “Sequence Listing” is not submitted as an electronic document either on compact disc or as a text file via the Office electronic filing system (EFS-Web.)

Examiner Note:

For the arrangement of the sections of the specification in a design application, see 37 CFR 1.154 (b). Form paragraph 15.05 may be used for a design application. For the arrangement of the sections of the specification in a plant application, see 37 CFR 1.163 (c). For the requirements of the specification in a reissue application, see 37 CFR 1.173 (a)(1).

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6.02    Content of Specification

Content of Specification

(a) TITLE OF THE INVENTION : See 37 CFR 1.72(a) and MPEP § 606 . The title of the invention should be placed at the top of the first page of the specification unless the title is provided in an application data sheet. The title of the invention should be brief but technically accurate and descriptive, preferably from two to seven words. It may not contain more than 500 characters.

(b) CROSS-REFERENCES TO RELATED APPLICATIONS : See 37 CFR 1.78 and MPEP § 211 et seq.

(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT : See MPEP § 310 .

(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT . See 37 CFR 1.71 (g).

(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A COMPACT DISC OR AS A TEXT FILE VIA THE OFFICE ELECTRONIC FILING SYSTEM (EFS-WEB): The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application. See 37 CFR 1.52(e) and MPEP § 608.05 . See also the Legal Framework for EFS-Web posted on the USPTO Web site (http://www.uspto.gov/patents/process/file/efs/guidance/New_legal_framework.jsp) and MPEP § 502.05

(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. See 35 U.S.C. 102(b) and 37 CFR 1.77 .

(g) BACKGROUND OF THE INVENTION: See MPEP § 608.01(c) . The specification should set forth the Background of the Invention in two parts:

(1) Field of the Invention : A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions of the subject matter of the claimed invention. This item may also be titled “Technical Field.”

(2) Description of the Related Art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98 : A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant’s invention. This item may also be titled “Background Art.”

(h) BRIEF SUMMARY OF THE INVENTION : See MPEP § 608.01(d) . A brief summary or general statement of the invention as set forth in 37 CFR 1.73 . The summary is separate and distinct from the abstract and is directed toward the invention rather than the disclosure as a whole. The summary may point out the advantages of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention). In chemical cases it should point out in general terms the utility of the invention. If possible, the nature and gist of the invention or the inventive concept should be set forth. Objects of the invention should be treated briefly and only to the extent that they contribute to an understanding of the invention.

(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S) : See MPEP § 608.01(f) . A reference to and brief description of the drawing(s) as set forth in 37 CFR 1.74 .

(j) DETAILED DESCRIPTION OF THE INVENTION : See MPEP § 608.01(g) . A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71 . The description should be as short and specific as is necessary to describe the invention adequately and accurately. Where elements or groups of elements, compounds, and processes, which are conventional and generally widely known in the field of the invention described, and their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art, they should not be described in detail. However, where particularly complicated subject matter is involved or where the elements, compounds, or processes may not be commonly or widely known in the field, the specification should refer to another patent or readily available publication which adequately describes the subject matter.

(k) CLAIM OR CLAIMS : See 37 CFR 1.75 and MPEP § 608.01(m) . The claim or claims must commence on a separate sheet or electronic page ( 37 CFR 1.52 (b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i) - (p) .

(l) ABSTRACT OF THE DISCLOSURE : See 37 CFR 1.72 (b) and MPEP § 608.01(b) . A brief narrative of the disclosure as a whole in a single paragraph of 150 words or less commencing on a separate sheet following the claims. In an international application which has entered the national stage ( 37 CFR 1.491 (b)), the applicant need not submit an abstract commencing on a separate sheet if an abstract was published with the international application under PCT Article 21 . The abstract that appears on the cover page of the pamphlet published by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) is the abstract that will be used by the USPTO. See MPEP § 1893.03(e) .

(m) SEQUENCE LISTING : See 37 CFR 1.821 - 1.825 and MPEP §§ 2421 - 2431 . The requirement for a sequence listing applies to all sequences disclosed in a given application, whether the sequences are claimed or not. See MPEP § 2421.02 .

Examiner Note:

In this paragraph an introductory sentence will be necessary. This paragraph is intended primarily for use in pro se applications.

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6.11    Title of Invention Is Not Descriptive

The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.

Examiner Note:

If a change in the title of the invention is being suggested by the examiner, follow with form paragraph 6.11.01 .

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6.11.01    Title of Invention, Suggested Change

The following title is suggested: “ [1]

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6.12    Abstract Missing (Background)

This application does not contain an abstract of the disclosure as required by 37 CFR 1.72 (b). An abstract on a separate sheet is required.

Examiner Note:

  • 1. For a pro se applicant, consider following this paragraph with form paragraphs 6.14 to 6.16 as applicable.
  • 2. This form paragraph should not be used during the national stage prosecution of international applications (“371 applications”) if an abstract was published with the international application under PCT Article 21 .

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6.13    Abstract Objected To

The abstract of the disclosure is objected to because [1]. Correction is required. See MPEP § 608.01(b) .

Examiner Note:

  • 1. In bracket 1, indicate the informalities that require correction such as the inclusion of legal phraseology, undue length, etc.

Examiner Note:

  • 2. For a pro se applicant, this paragraph should be followed by form paragraphs 6.14 to 6.16 as applicable.

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6.14    Abstract of the Disclosure: Content

Applicant is reminded of the proper content of an abstract of the disclosure.

A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. In certain patents, particularly those for compounds and compositions, wherein the process for making and/or the use thereof are not obvious, the abstract should set forth a process for making and/or use thereof. If the new technical disclosure involves modifications or alternatives, the abstract should mention by way of example the preferred modification or alternative.

The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.

Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words.

See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.

Examiner Note:

See form paragraph 6.16

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6.15    Abstract of the Disclosure: Chemical Cases

Applicant is reminded of the proper content of an abstract of the disclosure.

In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.

Examiner Note:

See also form paragraphs 6.12 6.14 and 6.16 .

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6.16    Abstract of the Disclosure: Language

Applicant is reminded of the proper language and format for an abstract of the disclosure.

The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words. The form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.

The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc.

Examiner Note:

See also form paragraph 6.12 - 6.15 .

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6.16.01    Abstract of the Disclosure: Placement

The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52 (b)(4). A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.

Examiner Note:

  • 1. 37 CFR 1.72 (b) requires that the abstract be set forth on a separate sheet. This requirement applies to amendments to the abstract as well as to the initial filing of the application.
  • 2. This form paragraph should not be used during the national stage prosecution of international applications (“371 applications”) if an abstract was published with the international application under PCT Article 21 .

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6.17    Numbering of Claims, 37 CFR 1.126

The numbering of claims is not accordance with 37 CFR 1.126 , which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).

Misnumbered claim [1] been renumbered [2].

Examiner Note:

  • 1. In bracket 1, insert appropriate claim number(s) and --has-- or -- have --.
  • 2. In bracket 2, insert correct claim number(s) and --, respectively -- if more than one claim is involved.

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6.18    Series of Singular Dependent Claims

A series of singular dependent claims is permissible in which a dependent claim refers to a preceding claim which, in turn, refers to another preceding claim.

A claim which depends from a dependent claim should not be separated by any claim which does not also depend from said dependent claim. It should be kept in mind that a dependent claim may refer to any preceding independent claim. In general, applicant’s sequence will not be changed. See MPEP § 608.01(n) .

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6.18.01    Claims: Placement

The claims in this application do not commence on a separate sheet or electronic page in accordance with 37 CFR 1.52(b)(3) . Appropriate correction is required in response to this action.

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6.19    Incorporation by Reference, Unpublished U.S. Application, Foreign Patent or Application, Publication

The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 35 U.S.C. 1.57(f) .

Examiner Note:

Since the material that applicant is attempting to incorporate in the specification is considered to be essential material, an appropriate objection to the specification under 35 U.S.C. 132 and/or rejection of the claim(s) under 35 U.S.C. 112 , should be made. One or more of form paragraphs 7.31.01 to 7.31.04 , as for example, should be used following this form paragraph.

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6.19.01    Ineffective Incorporation by Reference, General

The attempt to incorporate subject matter into this application by reference to [1] is ineffective because [2].

Examiner Note:

  • 1. In bracket 1, identify the document such as an application or patent number or other identification.
  • 2. In bracket 2, give reason(s) why it is ineffective (e.g., the root words "incorporate" and/or "reference" have been omitted, see 37 CFR 1.57(b)(1); the reference document is not clearly identified as required by 37 CFR 1.57(b)(2)).
  • 3. This form paragraph should be followed by form paragraph 6.19.03 .

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6.19.02    Amendment Not in Compliance with 37 CFR 1.57(a)

The amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(a) filed [1] is not in compliance with 37 CFR 1.57(a) because [2].

Examiner Note:

  • 1. In bracket 1, insert the date the amendment was filed.
  • 2. In bracket 2, insert the reason why the amendment has not been entered. For example: (1) the present application was filed before September 21, 2004, the effective date of 37 CFR 1.57(a) ; (2) the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application; (3) the inadvertently omitted portion is not completely contained in the prior-filed application; (4) a copy of the prior-filed application (except where the prior-filed application is an application filed under 35 U.S.C. 111 ) was not submitted; (5) an English language translation of the prior-filed non-English language application was not submitted; or (6) applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.
  • 3. This form paragraph must be followed by form paragraph 7.28 , where the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, and/or form paragraph 7.31.01 , where the amendment adds new matter to the claims or affects the claims.
  • 4. If the amendment is an after-final amendment, an advisory action should be issued indicating that the amendment raises new issues because it is not in compliance with 37 CFR 1.57(a) .
  • 5. This form paragraph should not be used if there is an express incorporation by reference since applicant would not need to comply with the requirements of 37 CFR 1.57(a) .

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6.19.03    Correction of Ineffective Incorporation by Reference

The incorporation by reference will not be effective until correction is made to comply with 37 CFR 1.57(b), (c), or (d) . If the incorporated material is relied upon to meet any outstanding objection, rejection, or other requirement imposed by the Office, the correction must be made within any time period set by the Office for responding to the objection, rejection, or other requirement for the incorporation to be effective. Compliance will not be held in abeyance with respect to responding to the objection, rejection, or other requirement for the incorporation to be effective. In no case may the correction be made later than the close of prosecution as defined in 37 CFR 1.114(b) , or abandonment of the application, whichever occurs earlier.

Any correction inserting material by amendment that was previously incorporated by reference must be accompanied by a statement that the material being inserted is the material incorporated by reference and the amendment contains no new matter. 37 CFR 1.57(f) .

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6.20    Trademarks and Their Use

The use of the trademark [1] has been noted in this application. It should be capitalized wherever it appears and be accompanied by the generic terminology.

Although the use of trademarks is permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks.

Examiner Note:

  • 1. Capitalize each letter of the word in the bracket or include a proper trademark symbol, such as ™ or ® following the word.
  • 2. Examiners may conduct a trademark search by using the Trademark Electronic Search System (TESS) which is available on the USPTO website to determine whether a trademark identified in the patent application is a registered trademark or not.

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6.21    New Drawings, Competent Draftsperson

New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because [1]. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office does not prepare new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.

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6.22    Drawings Objected To

The drawings are objected to because [1]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d) . If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

Examiner Note:

  • 1. In bracket 1, insert the reason for the objection, for example, --the drawings do not show every feature of the invention specified in the claims-- or --the unlabeled rectangular box(es) shown in the drawings should be provided with descriptive text labels--.
  • 2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a) .
  • 3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.

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6.22.01    Drawings Objected To, Details Not Shown

The drawings are objected to under 37 CFR 1.83(a) because they fail to show [1] as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d) . Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

Examiner Note:

  • 1. In bracket 1, identify the structural details not shown in the drawings.
  • 2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a) .
  • 3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.

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6.22.02    Drawings Objected to, Different Numbers Refer to Same Part

The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters “ [1]” and [2] have both been used to designate [3]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d) . If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

Examiner Note:

  • 1. In brackets 1 and 2, identify the numbers which refer to the same part.
  • 2. In bracket 3, identify the part which is referred to by different numbers.
  • 3. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a) .
  • 4. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.

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6.22.03    Drawings Objected to, Different Parts Referred to by Same Number

The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “ [1]” has been used to designate both [2] and [3]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet " or "New Sheet" pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

Examiner Note:

  • 1. In bracket 1, identify the number which refers to the different parts.
  • 2. In brackets 2 and 3, identify the parts which are referred to by the same number.
  • 3. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a) .
  • 4. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.

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6.22.04    Drawings Objected to, Incomplete

The drawings are objected to under 37 CFR 1.83(b) because they are incomplete. 37 CFR 1.83(b) reads as follows:

When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.

Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d) . If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

Examiner Note:

  • 1. Supply a full explanation, if it is not readily apparent how the drawings are incomplete.
  • 2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a) .
  • 3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.

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6.22.05    Drawings Objected to, Modifications in Same Figure

The drawings are objected to under 37 CFR 1.84(h)(5) because Figure [1] show(s) modified forms of construction in the same view. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d) . If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

Examiner Note:

  • 1. In bracket 1, insert the appropriate Figure number(s).
  • 2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a) .
  • 3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.

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6.22.06    Drawings Objected to, Reference Numbers Not in Drawings

The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: [1]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d) . If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

Examiner Note:

  • 1. In bracket 1, specify the reference characters which are not found in the drawings, including the page and line number where they first occur in the specification.
  • 2. This form paragraph may be modified to require or allow the applicant to delete the reference character(s) from the description instead of adding them to the drawing(s).
  • 3. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a) .
  • 4. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.

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6.22.07    Drawings Objected to, Reference Numbers Not in Specification

The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: [1]. Corrected drawing sheets in compliance with 37 CFR 1.121(d) , or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d) If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

Examiner Note:

  • 1. In bracket 1, specify the reference characters which are not found in the specification, including the figure in which they occur.
  • 2. Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action. See 37 CFR 1.85(a) .
  • 3. This form paragraph may be followed by form paragraph 6.27 to require a marked up copy of the amended drawing figure(s) including annotations indicating the changes made in the corrected drawings.

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6.23    Subject Matter Admits of Illustration

The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81(c) . No new matter may be introduced in the required drawing. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d) .

Examiner Note:

When requiring drawings before examination use form paragraph 6.23.01 with a PTOL-90 or PTO-90C form as a cover sheet.

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6.23.01    Subject Matter Admits of Illustration (No Examination of Claims)

The subject matter of this application admits of illustration by a drawing to facilitate understanding of the invention. Applicant is required to furnish a drawing under 37 CFR 1.81 . No new matter may be introduced in the required drawing.

Applicant is given a TWO MONTH time period to submit a drawing in compliance with 37 CFR 1.81 . Extensions of time may be obtained under the provisions of 37 CFR 1.136(a) . Failure to timely submit a drawing will result in ABANDONMENT of the application.

Examiner Note:

  • 1. Use of this form paragraph should be extremely rare and limited to those instances where no examination can be performed due to lack of an illustration of the invention resulting in a lack of understanding of the claimed subject matter.
  • 2. Use a PTOL-90 or PTO-90C form as a cover sheet for this communication.

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6.24.01    Color Photographs and Color Drawings, Petition Required

Color photographs and color drawings are not accepted unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h) , three sets of color drawings or color photographs, as appropriate, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:

The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.

Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2). Note that the requirement for three sets of color drawings under 37 CFR 1.84(a)(2)(ii) is not applicable to color drawings submitted via EFS-Web. Therefore, only one set of such color drawings is necessary when filing via EFS-Web.

Examiner Note:

This form paragraph should be used only if the application contains color photographs or color drawings as the drawings required by 37 CFR 1.81.

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6.26    Drawings Do Not Permit Examination

The drawings are not of sufficient quality to permit examination. Accordingly, replacement drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to this Office action. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c) ) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.

Applicant is given a TWO MONTH time period to submit new drawings in compliance with 37 CFR 1.81 . Extensions of time may be obtained under the provisions of 37 CFR 1.136(a) . Failure to timely submit replacement drawing sheets will result in ABANDONMENT of the application.

Examiner Note:

  • 1. Use of this form paragraph should be extremely rare and limited to those instances where no examination can be performed due to the poor quality of the drawings resulting in a lack of understanding of the claimed subject matter.
  • 2. Use a PTOL-90 or PTO-90C form as a cover sheet for this communication.

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6.27    Requirement for Marked-up Copy of Drawing Corrections

In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1) . Failure to timely submit the corrected drawing and marked-up copy will result in the abandonment of the application.

Examiner Note:

  • 1. When this form paragraph is used by the examiner, the applicant must provide a marked-up copy of any amended drawing figure, including annotations indicating the changes made in the drawing replacement sheets. See 37 CFR 1.121(d)(2) .
  • 2. Applicants should be encouraged to submit corrected drawings before allowance in order to avoid having any term adjustment reduced pursuant to 37 CFR 1.704(c)(10) .

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6.28    Idiomatic English

A substitute specification in proper idiomatic English and in compliance with 37 CFR 1.52(a) and (b) is required. The substitute specification filed must be accompanied by a statement that it contains no new matter.

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6.28.01    Substitute Specification Required by Examiner

A substitute specification [1] the claims is required pursuant to 37 CFR 1.125(a) because [2].

A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strikethrough except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.

Examiner Note:

  • 1. In bracket 1, insert either --excluding-- or --including--.
  • 2. In bracket 2, insert clear and concise examples of why a new specification is required.
  • 3. A new specification is required if the number or nature of the amendments render it difficult to consider the application or to arrange the papers for printing or copying, 37 CFR 1.125.
  • 4. See also form paragraph 13.01 for partial rewritten specification.

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6.28.02    Substitute Specification Filed Under 37 CFR 1.125(b) and (c) Not Entered.

The substitute specification filed [1] has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because: [2]

Examiner Note:

  • 1. In bracket 2, insert statement of why the substitute specification is improper, for example:

    -- the statement as to a lack of new matter under 37 CFR 1.125(b) is missing--,

    -- a marked-up copy of the substitute specification has not been supplied (in addition to the clean copy)--;

    -- a clean copy of the substitute specification has not been supplied (in addition to the marked-up copy)--; or,

    -- the substitute specification has been filed:

    - in a reissue application or in a reexamination proceeding, 37 CFR 1.125(d) -, or

    - after payment of the issue fee-, or

    - containing claims (to be amended)- --.

  • 2. A substitute specification filed after final action or appeal is governed by 37 CFR 1.116 . A substitute specification filed after the mailing of a notice of allowance is governed by 37 CFR 1.312 .

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6.29    Specification, Spacing of Lines

The spacing of the lines of the specification is such as to make reading difficult. New application papers with lines 1 1/2 or double spaced on good quality paper are required.

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6.30    Numerous Errors in Specification

35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA) . Examples of some unclear, inexact or verbose terms used in the specification are: [1].

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6.31    Lengthy Specification, Jumbo Application

The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.

Examiner Note:

This paragraph is applicable in so-called “Jumbo Applications” (more than 20 pages, exclusive of claims).

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6.32.01    Application Papers Must Be Legible

The specification (including the abstract and claims), and any amendments for applications, except as provided for in 37 CFR 1.821 through 1.825 , must have text written plainly and legibly either by a typewriter or machine printer in a nonscript type font ( e.g., Arial, Times Roman, or Courier, preferably a font size of 12) lettering style having capital letters which should be at least 0.3175 cm. (0.125 inch) high, but may be no smaller than 0.21 cm. (0.08 inch) high ( e.g., a font size of 6) in portrait orientation and presented in a form having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition; and only a single column of text. See 37 CFR 1.52(a) and (b).

