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704    Search and Requirements for Information [R-08.2012]

704.01   Search [R-08.2012]

After reading the specification and claims, the examiner searches the prior art. The subject of searching is more fully treated in MPEP Chapter 900. See especially MPEP §§ 904 through 904.03. The invention should be thoroughly understood before a search is undertaken. However, informal cases, or those which can only be imperfectly understood when they come up for action in their regular turn are also given a search, in order to avoid piecemeal prosecution.

  PREVIOUS EXAMINER’S SEARCH

When an examiner is assigned to act on an application which has received one or more actions by some other examiner, full faith and credit should be given to the search and action of the previous examiner unless there is a clear error in the previous action or knowledge of other prior art. In general the second examiner should not take an entirely new approach to the application or attempt to reorient the point of view of the previous examiner, or make a new search in the mere hope of finding something. See MPEP § 719.05.

704.02 – 704.09   [Reserved]

704.10   Requirements for Information [R-11.2013]

37 C.F.R. 1.105   Requirements for information.

  • (a)
    • (1) In the course of examining or treating a matter in a pending or abandoned application filed under 35 U.S.C. 111 or 371 (including a reissue application), in a patent, or in a reexamination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
      • (i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
      • (ii) Search: Whether a search of the prior art was made, and if so, what was searched.
      • (iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
      • (iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
      • (v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
      • (vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
      • (vii) In Use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
      • (viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner’s stated interpretation of such items.
    • (2) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
      • (i) A requirement for factual information;
      • (ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
      • (iii) Stipulations as to facts with which the applicant may agree or disagree.
    • (3) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
  • (b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
  • (c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136.

An examiner or other Office employee may require from individuals identified under  37 CFR 1.56(c), the submission of such information as may be reasonably necessary to properly examine or treat a matter in a pending or abandoned application filed under 35 U.S.C. 111, in a pending or abandoned application that has entered the national stage under 35 U.S.C. 371, in a patent, or in a reexamination proceeding. The scope of 37 CFR 1.105 is extended to any assignee or anyone to whom there is an obligation to assign the application because the information required may be known to some members of the assignee or obligated assignee even if not known by the inventors.

The authority for the Office to make such requirements arises from the statutory requirements of examination pursuant to 35 U.S.C. 131 and 132. An examiner or other Office employee may make a requirement for information reasonably necessary to the examination or treatment of a matter in accordance with the policies and practices set forth by the Director(s) of the Technology Center or other administrative unit to which that examiner or other Office employee reports. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1283, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) (“Star Fruits’ argument fails to come to grips with the real issue in this case, which is whether the Office can use section 1.105 to compel disclosure of information that the examiner deems pertinent to patentability when the applicant has a contrary view of the applicable law. We answer this question in the affirmative.”)

704.11   What Information May Be Required [R-11.2013]

Information which may be required under 37 CFR 1.105 is that information reasonably necessary to properly examine or treat a matter in a pending or abandoned application filed under 35 U.S.C. 111 (including a reissue application), in a pending or abandoned application that has entered the national stage under 35 U.S.C. 371, in a patent, or in a reexamination proceeding.

There must be a reasonable basis for the information required that would aid in the examination of an application or treatment of some matter. A requirement for information under 37 CFR 1.105 places a substantial burden on the applicant that is to be minimized by clearly focusing the reason for the requirement and the scope of the expected response. Thus, the scope of the requirement should be narrowly defined, and a requirement under 37 CFR 1.105 may only be made when the examiner has a reasonable basis for requiring information.

The terms “factual” and “facts” are included in 37 CFR 1.105 to make it clear that it is facts and factual information, that are known to applicant, or readily obtained after reasonable inquiry by applicant, that are sought, and that requirements under 37 CFR 1.105 are not requesting opinions that may be held or would be required to be formulated by applicant. Where the factual information requested related to the subject application, and details thereof, applicant would be expected to make a reasonable inquiry under the circumstances to find the factual information requested (37 CFR 11.18(b)(2)). Applicant need not, however, derive or independently discover a fact, such as by experimentation, in response to a requirement for information. The purpose of 37 CFR 1.105 is to improve patent quality, and render better decisions, and not to put applicants in jeopardy of meeting their duties of candor and good faith in their replies to a requirement for information.

