2.01 Possible Status as Divisional

This application, which discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], appears to claim only subject matter directed to an invention that is independent and distinct from that claimed in the prior application, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a divisional 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 , 37 CFR 1.78 , and MPEP § 211 et seq .

Examiner Note:

1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "divisional" 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 term “substitute” is used 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 , 365(c) , or 386(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 , 365(c) , or 386(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 the appropriate statutory section(s).
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 , 365(c) , or 386(c) or under 35 U.S.C. 119(e) . The prior-filed application can be a provisional application, a nonprovisional application, an international application (PCT) that designates the United States, or an international design application that designates the United States.
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 delete the benefit claim or 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, which claims the benefit of a prior-filed application under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) contains new matter relative to the prior-filed application, 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 application No. [1] under 35 U.S.C. 120 , 121 , 365(c) , or 386(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 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 application.

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2.11.01 Application Must Be Filed Within 12 Months From the Provisional Application Unless Petition Granted

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 or international application designating the United States that is directly claiming the benefit of the provisional application and filed within 12 months of the filing date of the provisional application. In addition, no petition under 37 CFR 1.78(b) or request under PCT Rule 26 bis.3 to restore the benefit of the provisional application has been granted.

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 or international application designating the United States, was filed within 12 months of the filing date of the provisional application. See 35 U.S.C. 119(e)(3). Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional. A petition under 37 CFR 1.78(b) to restore the benefit of the provisional application must include: (1) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional. A petition to restore the benefit of a provisional application must be filed in the subsequent application. 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. This form paragraph must be preceded by heading form paragraph 2.09.
2. In bracket 1, insert the application number of the prior-filed provisional application.

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 under 35 U.S.C. chapter 16 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 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 . When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216 .

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) , 365(a) or (b) , or 386(a) or (b) , based on priority papers filed in a parent or related Application No. [1] (to which the present application claims the benefit under 35 U.S.C. 120 , 121 , 365(c) ), or 386(c) or is a reissue application of a patent issued on the related application), a claim for such foreign priority must be timely made in this application. To satisfy the requirement of 37 CFR 1.55 for a certified copy of the foreign application, applicant may simply identify the parent nonprovisional application or patent for which reissue is sought containing the certified copy.

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2.21.01 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(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. See 37 CFR 1.55(d)(1) . For national stage applications under 35 U.S.C. 371 , the claim for priority must be made within the time limit set forth in the PCT and the Regulations under the PCT. See 37 CFR 1.55(d)(2) . If applicant desires priority under 35 U.S.C. 119(a)-(d), (f) , 365(a) or (b) , or 386(a) based upon a prior foreign application, applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) . The petition must be accompanied by (1) the priority claim under 35 U.S.C. 119(a)-(d), (f) , 365(a) or (b) , or 386(a) in accordance with 37 CFR 1.55 identifying the prior foreign application to which priority is claimed, unless previously submitted; (2) a certified copy of the foreign application, unless previously submitted or an exception under 37 CFR 1.55 applies; (3) the petition fee under 37 CFR 1.17(m) ; and (4) 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 and for national stage applications under 35 U.S.C. 371 . 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 Proper Claim Not Made

Receipt is acknowledged of a certified copy of foreign application [1], however the present application does not properly claim priority to the submitted foreign application. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d) or (f) , 365(a) or (b) , or 386(a) , applicant must also file a claim for such priority as required by 35 U.S.C. 119(b) or 365(b) , and 37 CFR 1.55 . 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(d)(1) . If the application being examined is a national stage application under 35 U.S.C. 371 , the claim for priority must be made within the time limit set forth in the PCT and Regulations under the PCT. See 37 CFR 1.55(d)(2) . Any claim for priority under 35 U.S.C. 119(a)-(d) or (f) , 365(a) or (b) , or 386(a) 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 under 37 CFR 1.55(e) to accept an unintentionally delayed claim for priority and the petition fee.

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 and for national stage applications under 35 U.S.C. 371 . DO NOT use for design applications.
2. In bracket 1, insert the application number of the foreign application.

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2.23 Foreign Filing More Than 12 Months Earlier, No Petition to Restore Priority Granted

Acknowledgment is made of applicant's claim for priority under 35 U.S.C. 119(a)-(d) or (f) , 365(a) or (b) , or 386(a) based upon an application filed in [1] on [2]. The claim for priority cannot be based on said application, because the subsequent nonprovisional or international application designating the United States was filed more than twelve months thereafter and no petition under 37 CFR 1.55 or request under PCT Rule 26bis.3 to restore the right of priority has been granted.

Applicant may wish to file a petition under 37 CFR 1.55(c) to restore the right of priority if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional. A petition to restore the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a)-(d) or (f) , 365(a) or (b) , or 386(a) in an application data sheet, identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m) ; and (3) a statement that the delay in filing the subsequent application within the twelve-month period was unintentional. The petition to restore the right of priority must be filed in the subsequent application, or in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to the subsequent application, if such subsequent application is not a nonprovisional application. 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 and for national stage applications under 35 U.S.C. 371 . DO NOT use for design applications.
2. In bracket 1, insert the country name.
3. 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.

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) , four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, 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 , 365(c) , or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications. See 37 CFR 1.78(a) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).

If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35 U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). 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 petition fee under 37 CFR 1.17(m) ; 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 original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
2. In bracket 1, insert the filing date of the amendment or paper containing the benefit claim.
3. 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 petition fee under 37 CFR 1.17(m) 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 § 210 , subsection I and MPEP § 211.03 .

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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 , 365(c) , or 386(c) or under 35 U.S.C. 119(e) . If the prior-filed application is an international application designating the United States, it must be entitled to a filing date in accordance with PCT Article 11 ; if the prior-filed application is an international design application designating the United States, it must be entitled to a filing date in accordance with 37 CFR 1.1023 ; and if the prior-filed application is a nonprovisional application under 35 U.S.C. 111(a) , 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(d)(1) . 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(a)(2) .

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 benefit claim to the prior-filed application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification as appropriate.