The application papers are objected to because [1].

A legible substitute specification in compliance with 37 CFR 1.52(a) and (b) and 1.125 is required.

Examiner Note:

  • 1. In bracket 1, identify the part of the specification that is illegible: all of the specification; or certain pages of the specification.
  • 2. Do not use this form paragraph for reissue applications or reexamination proceedings.

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6.36    Drawings Do Not Show Claimed Subject Matter

The drawings are objected to under 37 CFR 1.83(a) . The drawings must show every feature of the invention specified in the claims. Therefore, the [1] must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.

Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d) . If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

Examiner Note:

In bracket 1, insert the features that must be shown.

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6.36.01    Illustration of “Prior Art”

Figure [1] should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g) . Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c) ) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

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6.37    Acknowledgment of Replacement Drawing Sheets

The drawings were received on [1]. These drawings are [2].

Examiner Note:

  • 1. In bracket 2, insert either --acceptable-- or --not acceptable--.
  • 2. If not acceptable because of noncompliance with 37 CFR 1.121(d) , an explanation must be provided. Form PTOL-324 may be used instead of this form paragraph to provide the explanation.

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6.39    USPTO Does Not Make Drawing Changes

The United States Patent and Trademark Office does not make drawing changes. It is applicant’s responsibility to ensure that the drawings are corrected. Corrections must be made in accordance with the instructions below.

Examiner Note:

This form paragraph is to be used whenever the applicant has filed a request for the Office to make drawing changes. Form paragraph 6.40 must follow.

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6.40    Information on How To Effect Drawing Changes

INFORMATION ON HOW TO EFFECT DRAWING CHANGESReplacement Drawing Sheets

Drawing changes must be made by presenting replacement sheets which incorporate the desired changes and which comply with 37 CFR 1.84 . An explanation of the changes made must be presented either in the drawing amendments section, or remarks, section of the amendment paper. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d) . A replacement sheet must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of the amended drawing(s) must not be labeled as “amended.” If the changes to the drawing figure(s) are not accepted by the examiner, applicant will be notified of any required corrective action in the next Office action. No further drawing submission will be required, unless applicant is notified.

Identifying indicia, if provided, should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet and within the top margin.

Annotated Drawing Sheets

A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be submitted or required by the examiner. The annotated drawing sheets must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change(s) to the drawings.

Timing of Corrections

Applicant is required to submit acceptable corrected drawings within the time period set in the Office action. See 37 CFR 1.85(a) . Failure to take corrective action within the set period will result in ABANDONMENT of the application.

If corrected drawings are required in a Notice of Allowability (PTOL-37), the new drawings MUST be filed within the THREE MONTH shortened statutory period set for reply in the “Notice of Allowability.” Extensions of time may NOT be obtained under the provisions of 37 CFR 1.136 for filing the corrected drawings after the mailing of a Notice of Allowability.

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6.41    Reminder That USPTO Does Not Make Drawing Changes

Applicant is reminded that the U.S. Patent and Trademark Office does not make drawing changes and that it is applicant’s responsibility to ensure that the drawings are corrected in accordance with the instructions set forth in the paper mailed on [1].

Examiner Note:

This form paragraph is to be used when the applicant has been previously provided with information on how to effect drawing changes.

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6.42    Reminder That Applicant Must Make Drawing Changes

Applicant is reminded that in order to avoid an abandonment of this application, the drawings must be corrected in accordance with the instructions set forth in the paper mailed on [1].

Examiner Note:

This form paragraph is to be used when allowing the application and when applicant has previously been provided with information on how to effect drawing changes.

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6.43    Drawings Contain Informalities, Application Allowed

The drawings filed on [1] are acceptable subject to correction of the informalities indicated below. In order to avoid abandonment of this application, correction is required in reply to the Office action. The correction will not be held in abeyance.

Examiner Note:

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6.47    Examiner’s Amendment Involving Drawing Changes

The following changes to the drawings have been approved by the examiner and agreed upon by applicant: [1]. In order to avoid abandonment of the application, applicant must make these agreed upon drawing changes.

Examiner Note:

  • 1. In bracket 1, insert the agreed upon drawing changes.
  • 2. Form paragraphs 6.39 and 6.40 must follow.

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6.48    Model, Exhibit, or Specimen - Applicant Must Make Arrangements for Return

The [1] is no longer necessary for the conduct of business before the Office. Applicant must arrange for the return of the model, exhibit or specimen at the applicant’s expense in accordance with 37 CFR 1.94(a) .

Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter to make arrangements for return of the above-identified model, exhibit, or specimen to avoid its disposal in accordance with 37 CFR 1.94(c) . Extensions of time are available under 37 CFR 1.136 , except in the case of perishables.

Applicant is responsible for retaining the actual model, exhibit, or specimen for the enforceable life of any patent resulting from the application unless one of the exceptions set forth in 37 CFR 1.94(b) applies.

Examiner Note:

  • 1. In bracket 1, identify the model, exhibit, or specimen that is no longer needed by the Office.
  • 2. The Office will dispose of perishables without notice to Applicant unless applicant notifies the Office upon submission of the model, exhibit or specimen that a return is desired and makes arrangements for its return promptly upon notification by the Office that the model, exhibit or specimen is no longer necessary for the conduct of business before the Office.

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6.49    Information Disclosure Statement Not Considered

The information disclosure statement filed [1] fails to comply with the provisions of 37 CFR 1.97 , 1.98 and MPEP § 609 because [2]. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any resubmission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all requirements for statements under 37 CFR 1.97(e) . See MPEP § 609.05(a) .

Examiner Note:

See MPEP § 609.05(a) for situations where the use of this form paragraph would be appropriate.

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6.49.01    Information Disclosure Statement Not Considered, After First Action, But Before the Prosecution of the Application Closes, No Statement

The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(c) because it lacks a statement as specified in 37 CFR 1.97(e) . It has been placed in the application file, but the information referred to therein has not been considered.

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6.49.02    Information Disclosure Statement Not Considered, After First Action, But Before the Prosecution of the Application Closes, No Fee

The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(c) because it lacks the fee set forth in 37 CFR 1.17(p) . It has been placed in the application file, but the information referred to therein has not been considered.

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6.49.03    Information Disclosure Statement Not Considered, After the Prosecution of the Application Closes, Issue Fee Not Paid, No Statement

The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(d) because it lacks a statement as specified in 37 CFR 1.97(e) . It has been placed in the application file, but the information referred to therein has not been considered.

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6.49.05    Information Disclosure Statement Not Considered, After the Prosecution of the Application Closes, Issue Fee Not Paid, No Fee

The information disclosure statement filed [1] fails to comply with 37 CFR 1.97(d) because it lacks the fee set forth in 37 CFR 1.17(p) . It has been placed in the application file, but the information referred to therein has not been considered.

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6.49.06    Information Disclosure Statement Not Considered, References Listed in Specification

The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, applications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) , subsection I. states, “the list may not be incorporated into the specification but must be submitted in a separate paper.” Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.

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6.49.07    Information Disclosure Statement Not Considered, No Copy of References

The information disclosure statement filed [1] fails to comply with 37 CFR 1.98(a) (2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.

Examiner Note:

Do not use this form paragraph when the missing reference(s) are U.S. patents, U.S. patent application publications, or U.S. pending applications (limited to the specification, including claims, and drawings) stored in IFW.

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6.49.08    Information Disclosure Statement Not Considered, Non-Compliant List of References

The information disclosure statement filed [1] fails to comply with 37 CFR 1.98(a) (1), which requires the following: (1) a list of all patents, publications, applications, or other information submitted for consideration by the Office; (2) U.S. patents and U.S. patent application publications listed in a section separately from citations of other documents; (3) the application number of the application in which the information disclosure statement is being submitted on each page of the list; (4) a column that provides a blank space next to each document to be considered, for the examiner’s initials; and (5) a heading that clearly indicates that the list is an information disclosure statement. The information disclosure statement has been placed in the application file, but the information referred to therein has not been considered.

Examiner Note:

If an IDS listing includes a copy of an initialed IDS listing from another application, the IDS listing would not comply with the requirements under 37 CFR 1.98 (a)(1). This form paragraph is applicable for such an IDS submission.

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6.49.09    Information Disclosure Statement Not Considered, No Explanation of Relevance of Non-English Language Information

The information disclosure statement filed [1] fails to comply with 37 CFR 1.98(a) (3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.

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6.49.10    Information Disclosure Statement Not Considered, Non-acceptable Electronic Medium

The information disclosure statement filed [1] was submitted on an electronic medium that was not acceptable. It has been placed in the application file, but the information referred to therein has not been considered. Note that U.S. patents, U.S. application publications, foreign patent documents and non-patent literature cited in an information disclosure statement may be electronically submitted in compliance with the Office Electronic Filing System (EFS) requirements.

Examiner Note:

This form paragraph may be used when the IDS that includes patents and non-patent literature documents is submitted on compact discs or any other electronic medium, except via EFS. Only tables, sequence listings, and program listings may be submitted on CDs. See 37 CFR 1.52(a) and (e).

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6.51    Time for Completing Information Disclosure Statement

The information disclosure statement filed on [1] does not fully comply with the requirements of 37 CFR 1.98(b) because: [2]. Since the submission appears to be bona fide, applicant is given ONE (1) MONTH from the date of this notice to supply the above-mentioned omissions or corrections in the information disclosure statement. NO EXTENSION OF THIS TIME LIMIT MAY BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b). Failure to timely comply with this notice will result in the above-mentioned information disclosure statement being placed in the application file with the non-complying information not being considered. See 37 CFR 1.97(i) .

Examiner Note:

Use this form paragraph if an IDS complies with the timing requirements of 37 CFR 1.97 but part of the content requirements of 37 CFR 1.98(b) has been inadvertently omitted.

This practice does not apply where there has been a deliberate omission of some necessary part of an Information Disclosure Statement or where the requirements based on the time of filing the statement, as set forth in 37 CFR 1.97 , have not been complied with.

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6.52    Information Disclosure Statement Filed After Prosecution Has Been Closed

The information disclosure statement (IDS) submitted on [1] was filed after the mailing date of the [2] on [3]. The submission is in compliance with the provisions of 37 CFR 1.97 . Accordingly, the information disclosure statement is being considered by the examiner.

Examiner Note:

  • 1. In bracket 1, insert the date the IDS was filed.
  • 2. In bracket 2, insert --final Office action--, --Notice of Allowance--, or an -- Ex parte Quayle action-- as appropriate.

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6.53    References Considered in 37 U.S.C. 371 Application Based Upon Search Report - Prior to Allowance

The references cited in the Search Report [1] have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1) . In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08A and 08B form, must be filed within the set period for reply to this Office action.

Examiner Note:

  • 1. In bracket [1], identify the office (e.g., PCT, EPO, etc.) that issued the search report and the date it issued.
  • 2. This form paragraph may be used for PCT National Stage applications submitted under 35 U.S.C. 371 where the examiner has obtained copies of the cited references. If receipt of such copies is not indicated on the PCT/DO/EO/903 form in the file, burden is on the applicant to supply copies for consideration. See MPEP § 1893.03(g) .
  • 3. Instead of using this form paragraph, the examiner may list the references on a PTO-892, thereby notifying the applicant that the references have been considered and will be printed on any patent resulting from this application.
  • 4. This form paragraph should only be used prior to allowance when a statutory period for reply is being set in the Office action.
  • 5. If the application is being allowed, form paragraph 6.54 should be used with the Notice of Allowability instead of this form paragraph.

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6.54    References Considered in 37 U.S.C. 371 Application Based Upon Search Report - Ready for Allowance

The references cited in the Search Report [1] have been considered, but will not be listed on any patent resulting from this application because they were not provided on a separate list in compliance with 37 CFR 1.98(a)(1) . In order to have the references printed on such resulting patent, a separate listing, preferably on a PTO/SB/08A and 08B form, must be filed within ONE MONTH of the mailing date of this communication. NO EXTENSION OF TIME WILL BE GRANTED UNDER EITHER 37 CFR 1.136(a) OR (b) to comply with this requirement.

Examiner Note:

  • 1. In bracket [1], identify the office (e.g., PCT, EPO, etc.) that issued the search report and the date it issued.
  • 2. This form paragraph may be used for PCT National Stage applications submitted under 35 U.S.C. 371 where the examiner has obtained copies of the cited references. If receipt of such copies is not indicated on the PCT/DO/EO/903 form in the file, burden is on the applicant to supply copies for consideration. See MPEP § 1893.03(g) .
  • 3. Instead of using this form paragraph, the examiner may list the references on a PTO-892, thereby notifying the applicant that the references have been considered and will be printed on any patent resulting from this application.

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6.55    References Not Considered in 35 U.S.C. 371 Application Based Upon Search Report

The listing of references in the Search Report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98 . 37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed; (3) for each cited pending U.S. application, the application specification including claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused it to be listed. In addition, each IDS must include a list of all patents, publications, applications, or other information submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and (b)), and MPEP § 609.04(a) , subsection I. states, “the list ... must be submitted on a separate paper.” Therefore, the references cited in the Search Report have not been considered. Applicant is advised that the date of submission of any item of information or any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the IDS, including all “statement” requirements of 37 CFR 1.97(e) . See MPEP § 609.05(a) .

Examiner Note:

  • 1. This form paragraph may be used in National Stage applications submitted under 35 U.S.C. 371 .
  • 2. Do not use this form paragraph when the missing references are U.S. patents, U.S. patent application publications, or U.S. pending applications that are stored in IFW.

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6.60.01    CD-ROM/CD-R Requirements (No Statement that CDs are Identical)

This application is objected to under 37 CFR 1.52(e)(4) because it does not contain a statement in the transmittal letter that the two compact discs are identical. Correction is required.

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6.60.02    CD-ROM/CD-R Requirements (No Listing in Transmittal Letter)

This application is objected to because it contains a data file on CD-ROM/CD-R, however, the transmittal letter does not list for each compact disc, the machine format, the operating system compatibility, a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret the information on the compact disc as required by 37 CFR 1.52(e)(3) . A statement listing the required information is required.

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6.61.01    Specification Lacking List of Compact Disc(s) and /or Associated Files

Portions of this application are contained on compact disc(s). When portions of an application are contained on a compact disc, the paper portion of the specification must identify the compact disc(s) and list the files including name, file size, and creation date on each of the compact discs. See 37 CFR 1.52(e) . Compact disc labeled [1] is not identified in the paper portion of the specification with a listing of all of the files contained on the disc. Applicant is required to amend the specification to identify each disc and the files contained on each disc including the file name, file size, and file creation date.

Examiner Note:

In bracket 1, insert the name on the label of the compact disc.

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6.61.02    Specification Lacking An Incorporation By Reference Statement for Compact Disc or Text File Submitted Via EFS-Web

This application contains compact disc(s) or text file(s) submitted via EFS-Web as part of the originally filed subject matter, but does not contain an incorporation by reference statement for the compact discs or text files. See 37 CFR 1.77(b)(4) and MPEP § 502.05 . Applicant(s) are required to insert in the specification an appropriate incorporation-by-reference statement.

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6.62    Data File on CD-ROM/CD-R Not in ASCII File Format

This application contains a data file on CD-ROM/CD-R that is not in an ASCII file format. See 37 CFR 1.52(e) . File [1] is not in an ASCII format. Applicant is required to resubmit file(s) in ASCII format. No new matter may be introduced in presenting the file(s) in ASCII format.

Examiner Note:

  • 1. This form paragraph must be used to indicate whenever a data file (table, computer program listing or Sequence Listing) is submitted in a non-ASCII file format. The file may be in a file format that is proprietary, e.g., a Microsoft Word, Excel or Word Perfect file format; and/or the file may contain non-ASCII characters.
  • 2. In bracket 1, insert the name of the file and whether the file is a non-text proprietary file format and/or contains non-ASCII characters.

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6.63.01    CD-ROM/CD-R Requirements (Table Listing in Specification)

The description portion of this application contains a table consisting of less than fifty one (51) pages only on a CD-ROM or CD-R. In accordance with 37 CFR 1.52(e) , only a table of at least fifty one (51) pages may be submitted on a CD-ROM or CD-R. Accordingly, applicant is required to cancel the references to the CD-ROM/CD-R table appearing in the specification on pages [1], file a paper version of the table in compliance with 37 CFR 1.52 and change all appropriate references to the former CD-ROM/CD-R table to the newly added paper version of the table in the remainder of the specification.

Examiner Note:

  • 1. This form paragraph must be used whenever a table on a CD-ROM or CD-R consisting of less than fifty one (51) pages as part of the descriptive portion of the specification is filed on or after September 8, 2000. See MPEP § 608.05(b) .
  • 2. In bracket 1, insert the range of page numbers of the specification which reference the table.

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6.63.02    Table on CD-ROM/CD-R Column/Row Relationship Not Maintained

This application contains a table on CD-ROM/CD-R. Tables presented on CD-ROM/CD-R in compliance with 37 CFR 1.58 must maintain the spatial orientation of the cell entries. The table submitted does not maintain the data within each table cell in its proper row/column alignment. The data is misaligned in the table as follows: [1]. Applicant is required to submit a replacement compact disc with the table data properly aligned.

Examiner Note:

  • 1. This form paragraph must be used whenever the data in a table cannot be accurately read because the data in the table cells do not maintain their row and column alignments.
  • 2. In bracket 1, insert the area of the table that does not maintain the row and column alignments.

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6.64.01    Computer Program Listing Appendix on Compact Disc Requirement

The description portion of this application contains a computer program listing consisting of more than three hundred (300) lines. In accordance with 37 CFR 1.96(c) , a computer program listing of more than three hundred lines must be submitted as a computer program listing appendix on compact disc conforming to the standards set forth in 37 CFR 1.96(c)(2) and must be appropriately referenced in the specification (see 37 CFR 1.77(b)(5) ). Accordingly, applicant is required to cancel the computer program listing appearing in the specification on pages [1], file a computer program listing appendix on compact disc in compliance with 37 CFR 1.96(c) , and insert an appropriate reference to the newly added computer program listing appendix on compact disc at the beginning of the specification.

Examiner Note:

  • 1. This form paragraph must be used whenever a computer program listing consisting of more than three hundred lines is included as part of the descriptive portion of the specification if the computer program listing was filed on or after September 8, 2000. See MPEP § 608.05(a) .
  • 2. In bracket 1, insert the range of page numbers of the specification which include the computer program listing.

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6.64.02    Computer Program Listing as Printout Within the Specification (More Than 60 Lines And Not More Than Three Hundred Lines)

This application contains a computer program listing of over sixty (60) lines and less than three hundred and one (301) lines within the written specification. In accordance with 37 CFR 1.96(b) , a computer program listing contained on over sixty (60) lines and less than three hundred-one (301) lines must, if submitted as part of the specification, be positioned at the end of the specification and before the claims. Accordingly, applicant is required to cancel the computer program listing and either incorporate such listing in a compact disc in compliance with 37 CFR 1.96 , or insert the computer program listing after the detailed description of the invention but before the claims, in the form of direct printouts from a computer’s printer with dark solid black letters not less than 0.21 cm. high, on white, unshaded and unlined paper.