  INFORMATION REASONABLY NECESSARY FOR FINDING PRIOR ART

The criteria stated in 37 CFR 1.105 for making a requirement for information is that the information be reasonably necessary to the examination or treatment of a matter in an application. The information required would typically be that necessary for finding prior art or for resolving an issue arising from the results of the search for art or from analysis of the application file. A requirement for information necessary for finding prior art is not a substitute for the examiner performing a search of the relevant prior art; the examiner must make a search of the art according to MPEP §§ 704.01 and 904904.03.

The criteria of reasonable necessity is generally met, e.g., where:

  • (A) the examiner’s search and preliminary analysis demonstrates that the claimed subject matter cannot be adequately searched by class or keyword among patents and typical sources of non-patent literature, or
  • (B) either the application file or the lack of relevant prior art found in the examiner’s search justifies asking the applicant if he or she has information that would be relevant to the patentability determination.

The first instance generally occurs where the invention as a whole is in a new area of technology which has no patent classification or has a class with few pieces of art that diverge substantially from the nature of the claimed subject matter. In this situation, the applicant is likely to be among the most knowledgeable in the art, as evidenced by the scarcity of art, and requiring the applicant’s information of areas of search is justified by the need for the applicant’s expertise.

The second instance generally occurs where the application file, or other related applications or publications authored by the applicant, suggests the applicant likely has access to information necessary to a more complete understanding of the invention and its context. In this situation, the record suggests that the details of such information may be relevant to the issue of patentability, and thus shows the need for information in addition to that already submitted by the applicant.

704.11(a)   Examples of Information Reasonably Required

37 CFR 1.105(a)(1)(i)-(viii) list specific examples of information that may be reasonably required. Other examples, not meant to be exhaustive, of information that may be reasonably required for examination of an application include:

  • (A) The name and citation of any particularly relevant indexed journal, or treatise.
  • (B) The trade name of any goods or services the claimed subject matter is embodied in.
  • (C) The citation for, the dates initially published and copies of any advertising and promotional literature prepared for any goods or services the claimed subject matter has been embodied in.
  • (D) The citation for and copies of any journal articles describing any goods or services the claimed subject matter has been embodied in.
  • (E) The trade names and providers of any goods or services in competition with the goods or services the claimed subject matter has been embodied in.
  • (F) Any written descriptions or analyses, prepared by any of the inventors or assignees, of goods or services in competition with the goods or services the claimed subject matter has been embodied in.
  • (G) Identification of pending or abandoned applications filed by at least one of the inventors or assigned to the same assignee as the current application that disclose similar subject matter that are not otherwise identified in the current application.
  • (H) A reply to a matter raised in a protest under 37 CFR 1.291.
  • (I) An explanation of technical material in a publication, such as one of the inventor’s publications.
  • (J) The identification of changes made in a reformatted continuing application filed under 37 CFR 1.53(b).
  • (K) A mark-up for a continuation-in-part application showing the subject matter added where there is an intervening reference.
  • (L) Comments on a new decision by the Federal Circuit that appears on point.
  • (M) The publication date of an undated document mentioned by applicant that may qualify as printed publication prior art (35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(a) or (b)).
  • (N) Comments on information of record which raises a question of whether applicant derived the invention from another under 35 U.S.C. 101 and 115, and pre-AIA 35 U.S.C. 102(f).
  • (O) Art related to applicant’s invention, applicant’s disclosure, or the claimed subject matter.
  • (P) Other factual information pertinent to patentability.
  • (Q) The accuracy of the examiner’s stated analysis of such items.
  • (R) Clarification of the correlation and identification of what structure, material, or acts set forth in the specification would be capable of carrying out a function recited in a means or steps plus function claim limitation. If it is not apparent to the examiner where in the specification and drawings there is support for a particular claim limitation reciting a means to accomplish a function, and if an inquiry by the examiner for such support is met by a stated lack of knowledge thereof by the applicant, the examiner could very well conclude that there is no such support and make appropriate rejections under, for example, .35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph (written description) and 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph
  • (S) Interrogatories or Stipulations.
    • (1) Of the common technical features shared among all claims, or admission that certain groups of claims do not share any common technical features,
    • (2) About the support found in the disclosure for means or steps plus function claims (35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , paragraph 6),
    • (3) Of precisely which portion(s) of the disclosure provide the written description and enablement support for specific claim element(s),
    • (4) Of the meaning of claim limitations or terms used in the claims, such as what teachings in the prior art would be covered by particular limitations or terms in a claim and which dictionary definitions would define a particular claim term, particularly where those terms are not used per se in the specification,
    • (5) Of which portions of each claim correspond to any admitted prior art in the specification,
    • (6) Of the specific utility provided by the claimed subject matter on a claim-by-claim basis,
    • (7) As to whether a dependent claim element is known in the prior art based on the examiner having a reasonable basis for believing so,
    • (8) Of support for added limitations in an amended claim,
    • (9) Of facts related to public use or sale situations.
  • (T) Information from the applicant regarding a third party submission under 37 CFR 1.290. In no circumstance may an examiner direct a requirement for information to the third party that submitted the paper under 37 CFR 1.290. See MPEP § 1134.
  • (U) Information from the applicant regarding rescission of a statement under 37 CFR 1.55 or 1.78. See form paragraphs 7.104.02.fti and 7.104.02.aia.