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 Double 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 website, 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 www.uspto.gov/FindPatentAttorney . 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:

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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5.04 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 Priority Mail Express ^® 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 READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.

(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 § 2422.03 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 read-only optical disc or as a text file via the patent electronic system.

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 READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM: 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 1.77(b)(5) and MPEP § 608.05 . See also the Legal Framework for Patent Electronic System posted on the USPTO website ( https://www.uspto.gov/sites/default/files/ documents/2019LegalFrameworkPES.pdf ) 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) . The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, 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 § 2422.01 .

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 .

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

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. The abstract should also mention by way of example any preferred modifications or alternatives.

Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps. 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 in length.

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 of 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 preferably within the range of 50 to 150 words in length. 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. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.

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) and 1.72(b) . 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) .

The incorporation by reference will not be effective until correction is made to comply with 37 CFR 1.57(c), (d), or (e) . 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(g) .

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6.20 Trade Names, Trademarks, and Other Marks Used in Commerce

The use of the term [1], which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, ^SM, or ^® following the term.

Although the use of trade names and marks used in commerce (i.e., trade marks, service marks, certification marks, and collective marks) are 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 commercial marks.

Examiner Note:

1. Capitalize each letter of the term in the bracket or, where appropriate, include a proper symbol indicating use in commerce such as ™, ^SM, or ^® following the term.
2. Examiners may conduct a search for registered marks by using the Trademark Electronic Search System (TESS) which is available on the USPTO website to determine whether a mark identified in the patent application is a registered mark or not.

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 shortened statutory period of TWO (2) MONTHS 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) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ). 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 in utility applications 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) , one set of color drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets of color drawings or color photographs, as appropriate, if not submitted via EFS-Web, 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).

Examiner Note:

1. 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.
2. This form paragraph should not be used in design applications.

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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 shortened statutory period of TWO (2) MONTHS 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) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ). 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 (prior to the date an appeal brief is filed pursuant to 37 CFR 41.37 , see 37 CFR 41.33(a) ) 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 (see 37 CFR 1.52(b)(2) ) 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

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.

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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.

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.

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 TWO MONTHS 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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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 read-only optical discs or any other electronic medium, except via EFS. Only “Large Tables,” “Sequence Listings,” a computer readable form of a “Sequence Listing” and a “Computer Program Listing Appendix” may be submitted on one or more read-only optical discs. See 37 CFR 1.52(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.

1. This form paragraph may be used in national stage applications 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 Read-only Optical Disc Requirements (No Statement that discs are Identical)

This application is objected to under 37 CFR 1.58(i) for “Large Tables” or 1.96(c)(7) for a “Computer Program Listing Appendix” because it does not contain a statement in the transmittal letter that the two read-only optical discs are identical. Correction is required.

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6.60.02 Read-only Optical Disc Requirements (No Listing in Transmittal Letter)

This application is objected to because it contains a data file on one or more read-only optical disc(s), however, the transmittal letter does not list for each read-only optical disc, the first named inventor(if known), the title of the invention, the attorney docket or file reference number (if applicable), the operating system used to produce the disc, a list of files contained on the read-only optical disc(s) 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 read-only optical disc as required by 37 CFR 1.52(e)(4) . A statement listing the required information is required.

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6.61.01 Specification Lacking List of Read-only Optical Disc(s) and /or Associated Files

Portions of this application are contained on read-only optical disc(s). When portions of an application are contained on a read-only optical disc, the paper portion of the specification must identify the read-only optical disc(s) and list the files including the name of the ASCII text file, the date of creation, and the size of the ASCII text file on each of the read-only optical discs, or the name of the XML file, the date of creation of the XML, and the size of the XML on each read-only optical disc (as applicable). See 37 CFR 1.52(e) . Read-only optical 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 ASCII text file name or XML file name (as applicable), the date of creation and the size of the ASCII text file or XML file (as applicable).

Examiner Note:

In bracket 1, insert the name on the label of the read-only optical disc.

1. This form paragraph must be used whenever a data file (“Large Tables,” a “Computer Program Listing Appendix,” a “Sequence Listing,” or a “Sequence Listing XML” (as applicable) is submitted in a non-ASCII file format or a non-XML file format (as applicable). 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 or fails to comply with the requirements for a “Sequence Listing XML” submitted under 1.52(e) .
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 and/or contains non-XML characters (as applicable).

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6.72.03 Read-only Optical Discs Are Not Readable

The amendment filed [1] contains a data file on read-only optical disc that is unreadable. Applicant is required to resubmit the file(s) in International Organization for Standardization (ISO) 9660 standard and American Standard Code for Information Interchange (ASCII) format as required by 37 CFR 1.52(e)(2) and 1.52(e)(3)(iii) , respectively. No new matter may be introduced in presenting the file in ISO 9660 and ASCII format.

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6.72.04 Read-only Optical Disc Contains Viruses

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

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6.72.05 Read-only Optical Disc Requirements (Missing Files On Amended Read-only Optical Disc)

The amendment to the application filed [1] is objected to because the newly submitted read-only optical disc(s) do not contain all of the unamended data file(s) together with the amended data file(s) that were on the original read-only optical disc. Since amendments to a read-only optical disc can only be made by providing a replacement read-only optical disc, the replacement disc must include all of the files, both amended and unamended, to be a complete replacement in accordance with 37 CFR 1.52(e)(7) .

Examiner Note:

Use this form paragraph when a replacement read-only optical disc is submitted that fails to include all of the files on the original read-only optical 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 TWO MONTHS 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 TWO MONTHS 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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7.03.aia Application Examined Under AIA First Inventor to File Provisions

The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA.

Examiner Note:

This form paragraph should be used in any application subject to the first inventor to file provisions of the AIA.

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7.03.fti Application Examined Under First to Invent provisions

The present application, filed on or after March 16, 2013, is being examined under the pre-AIA first to invent provisions.

Examiner Note:

This form paragraph should be used in any application filed on or after March 16, 2013 that is subject to the pre-AIA prior art provisions.