Examiner Note:

This form paragraph must be used whenever a computer program listing consisting of a paper printout of more than 60 lines and no more than three hundred lines is included as part of the descriptive portion of the specification and the computer program listing was filed on or after September 8, 2000. See MPEP § 608.05(a) .

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6.64.03    Computer Program Listing of More Than Three Hundred Lines

This application contains a computer program listing of more than three hundred (300) lines. In accordance with 37 CFR 1.96(c) , a computer program listing contained on more than three hundred (300) lines must be submitted as a computer program listing appendix on compact disc conforming to the standards set forth in 37 CFR 1.96(c)(2) and must be appropriately referenced in the specification (see 37 CFR 1.77(b)(5) ). Accordingly, applicant is required to cancel the current computer program listing, file a computer program listing appendix on compact disc in compliance with 37 CFR 1.96(c) , and insert an appropriate reference to the newly added computer program listing appendix on compact disc at the beginning of the specification.

Examiner Note:

This form paragraph must be used whenever a computer program listing consisting of a paper printout of more than three hundred lines is filed on or after September 8, 2000.

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6.64.04    “Microfiche Appendix” Unacceptable

The computer program listing filed on [1] as a “microfiche appendix” is unacceptable. A computer program listing conforming to the requirements of 37 CFR 1.96 is required.

Examiner Note:

  • 1. This form paragraph should be used if a “microfiche appendix” was filed after March 1, 2001 or if a “microfiche appendix” filed on or before March 1, 2001 was not in compliance with former rule 37 CFR 1.96(c) . See MPEP § 608.05(a) .
  • 2. In bracket 1, insert the date the “microfiche appendix” was filed.

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6.70.01    CD-ROM/CD-R Requirements (Amendment Does Not Include Statement that CDs are Identical)

The amendment filed [1] is objected to under 37 CFR 1.52(e)(4) because it does not contain a statement in the transmittal letter that the two compact discs are identical. Correction is required.

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6.70.02    CD-ROM/CD-R Requirements (No Listing in Transmittal Letter Submitted With Amendment)

The amendment filed [1] contains data on compact disc(s). Compact disc labeled [2] is not identified in the transmittal letter and/or the transmittal letter does not list for each compact disc, the machine format, the operating system compatibility, a list of files contained on the compact disc including their names, sizes in bytes, and dates of creation, plus any other special information that is necessary to identify, maintain, and interpret the information on the compact disc as required by 37 CFR 1.52(e)(3) . A statement listing the required information is required.

Examiner Note:

  • 1. Use this form paragraph when the transmittal letter does not include a listing of the files and required information.
  • 2. In bracket 1, insert the date of the amendment.
  • 3. In bracket 2, insert the name on the label of the compact disc.

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6.71.01    Specification Lacking List of Compact Disc(s) and/or Associated Files (Amendment Filed With Compact Disc(s))

The amendment filed [1] contains data on compact disc(s). Compact disc labeled [2] is not identified in the paper portion of the specification with a listing of all of the files contained on the disc. Applicant is required to amend the specification to identify each disc and the files contained on each disc including the file name, file size, and file creation date. See 37 CFR 1.52(e) .

Examiner Note:

  • 1. In bracket 1, insert the date of the amendment.
  • 2. In bracket 2, insert the name on the label of the compact disc.

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6.71.02    Specification Lacking An Incorporation By Reference Statement for the Compact Disc (Amendment Filed With Compact Disc)

The amendment filed [1] amends or adds a compact disc(s). See 37 CFR 1.77(b)(4) and 1.52(e)(5) . Applicant is required to update or insert an incorporation-by-reference of the material on the compact disc(s) in the specification.

Examiner Note:

  • 1. Use this form paragraph when the CD-ROM/CD-R is filed with an amendment, but the required incorporation-by-reference statement is neither amended nor added to the specification.
  • 2. In bracket 1, insert the date of the amendment.

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6.72.01    CD-ROM/CD-R Requirements (CDs Not Identical)

The amendment filed [1] is objected to under 37 CFR 1.52(e)(4) because the two compact discs are not identical. Correction is required.

Examiner Note:

  • 1. Use this form paragraph when the two compact discs are not identical.
  • 2. See also form paragraph 6.70.01 where the transmittal letter does not include a statement that the two compact discs are identical.

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6.72.02    Data File, Submitted With Amendment, on CD-ROM/CD-R Not in ASCII File Format

The amendment filed [1] contains a data file on CD-ROM/CD-R that is not in an ASCII file format. File [2] is not in an ASCII format. Applicant is required to resubmit file(s) in ASCII format as required by 37 CFR 1.52(e)(3) . No new matter may be introduced in presenting the file(s) in ASCII format.

Examiner Note:

  • 1. This form paragraph must be used whenever a data file (table, computer program listing or Sequence Listing) is submitted in a non-ASCII file format. The file may be in a file format that is proprietary, e.g., a Microsoft Word, Excel or Word Perfect file format; and/or the file contains non-ASCII characters.
  • 2. In bracket 1, insert the date of the amendment.
  • 3. In bracket 2, insert the name of the file and whether the file is a non-text proprietary file format and/or contains non-ASCII characters.

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6.72.03    CD-ROM/CD-R Are Not Readable

The amendment filed [1] contains a data file on CD-ROM/CD-R that is unreadable. Applicant is required to resubmit the file(s) in International Standards Organization (ISO) 9660 standard and American Standard Code for Information Interchange (ASCII) format as required by 37 CFR 1.52(e)(3) . No new matter may be introduced in presenting the file in ISO 9660 and ASCII format.

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6.72.04    CD-ROM/CD-R Contains Viruses

The amendment filed [1] is objected to because the compact disc contains at least one virus. Correction is required.

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6.72.05    CD-ROM/CD-R Requirements (Missing Files On Amended Compact Disc)

The amendment to the application filed [1] is objected to because the newly submitted compact disc(s) do not contain all of the unamended data file(s) together with the amended data file(s) that were on the CD-ROM/CD-R. Since amendments to a compact disc can only be made by providing a replacement compact disc, the replacement disc must include all of the files, both amended and unamended, to be a complete replacement.

Examiner Note:

Use this form paragraph when a replacement compact disc is submitted that fails to include all of the files on the original compact disc(s) that have not been cancelled by amendment.

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7.01    Use of Unconventional 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 form paragraph 7.02 when a proper search cannot be made. However, see MPEP § 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 the drawing is not acceptable, see MPEP §§ 608.02(a) and 608.02(b) .

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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 form 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.
  • 4. Use form paragraphs 7.31.01 7.31.04 , as appropriate, for a rejection of claims (when necessary) based on the deficiencies set forth in this form paragraph.

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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 one or more of form paragraphs - 7.05.01 , 7.05.011 , 7.05.012 , 7.05.013 , 7.05.02 , 7.05.03 , or another appropriate reason.
  • 2. Explain the rejection following the recitation of the statute and the use of form paragraph(s) or other reason.
  • 3. See MPEP §§ 706.03(a) and 2105 - 2107.03 for other situations.
  • 4. This form paragraph must be preceded by form paragraph 7.04.01 in first actions and final rejections.

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7.05.01    Rejection, 35 U.S.C. 101, Non-Statutory

the claimed invention is directed to non-statutory subject matter because [1]

Examiner Note:

  • 1. In bracket 1, explain why the claimed invention is not patent eligible subject matter, e.g.,
  • (a) why the claimed invention does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (process, machine, manufacture, or composition of matter), e.g., the claim is directed to a signal per se, a contract between two parties, or a human being; or
  • (b) why the claimed invention, although nominally falling within at least one of the four eligible categories, is directed to a judicial exception to 35 U.S.C. 101 (i.e., an abstract idea, natural phenomenon, or law of nature); or
  • (c) why the claimed invention would impermissibly cover every substantial practical application of, and thereby preempt all use of, an abstract idea, natural phenomenon, or law of nature; or
  • (d) why the claimed invention is directed to a naturally-occurring nucleic acid or fragment thereof, whether isolated or not, that is not patent-eligible pursuant to the Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, Inc. , -- U.S. -- (June 13, 2013).
  • 2. For a claim that is directed to an abstract idea and is non-statutory, use form paragraph 7.05.011 .

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7.05.011    Rejection, 35 U.S.C. 101, Non-Statutory Method (Abstract Idea)

the claimed invention is not directed to patent eligible subject matter. Based upon consideration of all of the relevant factors with respect to the claim as a whole, claim(s) [1] is/are determined to be directed to an abstract idea.  The rationale for this determination is explained below:   [2]

Examiner Note:

  • 1.        This form paragraph should only be used when rejecting method claim(s) directed to an abstract idea.
  • 2.        In bracket 2, identify the decisive factors weighing against patent eligibility under 35 U.S.C. 101 , and explain the manner in which these factors support a conclusion of patent ineligibility under 35 U.S.C. 101 . For instance, that additional limitations are no more than a field of use or merely involve insignificant extrasolution activity; e.g., data gathering. The explanation needs to be sufficient to establish a prima facie case of patent ineligibility under 35 U.S.C. 101 .

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7.05.012    Dependent Claim(s)  - Rejection, 35 U.S.C. 101, Non-Statutory Method (Abstract Idea)

Dependent claim(s) [1] when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below:   [2]

Examiner Note:

  • 1.        This form paragraph should only be used when rejecting dependent method claim(s) directed to an abstract idea.
  • 2.        In bracket 2, provide an explanation as to why the claim(s) is/are directed to an abstract idea; for instance, that the additional limitations are no more than a field of use or merely involve insignificant extrasolution activity; e.g., data gathering.  The explanation needs to be sufficient to establish a prima facie case of patent ineligibility under 35 U.S.C. 101 .

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7.05.013    Rejection, 35 U.S.C. 101, Non-Statutory Method (Law of Nature)

the claimed invention is not directed to patent eligible subject matter. Based upon an analysis with respect to the claim as a whole, claim(s) [1] is/are determined to be directed to a law of nature/natural principle. The rationale for this determination is explained below: [2]

Examiner Note:

  • 1. This form paragraph should only be used when rejecting method claim(s) that have a law of nature/natural principle as a claim limitation.
  • 2. In bracket 2, identify the natural principle that is the limiting feature in the claim, and explain why the additional elements or steps in the claim do not integrate the natural principle into the method and/or why the additional elements or steps in the claim are not sufficient to ensure that the claim amounts to significantly more than the natural principle itself. For instance, the additional elements or steps can be shown to be extrasolution activity or mere field of use that impose no meaningful limit on the performance of the method or can be shown to be no more than well-understood, purely conventional, and routinely taken by others in order to apply the natural principle. The explanation needs to be sufficient to establish a prima facie case of patent ineligibility under 35 U.S.C. 101 .

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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. See MPEP §§ 706.03(a) and 2105 - 2107.03 .

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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.

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7.05.04    Utility Rejections Under 35 U.S.C. 101 and 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), 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(a) or pre-AIA 35 U.S.C. 112 , first paragraph. Specifically, because 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:

  • 1. Where the specification would not enable one skilled in the art to make the claimed invention, or where alternative reasons support the enablement rejection, a separate rejection under 35 U.S.C. 112(a) or pre-AIA 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 §§ 2164 - 2164.08(c) .
  • 2 Use Format A, B, or C below as appropriate.
    • Format A:
      • (a) Insert the same claim numbers in brackets 1 and 4.
      • (b) Insert --specific and substantial-- 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 and substantial asserted utility or a well established utility.
      • (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 and substantial.
    • 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.
    • Format C: For claims that have multiple utilities, some of which are not specific and substantial, some of which are not credible, but none of which are specific, substantial and credible:
      • (a) Insert the same claim numbers in brackets 1 and 4.
      • (b) Insert --specific and substantial 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 and substantial asserted utility, a credible asserted utility or a well established utility. Each utility should be addressed.

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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 § 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 .

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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 § 706.03(k) .

Examiner Note:

If the duplicate claims are not allowable, use form paragraph 7.05.05.

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7.06    Notice re prior art available under both pre-AIA and AIA

In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103 ) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.  

Examiner Note:

  • 1.  This form paragraph must be used in all Office Actions when a prior art rejection is made in an application with an actual filing date on or after March 16, 2013, that claims priority to, or the benefit of, an application filed before March 16, 2013.
  • 2.  This form paragraph should only be used ONCE in an Office action.  

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7.100    Name And Number of Examiner To Be Contacted

Any inquiry concerning this communication should be directed to [1] at telephone number [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 area code and phone number of the examiner to be contacted.

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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 [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 [7]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.

Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).

Examiner Note:

  • 1. In bracket 1, insert your name.
  • 2. In bracket 2, insert your individual area code and phone number.
  • 3. In bracket 3, insert the days that you work every week, e.g. “Monday-Thursday” for an examiner off every Friday.
  • 4. In brackets 4 and 5, insert your normal duty hours, e.g. “6:30 AM - 5:00 PM.”
  • 5. In bracket 6, insert your SPE’s name.
  • 6. In bracket 7, insert your SPE’s area code and phone number.

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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 [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 [8]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.

Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).

Examiner Note:

  • 1. In bracket 1, insert your name.
  • 2. In bracket 2, insert your individual area code and phone number.
  • 3. In bracket 3, insert the days that you work every week, e.g. “Monday-Thursday” for an examiner off on alternate Fridays.
  • 4. In brackets 4 and 5, insert your normal duty hours, e.g. “6:30 AM - 4:00 PM.”
  • 5. In bracket 6, insert the day in each pay-period that is your compressed day off, e.g. “Fridays” for an examiner on a 5/4/9 work schedule with the first Friday off.
  • 6. In bracket 7, insert your SPE’s name.
  • 7. In bracket 8, insert your SPE’s area code and phone number.

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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.

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7.105    Requirement for Information, Heading

Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.

Examiner Note:

  • 1. This form paragraph should appear at the beginning of any requirement for information under 37 CFR 1.105 , and should be followed by an explanation of why the required information is necessary for examination. Form paragraphs 7.106 7.121 may be used as appropriate.
  • 2. The requirement for information should conclude with form paragraphs 7.122 7.126 as appropriate.

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7.105.01    Stipulations of Facts Known to Applicant

In response to this requirement, please agree or disagree to the stipulation of each of the following assertions of facts:

[1].

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. In bracket 1, specify each factual assertion, in the form of a separate, numbered sentence, that the applicant is to either agree or disagree to so stipulate. It is suggested that at the end of each assertion, the parenthetic phrase, "(agree/disagree)" be appended to facilitate a reply by way of applicant marking up a copy of the requested stipulations.

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7.105.02    Interrogatories of Facts Known to Applicant

In response to this requirement, please provide answers to each of the following interrogatories eliciting factual information:

[1].

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. In bracket 1, specify each interrogatory question, in the form of a separate, numbered sentence, that the applicant is to answer. The scope of each query must be clearly set forth and the content of the expected reply is to be characterized as factual information.

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7.106    Domain of Search

The information is required to extend the domain of search for prior art. Limited amounts of art related to the claimed subject matter are available within the Office, and are generally found in class [1] and subclasses [2], which describe [3]. A broader range of art to search is necessary to establish the level of knowledge of those of ordinary skill in the claimed subject matter art of [4].

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. In bracket 4, insert a description of the art claimed but not found in the classification system.

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7.107    Level of Skill and Knowledge in the Art

The information is required to document the level of skill and knowledge in the art of [1].

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.

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7.108    Background Description

The information is required to complete the background description in the disclosure by documenting [1].

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.

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7.109    Products and Services Embodying Invention

The information is required to identify products and services embodying the disclosed subject matter of [1] and identify the properties of similar products and services found in the prior art.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.

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7.110    Art Suggested as Relevant

The information is required to enter in the record the art suggested by the applicant as relevant to this examination in [1].

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. In bracket 1, describe where in the application file applicant suggests that the art is relevant, e.g., the specification and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page thereof.

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7.111    List of Keywords

In response to this requirement, please provide a list of keywords that are particularly helpful in locating publications related to the disclosed art of [1].

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.

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7.112    Citations for Electronically Searchable Databases or Other Indexed Collections

In response to this requirement, please provide a list of citations to electronically searchable databases or other indexed collections containing publications that document the knowledge within the disclosed art of [1].

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 7.126 as appropriate.

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7.113    Copy of Art Referred to in the Disclosure, But Not Submitted

In response to this requirement, please provide a copy of each of the following items of art referred to in the [1].

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. In bracket 1, describe where in the application file applicant refers to art that has not been previously submitted, e.g., the specification and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page thereof.

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7.114    Copies of Publications Authored by Inventor(s)

In response to this requirement, please provide copies of each publication which any of the applicants authored or co-authored and which describe the disclosed subject matter of [1].

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.

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7.115    Art Relied Upon for Description of Prior Art

In response to this requirement, please provide the title, citation and copy of each publication that is a source used for the description of the prior art in the disclosure. For each publication, please provide a concise explanation of that publication’s contribution to the description of the prior art.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.

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7.116    Art Relied Upon for Development of Invention

In response to this requirement, please provide the title, citation and copy of each publication that any of the applicants relied upon to develop the disclosed subject matter that describes the applicant’s invention, particularly as to developing [1]. For each publication, please provide a concise explanation of the reliance placed on that publication in the development of the disclosed subject matter.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.
  • 3. In bracket 1, insert a description of the most important inventive elements.

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7.117    Art Relied Upon for Drafting Claimed Subject Matter

In response to this requirement, please provide the title, citation and copy of each publication that was relied upon to draft the claimed subject matter. For each publication, please provide a concise explanation of the reliance placed on that publication in distinguishing the claimed subject matter from the prior art.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.

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7.118    Results of Applicant’s Prior Art Search

In response to this requirement, please state whether any search of prior art was performed. If a search was performed, please state the citation for each prior art collection searched. If any art retrieved from the search was considered material to demonstrating the knowledge of a person having ordinary skill in the art to the disclosed [1] , please provide the citation for each piece of art considered and a copy of the art.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. In bracket 1, describe the subject matter for which art is required.

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7.119    Names of Products or Services Incorporating Claimed Invention

In response to this requirement, please provide the names of any products or services that have incorporated the claimed subject matter.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.

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7.120    Names of Products or Services Incorporating Disclosed Prior Art

In response to this requirement, please provide the names of any products or services that have incorporated the disclosed prior art [1].

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. In bracket 1, specify the attributes of the prior art that most closely approximate the claimed subject matter to narrow the focus of the reply.

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7.121    Details of Improvement Over the Prior Art

In response to this requirement, please state the specific improvements of the subject matter in claims [1] over the disclosed prior art and indicate the specific elements in the claimed subject matter that provide those improvements. For those claims expressed as means or steps plus function, please provide the specific page and line numbers within the disclosure which describe the claimed structure and acts.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.

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7.122    Submission of Only Pertinent Pages Where Document is Large

In responding to those requirements that require copies of documents, where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter indicated in the requirement, or where such subject matter is not indicated, the subject matter found in applicant’s disclosure .

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. Use this form paragraph where the scope of the requirement for information specifically includes copies of publications.

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7.123    Waiver of Fee and Statement Requirements for Certain Information Disclosures

The fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to this requirement. This waiver extends only to those documents within the scope of the requirement under 37 CFR 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97 where appropriate.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraph 7.124 and either form paragraph 7.125 or 7.126 as appropriate.
  • 2. Use this form paragraph where the scope of the requirement for information specifically includes citations to and/or copies of publications.