704.11(b)   When May a Requirement for Information Be Made

A requirement for information under 37 CFR 1.105 is discretionary. A requirement may be made at any time once the necessity for it is recognized and should be made at the earliest opportunity after the necessity is recognized. The optimum time for making a requirement is prior to or with a first action on the merits because the examiner has the maximum opportunity to consider and apply the response. Ordinarily, a request for information should not be made with or after a final rejection.

I.    PRIOR TO THE FIRST ACTION ON THE MERITS

It may be appropriate to make a requirement for information prior to the first action on the merits, such as with a restriction requirement, when the examiner’s search and preliminary analysis demonstrates that the claimed subject matter cannot be adequately searched by class or keyword among patents or in areas of emerging technology where the Office has minimal prior art.

Factors to be considered for the appropriateness of a separate requirement for information prior to the first action on the merits include:

  • (A) Whether the claimed subject matter is in a newly established art area without a well-developed prior art resource pool;
  • (B) Whether the applicant submitted an Information Disclosure Statement;
  • (C) Whether the specification’s background description adequately describes the background of the disclosed subject matter;
  • (D) Whether related documents, written by an inventor or an employee of the assignee, which were not submitted, are found during the search or described in the application file;
  • (E) Whether non-patent literature is referred to in the disclosure, but a copy has not been supplied; and
  • (F) Whether the specification’s background of the invention describes information as being known or conventional, which may be considered as an admission of prior art, but such information is unfamiliar to examiner and cannot be found within the application file or from the examiner’s search, and further details of the information would be relevant to the question of patentability.

II.    WITH THE FIRST ACTION ON THE MERITS

A requirement for information may be combined with a first action on the merits that includes at least one rejection, if, for example, either the application file or the lack of relevant prior art found in the examiner’s search justifies asking the applicant if he or she has information that would be relevant to the patentability determination.

It is not appropriate to make a requirement for information based on a lack of relevant prior art with a first action on the merits allowance or Ex parte Quayle action.

III.    AFTER THE FIRST ACTION ON THE MERITS

A requirement for information made after the first action on the merits may be appropriate when the application file justifies asking the applicant if he or she has information that would be relevant to the patentability determination. It is rarely appropriate to require information because of a lack of relevant prior art after the first action on the merits.

A requirement for information is not proper when no further action would be taken by the examiner. The reasonable necessity criteria for a requirement for information implies further action by the examiner. This means that actions in which requirements for information necessary for examination are made should generally be a non-final action because the applicant’s reply must be considered and applied as appropriate.