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7.04.01 Statement of Statutory Basis, 35 U.S.C. 101

35 U.S.C. 101 reads as follows:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Examiner Note:

This form paragraph must precede the first use of 35 U.S.C. 101 in all first actions on the merits and final rejections.

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7.04.02.aia Rejection, 35 U.S.C. 101/115

Claim [1] rejected under 35 U.S.C. 101 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.

Examiner Note:

1. In bracket 1, pluralize “Claim” if necessary, insert “is” or “are” as appropriate, and insert the claim number(s) which are under rejection.
2. This rejection must be preceded by either form paragraph 7.04.101.aia or 7.04.102.aia .

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7.04.03 Human Organism

Section 33(a) of the America Invents Act reads as follows

Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.

Claim [1] rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101 ). [2]

Examiner Note:

1. This paragraph must be preceded by form paragraph 7.04.01 which quotes 35 U.S.C. 101 .
2. In bracket 1, pluralize “Claim” if necessary, insert claim number(s), and insert “is” or “are” as appropriate.
3. In bracket 2, explain why the claim is interpreted to read on a human organism.

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7.04.101.aia Statement of Statutory Bases, 35 U.S.C. 101 and 35 U.S.C. 115— Improper Inventorship

35 U.S.C. 101 reads as follows:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. 115(a) reads as follows (in part):

An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.

The present application sets forth the incorrect inventorship because [1].

Examiner Note:

1. If form paragraph 7.04.01 is already being used for a rejection that is not based on improper inventorship, then in lieu of this form paragraph, use form paragraph 7.04.102.aia with form paragraph 7.04.01 for a rejection based on improper inventorship.
2. In bracket 1, insert the basis for concluding that the inventorship is incorrect.
3. This form paragraph must be followed by form paragraph 7.04.02.aia .

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7.04.102.aia Statement of Statutory Basis, 35 U.S.C. 115— Improper Inventorship

35 U.S.C. 115(a) reads as follows (in part):

An application for patent that is filed under section 111(a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application.

The present application sets forth the incorrect inventorship because [1].

Examiner Note:

1. This form paragraph is to be used ONLY when a rejection under 35 U.S.C. 101 on another basis has been made and the statutory text thereof is already present.
2. This form paragraph must be preceded by form paragraph 7.04.01 for a rejection based on improper inventorship.
3. In bracket 1, insert an explanation of the supporting evidence establishing that an improper inventor is named.

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7.05 Rejection, 35 U.S.C. 101, -Heading Only- (Utility, Nonstatutory, Inoperative)

Claim [1] rejected under 35 U.S.C. 101 because

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.04.01 in first actions and final rejections.
2. This form paragraph must be followed by a detailed explanation of the grounds of rejection using one or more of form paragraphs 7.05.01 , 7.05.016 , 7.05.017 , 7.05.02 , 7.05.03 , or another appropriate reason.
3. See MPEP §§ 2105 - 2107.03 for additional guidance.

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7.05.01 Rejection, 35 U.S.C. 101, Nonstatutory (Not One of the Four Statutory Categories)

the claimed invention is directed to nonstatutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because [1]

Examiner Note:

1. This form paragraph should be preceded by form paragraph 7.05 .
2. In bracket 1, explain why the claimed invention is not patent eligible subject matter by identifying what the claim(s) is/are directed to and explain why it 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(s) is/are directed to a signal per se, mere information in the form of data, a contract between two parties, or a human being (see MPEP § 2106 , subsection I).
3. For a claim that is directed to a judicial exception and is nonstatutory, use form paragraph 7.05.016 .

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7.05.016 Rejection, 35 U.S.C. 101, Nonstatutory (Directed to a Judicial Exception without an Inventive Concept/Significantly More)

the claimed invention is directed to [1] without significantly more. The claim(s) recite(s) [2]. This judicial exception is not integrated into a practical application because [3]. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because [4].

Examiner Note:

1. This form paragraph should be preceded by form paragraph 7.05 . For claims that recite a tentative abstract idea (i.e., a limitation identified as an abstract idea even though it does not fall within the groupings of abstract ideas discussed in MPEP § 2106.04(a)(2) ), this form paragraph should be accompanied by form paragraph 7.05.017 .
2. This form paragraph is for use with all product (machine, manufacture, and composition of matter) and process claims, and for all claims directed to a law of nature, natural phenomenon (including a product of nature), or abstract idea.
3. In bracket 1, identify whether the claim(s) are directed to a law of nature, a natural phenomenon (including a product of nature), or an abstract idea.
4. In bracket 2, identify the exception by referring to how it is recited in the claim and explain why it is considered an exception (e.g., for an abstract idea, identify the abstract idea grouping in MPEP § 2106.04(a)(2) into which the recited exception falls). For example, "the Arrhenius equation, which is a law of nature and a mathematical concept which describes the relationship between temperature and reaction rate" or "the series of steps instructing how to hedge risk, which is a fundamental economic practice and thus grouped as a certain method of organizing human interactions." For a product of nature exception, refer to how it is recited in the claim and explain why its characteristics are not markedly different from the product’s naturally occurring counterpart in its natural state. For example, "the naturally occurring DNA segment, which is not markedly different from its naturally occurring counterpart because it conveys the same genetic information." Provide additional explanation regarding the exception and how it has been identified when appropriate.
5. In bracket 3, explain why the combination of additional elements fails to integrate the judicial exception into a practical application. For example, if the claim is directed to an abstract idea with additional generic computer elements, explain that the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer; or, if the claim is directed to a method of using a naturally occurring correlation, explain that data gathering steps required to use the correlation do not add a meaningful limitation to the method as they are insignificant extra-solution activity. Similarly, if the claim recites a "naturally occurring DNA segment" with an additional element of a test tube, explain that merely placing the product of nature into a generic container such as a test tube does not add a meaningful limitation as it is merely a nominal or token extra-solution component of the claim, and is nothing more than an attempt to generally link the product of nature to a particular technological environment.
6. In bracket 4, identify the additional elements and explain why, when considered separately and in combination, they do not add significantly more (also known as an "inventive concept") to the exception. For example, if the additional limitations only store and retrieve information in memory, explain that these are well-understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d) .