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7.124    Contents of Good Faith Reply

The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56 . Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraph 7.125 or 7.126 as appropriate.
  • 2. This form paragraph should appear in the conclusion of any requirement for information.

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7.125    Conclusion of Requirement That Accompanies Office Action

This requirement is an attachment of the enclosed Office action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should appear at the conclusion of any requirement for information that accompanies an Office action. If the requirement for information is mailed without any other Office action, use form paragraph 7.126 instead.
  • 2. Form paragraph 7.127 should appear at the end of any Office action that includes an attached requirement for information.

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7.126    Conclusion Of Requirement Mailed Without Any Other Office Action

This requirement is subject to the provisions of 37 CFR 1.134 , 1.135 and 1.136 and has a shortened statutory period of [1] months. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) .

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should appear at the conclusion of any requirement for information mailed without any other Office action. If the requirement for information is mailed with an Office action, use form paragraph 7.125 instead .
  • 2. The period for reply is ordinarily set for 2 months.

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7.126.AE    Conclusion of Requirement Mailed Without Any Other Office Action – Application Under Accelerated Examination

This requirement is subject to the provisions of 37 CFR 1.134 , 1.135 and 1.136 and has a shortened statutory period of ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer. Since this application has been granted special status under the accelerated examination program, NO extensions of time under 37 CFR 1.136(a) will be permitted.

The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should appear at the conclusion of any requirement for information mailed without any other Office action. If the requirement for information is mailed with an Office action, use form paragraph 7.125 instead.
  • 2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102 (c)(2) or (d).
  • 3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102 (c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

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7.127    Conclusion of Office Action That Includes Requirement

This Office action has an attached requirement for information under 37 CFR 1.105 . A complete reply to this Office action must include a complete reply to the attached requirement for information. The time period for reply to the attached requirement coincides with the time period for reply to this Office action.

Examiner Note:

This form paragraph should appear at the end of any Office action that includes an attached requirement for information.

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7.147    Supplemental Reply Not Approved for Entry

The supplemental reply filed on [1] was not entered because supplemental replies are not entered as a matter of right except as provided in 37 CFR 1.111 (a)(2)(ii). [2].

Examiner Note:

  • 1. Use this form paragraph to notify applicant that the supplemental reply filed on or after October 21, 2004 is not approved for entry.
  • 2. Do not use this form paragraph if the supplemental reply has been entered. Use the Office Action Summary (PTOL-326) or the Notice of Allowability (PTOL-37), whichever is appropriate, to indicate that the Office action is responsive to the reply filed in compliance with 37 CFR 1.111 (b) and the supplemental reply.
  • 3. Do not use this form paragraph if the supplemental reply was filed within the period during which action is suspended by the Office under 37 CFR 1.103 (a) or (c). Such supplemental reply must be entered. If the supplemental reply filed during the suspended period is not in compliance with 37 CFR 1.121 , a notice of non-compliant amendment (PTOL-324) should be mailed to the applicant.
  • 4. In bracket 1, provide the date that the Office received the supplemental reply (use the date of receipt under 37 CFR 1.6 , not the certificate of mailing date under 37 CFR 1.8 ).
  • 5. In bracket 2, insert a reason for non-entry as noted in 37 CFR 1.111 (a)(2)(i). For example, "The supplemental reply is clearly not limited to placement of the application in condition for allowance."

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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 or 7.15.03 .
  • 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 form paragraph 7.07 and form paragraphs 7.08 , 7.09 , and 7.14 as appropriate, or by form paragraph 7.103 .
  • 5. If 35 U.S.C. 102(e) is also being applied, this form paragraph must be followed by either form paragraph 7.15.02 or 7.15.03 .

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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 published under 35 U.S.C. 122(b) or patented. This provisional rejection under 35 U.S.C. 102(e) is based upon a presumption of future publication or 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 form paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses the claimed invention which has not been published under 35 U.S.C. 122. The copending application must have either a common assignee or at least one common inventor.
  • 2. Use 35 U.S.C. 102(e) as amended by the American Inventors Protection Act and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12 ) to determine the copending application reference’s prior art date, unless the copending application reference is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application reference is either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120 , 121 , or 365(c ) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01 ). See the Examiner Notes for form paragraphs 7.12 and 7.12.01 to assist in the determination of the 35 U.S.C. 102(e) date.
  • 3. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01 .
  • 4. In bracket 3, insert either --assignee-- or --inventor--.
  • 5. In bracket 4, an appropriate explanation may be provided in support of the examiner’s position on anticipation, if necessary.
  • 6. 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 form paragraphs 8.30 and 8.32 .
  • 7. 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 form paragraphs 7.13 and/or 7.14 should also be made.

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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 form paragraph is used to reject over a patent or patent application publication with an earlier filing date that discloses but does not claim the same invention. The patent or patent application publication must have either a common assignee or a common inventor.
  • 2. 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12 ) must be applied if the reference is one of the following:
    • a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a) ;
    • a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application if the international application has an international filing date on or after November 29, 2000.

      See the Examiner Notes for form paragraph 7.12 to assist in the determination of the 35 U.S.C. 102(e) date of the reference.

  • 3. Pre-AIPA 35 U.S.C 102(e) (form paragraph 7.12.01 ) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01 to assist in the determination of the 35 U.S.C. 102(e) date of the reference.
  • 4. In determining the 35 U.S.C. 102(e) date, consider priority/benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), U.S. nonprovisional applications under 35 U.S.C. 120 or 121 , and international applications under 35 U.S.C. 120 , 121 or 365(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any priority/benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a)-(d) and 365(a) .
  • 5. If the reference is a publication of an international application (including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO publication) that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under 35 U.S.C. 102(e) . The reference may be applied under 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08 and 7.09 .
  • 6. In bracket 3, insert either --assignee-- or --inventor--.
  • 7. This form paragraph must be preceded by either of form paragraphs 7.12 or 7.12.01 .
  • 8. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12 .

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7.169    Advisory Action, Proposed Rejection of Claims, Before Appeal Brief

For purposes of appeal, the proposed amendment(s) will be entered and the proposed rejection(s) detailed below will be included in the Examiner’s Answer. To be complete, such rejection(s) must be addressed in any brief on appeal.

Upon entry of the amendment(s) for purposes of appeal:

Claim(s) [1] would be rejected for the reasons set forth in [2] of the final Office action mailed [3].

Examiner Note:

  • 1. In bracket 1, identify all the new or amended claim(s) that would be grouped together in a single rejection.
  • 2. In bracket 2, identify the rejection by referring to either the paragraph number or the statement of the rejection (e.g., the rejection under 35 U.S.C. 103 based upon A in view of B) in the final Office action under which the claims would be rejected on appeal.
  • 3. Repeat this form paragraph for each group of claims subject to the same rejection(s).
  • 4. Use this form paragraph if item 7 of the Advisory Action form, PTOL-303 (Rev. 9-04 or later) has been checked to indicate that the proposed amendment(s) will be entered upon appeal.

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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 § 2137 .

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7.204    Petition Under 37 CFR 1.59(b) To Expunge Information: Decision Held in Abeyance

In re Application of [1]:Appl. No.: [2]: RESPONSE TO PETITIONFiled: [3] : UNDER 37 CFR 1.59 For: [4]:

This is a response to the petition under 37 CFR 1.59(b) , filed [5], to expunge information from the above identified application.

The decision on the petition will be held in abeyance until allowance of the application or mailing of an Ex parte Quayle action or a Notice of Abandonment, at which time the petition will be decided .

Petitioner requests that a document entitled [6], filed [7], be expunged from the record. Petitioner states either: (A) that the information contains trade secret material, proprietary material and/or material that is subject to a protective order which has not been made public; or (B) that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted, and the information has not otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been paid.

The decision on the petition is held in abeyance because prosecution on the merits is not closed. Accordingly, it is not appropriate to make a final determination of whether or not the material requested to be expunged is “material,” with “materiality” being defined as any information which the examiner considers as being important to a determination of patentability of the claims. Thus, the decision on the petition to expunge must be held in abeyance at this time.

During prosecution on the merits, the examiner will determine whether or not the identified document is considered to be “material.” If the information is not considered by the examiner to be material, the information will be removed from the official file.

Examiner Note:

  • 1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement.
  • 2. The petition should be sent to the Office of Petitions for decision if:
    • the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59 . Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
    • the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
  • 3. This decision is printed with the USPTO letterhead.
  • 4. In bracket 6, clearly identify the document which petitioner requests to expunge. For example, refer to the author and title of the document.
  • 5. Mail with PTO-90C cover sheet.

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7.205    Petition Under 37 CFR 1.59(b) To Expunge Information Granted

In re Application of [1]:Appl. No.: [2]: DECISION ON PETITIONFiled: [3]: UNDER 37 CFR 1.59 For: [4]:

This is a decision on the petition under 37 CFR 1.59(b) , filed [5], to expunge information from the above identified application.

The petition is granted.

Petitioner requests that a document entitled [6], filed [7], be expunged from the record. Petitioner states that either (A) that the information contains trade secret material, proprietary material and/or material that is subject to a protective order which has not been made public; or (B) that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted, and the information has not otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been paid.

The information in question has been determined by the undersigned to not be material to the examination of the instant application.

Applicant is required to retain the expunged material(s) for the life of any patent which issues on the above-identified application.

The expunged material has been removed from the official file.

Enclosure: [8]

Examiner Note:

  • 1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Furthermore, a petition to expunge may not be granted unless the application has been allowed or is abandoned, or an Ex Parte Quayle action has been mailed.
  • 2. The petition should be sent to the Office of Petitions for decision if:
    • the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59 . Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
    • the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
  • 3. This decision is printed with the USPTO letterhead.
  • 4. In brackets 6 and 8, clearly identify the expunged document. For example, refer to the author and title of the document.
  • 5. Mail with PTO-90C cover sheet.

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7.206    Petition Under 37 CFR 1.59(b) To Expunge Information Dismissed

In re Application of [1]:Appl. No.: [2]: DECISION ON PETITIONFiled: [3]: UNDER 37 CFR 1.59 For: [4]:

This is a decision on the petition under 37 CFR 1.59(b) , filed [5], to expunge information from the above identified application.

The petition is dismissed.

Petitioner requests that a document entitled [6], filed [7], be expunged from the record.

“Materiality” is defined as any information which the examiner considers as being important to a determination of patentability of the claims.

The petition is deficient because: [8]

Examiner Note:

  • 1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. However, the petition should not be granted until the application has been allowed or abandoned, or an Ex parte Quayle action has been mailed.
  • 2. The petition should be sent to the Office of Petitions for decision if:
    • the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment present on the filing date of the application) cannot be expunged under 37 CFR 1.59 . Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or
    • the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).
  • 3. This decision is printed with the USPTO letterhead.
  • 4. In bracket 6, clearly identify the document which petitioner requests to expunge. For example, refer to the author and title of the document.
  • 5. This form paragraph must be followed with one or more of form paragraphs 7.207 through 7.213 .

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7.207    Petition To Expunge, Conclusion, Lacks Fee

the petition was not accompanied by the required fee under 37 CFR1.17(g).

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7.208    Petition to Expunge, Conclusion, Material to Determination of Patentability

the information that petitioner requests to expunge is considered to be material to the determination of patentability because [1].

Examiner Note:

In bracket 1, provide an explanation of basis for conclusion that information is material to the determination of patentability.

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7.209    Petition To Expunge, Conclusion, Information Made Public

the information has been made public. [1]

Examiner Note:

In bracket 1, provide explanation of basis for conclusion that information has been made public.

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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 the rejection relies upon prior art under 35 U.S.C. 102(e) , use 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120 , 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12 and 7.12.01 to assist in the determination of the reference’s 3 5 U.S.C. 102(e) date.
  • 4. If the applicability of this rejection (e.g., the availability of the prior art as a reference under 35 U.S.C. 102 (a) or 3 5 U.S.C. 102 (b)) prevents the reference from being disqualified under 35 U.S.C. 103 (c), form paragraph 7.20.01 must follow this form paragraph.
  • 5. 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 or published, use form paragraph 7.21.01 instead of this paragraph.

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7.210    Petition to Expunge, Conclusion, No Commitment to Retain Information

the petition does not contain a commitment on the part of petitioner to retain the information to be expunged for the period of any patent with regard to which such information is submitted.

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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 published or patented. This provisional rejection under 35 U.S.C. 103(a) is based upon a presumption of future publication or 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 . This rejection might also be overcome by showing that the copending application is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02 (l)(1) and § 706.02 (l)(2).

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. This form paragraph should not be used in applications pending on or after December 10, 2004 when the copending application is disqualified under 35 U.S.C. 103 (c) as prior art in a 35 U.S.C. 103 (a) rejection. See MPEP § 706.02 (l)(3).
  • 2. Use 35 U.S.C. 102(e ) as amended by the American Inventors Protection Act (AIPA) to determine the copending application reference’s prior art date, unless the copending application reference is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application reference is either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120 , 121 , or 365(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) to determine the copending application reference’s prior art date. See the Examiner Notes for form paragraphs 7.12 and 7.12.01 to assist in the determination of the 35 U.S.C. 102(e) date.
  • 3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01 .
  • 4. In bracket 3, insert either --assignee-- or --inventor--.
  • 5. In bracket 4, insert explanation of obviousness.
  • 6. 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 .
  • 7. 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 pursuant to 35 U.S.C. 103 (c), 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 ).

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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) . This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103 (c) as prior art in a rejection under 35 U.S.C. 103 (a). See MPEP § 706.02 (l)(1) and § 706.02 (l)(2). [4]

Examiner Note:

  • 1. This paragraph is used to reject over a reference (patent or published application) with an earlier filing date that discloses the claimed invention, and that only qualifies as prior art under 35 U.S.C. 102 (e). If the reference qualifies as prior art under 35 U.S.C. 102 (a) or (b), then this form paragraph should not be used (form paragraph 7.21 should be used instead). The reference must have either a common assignee or at least one common inventor. This form paragraph should not be used in applications when the reference is disqualified under 35 U.S.C. 103 (c) as prior art in a 35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3) .
  • 2. 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) must be applied if the reference is one of the following:
    • a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a) ;
    • a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application if the international application has an international filing date on or after November 29, 2000.

      See the Examiner Notes for form paragraph 7.12 to assist in the determination of the 35 U.S.C. 102(e) date of the reference.

  • 3. Pre-AIPA 35 U.S.C 102(e) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01 to assist in the determination of the 35 U.S.C. 102(e) date of the reference.
  • 4. In bracket 3, insert either --assignee-- or --inventor--.
  • 5. In bracket 4, insert explanation of obviousness.

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7.211    Petition to Expunge, Conclusion, No Clear Statement That Information is Trade Secret, Proprietary, and/or Subject to Protective Order, or that Submission Was Unintentional

the petition does not contain a clear statement that the information requested to be expunged is either: (1) a trade secret, proprietary, and/or subject to a protective order; or (2) was unintentionally submitted and failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted. [1]

Examiner Note:

In bracket 1, indicate whether any such statement was provided and, if so, explain why such statement is not clear.

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7.212    Petition to Expunge, Conclusion, No Clear Identification of Information to be Expunged

the petition does not clearly identify the information requested to be expunged. [1]

Examiner Note:

In bracket 1, explain why the identification of the information requested to be expunged is not clear.

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7.213    Petition to Expunge, Conclusion, No Statement That Petition Is Submitted By, or on Behalf of, Party in Interest Who Originally Submitted the Information

the petition does not contain a statement that the petition is being submitted by, or on behalf of, the party in interest who originally submitted the information.

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7.214    Papers Not Returned, Pro Se

Papers in an application that has received a filing date pursuant to 37 CFR  1.53 ordinarily will not be returned. If applicant has not preserved copies of the papers, the Office will furnish copies at applicant’s expense. See 37 CFR  1.19 for a list of the current fees. See MPEP § 724.05 for information pertaining to petitions to expunge information.

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7.27.aia    Rejection, 35 U.S.C. 102 or 103

Claim [1] rejected under 35 U.S.C. 102 ( [2]) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over [3].

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia .
  • 2. This form 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 should be made whenever possible. Examples of circumstances where this paragraph may be used are as follows:
    • 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 appropriate and given another interpretation, a rejection under 35 U.S.C. 103 is appropriate. See MPEP § 2111 - 2116.01 for guidelines on claim interpretation.
    • 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 § 2112 - 2112.02 .
    • 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 § 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus.
    • 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 § 2113 .
    • When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain whether 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 § 2183 - 2184 .
    • 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 § 2131.03 .
  • 3. If the interpretation of the claim(s) renders the claim(s) indefinite, a rejection under 35 U.S.C. 112(b) may be appropriate.
  • 4. In bracket 2, insert the appropriate paragraph letter(s) in parenthesis.
  • 5. A full explanation must follow this form paragraph, i.e., the examiner must provide an explanation of how the claims at issue could be considered to be anticipated, as well as how they could be considered to be obvious.
  • 6. This form paragraph must be preceded by 7.07.aia and 7.08.aia and/or 7.12.aia or by form paragraph 7.103 .
  • 7. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06 .

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7.28    Objection to New Matter Added to Specification

The amendment filed [1] is objected to under 35 U.S.C. 132 (a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) 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(a) or pre-AIA 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 cannot be ignored.

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7.29    Disclosure Objected to, Minor Informalities

The disclosure is objected to because of the following informalities: [1]. Appropriate correction is required.

Examiner Note:

Use this paragraph to point out minor informalities such as spelling errors, inconsistent terminology, numbering of elements, etc., which should be corrected. See form paragraphs 6.28 to 6.32 for specific informalities.

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7.29.01    Claims Objected to, Minor Informalities

Claim [1] objected to because of the following informalities: [2]. Appropriate correction is required.

Examiner Note:

  • 1. Use this form paragraph to point out minor informalities such as spelling errors, inconsistent terminology, etc., which should be corrected.
  • 2. If the informalities render the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph.

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7.29.02    Claims Objected to, Reference Characters Not Enclosed Within Parentheses

The claims are objected to because they include reference characters which are not enclosed within parentheses.

Reference characters corresponding to elements recited in the detailed description of the drawings and used in conjunction with the recitation of the same element or group of elements in the claims should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. See MPEP § 608.01(m) .

Examiner Note:

  • 1. If the lack of parentheses renders the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph.

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7.29.03    Claims Objected to, Spacing of Lines

The claims are objected to because the lines are crowded too closely together, making reading difficult. Substitute claims with lines one and one-half or double spaced on good quality paper are required. See 37 CFR 1.52(b) .

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7.29.04    Disclosure Objected To, Embedded Hyperlinks or Other Forms of Browser-Executable Code

The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to web sites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01 .

Examiner Note:

  • 1. Examples of a hyperlink or a browser-executable code are a URL placed between these symbols "< >" and "http://" followed by a URL address. Nucleotide and/or amino acid sequence data placed between the symbols "< >" are not considered to be hyperlinks and/or browser-executable code.
  • 2. If the application attempts to incorporate essential or nonessential subject matter into the patent application by reference to the contents of the site to which a hyperlink and/or other form of browser-executable code is directed, use form paragraph 6.19 or 6.19.01 instead. See also MPEP § 608.01(p) .
  • 3. The requirement to delete an embedded hyperlink or other form of browser-executable code does not apply to electronic documents listed on forms PTO-892 and PTO/SB/08B where the electronic document is identified by reference to a URL.
  • 4. Examiners should not object to hyperlinks where the hyperlinks and/or browser-executable codes themselves (rather than the contents of the site to which the hyperlinks are directed) are necessary to be included in the patent application in order to meet the requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, and applicant does not intend to have those hyperlinks be active links.