Under limited circumstances, requirements under 37 CFR 1.105 may be made in an application that is issued or abandoned. Such a requirement would normally be made only during part of some ongoing proceeding involving the issued patent or abandoned application. Examples of proceedings when an examiner or other Office employee would issue such a request in an abandoned application include proceedings to revive the abandoned application. Examples of proceedings when an examiner or other Office employee would issue such a request in a patent include proceedings to change inventorship and reexamination proceedings.

704.12   Replies to a Requirement for Information [R-08.2012]

Replies to requirements for information must be complete and filed within the time period set including any extensions. Failure to reply within the time period set will result in the abandonment of the application. All replies for a request for information should be checked for completeness. Any incomplete reply can be completed within the original time period set including any extensions. Supplemental replies filed after the expiration of the original period for reply including any extensions of time must comply with all other rules for submissions of information.

704.12(a)   Relationship of Requirement for Information to Duty of Disclosure

The duty of candor and good faith under 37 CFR 1.56 applies to the applicant’s reply to a requirement for information under 37 CFR 1.105, and requires that the applicant reply to a requirement under 37 CFR 1.105 with information reasonably and readily available.

37 CFR 1.56 requires parties identified in 37 CFR 1.56(c) to disclose to the Office information material to the patentability of the claimed subject matter. This threshold is substantially higher than that for requiring information under 37 CFR 1.105, which is reasonable necessity to the examination of the application. See, e.g., Star Fruits S.N.C. v. United States, 280 F.Supp.2d 512, 515-16 (E.D. Va 2003)(“Beyond that which a patent applicant is duty-bound to disclose pursuant to 37 CFR 1.56, an examiner may require the production of ‘such information as may be reasonably necessary to properly examine or treat the matter.’”)

In contrast with the applicant’s duty to disclose on his or her own initiative information material to patentability under 37 CFR 1.56, the Office has the authority to require information reasonably necessary to the examination or treatment of a matter in an application. Such information may not be considered material to patentability by applicant, hence applicant would not be required to provide the information under 37 CFR 1.56. The information is instead reasonably necessary to determine the state of the art, the context in which the invention is practiced, the directions in which the relevant art are advancing, the similarity between the claimed subject matter and other art worked on by the applicants and their assignees or to otherwise proceed in the examination and treatment of matters in an application.

Similar to 37 CFR 1.56, applicant is required by 37 CFR 1.105 to submit information already known, but there is no requirement to search for information that is unknown. Unlike 37 CFR 1.56, applicant is required by 37 CFR 1.105 to submit information that may not be material to patentability in itself, but that is necessary to obtain a complete record from which a determination of patentability may be determined.

704.12(b)   What Constitutes a Complete Reply

A complete reply to a 37 CFR 1.105 requirement is a reply to each enumerated requirement for information giving either the information required or a statement that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested. There is no requirement for the applicant to show that the required information was not, in fact, readily attainable, but applicant is required to make a good faith attempt to obtain the information and to make a reasonable inquiry once the information is requested.

There is no need for applicants to distinguish between whether the required information is unknown or is not readily available. Thus, if information remains unknown after a reasonable inquiry is made, applicant may simply reply that the requested information is either unknown or is not readily available rather than be required to make a categorical position either that the information is unknown to the applicant, or that the information is not readily available to the applicant.

A reply stating that the information required to be submitted is unknown and/or is not readily available to the party or parties from which it was requested will generally be sufficient unless, for example, it is clear the applicant did not understand the requirement, or the reply was ambiguous and a more specific answer is possible.

Depending on the facts surrounding the requirement and the reply, a follow up requirement may be made where both reasonable and warranted.

704.12(c)   Treatment of an Incomplete Reply

An incomplete reply to a 37 CFR 1.105 requirement in a pending application or reexamination proceeding is handled in the same manner as an amendment not fully responsive to a non-final Office action. See 37 CFR 1.135(c) and MPEP § 714.03. Where the reply is a bona fide reply, form paragraph 7.95 may be used. Note that a 37 CFR 1.105 requirement, even absent an action on the merits, is an Office action.

¶ 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.