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7.05.017 Rejection, 35 U.S.C. 101, TC Director Approval for "Tentative Abstract Idea"

The identified claim limitation(s) that recite(s) an abstract idea do/does not fall within the groupings of abstract ideas discussed in MPEP § 2106.04(a)(2) , i.e., mathematical concepts, mental processes, or certain methods of organizing human activity. Nonetheless, the claim limitation(s) is/are being treated as reciting an abstract idea because [1].

This rejection has been approved by the Technology Center Director signing below.

[2]

Examiner Note:

1. This form paragraph should be preceded by form paragraph 7.05.016 .
2. Approval from the TC Director is required to treat a tentative abstract idea (i.e., a claim limitation(s) that does not fall within the groupings of abstract ideas discussed in MPEP § 2106.04(a)(2) ) as an abstract idea. This form paragraph should be used to demonstrate that this approval has been obtained.
3. In bracket 1, provide the justification for why the claim limitation(s) is/are being treated as an abstract idea. For example, provide an explanation of why the claim limitation is among the "basic tools of scientific and technological work."
4. In bracket 2, insert the TC Director's signature. Approval of the TC Director is required to treat a claim limitation that does not fall within the groupings of abstract ideas discussed in MPEP § 2106.04(a)(2) as reciting an abstract idea. See MPEP § 2106.04(a)(3) .

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7.05.018 [Reserved]

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.
- - (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.
- - (a) Insert the same claim numbers in brackets 1 and 4.
  - (b) Insert --credible-- in inserts 2 and 5.
  - (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a credible asserted utility or a well established utility.
- - For claims that have multiple utilities, some of which are not specific 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 § 608.01(m) .

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 .
3. When a dependent claim does not specify a further limitation of the subject matter claimed as required by 35 U.S.C. 112(d) , the dependent claim should be rejected using form paragraphs 7.36 and 7.36.01 . See MPEP § 608.01(n) , subsection III. It is not necessary to also warn of the prohibition against duplicate claims using this form paragraph.

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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 § 608.01(m) .

Examiner Note:

1. If the duplicate claims are not allowable, use form paragraph 7.05.05 .
2. When a dependent claim does not specify a further limitation of the subject matter claimed as required by 35 U.S.C. 112(d) , the dependent claim should be rejected using form paragraphs 7.36 and 7.36.01 . See MPEP § 608.01(n) , subsection III. It is not necessary to also object to the improper dependent claim using this form paragraph.

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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 (i.e., changing from AIA to pre-AIA) 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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7.06.01 Claim Limitation Relating to a Tax Strategy Deemed To Be Within the Prior Art under 35 U.S.C. 102 and/or 103

Claim limitation “ [1]” has been interpreted as a strategy for reducing, avoiding, or deferring tax liability (“tax strategy”) pursuant to Section 14 of the Leahy-Smith America Invents Act. Accordingly, this claim limitation is being treated as being within the prior art and is insufficient to differentiate the invention of claim [2] from the prior art.

Examiner Note:

1. In bracket 1, recite the claim limitation that relates to a tax strategy. For more information see MPEP § 2124.01 .
2. In bracket 2, insert claim number(s), pluralize “claim” as appropriate.

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7.07.aia Statement of Statutory Basis, 35 U.S.C. 102

The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:

A person shall be entitled to a patent unless—

Examiner Note:

1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use form paragraph 7.103 .
2. Form paragraphs 7.07.aia , 7.08.aia , 7.12.aia and 7.14.aia are to be used ONLY ONCE in a given Office action.
3. 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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7.07.fti Statement of Statutory Basis, pre-AIA 35 U.S.C. 102

The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:

A person shall be entitled to a patent unless—

Examiner Note:

1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use form paragraph 7.103 .
2. Form paragraphs 7.07.fti to 7.14.fti are to be used ONLY ONCE in a given Office action.
3. For applications with an actual filing date on or after March 16, 2013, that claim 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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7.08.aia 102(a)(1), Activity Before the Effective Filing Date of Claimed Invention

(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

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.
2. This form paragraph must be preceded by form paragraphs 7.03.aia and 7.07.aia .

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7.08.fti Pre-AIA 102(a), Activity by Another Before Invention by Applicant

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.07.fti .

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7.09.fti Pre-AIA 102(b), Activity More Than One Year Prior to Filing

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.07.fti , and may be preceded by form paragraph 7.08.fti .

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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 interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form .

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 at telephone number [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 Patent Center and the Private Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from Patent Center or Private PAIR. Status information for unpublished applications is available through Patent Center and Private PAIR to authorized users only. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).

Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form .

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 at telephone number [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 Patent Center and the Private Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from Patent Center or Private PAIR. Status information for unpublished applications is available through Patent Center or Private PAIR to authorized users only. Should you have questions about access to Patent Center or the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).

Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form .

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.

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 paragraph 7.104.aia , 7.104.fti , 7.104.02 or 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 parenthetical 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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7.12.01.fti Pre-AIPA 35 U.S.C. 102(e), Patent to Another with Earlier Filing Date, Reference is a U.S. Patent Issued Directly or Indirectly From a National Stage of, or a Continuing Application Claiming Benefit to, an International Application Having an International Filing Date Prior to November 29, 2000

(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.

The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA ( pre-AIPA 35 U.S.C. 102(e)).