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7.30.01    Statement of Statutory Basis, 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112

The following is a quotation of 35 U.S.C. 112(a) :

(a) IN GENERAL.—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 or joint inventor of carrying out the invention.

The following is a quotation of the first paragraph of pre-AIA 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. Form paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.

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7.30.02    Statement of Statutory Basis, 35 U.S.C. 112(b) and pre-AIA 35 U.S.C. 112, Second Paragraph

The following is a quotation of 35 U.S.C. 112(b) :

(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

The following is a quotation of pre-AIA 35 U.S.C. 112 , second paragraph:

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.

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7.31.01    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Description Requirement, Including New Matter Situations

Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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 or a joint inventor, or for pre-AIA 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.

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7.31.02    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Enablement

Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, as failing to comply with the enablement requirement. The claim(s) contains 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. Also explain why the specification is not enabling, applying the factors set forth in In re Wands , 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP § 2164.01(a) and § 2164.04 . 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 .

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7.31.03    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph: Scope of Enablement

Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 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 form 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 claimed subject matter for which the specification is not enabling. Also explain why the specification is not enabling, applying the factors set forth in In re Wands , 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP § 2164.01(a) and § 2164.04 . The explanation should include any questions posed by the examiner which were not satisfactorily resolved and consequently raise doubt as to enablement.

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7.31.04    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph: Best Mode Requirement

Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, because the best mode contemplated by the inventor or a joint inventor, or for pre-AIA the inventor(s) 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 §§ 2165 - 2165.04 .

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7.33.01    Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Essential Subject Matter Missing From Claims (Enablement)

Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 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.

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7.34    Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Failure To Claim Inventor’s Invention

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as their invention. Evidence that claim [2] fail(s) to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as the invention can be found in the reply filed [3]. In that paper, the inventor or a joint inventor, or for pre-AIA the applicant has stated [4], and this statement indicates that the invention is different from what is defined in the claim(s) because [5].

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 inventor or 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 bracket 3, identify the submission by inventor or applicant (which is not the application, as filed, but may be in the remarks by applicant, in the brief, in an affidavit, etc.) by the date the paper was filed in the USPTO.
  • 4. In bracket 4, set forth what inventor or applicant has stated in the submission to indicate a different invention.
  • 5. In bracket 5, explain how the statement indicates an invention other than what is being claimed.

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7.34.01    Rejection, 35 U.S.C. 112(b) or pre-AIA 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(b) or pre-AIA 35 U.S.C. 112 , second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.

Examiner Note:

  • 1. This rejection must be preceded by form paragraph 7.30.02 or 7.103 .
  • 2. This form paragraph should be followed by one or more of the following form paragraphs 7.34.02 - 7.34.11 , 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 §§ 2171 - 2174 for guidance. See also form paragraph 7.34.15 for pro se applicants.

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7.34.02    Terminology Used Inconsistent with Accepted Meaning

Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “ [1]” in claim [2] is used by the claim to mean “ [3]”, while the accepted meaning is “ [4].” The term is indefinite because the specification does not clearly redefine the term.

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 § 2173.05(a) .
  • 3. This paragraph must be preceded by form paragraph 7.34.01 .
  • 4. This paragraph should only be used where the specification does not clearly redefine the claim term at issue.

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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 .

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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. See MPEP § 2173.05 (c). 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 .

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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 3 rd 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 .

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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 § 2173.05(q) .
  • 3. This form paragraph must be preceded by form paragraph 7.34.01 .

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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 .

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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 § 2173.05(d) .

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01 .

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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 § 2173.05(d) .

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01 .

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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 § 2173.05(d) .

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01 .

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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(f) or pre-AIA 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 .

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7.34.12    Essential Steps Omitted

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 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 § 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.

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7.34.13    Essential Elements Omitted

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 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 § 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.

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7.34.14    Essential Cooperative Relationships Omitted

Claim [1] rejected under 35 U.S.C. 112(b) orpre-AIA 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 § 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.

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7.34.15    Rejection Under 35 U.S.C. 112 , Pro Se

Claim [1] rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C.  112 , second paragraph.

The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.

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7.34.16     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Unclear Whether the Recited Structure, Material, or Acts in the Claim Preclude Application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

The claim limitation " [1]" uses the phrase "means for" or "step for" or a generic placeholder coupled with functional language, but it is modified by some structure, material, or acts recited in the claim. It is unclear whether the recited structure, material, or acts are sufficient for performing the claimed function because [2].

If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim so that the phrase "means for" or "step for" or the generic placeholder is clearly not modified by sufficient structure, material, or acts for performing the claimed function, or may present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function.

If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112 , sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph

Examiner Note:

  • 1.       In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph.
  • 2.       In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph (e.g., why it is unclear whether the limitation recites sufficient structure, material, or acts to preclude the application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph.)
  • 3.        This form paragraph may be used when the phrase "means for" or "step for" is used in the claim limitation and it is unclear to one of ordinary skill in the art whether the recited structure, material, or acts in the claim are sufficient for performing the claimed function.
  • 4.        This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01 .

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7.34.17     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Applicant Asserts that Claim Limitation Is Invoking 35 U.S.C. 112(f) or pre-AIA 35 US.C. 112, Sixth Paragraph, but the Phrase “Means for” or “Step for” Is Not Used

Applicant asserts that the claim element “ [1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, because [2].  If applicant wishes to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may:

(a)        Amend the claim to include the phrase “means for” or “step for”. The phrase “means for” or “step for” must be modified by functional language, and the phrase or term must not be modified by sufficient structure, material, or acts for performing the claimed function; or

(b)        Present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. For more information, see MPEP § 2181.

Examiner Note:

  • 1.        This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation is invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, even though the phrase “means for” or “step for” is not used in the claim limitation. See MPEP § 706.07(a) for guidance on when the second action may be made final.  
  • 2.        In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph.
  • 3.        In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function or it is unclear whether the corresponding structure is sufficiently disclosed in the written description of the specification.
  • 4.        This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

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7.34.18     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, No Disclosure or Insufficient Disclosure of the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112, Sixth Paragraph

Claim element “ [1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. [2]

Applicant may:

(a)        Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph; or

(b)        Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter ( 35 U.S.C. 132(a) ).

If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:

(a)        Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter ( 35 U.S.C. 132(a) ); or

(b)        Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP § 608.01(o) and 2181 .

Examiner Note:

  • 1.        In bracket 1, recite the limitation that invokes 35 U.S.C. 112 , sixth paragraph.
  • 2.        In bracket 2, explain why there is insufficient disclosure of the corresponding structure, material, or acts for performing the claimed function.
  • 3.        This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01 .

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7.34.19     Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph, Fails To Clearly Link or Associate the Disclosed Structure, Material, or Acts to the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim element “ [1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. However, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function. [2]

Applicant may:

(a)        Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph; or

(b)        Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or

(c)        State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.

Examiner Note:

  • 1.        In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph.
  • 2.        In bracket 2, explain why the written description of the specification fails to clearly link or associate the structure, material, or acts to the claimed function.
  • 3.        This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

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7.34.20     The Specification Is Objected To; the Written Description Only Implicitly or Inherently Discloses the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim element “ [1]” is a limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. The written description only implicitly or inherently sets forth the corresponding structure, material, or acts that perform the claimed function.

Pursuant to 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181, applicant should:

(a)        Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph; or

(b)        Amend the written description of the specification such that it expressly recites the corresponding structure, material, or acts that perform the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter ( 35 U.S.C. 132(a) ); or

(c)        State on the record what corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function.

Examiner Note:

In bracket 1, recite the limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph.

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7.34.21    Claim Limitation Interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph

Claim limitation(s) “ [1]” has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, because it uses/they use a generic placeholder “ [2]” coupled with functional language “ [3]” without reciting sufficient structure to achieve the function.  Furthermore, the generic placeholder is not preceded by a structural modifier.   [4].

Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, claim(s) [5] has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.  

A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph limitation: [6].  

If applicant wishes to provide further explanation or dispute the examiner's interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.

If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph.

For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications , 76 FR 7162, 7167 (Feb. 9, 2011).

Examiner Note:

  • 1. Use this form paragraph ONLY when additional explanation regarding treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph is necessary. For example, use this paragraph if clarification is needed when a claim element does not use the word “means” but no structure for performing the function is recited in the claim itself or when the associated structure in the specification for performing the function is needs explanation. If the claim element clearly invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph and the corresponding structure is easily identified in the specification for performing the claimed function, it is not necessary to use this form paragraph.

Examiner Note:

  • 2. This paragraph may be used to explain more than one claim when multiple claims recite similar language or raise similar issues.

Examiner Note:

  • 3. In bracket 1, recite the claim limitation that has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph.
  • 4. In bracket 2, recite the generic placeholder that is merely a substitute for the term “means.”
  • 5. In bracket 3, recite the functional language.
  • 6. In bracket 4, provide an explanation, if appropriate, why the generic placeholder is not recognized as the name of a structure but is merely a substitute for the term “means.”
  • 7. In bracket 5, recite the claim number(s) of the claim(s) that contains/contain the claim limitation.
  • 8. In bracket 6, recite the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters.

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7.34.22    Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, Applicant Asserts that Claim Limitation Does Not Invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th Paragraph, but No Structure is Recited to Perform the Claimed Function

Applicant asserts that the claim element “ [1]” is a limitation that does not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , 6th paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , 6th paragraph because [2]. If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , 6th Paragraph applicant may:

  • (a) Amend the claim to add structure, material or acts that are sufficient to perform the claimed function; or
  • (b) Present a sufficient showing that the claim limitation recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. For more information, see MPEP § 2181 .

Examiner Note:

  • 1. This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation does not invoke 35 U.S.C. 112(f), even though no structure is provided in the claim limitation for performing the function. See MPEP § 706.07(a) for guidance on when the second action may be made final.
  • 2. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph.
  • 3. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function.
  • 4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01 .

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7.35    Rejection, 35 U.S.C. 112(b) or pre-AIA 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(b) or pre-AIA 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 § 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.”

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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(b) or pre-AIA 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.

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7.36    Statement of Statutory Basis, 35 U.S.C. 112(d) and 35 U.S.C. 112 (pre-AIA), Fourth Paragraph

The following is a quotation of 35 U.S.C. 112(d) :

(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

The following is a quotation of 35 U.S.C. 112 (pre-AIA), fourth paragraph:

Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA)], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

Examiner Note:

  • 1. The statute is no longer being recited 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. Form paragraph 7.36 is to be used ONLY ONCE in a given Office action.

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7.36.01    Rejection under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th Paragraph, Improper Dependent Claim

Claim [1] rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph , as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. [2]. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.

Examiner Note:

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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.

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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.

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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 .

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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 .

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7.37.04    Unpersuasive Argument: No Teaching, Suggestion, or Motivation To Combine

In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, [1].

Examiner Note:

  • 1. In bracket 1, explain where the teaching, suggestion, or motivation for the rejection is found, either in the references, or in the knowledge generally available to one of ordinary skill in the art.
  • 2. This form paragraph must be preceded by form paragraph 7.37 .

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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 .

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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 .

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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 .

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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 .

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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.

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 .

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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 .

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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 .

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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 .

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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 .

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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 because the arguments do not apply to any of the references being used in the current rejection.

Examiner Note:

The examiner must, however, address any arguments presented by the applicant which are still relevant to any references being applied.

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7.38.01    Arguments Persuasive, Previous Rejection/Objection Withdrawn

Applicant’s arguments, see [ 1], filed [ 2], with respect to [ 3] have been fully considered and are persuasive. The [ 4] of [ 5] has been withdrawn.

Examiner Note:

  • 1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection/objection.
  • 2. In bracket 3, insert claim number, figure number, the specification, the abstract, etc.
  • 3. In bracket 4, insert rejection or objection.
  • 4. In bracket 5, insert claim number, figure number, the specification, the abstract, etc.

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7.38.02    Arguments Persuasive, New Ground(s) of Rejection

Applicant’s arguments, see [ 1], filed [ 2], with respect to the rejection(s) of claim(s) [ 3] under [ 4] have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of [ 5].

Examiner Note:

  • 1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection.
  • 2. In bracket 3, insert the claim number(s).
  • 3. In bracket 4, insert the statutory basis for the previous rejection.
  • 4. In bracket 5, insert the new ground(s) of rejection, e.g., different interpretation of the previously applied reference, newly found prior art reference(s), and provide an explanation of the rejection.

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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 form 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.

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7.39.01    Final Rejection, Options for Applicant, Pro Se

This action is a final rejection and is intended to close the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited either to an appeal to the Patent Trial and Appeal Board or to an amendment complying with the requirements set forth below.

If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee of $ [1].

If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing a good and sufficient reasons why they are necessary and why they were not presented earlier.

A reply under 37 CFR 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136 (a) or (b), the application will become abandoned.

Examiner Note:

The form paragraph must be preceded by any one of form paragraphs 7.39 , 7.40 , 7.40.01 , 7.41 , 7.42.03.fti , or 7.42.09 .

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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 § 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 form 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.

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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 § 609.04(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. This form 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.

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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 § 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 form paragraph cannot be used. See MPEP § 706.07(b) .
  • 3. This form 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.

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7.41.03    Action Is Final, First Action Following Submission Under 37 CFR 1.53(d), Continued Prosecution Application (CPA) in a Design Application

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 filing 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) (design applications only).
  • 2. This form paragraph must be preceded by one of form paragraphs 2.30 or 2.35 , as appropriate.

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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.

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7.42.04    Continued Examination under 37 CFR 1.114 after Final Rejection

A request for continued examination under 37 CFR 1.114 , including the fee set forth in 37 CFR 1.17(e) , was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114 , and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114 . Applicant’s submission filed on [1] has been entered.

Examiner Note:

  • 1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a final rejection.
  • 2. In bracket 1, insert the date(s) of receipt of the submission. The submission may be a previously filed amendment(s) after final rejection and/or an amendment accompanying the RCE. As set forth in 37 CFR 1.114 , a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If a reply to the Office action is outstanding the submission must meet the reply requirements of 37 CFR 1.111 . Use instead form paragraph 7.42.08 if the submission does not comply with 37 CFR 1.111 . Arguments which were previously submitted in a reply after final rejection, which were entered but not found persuasive, may be considered a submission under 37 CFR 1.114 if the arguments are responsive within the meaning of 37 CFR 1.111 to the outstanding Office action. If the last sentence of this form paragraph does not apply (e.g., the submission consists of previously entered arguments), it may be deleted or modified as necessary.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

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7.42.05    Continued Examination Under 37 CFR 1.114 After Allowance or Quayle Action

A request for continued examination under 37 CFR 1.114 , including the fee set forth in 37 CFR 1.17(e) , was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114 , and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114 . Applicant’s submission filed on [1] has been entered.

Examiner Note:

  • 1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a notice of allowance (or notice of allowability) or Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935).
  • 2. In bracket 1 insert the date(s) of receipt of the submission. As set forth in 37 CFR 1.114 , a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
  • 4. If the RCE was filed after the issue fee was paid, a petition under 37 CFR 1.313 to withdraw the application from issue must have been filed and granted.

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7.42.06    Continued Examination Under 37 CFR 1.114 After Appeal But Before A Board Decision

A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114 . Applicant’s submission filed on [1] has been entered.

Examiner Note:

  • 1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a Notice of Appeal or an appeal brief, but there has not been a decision on the appeal. Note that it is not necessary for an appeal brief to have been filed.
  • 2. As set forth in 37 CFR 1.114 , a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. The submission may consist of arguments in a previously filed appeal brief or reply brief, or an incorporation of such arguments in the transmittal letter or other paper accompanying the RCE.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

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7.42.07    Continued Examination under 37 CFR 1.114 after Board Decision but Before Further Appeal or Civil Action

A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114 . Applicant’s submission filed on [1] has been entered.

Examiner Note:

  • 1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was timely filed after a decision by the Patent Trial and Appeal Board but before further appeal or civil action. Generally, the time for filing a notice of appeal to the Federal Circuit or for commencing a civil action is within two months of the Board's decision. See MPEP § 1216 and 37 CFR 90.3 .
  • 2. A Patent Trial and Appeal Board decision in an application has res judicata effect and is the “law of the case” and is thus controlling in that application and any subsequent, related application. Therefore, a submission containing arguments without either an amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection. See MPEP §§ 706.03(w) and 1214.01 .
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

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7.42.08    Request For Continued Examination With Submission Filed Under 37 CFR 1.114 Which is Not Fully Responsive

Receipt is acknowledged of a request for continued examination under 37 CFR 1.114 , including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, 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 for reply supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a) .

Examiner Note:

  • 1. Use this form paragraph to acknowledge an RCE filed with the fee and a submission where the submission is not fully responsive to the prior Office action. This form paragraph may be used for any RCE filed with a submission which is not fully responsive, i.e., an RCE filed after final rejection, after allowance, after an Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935), or after appeal.
  • 2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

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7.42.08.AE    Request for Continued Examination With Submission Filed Under 37 CFR 1.114 Which Is Not Fully Responsive - Application Under Accelerated Examination

Receipt is acknowledged of a request for continued examination under 37 CFR 1.114 , including the fee set forth in 37 CFR 1.17 (e) and a submission, filed on [1]. The submission, however, 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 (1) MONTH or THIRTY (30) DAYS from the mailing date of this letter, whichever is longer, to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. Since this application has been granted special status under the accelerated examination program, NO extensions of time under 37 CFR 1.136 (a) will be permitted.

The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.

Examiner Note:

  • 1. Use this form paragraph to acknowledge an RCE filed with the fee and a submission where the submission is not fully responsive to the prior Office action. This form paragraph may be used for any RCE filed with a submission which is not fully responsive, i.e., an RCE filed after final rejection, after allowance, after an Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935), or after appeal.
  • 2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111 (a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.
  • 4. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102 (c)(2) or (d).
  • 5. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102 (c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

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7.42.09    Action Is Final, First Action Following Request for Continued Examination under 37 CFR 1.114

All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 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 1.114 . Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114 . See MPEP § 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:

This form paragraph is for a first action final rejection following a Request for Continued Examination filed under 37 CFR 1.114 .

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7.42.10    Application On Appeal, Request For Continued Examination Under 37 CFR 1.114 Without Submission/Fee; No Claims Allowed

A request for continued examination under 37 CFR 1.114 was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114 . The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114 . Since the proceedings as to the rejected claims are considered terminated, and no claim is allowed, the application is abandoned. See MPEP § 1215.01 .

Examiner Note:

  • 1. If a request for continued examination was filed after a Notice of Appeal or after an appeal brief, but before a decision on the appeal, and the request lacks the fee set forth in 37 CFR 1.17(e) or a submission or both, use this form paragraph to withdraw the appeal and hold the application abandoned if there are no allowed claims.
  • 2. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

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7.42.11    Application On Appeal, Request For Continued Examination Under 37 CFR 1.114 Without Submission; Claim Allowed

A request for continued examination under 37 CFR 1.114 , including the fee set forth in 37 CFR 1.17(e) , was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114 . The request, however, lacks the submission required by 37 CFR 1.114 . Since the proceedings as to the rejected claims are considered terminated, the application will be passed to issue on allowed claim [2] . Claim [3] been canceled. See MPEP § 1215.01 .