704.13   Time Periods for Reply [R-08.2012]

A reply, or a failure to reply, to a requirement for information under 37 CFR 1.105 will be governed by 37 CFR 1.135 and 1.136. See MPEP § 710et seq.

Requirements for information under 37 CFR 1.105 made without an action on the merits should set a shortened statutory period of two months for reply. Applicant may extend the time period for reply up to six months in accordance with 37 CFR 1.136(a).

Requirements sent with an Office action on the merits, and not as a separate Office action, will be given the same period for reply as the action on the merits.

A requirement for information under 37 CFR 1.105 is an Office action under 35 U.S.C. 132 for patent term adjustment purposes. See MPEP § 2730 for information pertaining to patent term adjustment.

704.14   Making a Requirement for Information [R-08.2012]

A requirement for information under 37 CFR 1.105 should be narrowly specified and limited in scope. It is a significant burden on both the applicant and the Office since the applicant must collect and submit the required information and the examiner must consider all the information that is submitted. A requirement for information is only warranted where the benefit from the information exceeds the burden in obtaining information.

704.14(a)   Format of the Requirement

The requirement must clearly indicate that a requirement under 37 CFR 1.105 is being made, the basis for the requirement, and what information is being required. Requirements should specify the particular art area involved, and the particular claimed subject matter within such art area, in which the information is required in order to avoid overly burdening the applicant and to avoid inviting large volumes of information that are not relevant to the need for the information. The requirement should also clearly indicate the form the required information is expected to take. That is, whether the requirement is for citations and copies of individual art references, for the identification of whole collections of art, for answers to questions, or for another specified form.

A requirement for information under 37 CFR 1.105 is generally prepared as a separate document that may be attached to an Office action on the merits or mailed as a stand alone action. The rule permits a requirement to be included within an Office action, but creating a separate document is preferable because the existence of the requirement is immediately brought to the attention of the recipient and it is more readily routed by the applicant to the parties best able to respond.

The requirement should state why the requirement has been made and how the information is necessary to the examination.

Interrogatories may be used to ask specific questions seeking applicant’s factual knowledge. Such a requirement for information may include an inquiry as to the existence of a particular document or other piece of information and a requirement that such information be supplied if it is known to exist and is readily available. A stipulation may be used as to facts with which applicant may agree or disagree in order to clarify the record about uncontroverted matters.

  FORM PARAGRAPHS

The following form paragraphs should be used when preparing a requirement for information:

¶ 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 7.1067.121 may be used as appropriate.
  • 2. The requirement for information should conclude with form paragraphs 7.1227.126 as appropriate.

The following form paragraphs should be used as appropriate where the information required pertains to stipulations of facts or interrogatories of facts known to the applicant:

¶ 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 7.1227.126 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.

¶ 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 7.1227.126 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.

The following form paragraphs should be used as appropriate where the information required pertains to a search for prior art, or to citations and/or copies of publications:

¶ 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 7.1227.126 as appropriate.
  • 2. In bracket 4, insert a description of the art claimed but not found in the classification system.

¶ 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 7.1227.126 as appropriate.

¶ 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 7.1227.126 as appropriate.

¶ 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 7.1227.126 as appropriate.

¶ 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 7.1227.126 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.

¶ 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 7.1227.126 as appropriate.

¶ 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 7.1227.126 as appropriate.

¶ 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 7.1227.126 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.

¶ 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 7.1227.126 as appropriate.

¶ 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 7.1227.126 as appropriate.
  • 2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.

¶ 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 7.1227.126 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.

¶ 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 7.1227.126 as appropriate.
  • 2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.

¶ 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 7.1227.126 as appropriate.
  • 2. In bracket 1, describe the subject matter for which art is required.

¶ 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 7.1227.126 as appropriate.

¶ 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 7.1227.126 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.

¶ 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 7.1227.126 as appropriate.

The following form paragraphs should appear at the end of the requirement for information, as appropriate:

¶ 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 7.1227.126 as appropriate.
  • 2. Use this form paragraph where the scope of the requirement for information specifically includes copies of publications.