Examiner Note:

1. This form paragraph should only be used 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 to an international application having an international filing date prior to November 29, 2000.
2. If the reference is a U.S. patent issued directly from a national stage of such an international application, the reference’s pre-AIPA 35 U.S.C. 102(e) date is the date that the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. The language of WIPO publication (PCT) is not relevant in this situation. Caution: the international publication of the international application (PCT) by WIPO may have an earlier prior art date under pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b) .
3. If the reference is a U.S. patent issued directly from a continuing application claiming benefit under 35 U.S.C. 120 , 121 or 365(c) to such an international application (which had not entered the national stage prior to the continuing application’s filing date, otherwise see note 4), the prior art reference’s pre-AIPA 35 U.S.C. 102(e) date is the actual U.S. filing date of the continuing application. Caution: the international publication of the international application (PCT) by WIPO may have an earlier prior art date under pre-AIA 35 U.S.C. 102(a) or pre-AIA 102(b) .
4. In determining the pre-AIPA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e) , and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) only 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 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 benefit claims to U.S. applications which are filed before an international application. Do NOT consider foreign priority claims under 35 U.S.C. 119(a) - (d) , 365(a) or (b) , or 386(a) or (b) .
In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112 , first paragraph or 35 U.S.C. 112(a) . See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi , 872 F.3d 1367, 1380 (Fed. Cir. 2017).
5. This form paragraph must be preceded by form paragraph 7.07.fti , and may be preceded by one or more of form paragraphs 7.08.fti to 7.11.fti .

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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 TWO (2) MONTHS. This application has been granted special status under the accelerated examination program. Extensions of time period may be granted under 37 CFR 1.136(a) . However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).

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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7.12.aia 102(a)(2), U.S. Patent, U.S. Patent Application Publication or WIPO Published Application That Names Another Inventor and Has an Earlier Effectively Filed Date

(a)(2) the claimed invention was described in a patent issued under section 151 , or in an application for patent published or deemed published under section 122(b) , in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

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.
2. This form paragraph must be preceded by form paragraphs 7.03.aia and 7.07.aia and may be preceded by 7.08.aia .
3. This form paragraph should only be used if the reference is one of the following:
- a U.S. patent granted under 35 U.S.C. 151 having an effectively filed date earlier than the application;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) having an effectively filed date earlier than the application; or
- a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the application.

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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7.14.aia Pre-AIA 102(g), Priority of Invention

(g)(1) during the course of an interference conducted under section 135 or section 291 , another inventor involved therein establishes, to the extent permitted in section 104 , that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

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 used to provisionally reject over a copending application that discloses the claimed invention and would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, common applicant ( 35 U.S.C. 118 ) or at least one common (joint) inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
- a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the application;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
- a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.
  If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) issued or was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1) .
4. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.aia .
5. In bracket 1, insert claim number(s) under rejection.
6. In bracket 2, insert the application number.
7. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
8. In bracket 4, provide an appropriate explanation of the examiner’s position on anticipation.
9. Under 35 U.S.C. 101 , two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32 . Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia .
10. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 - 8.39 .
11. 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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7.15.01.fti Provisional Rejection, Pre-AIA 35 U.S.C. 102(e) - Common Assignee, Common Applicant, or At Least One Common (Joint) Inventor

Claim(s) [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.

The copending application would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 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 pre-AIA 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(a) .

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 that discloses the claimed invention and would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published under 35 U.S.C. 122 or patented. The copending application must have either a common assignee, a common applicant ( 35 U.S.C. 118 ), or at least one common (joint) inventor.
2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12.fti ) to determine the copending application’s prior art date, unless the copending application is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application 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 , 365(c) , or 386(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.fti ). See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 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.fti .
4. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
5. In bracket 4, an appropriate explanation may be provided in support of the examiner’s position on anticipation, if necessary.
6. Under 35 U.S.C. 101 , two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be provisionally rejected using form paragraphs 8.30 and 8.32 . Additionally, the applicant should be required to amend or cancel claims such that the applied reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.fti .
7. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 - 8.39 .
8. If evidence is additionally of record to show that either invention is prior art to the other under pre-AIA 35 U.S.C. 102(f) or (g) , a rejection using form paragraphs 7.13.fti and/or 7.14.fti should also be made.
9. For applications with an actual filing date on or after March 16, 2013 that claim 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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7.15.02.aia Rejection, 35 U.S.C. 102(a)(2), Common Assignee, Applicant, or Joint Inventor(s)

Claim(s) [1] is/are rejected under 35 U.S.C. 102(a)(2) as being [2] by [3].

The applied reference has a common [4] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2) . This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A) ; (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.

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 used to reject claims as anticipated over a U.S. patent, U.S. patent application publication, or WIPO publication with an earlier prior art date under 35 U.S.C. 102(a)(2) . These references must have either a common assignee, a common applicant ( 35 U.S.C. 118 ), or at least one common (joint) inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference names another inventor (i.e., a different inventive entity) and is one of the following:
- a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the effective filing date of the claimed invention;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
- a WIPO publication of an international application (PCT) or international design application that designates the United States where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.
If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1) .
4. In bracket 1, insert the claim numbers which are under rejection.
5. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
6. In bracket 3, insert the prior art relied upon.
7. In bracket 4, insert --assignee--, --applicant--, or --joint inventor--.
8. This form paragraph must be preceded by form paragraph 7.12.aia .
9. Under 35 U.S.C. 101 , two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of statutory double patenting using form paragraphs 8.30 - 8.32 . Additionally, the applicant should be required to amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention using form paragraph 8.27.aia .
10. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 - 8.39 .
11. 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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7.15.02.fti Rejection, Pre-AIA 35 U.S.C. 102(e), Common Assignee, Applicant, or Joint Inventor

Claim(s) [1] is/are rejected under pre-AIA 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 pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art. This rejection under pre-AIA 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 or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or if the same invention is not being claimed, by an appropriate showing under 37 CFR 1.131(a) .