Examiner Note:

  • 1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or after an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
  • 2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01 .
  • 3. This form paragraph should be used with the mailing of a Notice of Allowability.
  • 4. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

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7.42.12    Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Submission; Claim Allowed with Formal Matters Outstanding

A request for continued examination under 37 CFR 1.114 , including the fee set forth in 37 CFR 1.17(e) , was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114 . The request, however, lacks the submission required by 37 CFR 1.114 . The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01 . Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136 .

Examiner Note:

  • 1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
  • 2. In bracket 3, explain the formal matters which must be corrected.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

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7.42.13    Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Fee; Claim Allowed

A request for continued examination under 37 CFR 1.114 , including a submission, was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114 . The request, however, lacks the fee required by 37 CFR 1.17 (e). Therefore, the submission has not been entered. See 37 CFR 1.116(c) . Since the proceedings as to the rejected claims are considered terminated, the application will be passed to issue on allowed claim [2]. Claim [3] been canceled. See MPEP § 1215.01 .

Examiner Note:

  • 1. If a request for continued examination, including the submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required fee, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
  • 2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01 .
  • 3. This form paragraph should be used with the mailing of a Notice of Allowability.
  • 4. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

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7.42.14    Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Fee; Claim Allowed With Formal Matters Outstanding

A request for continued examination under 37 CFR 1.114 , including a submission, was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114 . The request, however, lacks the fee required by 37 CFR 1.17(e) . Therefore, the submission has not been entered. See 37 CFR 1.116(c) . The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01 .Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136 .

Examiner Note:

  • 1. If a request for continued examination, including a submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the fee required by 37 CFR 1.17(e) , use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
  • 2. In bracket 3, explain the formal matters that must be corrected.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

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7.42.15    Continued Prosecution Application Treated as Continued Examination under 37 CFR 1.114

The request for a continued prosecution application (CPA) under 37 CFR 1.53(d) filed on [1] is acknowledged. 37 CFR 1.53(d)(1) was amended to provide that a CPA must be for a design patent and the prior application of the CPA must be a design application that is complete as defined by 37 CFR 1.51 (b). See Elimination of Continued Prosecution Application Practice as to Utility and Plant Patent Applications, final rule, 68 Fed. Reg. 32376 (May 30, 2003), 1271 Off. Gaz. Pat. Office 143 (June 24, 2003). Since a CPA of this application is not permitted under 37 CFR 1.53(d)(1) , the improper request for a CPA is being treated as a request for continued examination of this application under 37 CFR 1.114 .

Examiner Note:

  • 1. Use this form paragraph to advise the applicant that a CPA is being treated as an RCE.
  • 2. Also use form paragraph 7.42.04 , 7.42.05 , 7.42.06 , or 7.42.07 as applicable, to acknowledge entry of applicant’s submission if the fee set forth in 37 CFR 1.17(e ) has been timely paid.
  • 3. If the fee set forth in 37 CFR 1.17(e) and/or a submission as required by 37 CFR 1.114 is/are missing and the application is not under appeal, a Notice of Improper Request for Continued Examination should be mailed. If the application is under appeal and the fee set forth in 37 CFR 1.17(e) and/or submission is/are missing, this form paragraph should be followed with one of form paragraphs 7.42.10 - 7.42.14 , as applicable.

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7.42.16    After Board Decision But Before Further Appeal Or Civil Action, Request for Continued Examination Under 37 CFR 1.114 Without Submission and/or Fee

A request for continued examination (RCE) under 37 CFR 1.114 was filed in this application on [1] after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114 . Accordingly, the RCE is improper and any time period running was not tolled by the filing of the improper request.

Examiner Note:

  • 1. This form paragraph should be used with the mailing of a Notice of Allowability or a Notice of Abandonment, as appropriate, if the time for seeking court review has passed without such review being sought, or it should be used on a PTOL-90 if time still remains.
  • 2. This form paragraph should not be used if the application is not a utility application or a plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. In that situation, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application.
  • 3. In general, if a submission was filed with the improper RCE in this situation, it should not be entered. An exception exists for an amendment which obviously places the application in condition for allowance. See MPEP § 1214.07 . The examiner should also include a statement as to whether or not any such submission has been entered (e.g., “The submission filed with the improper RCE has not been entered.”).

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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.

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7.43.01    Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Independent Claim/Dependent Claim

Claim [1] would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , 2nd paragraph, set forth in this Office action.

Examiner Note:

This form paragraph is to be used when (1) the noted independent claim(s) or (2) the noted dependent claim(s), which depend from an allowable claim, have been rejected solely on the basis of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph, and would be allowable if amended to overcome the rejection.

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7.43.02    Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112(b) or pre-AIA 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(b) or pre-AIA 35 U.S.C. 112 , 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.

Examiner Note:

This form paragraph is to be used only when the noted dependent claim(s), which depend from a claim that is rejected based on prior art, have been rejected solely on the basis of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph, and would be allowable if amended as indicated.

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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 § 707.07(a) .

Examiner Note:

This form paragraph would be appropriate when changes (for example, drawing corrections or corrections to the specification) must be made prior to allowance.

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7.43.04    Suggestion of Allowable Drafted Claim(s), Pro Se

The following claim [1] drafted by the examiner and considered to distinguish patentably over the art of record in this application, [2] presented to applicant for consideration:

[3].

Examiner Note:

  • 1. In bracket 2, insert --is-- or --are--.
  • 2. In bracket 3, insert complete text of suggested claim(s).

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7.44    Claimed Subject Matter Not in Specification

The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o) . Correction of the following is required: [1]

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7.45    Improper Multiple Dependent Claims

Claim [1] objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim [2]. See MPEP § 608.01(n) . Accordingly, the claim [3] not been further treated on the merits.

Examiner Note:

  • 1. In bracket 2, insert --should refer to other claims in the alternative only--, and/or, --cannot depend from any other multiple dependent claim--.
  • 2. Use this paragraph rather than 35 U.S.C. 112(e) or 35 U.S.C. 112 (pre-AIA), fifth paragraph.
  • 3. In bracket 3, insert --has-- or --s have--.

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7.46    Preliminary Amendment Unduly Interferes with the Preparation of an Office Action

The preliminary amendment filed on [1] was not entered because entry of the amendment would unduly interfere with the preparation of the Office action. See 37 CFR 1.115 (b)(2). The examiner spent a significant amount of time on the preparation of an Office action before the preliminary amendment was received. On the date of receipt of the amendment, the examiner had completed [2].

Furthermore, entry of the preliminary amendment would require significant additional time on the preparation of the Office action. Specifically, entry of the preliminary amendment would require the examiner to [3].

A responsive reply (under 37 CFR  1.111 or 37 CFR  1.113 as appropriate) to this Office action must be timely filed to avoid abandonment.

If this is not a final Office action, applicant may wish to resubmit the amendment along with a responsive reply under 37 CFR 1.111 to ensure proper entry of the amendment.

Examiner Note:

  • 1. In bracket 1, provide the date that the Office received the preliminary amendment (use the date of receipt under 37 CFR 1.6 , not the certificate of mailing date under 37 CFR 1.8 ).
  • 2. In bracket 2, provide an explanation on the state of preparation of the Office action as of the receipt date of the preliminary amendment. For example, where appropriate insert --the claim analysis and the search of prior art of all pending claims-- or --the drafting of the Office action and was waiting for the supervisory patent examiner’s approval--.
  • 3. In bracket 3, provide a brief explanation of how entry of the preliminary amendment would require the examiner to spend significant additional time in the preparation of the Office action. For example, where appropriate insert --conduct prior art search in another classification area that was not previously searched and required-- or --revise the Office action extensively to address the new issues raised and the new claims added in the preliminary amendment--.

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7.49    Rejection, Disclaimer, Failure To Appeal

An adverse judgment against claim [1] has been entered by the Board. Claim [2] stand(s) finally disposed of for failure to reply to or appeal from the examiner’s rejection of such claim(s) presented for interference within the time for appeal or civil action specified in 37 CFR 90.3 . Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently. See 37 CFR 41.127(a)(2) .

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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 § 1004 .

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7.51    Quayle Action

This application is in condition for allowance except for the following formal matters: [1].

Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935).

A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.

Examiner Note:

Explain the formal matters which must be corrected in bracket 1.

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7.51.AE    Quayle Action - Application Under Accelerated Examination

This application is in condition for allowance except for the following formal matters: [1].

Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle , 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935).

Since this application has been granted special status under the accelerated examination program, a shortened statutory period for reply to this action is set to expire ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer, from the mailing date of this letter. NO extensions of time under 37 CFR 1.136 (a) will be permitted.

The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.

Examiner Note:

  • 1. Explain the formal matters which must be corrected in bracket 1.
  • 2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102 (c)(2) or (d).
  • 3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102 (c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

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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 TC Director must approve all second or subsequent suspensions, see MPEP § 1003 .
  • 3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.

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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 six months.
  • 2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003 .
  • 3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.

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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 § 709 .

Examiner Note:

  • 1. Maximum period for suspension is 6 months.
  • 2. Only the Technology Center Director can grant second or subsequent suspensions. See MPEP § 1003 . Such approval must appear on the Office letter.

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7.54.01    Request for Deferral of Examination under 37 CFR 1.103(d) , Granted

Applicant’s request filed on [1], for deferral of examination under 37 CFR 1.103(d) in the application has been approved. The examination of the application will be deferred for a period of [2] months.

Examiner Note:

  • 1. In bracket 1, insert the filing date of the request for deferral of examination.
  • 2. In bracket 2, insert the number of months for the deferral.

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7.54.02    Request for Termination of a Suspension of Action, Granted

Applicant’s request filed on [1], for termination of a suspension of action under 37 CFR 1.103 , has been approved. The suspension of action has been terminated on the date of mailing this notice.

Examiner Note:

In bracket 1, insert the filing date of the request for termination of the suspension of action.

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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 § 709 .

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7.56.01    Request for Suspension of Action under 37 CFR 1.103 , Denied

Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(b) or (c) is denied as being improper. The request was (1) not filed at the time of filing a CPA or RCE, and/or (2) not accompanied by the requisite fee as set forth in 37 CFR 1.17(i) . See MPEP § 709 .

Examiner Note:

In bracket 1, insert the filing date of the request for suspension of action.

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7.56.02    Request for Deferral of Examination under 37 CFR 1.103(d) , Denied

Applicant’s request filed on [1], for deferral of examination under 37 CFR 1.103(d) in the application is denied as being improper. [2]

See MPEP § 709 .

Examiner Note:

  • 1. In bracket 1, insert the filing date of the request for deferral of examination.
  • 2. In bracket 2, insert the reason(s) for denying the request. For example, if appropriate insert --The applicant has not filed a request under 37 CFR 1.213(b) to rescind the previously filed nonpublication request--; --A first Office action has been issued in the application--; or --Applicant has not submitted a request for voluntary publication under 37 CFR 1.221 --.

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7.58.fti    Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Claiming Same Invention

The [1] reference is a U.S. patent or U.S. patent application publication of a pending or patented application that claims the rejected invention. An affidavit or declaration is inappropriate under 37 CFR 1.131(a) when the reference is claiming interfering subject matter as defined in 37 CFR 41.203(a) , see MPEP Chapter 2300 . If the reference and this application are not commonly owned, the reference can only be overcome by establishing priority of invention through interference proceedings. See MPEP Chapter 2300 for information on initiating interference proceedings. If the reference and this application are commonly owned, the reference may be disqualified as prior art by an affidavit or declaration under 37 CFR 1.131(c) . See MPEP § 718 .

Examiner Note:

  • 1. If used to respond to the submission of an affidavit under 37 CFR 1.131(a) , this paragraph must be preceded by paragraph 7.57.fti.
  • 2. This form paragraph may be used without form paragraph 7.57.fti when an affidavit has not yet been filed, and the examiner desires to notify applicant that the submission of an affidavit under 37 CFR 1.131(a) would be inappropriate.

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7.65    Affidavit or Declaration Under 37 CFR 1.132: Effective To Withdraw Rejection

The [1] under 37 CFR 1.132 filed [2] is sufficient to overcome the rejection of claim [3] based upon [4].

Examiner Note:

  • 1. In bracket 1, insert either --affidavit-- or --declaration--.
  • 2. In bracket 2, insert the filing date of the affidavit or declaration.
  • 3. In bracket 3, insert the affected claim or claims.
  • 4. In bracket 4, indicate the rejection that has been overcome, including the statutory grounds, e.g.: insufficiency of disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph; lack of utility under 35 U.S.C. 101 ; inoperativeness under 35 U.S.C. 101 ; a specific reference applied under 35 U.S.C. 103 ; etc. See MPEP § 716 .

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7.66    Affidavit or Declaration Under 37 CFR 1.132: Insufficient

The [1] under 37 CFR 1.132 filed [2] is insufficient to overcome the rejection of claim [3] based upon [4] as set forth in the last Office action because:

Examiner Note:

  • 1. In bracket 1, insert either --affidavit-- or --declaration--.
  • 2. In bracket 2, insert the filing date of the affidavit or declaration.
  • 3. In bracket 3, insert the claim or claims affected.
  • 4. In bracket 4, indicate the rejection that has not been overcome, including the statutory grounds, i.e.: insufficiency of disclosure under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph; lack of utility and/or inoperativeness under 35 U.S.C. 101 ; a specific reference applied under 35 U.S.C. 103 ; etc. See MPEP § 716 .
  • 5. Following this form paragraph, set forth the reasons for the insufficiency; e.g., categories include: --untimely--; --fails to set forth facts--; --facts presented are not germane to the rejection at issue--;--showing is not commensurate in scope with the claims--; etc. See MPEP § 716 . Also include a detailed explanation of the reasons why the affidavit or declaration is insufficient. Any of form paragraphs 7.66.01 - 7.66.05 may be used, as appropriate.

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7.66.01    Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Affiant Has Never Seen Invention Before

It includes statements which amount to an affirmation that the affiant has never seen the claimed subject matter before. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716 .

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.66 .
  • 2. A full explanation must be provided, if appropriate.

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7.66.02    Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Invention Works as Intended

It includes statements which amount to an affirmation that the claimed subject matter functions as it was intended to function. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716 .

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.66 .
  • 2. A full explanation must be provided, if appropriate.

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7.66.03    Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Refers Only to Invention, Not to Claims

It refers only to the system described in the above referenced application and not to the individual claims of the application. As such the declaration does not show that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716 .

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.66 .
  • 2. A full explanation must be provided, if appropriate.

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7.66.04    Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: No Evidence of Long-Felt Need

It states that the claimed subject matter solved a problem that was long standing in the art. However, there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem. See MPEP § 716.04 .

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.66 .
  • 2. A full explanation must be provided, if appropriate.

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7.66.05    Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Conclusion

In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.

Examiner Note:

This form paragraph should be presented as a conclusion to your explanation of why the affidavit or declaration under 37 CFR 1.132 is insufficient, and it must be preceded by form paragraph 7.66 .

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7.70.AE     Updated Accelerated Examination Support Document Required for Claim Amendments Not Encompassed by Previous Accelerated Examination Support Document(s) – Application Under Accelerated Examination

Applicant is reminded that for any amendments to the claims (including any new claim) that is not encompassed by the preexamination search and accelerated examination support documents previously filed, applicant is required to provide updated preexamination search and accelerated examination support documents that encompass the amended or new claims at the time of filing the amendment.  Failure to provide such updated preexamination search and accelerated examination support documents at the time of filing the amendment will cause the amendment to be treated as not fully responsive and not to be entered.  See MPEP § 708.02(a) subsection VIII.D. for more information.

If the reply is not fully responsive, the final disposition of the application may occur later than twelve months from the filing of the application.

Examiner Note:

  • 1.        This form paragraph and form paragraph  7.71.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d).
  • 2.         This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway Program (pilot and permanent).

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7.71.AE     Use Of Proper Document and Fee Codes When Filing A Reply Electronically Via EFS-Web – Application Under Accelerated Examination

Any reply or other papers must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered.  If the papers are not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.

Any reply to this communication filed via EFS-Web must include a document that is filed using the document description of “Accelerated Exam - Transmittal amendment/reply.”  Applicant is reminded to use proper indexing for documents to avoid any delay in processing of follow on papers.  Currently document indexing is not automated in EFS-Web and applicant must select a particular document description for each attached file.  An incorrect document description for a particular file may potentially delay processing of the application.  A complete listing of all document codes currently supported in EFS-Web is available at http://www.uspto.gov/ebc/portal/efs/efsweb_document_descriptions.xls .

Any payment of fees via EFS-Web must be accompanied by selection of a proper fee code.  An improper fee code may potentially delay processing of the application.  Instructions on payment of fees via EFS-Web are available at   http://www.uspto.gov/ebc/portal/efs/quick-start.pdf .

Examiner Note:

  • 1.        This form paragraph and form paragraph  7.70.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d).
  • 2.         This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway Program (pilot and permanent).

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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 form paragraph must be followed by one or more of form paragraphs 7.82 , 7.82.01 or 7.83 .
  • 4. Before restarting the period, the SPE should be consulted.

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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 form paragraph must follow form paragraph 7.81 .
  • 3. If a copy of the PTO-892 is being provided without correction, use form paragraph 7.83 instead of this form paragraph.
  • 4. Also use form paragraph 7.82.01 if reference copies are being supplied.

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7.82.01    Copy of Reference(s) Furnished

Copies of the following references not previously supplied are enclosed:

Examiner Note:

  • 1. The USPTO ceased mailing paper copies of U.S. patents and U.S. application publications cited in Office Actions in nonprovisional applications beginning in June 2004. See the phase-in schedule of the E-Patent Reference program provided in “USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies,” 1282 O.G. 109 (May 18, 2004). Therefore, this form paragraph should only be used for foreign patent documents, non-patent literature, pending applications that are not stored in the image file wrapper (IFW) system, and other information not previously supplied.
  • 2. The reference copies being supplied must be listed following this form paragraph.
  • 3. This form paragraph must be preceded by form paragraph 7.81 and may also be used with form paragraphs 7.82 or 7.83.

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7.82.03    How To Obtain Copies of U.S. Patents and U.S. Patent Application Publications

In June 2004, the USPTO ceased mailing paper copies of cited U.S. patents and U.S. patent application publications with all Office actions. See “USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies,” 1282 O.G. 109 (May 18, 2004). Foreign patent documents and non-patent literature will continue to be provided to the applicant on paper.

All U.S. patents and U.S. patent application publications are available free of charge from the USPTO web site (www.uspto.gov/patft/index.html), for a fee from the Office of Public Records (http://ebiz1.uspto.gov/oems25p/index.html), and from commercial sources. Copies are also available at the Patent and Trademark Resource Centers (PTRCs). A list of the PTRCs may be found on the USPTO web site (www.uspto.gov/products/library/ptdl/locations/index.jsp). Additionally, a simple new feature in the Office’s Private Patent Application Information Retrieval system (PAIR), E-Patent Reference, is available for downloading and printing of U.S. patents and U.S. patent application publications cited in U.S. Office Actions.