¶ 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.

¶ 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.

¶ 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.

¶ 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.

¶ 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.

704.14(b)   Examiner’s Obligation Following Applicant’s Reply

The examiner must consider the information submitted with the applicant’s reply and apply the information as the examiner deems appropriate. This obligation arises from the examiner’s assertion that the information is necessary to the examination in making the requirement.

Information constituting identification of areas of search must be considered and the examiner must indicate which areas were used and which areas were not used in performing a search.

The examiner must record in the appropriate sections of the OACS “Search Notes” page the areas in which the search for prior art was made. See MPEP § 719.05. Information constituting answers to queries posed by the examiner or another Office employee must be considered, and the record must indicate that the answers were considered. This indication may be made minimally by indicating “Considered” with the Stamper tool in Adobe Acrobat and including the receipt date on the reply.

Art that is submitted in response to a 37 CFR 1.105 requirement must be considered, at least to the extent that art submitted with an Information Disclosure Statement under 37 CFR 1.97 and 1.98 is considered. See MPEP § 609. If the applicant provides a written list of citations for the art submitted with a reply to a 37 CFR 1.105 requirement, an examiner must indicate on that list which art has been considered and which art has not been considered, in the same manner as with an Information Disclosure Statement under 37 CFR 1.97 and 1.98. The examiner may annotate the list by using Adobe Acrobat to stamp the document with "All References Considered" while also providing the receipt date, application number and art unit. If the applicant provides no such list, there is no requirement for the examiner to prepare such a list or otherwise make the submitted art of record unless the examiner relies on such art in a rejection.

It is never appropriate to deny considering information that is submitted in reply to, and is within the scope of, a requirement under 37 CFR 1.105. However, information that is beyond the scope of a 37 CFR 1.105 requirement, submitted along with information responding to a requirement under 37 CFR 1.105, need not be considered unless the submission of such art conforms to the provisions of 37 CFR 1.97 and 1.98, and MPEP § 609. The criteria for measuring the scope of a 37 CFR 1.105 requirement is the plain meaning of the text of the requirement. For this reason, it is essential that the scope of information required be carefully specified. If art which is beyond the scope of a 37 CFR 1.105 requirement is submitted in accordance with the provisions of 37 CFR 1.97 and 1.98, and MPEP § 609, such art must be considered according to the provisions of 37 CFR 1.97 and 37 CFR 1.98.

704.14(c)   Petitions to Requirements Under 37 CFR 1.105

Applicants who seek to have a requirement under 37 CFR 1.105 withdrawn or modified, or who seek to have information submitted under 37 CFR 1.105 considered, may submit a petition under 37 CFR 1.181 to the Director of the Technology Center in which the requirement was issued. However, a petition is not a reply to a 37 CFR 1.105 requirement. The time period for the applicant to reply to the 37 CFR 1.105 requirement continues to run, even where a petition has been submitted.

704.14(d)   Relationship to Information Disclosure Statements

The initial reply, if responsive to the requirement for information under 37 CFR 1.105 and submitted within the original time period for reply including any extensions of time, does not have to satisfy the fee and/or certification requirements of 37 CFR 1.97 and 1.98. Applicant should list the references on a copy of Form PTO/SB/08 to have the citations entered in the record. Any replies made subsequent to the initial reply must meet the provisions of 37 CFR 1.97 and 1.98 as appropriate.

Any submission of art beyond the scope of a requirement for information under 37 CFR 1.105 is a submission of art under 37 CFR 1.97 and 1.98 and MPEP § 609, and must meet the provisions of 37 CFR 1.97 and 1.98 for the art to be considered.

Where information is submitted in a reply to a requirement under 37 CFR 1.105, the examiner may NOT make the next Office action relying on that art final unless all instances of the application of such art are necessitated by amendment. This section explicitly distinguishes the practice following a reply under 37 CFR 1.105 from the practice in MPEP § 609.04(b) and MPEP § 706.07(a) following a submission of an Information Disclosure Statement under 37 CFR 1.97 and 1.98.

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Last Modified: 03/27/2014 10:10:36