Examiner Note:

1. This form paragraph is used to reject over a patent or patent application publication that is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention. The patent or patent application publication must have either a common assignee, a common applicant ( 35 U.S.C. 118 ), or a common (joint) inventor.
2. Pre-AIA 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.fti ) must be applied if the reference is by another and 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 (PCT) if the international application has an international filing date on or after November 29, 2000 ;
- a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.
3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti ) 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.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e) , and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120 , 121 , 365(c) , or 386(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 a prior art date under pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C. 371(c)(1) , (2) and (4) were fulfilled. Do NOT consider any 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) , 365(a) or (b) , or 386(a) or (b) .
In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112 , first paragraph or 35 U.S.C. 112(a) . See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi , 872 F.3d 1367, 1380 (Fed. Cir. 2017).
5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO PCT 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 pre-AIA 35 U.S.C. 102(e) . The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti .
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. This form paragraph must be preceded by either of form paragraphs 7.12.fti or 7.12.01.fti .
8. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.fti .
9. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 7.06 .
10. Under 35 U.S.C. 101 , two patents are not permitted to issue on identical subject matter. Any claims in the instant application directed to the same invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) using form paragraphs 8.30 - 8.32 . Additionally, the applicant should be required to resolve any issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) using form paragraph 8.27.fti . See MPEP § 804 , subsection II.A.
11. Any claims in the instant application that are directed to subject matter that is not patentably distinct from an invention claimed in the reference should be rejected (or provisionally rejected if the reference has not yet issued as a patent) on the grounds of nonstatutory double patenting using form paragraph 8.33 and at least one of form paragraphs 8.34 - 8.39 .

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7.15.03.aia Rejection, 35 U.S.C. 102(a)(2), No Common Assignee or Inventor(s)

Claim(s) [1] is/are rejected under 35 U.S.C. 102(a)(2) as being [2] by [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 used to reject a claim over a U.S. patent, U.S. patent application publication or WIPO patent application publication with an earlier prior art date under 35 U.S.C. 102(a)(2) . The reference is not required to have a common assignee or inventor.
3. 35 U.S.C. 102(a)(2) may be applied if the reference is one of the following:
- a U.S. patent granted under 35 U.S.C. 151 that has an effectively filed date earlier than the effective filing date of the claimed invention;
- a U.S. Patent Application Publication published under 35 U.S.C. 122(b) that has an effectively filed date earlier than the effective filing date of the claimed invention; or
- a WIPO publication of an international application where the WIPO publication has an effectively filed date earlier than the effective filing date of the claimed invention.
If any of the three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claimed invention under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1) .
4. In bracket 1, insert the claim numbers which are under rejection.
5. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
6. In bracket 3, insert the prior art relied upon.
7. This form paragraph must be preceded by form paragraph 7.12.aia .

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7.15.03.fti Rejection, pre-AIA 35 U.S.C. 102(e), No Common Assignee or Inventor(s)

Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102(e) as being [2] by [3].

Examiner Note:

1. This form paragraph is used to reject over a patent or patent application publication with an earlier filing date. The patent or patent application publication is not required to have a common assignee or a common inventor.
2. Pre-AIA 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.fti ) 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 (PCT) if the international application has an international filing date on or after November 29, 2000;
- a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 35 U.S.C. 102(e) date of the reference.
3. Pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti ) 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.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
4. In determining the pre-AIA 35 U.S.C. 102(e) date, consider benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e) , and to earlier-filed U.S. nonprovisional applications and international applications under 35 U.S.C. 120 , 121 , 365(c) , or 386(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 a prior art date under pre-AIPA 35 U.S.C. 102(e) as of the date the requirements of 35 U.S.C. 371(c)(1) , (2) and (4) were fulfilled. Do NOT consider any 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) , 365(a) or (b) , or 35 U.S.C. 386(a) or (b) .
In addition, a reference (i.e., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application only if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112 , first paragraph or 35 U.S.C. 112(a) . See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015) and Amgen v. Sanofi , 872 F.3d 1367, 1380 (Fed. Cir. 2017).
5. If the reference is a publication of an international application (PCT), including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO (PCT) 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 pre-AIA 35 U.S.C. 102(e) . The reference may be applied under pre-AIA 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08.fti and 7.09.fti .
6. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
7. In bracket 3, insert the prior art relied upon.
8. This form paragraph must be preceded by either of form paragraphs 7.12.fti or 7.12.01.fti .
9. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.fti .

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7.15.aia Rejection, 35 U.S.C. 102(a)(1)/102(a)(2)

Claim(s) [1] is/are rejected under 35 U.S.C. 102 [2] as being [3] by [4].

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. In bracket 1, insert the claim numbers which are under rejection.
3. In bracket 2, insert either “(a)(1)” or “(a)(2)” or both. If paragraph (a)(2) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.aia , 7.15.02.aia or 7.15.03.aia where applicable.
4. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
5. In bracket 4, insert the prior art relied upon.
6. This rejection must be preceded either by form paragraph 7.07.aia and form paragraphs 7.08.aia , and 7.12.aia as appropriate, 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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7.15.fti Rejection, Pre-AIA 35 U.S.C. 102(a), (b) Patent or Publication, and (g)

Claim(s) [1] is/are rejected under pre-AIA 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 pre-AIA 35 U.S.C. 102 in parentheses. If paragraph (e) of pre-AIA 35 U.S.C. 102 is applicable, use form paragraph 7.15.01.fti , 7.15.02.fti or 7.15.03.fti .
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.fti and form paragraphs 7.08.fti , 7.09.fti , and 7.14.fti as appropriate, or by form paragraph 7.103 .
5. If pre-AIA 35 U.S.C. 102(e) is also being applied, this form paragraph must be followed by either form paragraph 7.15.01.fti , 7.15.02.fti or 7.15.03.fti .
6. For applications with an actual filing date on or after March 16, 2013, that claim 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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7.169 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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7.16.aia Rejection, 35 U.S.C. 102(a)(1), Public Use, On Sale, or Otherwise Publicly Available

Claim [1] rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. [2]

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 must be preceded either by form paragraphs 7.07.aia and 7.08.aia or by form paragraph 7.103 .
3. In bracket 1, insert the claim numbers which are under rejection.
4. A full explanation of the evidence establishing a public use or sale or other public availability must be provided in bracket 2.

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7.16.fti Rejection, pre-AIA 35 U.S.C. 102(b), Public Use or on Sale

Claim [1] rejected under pre-AIA 35 U.S.C. 102(b) based upon a public use or sale of the invention. [2]

Examiner Note:

1. This form paragraph must be preceded either by form paragraphs 7.07.fti and 7.09.fti or by form paragraph 7.103 .
2. A full explanation of the evidence establishing a public use or sale must be provided in bracket 2.