STEPS TO USE THE E-PATENT REFERENCE FEATURE

Access to Private PAIR is required to utilize E-Patent Reference. If you do not already have access to Private PAIR, the Office urges practitioners and applicants not represented by a practitioner to: (1) obtain a no-cost USPTO Public Key Infrastructure (PKI) digital certificate; (2) obtain a USPTO customer number; (3) associate all of their pending and new application filings with their customer number; (4) install free software (supplied by the Office) required to access Private PAIR and the E-Patent Reference; and (5) make appropriate arrangements for Internet access.

Instructions for performing the 5 steps:

Step 1: Full instructions for obtaining a PKI digital certificate are available at the Office’s Electronic Business Center (EBC) web page (www.uspto.gov/ebc/downloads.html). Note that a notarized signature will be required to obtain a digital certificate.

Step 2: To get a Customer Number, download and complete the Customer Number Request form, PTO-SB/125, from the USPTO web site (www.uspto.gov/web/forms/sb0125.pdf). The completed form can be transmitted by facsimile to the Patent Electronic Business Center at (571) 273-0177, or mailed to the address on the form. If you are a registered attorney or agent, your registration number must be associated with your customer number. This association is accomplished by adding your registration number to the Customer Number Request form.

Step 3: A description of associating a customer number with the correspondence address of an application is described at the EBC Web page (www.uspto.gov/ebc/registration_pair.html).

Step 4: The software for electronic filing is available for downloading at www.uspto.gov/ebc. Users can also contact the EFS Help Desk at (571) 272-4100 and request a copy of the software on compact disc. Users will also need Adobe Acrobat Reader, which is available through a link from the USPTO web site.

Step 5: Internet access will be required which applicants may obtain through a supplier of their own choice. As images of large documents must be downloaded, high-speed Internet access is recommended.

The E-Patent Reference feature is accessed using a button on the Private PAIR screen. Ordinarily all of the cited U.S. patent and U.S. patent application publication references will be available over the Internet using the Office’s new E-Patent Reference feature. The size of the references to be downloaded will be displayed by E-Patent Reference so the download time can be estimated. Applicants and registered practitioners can select to download all of the references or any combination of cited references. Selected references will be downloaded as complete documents in Portable Document Format (PDF). The downloaded documents can be viewed and printed using commercially available software, such as ADOBE® READER®. ADOBE® READER® is available free of charge from Adobe Systems Incorporated (www.adobe.com/products/acrobat/readermain.html).

Examiner Note:

This form paragraph is recommended for use in Office actions citing U.S. patents or U.S. patent application publications when the applicant is not represented by a registered patent attorney or a registered patent agent.

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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 corrected copy”
    • “A complete copy”
    • A specific page or pages, e.g., “Pages 3-5”
    • “A Notice of References Cited, Form PTO-892”
  • 2. This form paragraph should follow form paragraph 7.81 and may follow form paragraphs 7.82 and 7.82.01 .

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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 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:

  • 1. In bracket 2, insert the date of the interview.
  • 2. In bracket 3, explain the deficiencies.

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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) .

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7.84.01.AE    Paper Is Unsigned – Application Under Accelerated Examination

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. Since this application has been granted special status under the accelerated examination program, NO extensions of this time period under 37 CFR 1.136 (a) will be permitted.

The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.

Examiner Note:

  • 1. Examiner should first try to contact applicant by telephone and ask for a properly signed reply or ratification of the reply. If attempts to contact applicant are unsuccessful, examiner may use this form paragraph in a letter requiring a properly signed reply or ratification if the reply is to a non-final Office action.
  • 2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102 (c)(2) or (d).
  • 3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102 (c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

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7.84.AE    Amendment Is Non-Responsive to Interview – Application Under Accelerated Examination

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 mailing date of this notice, whichever is longer, within which to supply the omission or correction in order to avoid abandonment. Since this application has been granted special status under the accelerated examination program, NO extensions of this time period under 37 CFR 1.136 (a) will be permitted.

The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.

Examiner Note:

  • 1. In bracket 2, insert the date of the interview.
  • 2. In bracket 3, explain the deficiencies.
  • 3. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102 (c)(2) or (d).
  • 4. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102 (c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

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7.85    Amendment Under 37 CFR 1.312 Entered

The amendment filed on [1] under 37 CFR 1.312 has been entered.

Examiner Note:

Use this form paragraph both for amendments under 37 CFR 1.312 that do not affect the scope of the claims (may be signed by primary examiner) and for amendments being entered under 37 CFR 1.312 which do affect the scope of the claims (requires signature of supervisory patent examiner). See MPEP § 714.16 .

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7.86    Amendment Under 37 CFR 1. 312 Entered in Part

The amendment filed on [1] under 37 CFR 1.312 has been entered-in-part. [2]

Examiner Note:

When an amendment under 37 CFR 1.312 is proposed containing plural changes, some of which may be acceptable and some not, the acceptable changes should be entered. An indication of which changes have and have not been entered with appropriate explanation should follow in bracket 2.

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7.87    Amendment Under 37 CFR 1.312 Not Entered

The proposed amendment filed on [1] under 37 CFR 1.132 has not been entered. [2]

Examiner Note:

  • The reasons for non-entry should be specified in bracket 2, for example:
  • --The amendment changes the scope of the claims.--

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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 7.98.02 .

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7.91    Reply Is Not Fully Responsive, Extension of Time Suggested

The reply filed on [1] is not 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 form paragraph; instead use form paragraph 7.95 .

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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 form paragraph 7.91 .

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7.95.01    Lack of Arguments in Response

Applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.95 .
  • 2. This form paragraph is intended primarily for use in pro se applications.

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7.95.AE    Bona Fide, Non-Responsive Amendments – Application Under Accelerated Examination

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. Since this application has been granted special status under the accelerated examination program, NO extensions of time under 37 CFR 1.136(a) will be permitted.

The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.

Examiner Note:

  • 1. 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 form paragraph 7.91 .
  • 2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102 (c)(2) or (d).
  • 3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102 (c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program

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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 § 707.05 .

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7.97    Claims Allowed

Claim [1] allowed.

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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 form paragraph in these cases.

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7.98.01    Reply Is Late, Extension of Time Suggested, Pro Se

Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the above noted Office action. The application will become abandoned unless applicant obtains an extension of the period for reply set in the above noted Office action. An extension of the reply period may be obtained by filing a petition under 37 CFR  1.136(a) . The petition must be accompanied by the appropriate fee as set forth in 37 CFR 1.17 (a) (copy of current fee schedule attached). The date on which the reply, the petition, and the fee have been filed is the date of the reply and also the date for purposes of determining the period of extension and the corresponding amount of the fee due. The expiration of the time period is determined by the amount of the fee paid. Applicant is advised that in no case can any extension carry the date for reply to an Office action beyond the maximum period of SIX MONTHS set by statute. Additionally, extensions may not be granted under 37 CFR 1.136(a) for more than FIVE MONTHS beyond the time period set in an Office action.

Examiner Note:

Enclose a photocopy of current fee schedule with action so that applicant can determine the required fee.

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7.98.02    Reply Is Late, Petition To Revive Suggested, Pro Se

Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the last Office Action. Since no time remains for applicant to obtain an extension of the period for reply by filing a petition under 37 CFR 1.136(a), this application is abandoned. Applicant is advised that the abandonment of this application may only be overcome by filing a petition to revive under 37 CFR 1.137. A petition to revive may be appropriate if applicant’s failure to reply was either unavoidable or unintentional, as set forth below.

A. Failure to reply was unavoidable.

A petition to revive an abandoned application on the grounds that the failure to reply was unavoidable (37 CFR 1.137(a)) must be accompanied by: (1) the required reply (which has been filed); (2) a showing to the satisfaction of the Director 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; (3) any terminal disclaimer required pursuant to 37 CFR 1.137(d); and (4) the $ [3] petition fee as set forth in 37 CFR 1.17(l). No consideration to the substance of a petition will be given until this fee is received.

The showing requirement can be met by submission of statements of fact establishing that the delay in filing the reply was unavoidable, as well as inadvertent. This must include: (1) a satisfactory showing that the cause of the delay resulting in failure to reply in timely fashion to the Office action was unavoidable; and (2) a satisfactory showing that the cause of any delay during the time period between abandonment and filing of the petition to revive was also unavoidable.

A terminal disclaimer and the $ [4] terminal disclaimer fee is required under 37 CFR 1.137(d) if the application is: (1) a design application, (2) a utility application filed before June 8, 1995, or (3) a 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 the application equivalent to the period of abandonment of the application, and must also apply to any patent granted on any application containing a specific reference under 35 U.S.C. 120, 121 or 365(c) to the application for which revival is sought.

B. Failure to reply was unintentional.

A petition to revive an abandoned application on the grounds that the failure to reply was unintentional (37 CFR 1.137(b)) must be accompanied by: (1) the required reply (which has been filed); (2) 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; (3) any terminal disclaimer required pursuant to 37 CFR 1.137(d) (see above discussion); and (4) the $ [5] petition fee as set forth in 37 CFR 1.17(m). No consideration to the substance of a petition will be given until this fee is received. The Director may require additional information where there is a question whether the delay was unintentional.

The required items and fees must be submitted promptly under a cover letter entitled “Petition to Revive.”

Further correspondence with respect to this matter should be addressed as follows:

By mail:

Mail Stop Petition

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX:

571-273-8300

Attn: Office of Petitions

Telephone inquiries with respect to this matter should be directed to the Office of Petitions Staff at (571) 272-3282. For more detailed information, see MPEP § 711.03(c) .

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8.01    Election of Species; Species Claim(s) Present

This application contains claims directed to the following patentably distinct species [1]. The species are independent or distinct because [2].

Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, [3] generic.

There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4].

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed ( 37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species , including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.

The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144 . If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.

Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.

Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141 .

Examiner Note:

  • 1. In bracket 1, identify the species and/or grouping(s) of patentably indistinct species from which an election is to be made. The species may be identified as the species of figures 1, 2, and 3, for example, or the species of examples I, II, and III, respectively. Where the election requirement identifies a grouping of patentably indistinct species, applicant should not be required to elect a specific species within that grouping.
  • 2. In bracket 2 insert the reason(s) why the species or grouping(s) of species are independent or distinct. See MPEP § 806.04(b) , § 806.04(f) and § 806.04(h) . For example, insert --the claims to the different species recite the mutually exclusive characteristics of such species--, and provide a description of the mutually exclusive characteristics of each species or grouping of species.
  • 3. In bracket 3 insert the appropriate generic claim information.
  • 4. In bracket 4 insert the applicable reason(s) why there is a search and/or examination burden:
    • --the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification
    • --the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter

    --the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).

  • 5. This form paragraph does not need to be followed by form paragraph 8.21 .

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8.02    Requiring an Election of Species; No Species Claim Present

Claim(s) [1] is/are generic to the following disclosed patentably distinct species: [2]. The species are independent or distinct because [3]. In addition, these species are not obvious variants of each other based on the current record.

Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.

There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4]

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species , including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.

The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144 . If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.

Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.

Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141 .

Examiner Note:

  • 1. This form paragraph should be used for the election of species requirement described in MPEP § 803.02 (Markush group) and MPEP § 808.01(a) where only generic claims are presented.
  • 2. In bracket 1, insert the claim number(s).
  • 3. In bracket 2, clearly identify the species and/or grouping(s) of patentably indistinct species from which an election is to be made. The species may be identified as the species of figures 1, 2, and 3, for example, or the species of examples I, II, and III, respectively. Where the election requirement identifies a grouping of patentably indistinct species, applicant should not be required to elect a specific species within that grouping.
  • 4. In bracket 3 insert the reason(s) why the species or groupings of species as disclosed are independent or distinct. See MPEP § 806.04(b) , § 806.04(f) and MPEP § 806.04(h) . For example, insert --as disclosed the different species have mutually exclusive characteristics for each identified species--, and provide a description of the mutually exclusive characteristics of each species or grouping of species.
  • 5. In bracket 4 insert the applicable reason(s) why there is a search and/or examination burden:
    • --the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification
    • --the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter

    --the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).

  • 6. This form paragraph does not need to be followed by form paragraph 8.21 .

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8.03    In Condition for Allowance, Non-elected Claims Withdrawn with Traverse

This application is in condition for allowance except for the presence of claim [1] directed to an invention non-elected with traverse in the reply filed on [2]. Applicant is given ONE MONTH or THIRTY DAYS from the date of this letter, whichever is longer, to cancel the noted claims or take other appropriate action ( 37 CFR 1.144 ). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner’s Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.

The prosecution of this case is closed except for consideration of the above matter.

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8.04    Election by Original Presentation

Newly submitted claim [1] directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: [2]

Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03 .

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8.05    Claims Stand Withdrawn With Traverse

Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b) , as being drawn to a nonelected [2], there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on [3].

Examiner Note:

In bracket 2, insert --invention-- or --species--.

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8.06    Claims Stand Withdrawn Without Traverse

Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected [2], there being no allowable generic or linking claim. Election was made without traverse in the reply filed on [3].

Examiner Note:

In bracket 2, insert --invention--, or --species--.

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8.07    Ready for Allowance, Non-elected Claims Withdrawn Without Traverse

This application is in condition for allowance except for the presence of claim [1] directed to [2] nonelected without traverse. Accordingly, claim [3] been canceled.

Examiner Note:

In bracket 2, insert --an invention--, --inventions--, --a species--, or --species--.

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8.08    Restriction, Two Groupings

Restriction to one of the following inventions is required under 35 U.S.C. 121 :

I. Claim [1], drawn to [2], classified in [3].

II. Claim [4], drawn to [5], classified [6].

Examiner Note:

In brackets 3 and 6, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.

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8.09    Restriction, 3rd Grouping

III. Claim [1], drawn to [2], classified in [3].

Examiner Note:

In bracket 3, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.

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8.10    Restriction, 4th Grouping

IV. Claim [1], drawn to [2], classified in [3].

Examiner Note:

In bracket 3, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.

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8.11    Restriction, Additional Groupings

[1]. Claim [2], drawn to [3], classified in [4].

Examiner Note:

  • 1. In bracket 1, insert the appropriate roman numeral, e.g., --V--, --VI--, etc.
  • 2. In bracket 4, insert USPC class and subclass if classified in the United States Patent Classification or CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification. For example, if examined in USPC, enter USPC Class xxx, subclass yyy.

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8.12    Restriction, Linking Claims

Claim [1] link(s) inventions [2] and [3]. The restriction requirement [4] the linked inventions is subject to the nonallowance of the linking claim(s), claim [5]. Upon the indication of allowability of the linking claim(s), the restriction requirement as to the linked inventions shall be withdrawn and any claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s) will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104. Claims that require all the limitations of an allowable linking claim will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier. Amendments submitted after final rejection are governed by 37 CFR 1.116 ; amendments submitted after allowance are governed by 37 CFR 1.312 .

Applicant(s) are advised that if any claimpresented in a continuation or divisional application is anticipated by, or includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.

Examiner Note:

  • 1. This form paragraph must be included in any restriction requirement with at least one linking claim present.
  • 2. In bracket 4, insert either --between-- or --among--.
  • 3. In bracket 5, insert the claim number(s) of the linking claims.
  • 4. See related form paragraphs 8.45 , 8.46 and 8.47 .

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8.13    Distinctness (Heading)

The inventions are independent or distinct, each from the other because:

Examiner Note:

This form paragraph should be followed by one of form paragraphs 8.14 - 8.20.02 to show independence or distinctness.

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8.14    Intermediate-Final Product

Inventions [1] and [2] are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product and the species are patentably distinct ( MPEP § 806.05(j) ). In the instant case, the intermediate product is deemed to be useful as [3] and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both an intermediate and final product ( MPEP § 806.05(j) ).
  • 2. Conclude restriction requirement with form paragraph 8.21 .

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8.14.01    Distinct Products or Distinct Processes

Inventions [1] and [2] are directed to related [3]. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j) . In the instant case, the inventions as claimed [4]. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.

Examiner Note:

  • 1. This form paragraph may be used when claims are presented to two or more related product inventions, or two or more related process inventions, wherein the inventions as claimed are mutually exclusive, i.e., there is no product (or process) that would infringe both of the identified inventions. Use form paragraph 8.15 to restrict between combination(s) and subcombination(s).
  • 2. If a generic claim or claim linking multiple product inventions or multiple process inventions is present, see MPEP § 809 - § 809.03 .
  • 3. In bracket 3, insert --products -- or --processes--.
  • 4. In bracket 4, explain why the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect.
  • 5. Conclude restriction requirement with form paragraph 8.21 .

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8.15    Combination-Subcombination

Inventions [1] and [2] are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations ( MPEP § 806.05(c) ). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because [3]. The subcombination has separate utility such as [4].

The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104 . See MPEP § 821.04(a) . Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both combination(s) and subcombination(s) ( MPEP § 806.05(c) ).
  • 2. In bracket 3, specify the limitations of the claimed subcombination that are not required by the claimed combination, or the evidence that supports the conclusion that the combination does not rely upon the specific details of the subcombination for patentability. See MPEP § 806.05(c) , subsection II and § 806.05(d) .
  • 3. In bracket 4, suggest utility other than used in the combination.
  • 4. Conclude restriction requirement with one of form paragraphs 8.21 .

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8.16    Subcombinations, Usable Together

Inventions [1] and [2] are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case subcombination [3] has separate utility such as [4]. See MPEP § 806.05(d) .

The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104 . See MPEP § 821.04(a) . Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to subcombinations usable together ( MPEP § 806.05(d) ).
  • 2. In bracket 3, insert the appropriate group number or identify the subcombination.
  • 3. In bracket 4, suggest utility other than with the other subcombination.
  • 4. Conclude restriction requirement with form paragraph 8.21 .

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8.17    Process and Apparatus

Inventions [1] and [2] are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another materially different process. ( MPEP § 806.05(e) ). In this case [3].

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both a process and apparatus for its practice ( MPEP § 806.05(e) ).
  • 2. In bracket 3, use one or more of the following reasons:
    • --the process as claimed can be practiced by another materially different apparatus such as......--,
    • --the process as claimed can be practiced by hand--,
    • --the apparatus as claimed can be used to practice another materially different process such as......--.
  • 3. A process can be practiced by hand if it can be performed without using any apparatus.
  • 4. Conclude restriction requirement with one of form paragraphs 8.21 .
  • 5. All restriction requirements between a process and an apparatus (or product) for practicing the process should be followed by form paragraph 8.21.04 to notify the applicant that if an apparatus claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable apparatus may be rejoined.

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8.18    Product and Process of Making

Inventions [1] and [2] are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another materially different product or (2) that the product as claimed can be made by another materially different process ( MPEP § 806.05(f) ). In the instant case [3].

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both a product and the process of making the product ( MPEP § 806.05(f) ).
  • 2. In bracket 3, use one or more of the following reasons:
    • --the process as claimed can be used to make a materially different product such as......--,
    • --the product as claimed can be made by a materially different process such as......--.
  • 3. Conclude the basis for the restriction requirement with form paragraph 8.21 .
  • 4. All restriction requirements between a product and a process of making the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.

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8.19    Apparatus and Product Made

Inventions [1] and [2] are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another materially different apparatus ( MPEP § 806.05(g) ). In this case [3].

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both the apparatus and product made ( MPEP § 806.05(g) ).
  • 2. In bracket 3, use one or more of the following reasons:
    • --the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make a different product such as......--,
    • --the product can be made by a materially different apparatus such as......--.
  • 3. Conclude restriction requirement with form paragraph 8.21 .

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8.20    Product and Process of Using

Inventions [1] and [2] are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h) . In the instant case [3].