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7.17.aia 102(a)(1) Rejection Using Prior Art Excepted under 102(b)(2)(C)

Applicant has provided evidence in this file showing that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, although reference [2] has been excepted as prior art under 35 U.S.C. 102(a)(2) , it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C) .

Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1) . Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b) .

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 must be included following form paragraph 7.20.aia or 7.15.aia where the anticipation rejection is based on a reference that has been excepted under 35 U.S.C. 102(b)(2)(C) but still qualifies as prior art under 35 U.S.C. 102(a)(1) .
3. In bracket 1, identify the common assignee.
4. In bracket 2, identify the reference which has been excepted.

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7.17.fti Rejection, pre-AIA 35 U.S.C. 102(c), Abandonment of Invention

Claim [1] rejected under pre-AIA 35 U.S.C. 102(c) because the invention has been abandoned. [2]

Examiner Note:

1. This form paragraph must be preceded either by form paragraph 7.07.fti and 7.10.fti or by form paragraph 7.103 .
2. In bracket 2, insert a full explanation of the evidence establishing abandonment of the invention. See MPEP § 2134 .

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7.18.aia Rejection, Pre-AIA 35 U.S.C. 102(g)

Claim [1] rejected under pre-AIA 35 U.S.C. 102 (g) as being [2] by [3].

Examiner Note:

1. This form paragraph should only be used for an application or a patent that is being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act (must be preceded by form paragraph 7.03.aia ) and MUST contain or have contained a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or a specific reference under 35 U.S.C. 120 , 121 , or 365(c) to any patent or application that contains or contained such a claim.
2. In bracket 1, insert the claim numbers which are under rejection.
3. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.
4. In bracket 3, insert the prior art relied upon.
5. This rejection must be preceded either by form paragraph 7.14.aia , or by form paragraph 7.103 .

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7.18.fti Rejection, pre-AIA 35 U.S.C. 102(d), Foreign Patenting

Claim [1] rejected under pre-AIA 35 U.S.C. 102(d) as being barred by applicants [2]. [3]

Examiner Note:

1. This form paragraph must be preceded either by form paragraphs 7.07.fti and 7.11.fti or by form paragraph 7.103 .
2. In bracket 3, insert an explanation of this rejection which must include appropriate dates and how they make the foreign patent available under pre-AIA 35 U.S.C. 102(d) .
3. Refer to MPEP § 2135 for applicable pre-AIA 35 U.S.C. 102(d) prior art.

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7.19.fti Rejection, pre-AIA 35 U.S.C. 102(f), Applicant Not the Inventor

Claim [1] is/are rejected under pre-AIA 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.fti and 7.13.fti 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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7.20.01.aia 103 Rejection Using Prior Art Excepted Under 102(b)(2)(C) Because Reference is Prior Art Under 102(a)(1)

Applicant has provided a submission in this file that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as [1] not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement not later than the effective filing date of the claimed invention. However, although subject matter disclosed in the reference [2] has been excepted as prior art under 35 U.S.C. 102(a)(2) , it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C) .

Applicant may overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A) . Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b) .

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 must be included following form paragraph 7.20.aia or 7.15.aia where the 103 rejection is based on subject matter disclosed in a reference that has since been excepted under 102(b)(2)(C) , but still qualifies as prior art under 35 U.S.C. 102(a)(1) .
3. In bracket 1, identify the common assignee.
4. In bracket 2, identify the reference which discloses the subject matter that has been excepted.

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7.20.01.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Not Disqualified Under Pre-AIA 35 U.S.C. 103(c) Because Reference Is Prior Art Under Another Subsection of Pre-AIA 35 U.S.C. 102

Applicant has provided a submission in this file that the invention was owned by, or subject to an obligation of assignment to, the same entity as [1] at the time this invention was made, or was subject to a joint research agreement at the time this invention was made. However, reference [2] qualifies as prior art under another subsection of pre-AIA 35 U.S.C. 102 , and therefore is not disqualified as prior art under pre-AIA 35 U.S.C. 103(c) .

Applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore, not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a) .

Examiner Note:

1. This form paragraph must be included following form paragraph 7.20.fti in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) using art that is disqualified under pre-AIA 103(c) using pre-AIA 102(e) , (f) , or (g) , but which qualifies under another section of pre-AIA 35 U.S.C. 102 .
2. In bracket 1, identify the common assignee.
3. In bracket 2, identify the reference which has been disqualified.

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7.20.02.aia Joint Inventors, Common Ownership Presumed

This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.

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 paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).

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7.20.02.fti Joint Inventors, Common Ownership Presumed

This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a) , the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e) , (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a) .

Examiner Note:

This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).

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7.20.04.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Common Ownership or Assignment Provision

Applicant has attempted to show that subject matter disclosed in the reference [1] is excepted as prior art under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time the claimed invention was effectively filed. However, applicant has failed to provide a statement that the claimed invention and the subject matter disclosed were owned by, or subject to an obligation of assignment to, the same person no later than the effective filing date of the claimed invention in a conspicuous manner, and therefore, the subject matter disclosed in the reference is not excepted as prior art under 35 U.S.C. 102(a)(2) . Applicant must file the required submission in order to properly except the subject matter under 35 U.S.C. 102(b)(2)(C) . See MPEP § 2154.02(c) .

In addition, applicant may rely upon the exception under 35 U.S.C. 102(b)(2)(A) to overcome the rejection under 35 U.S.C. 102(a)(2) either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(2) . Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b) .

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 should be included in all actions containing rejections using 35 U.S.C. 102(a)(2) prior art, whether anticipation or obviousness rejections, where an attempt has been made to except subject matter disclosed in the reference under 35 U.S.C. 102(b)(2)(C) , but where the applicant has not provided a proper statement indicating common ownership or assignment not later than the effective filing date of the claimed invention .
3. In bracket 1, identify the commonly owned applied art (e.g., patent or co-pending application).
4. In bracket 2, identify the common assignee.