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both the product and process of using the product ( MPEP § 806.05(h) . If claims to a process specially adapted for (i.e., not patentably distinct from) making the product are also presented such process of making claims should be grouped with the product invention. See MPEP § 806.05(i) .
  • 2. In bracket 3, use one or more of the following reasons:
    • --the process as claimed can be practiced with another materially different product such as......--,
    • --the product as claimed can be used in a materially different process such as......--.
  • 3. Conclude the basis for the restriction requirement with form paragraph 8.21 .
  • 4. All restriction requirements between a product and a process of using the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.

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8.20.02    Unrelated Inventions

Inventions [1] and [2] are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together, and they have different designs, modes of operation, and effects. ( MPEP § 802.01 and MPEP § 806.06 ). In the instant case, the different inventions [3] .

Examiner Note:

  • 1. This form paragraph is to be used only when claims are presented to unrelated inventions, e. g., a necktie and a locomotive bearing not disclosed as capable of use together.
  • 2. In bracket 3, insert reasons for concluding that the inventions are unrelated.
  • 3. This form paragraph must be followed by form paragraph 8.21 .

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8.20.03    Unrelated Product and Process Inventions

Inventions [1] and [2] are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06 . In the instant case, [3] .

Examiner Note:

  • 1. In bracket 3, insert reasons for concluding that the inventions are unrelated.
  • 2. This form paragraph must be followed by form paragraph 8.21 .

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8.21.01    Conclusion to All Restriction Requirements: Different Classification

Because these inventions are independent or distinct for the reasons given above and there would be a serious burden on the examiner if restriction is not required because the inventions have acquired a separate status in the art in view of their different classification, restriction for examination purposes as indicated is proper.

Examiner Note:

THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 8.21.02 OR 8.21.03 ) MUST BE ADDED AS A CONCLUSION TO ALL RESTRICTION REQUIREMENTS employing any of form paragraphs 8.01, 8.02, or 8.14 to 8.20.03 .

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8.21.02    Conclusion to All Restriction Requirements: Recognized Divergent Subject Matter

Because these inventions are independent or distinct for the reasons given above and there would be a serious burden on the examiner if restriction is not required because the inventions have acquired a separate status in the art due to their recognized divergent subject matter, restriction for examination purposes as indicated is proper.

Examiner Note:

THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 8.21.01 OR 8.21.03 ) MUST BE ADDED AS A CONCLUSION TO ALL RESTRICTION REQUIREMENTS employing any of form paragraphs 8.01, 8.02, or 8.14 to 8.20.03 .

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8.21.03    Conclusion to All Restriction Requirements: Different Search

Because these inventions are independent or distinct for the reasons given above and there would be a serious burden on the examiner if restriction is not required because the inventions require a different field of search (see MPEP § 808.02) , restriction for examination purposes as indicated is proper.

Examiner Note:

THIS FORM PARAGRAPH (OR ONE OF FORM PARAGRAPHS 8.21.01 OR 8.21.02 ) MUST BE ADDED AS A CONCLUSION TO ALL RESTRICTION REQUIREMENTS employing any of form paragraphs 8.01,8.02, or 8.14 to 8.20.03 .

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8.21.04    Notice of Potential Rejoinder of Process Claims

The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.

In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104 . Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101 , 102 , 103 and 112 . Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04 . Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.

Examiner Note:

This form paragraph should appear at the end of any requirement for restriction between a process and a product/apparatus for practicing the process (see form paragraph 8.17 ), a product/apparatus and a process of making the product/apparatus (see form paragraph 8.18 ) or between a product/apparatus and a process of using the product/apparatus (see form paragraph 8.20 ). See MPEP § 821.04 for rejoinder practice.

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8.22    Requirement for Election and Means for Traversal

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement be traversed ( 37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected invention.

The election of an invention or species may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse.

Should applicant traverse on the ground that the inventions or species are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions or species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C.103(a) of the other invention.

Examiner Note:

This form paragraph must be used in Office actions containing a restriction requirement with or without an action on the merits.

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8.23    Requirement, When Elected by Telephone

During a telephone conversation with [1] on [2] a provisional election was made [3] traverse to prosecute the invention of [4], claim [5]. Affirmation of this election must be made by applicant in replying to this Office action. Claim [6] withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being drawn to a non-elected invention.

Examiner Note:

  • 1. In bracket 3, insert --with-- or --without--, whichever is applicable.
  • 2. In bracket 4, insert either the elected group or species.
  • 3. An action on the merits of the claims to the elected invention should follow.

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8.23.01    Requirement, No Election by Telephone

A telephone call was made to [1] on [2] to request an oral election to the above restriction requirement, but did not result in an election being made.

Examiner Note:

  • 1. In bracket 1, insert the name of the applicant or attorney or agent contacted.
  • 2. In bracket 2, insert the date(s) of the telephone contact(s).
  • 3. This form paragraph should be used in all instances where a telephone election was attempted and the applicant’s representative did not or would not make an election.
  • 4. This form paragraph should not be used if no contact was made with applicant or applicant’s representative.

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8.23.02    Joint Inventors, Correction of Inventorship

Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i) .

Examiner Note:

This form paragraph must be included in all restriction requirements for applications having joint inventors.

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8.24    Reply to Final Must Include Cancellation of Claims Non-elected with Traverse

This application contains claim [1] drawn to an invention nonelected with traverse in the reply filed on [2]. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action ( 37 CFR 1.144 ). See MPEP § 821.01 .

Examiner Note:

For use in FINAL rejections of applications containing claims drawn to an invention non-elected with traverse.

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8.25    Answer to Arguments With Traverse

Applicant’s election with traverse of [1] in the reply filed on [2] is acknowledged. The traversal is on the ground(s) that [3]. This is not found persuasive because [4].

The requirement is still deemed proper and is therefore made FINAL.

Examiner Note:

  • 1. In bracket 1, insert the invention elected.
  • 2. In bracket 3, insert in summary form, the ground(s) on which traversal is based.
  • 3. In bracket 4, insert the reasons why the traversal was not found to be persuasive.

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8.25.01    Election Without Traverse

Applicant’s election without traverse of [1] in the reply filed on [2] is acknowledged.

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8.25.02    Election Without Traverse Based on Incomplete Reply

Applicant’s election of [1] in the reply filed on [2] is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse ( MPEP § 818.03(a) ).

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8.26    Canceled Elected Claims, Non-Responsive

The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive ( MPEP § 821.03 ). The remaining claims are not readable on the elected invention because [2].

Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer, from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD UNDER 37 CFR 1.136(a) ARE AVAILABLE.

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8.26.AE    Canceled Elected Claims, Non-Responsive – Application Under Accelerated Examination

The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive (MPEP § 821.03 ). The remaining claims are not readable on the elected invention because [2].

Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer, from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. Since this application has been granted special status under the accelerated examination program, NO extensions of time under 37 CFR 1.136 (a) will be permitted.

The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102 (c)(2) or (d).
  • 2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102 (c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

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8.27    Different Inventors, Common Assignee, Same Invention

Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. The issue of priority under 35 U.S.C. 102(g) and possibly 35 U.S.C. 102(f) of this single invention must be resolved.

Since the U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP Chapter 2300 ), the assignee is required to state which entity is the prior inventor of the conflicting subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under 35 U.S.C. 102(f) or (g) and not an extension of monopoly.

Failure to comply with this requirement will result in a holding of abandonment of this application.

Examiner Note:

  • 1. In bracket 3, insert the U.S. patent number or the copending application number.
  • 2. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28 .
  • 3. A provisional or actual statutory double patenting rejection should also be made using form paragraphs 8.31 or 8.32 .
  • 4. If the commonly assigned application or patent has an earlier U.S. filing date, a rejection under 35 U.S.C. 102(e) may also be made using form paragraph 7.15.01 or 7.15.02 .

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8.28    Different Inventors, Common Assignee, Obvious Inventions, No Evidence of Common Ownership at Time of Invention

Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].

Examiner Note:

  • 1. This form paragraph should be used when the application being examined is commonly assigned with a conflicting application or patent, but there is no indication that they were commonly assigned at the time the invention was actually made.
  • 2. A rejection under 35 U.S.C. 102(e) / 103(a) using form paragraph 7.21, 7.21.01 or 7.21.02 also should be made, as appropriate. For applications pending on or after December 10, 2004, rejections under 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the patent is disqualified under 35 U.S.C. 103(c) as prior art in a 35 U.S.C. 103(a) rejection.
  • 3. In bracket 3, insert the number of the conflicting patent or application.
  • 4. An obviousness-type double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37
  • 5. In bracket 4, explain why the claims in the conflicting cases are not considered to be distinct.
  • 6. Form paragraph 8.28.01 MUST follow this paragraph.

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8.28.01    Advisory Information Relating to Form Paragraph 8.28

The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP Chapter 2300 ). Commonly assigned [1], discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102 (e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c) , either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.

A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.

Examiner Note:

This form paragraph should follow form paragraph 8.28 and should only be used ONCE in an Office action.

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8.29    Patentably Indistinct Claims, Copending Applications

Claim [1] of this application is patentably indistinct from claim [2] of Application No. [3]. Pursuant to 37 CFR 1.78(e) or pre-AIA 37 CFR 1.78(b) , when two or more applications filed by the same applicant contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822 .

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8.30    35 U.S.C. 101, Statutory Basis for Double Patenting “Heading” Only

A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert , 245 F.2d 467, 114 USPQ 330 (CCPA 1957).

A statutory type ( 35 U.S.C. 101 ) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101 .

Examiner Note:

The above form paragraph must be used as a heading for all subsequent double patenting rejections of the statutory (same invention) type using either of form paragraphs 8.31 or 8.32 .

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8.31    Rejection, 35 U.S.C. 101, Double Patenting

Claim [1] rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of prior U.S. Patent No. [3]. This is a statutory double patenting rejection.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 8.30 and is used only for double patenting rejections of the same invention claimed in an earlier patent; that is, the “scope” of the inventions claimed is identical.
  • 2. If the claims directed to the same invention are in another copending application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.32 .
  • 3. Do not use this form paragraph for nonstatutory-type double patenting rejections. If nonstatutory type, use appropriate form paragraphs 8.33 to 8.39 .
  • 4. This form paragraph may be used where the reference patent and the pending application are:
    • by the same inventive entity, or
    • by a different inventive entity and are commonly assigned even though there is no common inventor, or
    • not commonly assigned but have at least one common inventor, or
    • for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) , or
    • for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
  • 5. In bracket 3, insert the number of the reference patent.
  • 6. For applications being examined under pre-AIA law : If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.
  • 7. If evidence is of record to indicate that the patent is prior art under either pre-AIA 35 U.S.C. 102(f) or (g) , a rejection should also be made using form paragraphs 7.15.fti and/or 7.19.fti in addition to this double patenting rejection.
  • 8. If the patent is to a different inventive entity from the application and the effective U.S. filing date of the patent antedates the effective filing date of the application, a rejection under pre-AIA 35 U.S.C. 102(e) should additionally be made using form paragraph 7.15.02.fti .
  • 9. For applications being examined under the AIA : If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the application no longer contains claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

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8.32    Provisional Rejection, 35 U.S.C. 101, Double Patenting

Claim [1] provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of copending Application No. [3]. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 8.30 and is used only for double patenting rejections of the same invention claimed in another copending application; that is, the scope of the claimed inventions is identical.
  • 2. If the claims directed to the same invention are from an issued patent, do not use this paragraph. See form paragraph 8.31 .
  • 3. Do not use this paragraph for nonstatutory-type double patenting rejections. See form paragraphs 8.33 to 8.39 .
  • 4. This form paragraph may be used where the patentably indistinct claims are in a copending application that is:
    • by the same inventive entity, or
    • by a different inventive entity and is commonly assigned even though there is no common inventor, or
    • not commonly assigned but has at least one common inventor, or
    • for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) , or
    • for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
  • 5. Form paragraph 8.28.fti or 8.28.aia , as appropriate, should also be used.
  • 6. In bracket 3, insert the number of the reference application.
  • 7. A provisional double patenting rejection should also be made in the reference application.
  • 8. For applications being examined under pre-AIA law : If the copending application is by a different inventive entity and is commonly assigned, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.
  • 9. If evidence is also of record to show that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g) , a rejection should also be made in the other application using form paragraphs 7.15.fti and/or 7.19.fti in addition to this provisional double patenting rejection.
  • 10. If the applications do not have the same inventive entity and effective U.S. filing date, a provisional pre-AIA 35 U.S.C. 102(e) rejection should additionally be made in the later-filed application using form paragraph 7.15.01.fti .
  • 11. For applications being examined under the AIA : If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the applications no longer contain claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

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8.33    Basis for Nonstatutory Double Patenting, “Heading” Only

The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b) .

The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.

Examiner Note:

This form paragraph is to be used as a heading before a nonstatutory double patenting rejection using any of form paragraphs 8.34 - 8.39 . Although nonstatutory double patenting is sometimes called obviousness-type double patenting (“ODP”), an obviousness analysis is required only if the examined application claim(s) is not anticipated by the reference claim(s).

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8.34    Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)

Claim [1] rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of U.S. Patent No. [3]. Although the claims at issue are not identical, they are not patentably distinct from each other because [4].

Examiner Note:

  • 1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
  • 2. This form paragraph is used for nonstatutory double patenting rejections based upon a patent.
  • 3. If the nonstatutory double patenting rejection is based upon another application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.33 and either form paragraph 8.35 or 8.37 .
  • 4. This form paragraph may be used where the patentably indistinct invention is claimed in a patent which is:
    • by the same inventive entity, or
    • by a different inventive entity and is commonly assigned even though there is no common inventor, or
    • not commonly assigned but has at least one inventor in common, or
    • for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103 , or
    • for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
  • 5. In bracket 3, insert the number of the patent.
  • 6. For applications being examined under pre-AIA law: If evidence indicates that the patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g) , a rejection should additionally be made under pre-AIA 35 U.S.C. 102(f) / 103(a) or 102(g) ,/ 103(a) using form paragraph 7.21.fti , unless the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 7. For applications being examined under pre-AIA law: If the patent is to a different inventive entity and has an earlier effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) may be made using form paragraph 7.21.02.fti . Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 8. For applications being examined under the AIA : A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

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8.35    Provisional Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)

Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3]. Although the claims at issue are not identical, they are not patentably distinct from each other because [4].

This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.

Examiner Note:

  • 1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
  • 2. This form paragraph should be used when the patentably indistinct claims are in another copending application.
  • 3. If the patentably indistinct claims are in a patent, do not use this form paragraph. Use form paragraphs 8.33 and 8.34 .
  • 4. This form paragraph may be used where the patentably indistinct claims are in a copending application that is:
    • by the same inventive entity, or
    • commonly assigned even though there is no common inventor, or
    • not commonly assigned but has at least one common inventor, or
    • for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) , or
    • for applications examined under the AIA, commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) as of the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
  • 5. For applications being examined under pre-AIA law: If the reference application is currently commonly assigned but the file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to also resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g) .
  • 6. In bracket 3, insert the number of the reference application.
  • 7. A provisional nonstatutory double patenting rejection should also be made in the reference application.
  • 8. For applications being examined under pre-AIA law: If evidence shows that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g) and the copending application has not been disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection, a rejection should additionally be made in the other application under pre-AIA 35 U.S.C. 102(f) / 103(a) or 102(g) )/ 103(a) using form paragraph 7.21.fti .
  • 9. For applications being examined under pre-AIA law: If the disclosure of one application may be used to support a rejection of the other and the applications have different inventive entities and different U.S. filing dates, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) in the later filed application. Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 10. For applications being examined under pre-AIA law: See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.
  • 11. For applications being examined under the AIA: See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application when the application is being examined under the AIA for double patenting purposes.
  • 12. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
  • 13. In bracket 4, provide appropriate rationale for obviousness of claims being rejected over the claims of the cited application.

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8.36    Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)

Claim [1] rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim [2] of U.S. Patent No. [3] in view of [4]. [5]

Examiner Note:

  • 1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
  • 2. This form paragraph is used for nonstatutory double patenting rejections where the primary reference is a patent that includes claims patentably indistinct from those in the present application.
  • 3. If the nonstatutory double patenting rejection is based on another application, do not use this form paragraph. A provisional nonstatutory double patenting rejection should be made using form paragraphs 8.33 and either 8.35 or 8.37 .
  • 4. This form paragraph may be used where the patentably indistinct invention is claimed in a patent which is:
    • by the same inventive entity, or
    • by a different inventive entity and is commonly assigned even though there is no common inventor, or
    • not commonly assigned but has at least one common inventor, or
    • for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) , or
  • 5. In bracket 3, insert the number of the primary reference patent.
  • 6. In bracket 4, insert the secondary reference.
  • 7. In bracket 5, insert an explanation of the obviousness analysis.
  • 8. For applications being examined under pre-AIA law: If evidence shows that the primary reference patent is prior art under pre-AIA 35 U.S.C. 102(f) or (g) , a rejection should additionally be made under pre-AIA 35 U.S.C. 102(f) / 103(a) or 102(g) )/ 103(a) using form paragraph 7.21.fti , unless the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 9. For applications being examined under pre-AIA law: If the primary reference patent issued to a different inventive entity and has an earlier effective U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 10. For applications being examined under the AIA: A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

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8.37    Provisional Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)

Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] in view of [4]. [5]

This is a provisional nonstatutory double patenting rejection.

Examiner Note:

  • 1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
  • 2. This form paragraph is used for nonstatutory double patenting rejections requiring an obviousness analysis where the primary reference is a copending application.
  • 3. If the patentably indistinct claims are in a patent, do not use this form paragraph, use form paragraph 8.36 .
  • 4. This form paragraph may be used where the patentably indistinct claims are in a copending application that is:
    • by the same inventive entity, or
    • commonly assigned even though there is no common inventor, or
    • not commonly assigned but has at least one common inventor, or
    • for applications examined under pre-AIA law, made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) , or
  • 5. For applications being examined under pre-AIA law: If the present and reference applications are currently commonly assigned but the file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to also resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g) .
  • 6. For applications being examined under the AIA: If the copending application is to a different inventive entity and is commonly assigned with the application, form paragraph 8.28.aia should additionally be used if there is no evidence of common ownership as of the effective filing date of the claimed invention. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
  • 7. In bracket 3, insert the number of the reference copending application.
  • 8. In bracket 4, insert the secondary reference.
  • 9. In bracket 5, insert an explanation of the obviousness analysis.
  • 10. A provisional nonstatutory double patenting rejection should also be made in the copending reference application.
  • 11. For applications being examined under pre-AIA law: If evidence shows that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g) and the copending application has not been disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection, a rejection should additionally be made under pre-AIA 35 U.S.C. 102(f) / 103(a) or 102(g) / 103(a) using form paragraph 7.21.fti .
  • 12. For applications being examined under pre-AIA law: If the disclosure of one application may be used to support a rejection of the other and the applications have different inventive entities and different U.S. filing dates, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) in the application with the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 13. For applications being examined under pre-AIA law: See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.
  • 14. For applications being examined under the AIA: See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application when the application is being examined under the AIA for double patenting purposes.

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8.38    Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With a Patent

Claim [1] rejected on the ground of nonstatutory double patenting over claim [2] of U.S. Patent No. [3] since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.

The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: [4]

Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804 .

Examiner Note:

  • 1. Form paragraph