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7.20.04.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Attempted To Be Disqualified Under pre-AIA 35 U.S.C. 103(c) Using the Common Ownership or Assignment Provision

Applicant has attempted to disqualify reference [1] under pre-AIA 35 U.S.C. 103(c) by showing that the invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time this invention was made. However, applicant has failed to provide a statement that the application and the reference were owned by, or subject to an obligation of assignment to, the same person at the time the invention was made in a conspicuous manner, and therefore, the reference is not disqualified as prior art under pre-AIA 35 U.S.C. 103(a) . Applicant must file the required submission in order to properly disqualify the reference under pre-AIA 35 U.S.C. 103(c) . See MPEP § 2146.02 , subsection II.

In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a) .

Examiner Note:

1. This form paragraph must be included in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) where an attempt has been made to disqualify the reference under pre-AIA 35 U.S.C. 103(c) , but where the applicant has not provided a proper statement indicating common ownership or assignment at the time the invention was made.
2. In brackets 1 and 2, identify the commonly owned applied art (e.g., patent or co-pending application).

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7.20.05.aia 102 or 103 Rejection Using Prior Art Under 102(a)(2) That Is Attempted To Be Excepted Under 35 U.S.C. 102(b)(2)(C) Using the Joint Research Agreement Provisions of 35 U.S.C. 102(c)

Applicant has attempted to show that subject matter disclosed in the reference [1] is excepted as prior art under 35 U.S.C. 102(b)(2)(C) by showing that the claimed invention was subject to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly except the subject matter disclosed in the reference under 35 U.S.C. 102(b)(2)(C) . See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii) .

In addition, applicant may overcome the rejection either by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained, either directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art under 35 U.S.C. 102(a)(2) . Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(2)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b) .

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 must be included in all actions containing obviousness or anticipation rejections where an attempt has been made to except subject matter disclosed in the 35 U.S.C. 102(a)(2) prior art reference under 35 U.S.C. 102(b)(2)(C) using the joint research agreement provisions but the attempt is ineffective.
3. In bracket 1, identify the reference which discloses subject matter that is sought to be excepted via 35 U.S.C. 102(b)(2)(C) .
4. In bracket 2, identify the reason(s) why the attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 102(b)(2)(C) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.71(g)(1) and 1.104(c)(4)(ii) .

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7.20.05.fti Pre-AIA 103(a) Rejection Using Prior Art Under Pre-AIA 102(e), (f), or (g) That Is Attempted To Be Disqualified Under Pre-AIA 35 U.S.C. 103(c) Using the Joint Research Agreement Provisions

Applicant has attempted to disqualify reference [1] under pre-AIA 35 U.S.C. 103(c) by showing that the invention was subject to a joint research agreement at the time this invention was made. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly disqualify the reference under pre-AIA 35 U.S.C. 103(c) . See 37 CFR 1.71(g) and 1.104(c) and MPEP § 2146.02 , subsection III.

In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore, not the invention “by another,” or by antedating the applied art under 37 CFR 1.131(a) .

Examiner Note:

1. This form paragraph must be included in all actions containing rejections under pre-AIA 35 U.S.C. 103(a) where an attempt has been made to disqualify the reference under pre-AIA 35 U.S.C. 103(c) using the joint research agreement provisions but the disqualification attempt is ineffective.
2. In bracket 1, identify the reference which is sought to be disqualified under pre-AIA 35 U.S.C. 103(c) .
3. In bracket 2, identify the reason(s) why the disqualification attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of pre-AIA 35 U.S.C. 103(c) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.104(c)(5)(ii) .

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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 .

The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 , if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

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. The statute is not to be cited in all Office actions. It is only required in first actions on the merits employing 35 U.S.C. 103 and final rejections. Where the statute is being applied, but is not cited in an action on the merits, use paragraph 7.103 .
3. This form paragraph should only be used ONCE in a given Office action.
4. This form paragraph must precede any of form paragraphs 7.20.01.aia , 7.20.02.aia , 7.20.04.aia , 7.20.05.aia , 7.21.aia , 7.21.01.aia , 7.21.02.aia , and 7.22.aia when this form paragraph is used to cite the statute in first actions and final rejections.

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7.20.fti Statement of Statutory Basis, Pre-AIA 35 U.S.C. 103(a)

The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 , if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.

Examiner Note:

1. The statute is not to be cited in all Office actions. It is only required in first actions on the merits employing pre-AIA 35 U.S.C. 103(a) and final rejections. Where the statute is being applied, but is not cited in an action on the merits, use paragraph 7.103 .
2. This form paragraph should only be used ONCE in a given Office action.
3. This form paragraph must precede form paragraphs 7.20.01.fti - 7.22.fti when this form paragraph is used to cite the statute in first actions and final rejections.

The applied reference has a common [3] with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2) . [4]

This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A) ; (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) ; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02 .

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 paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that ONLY qualifies as prior art under 35 U.S.C. 102(a)(2) . If the reference qualifies as prior art under 35 U.S.C. 102(a)(1) , then this form paragraph should not be used (form paragraph 7.21.aia should be used instead). The reference must have either a common assignee, a common applicant ( 35 U.S.C. 118 ), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference is not prior art in view of the 35 U.S.C. 102(b)(2)(C) exception.
3. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
4. In bracket 4, insert an explanation of obviousness. See MPEP § 2144 .

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7.21.02.fti Rejection, pre-AIA 35 U.S.C. 103(a), Common Assignee, Common Applicant, or at Least One Common (Joint) Inventor

Claim [1] is/are rejected under pre-AIA 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 pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art. This rejection under pre-AIA 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 pre-AIA 35 U.S.C. 102(e) date of the reference under 37 CFR 1.131(a) ; or (3) an oath or declaration under 37 CFR 1.131(c) stating that the application and reference are currently owned by the same party and that the inventor or joint inventors (i.e., the inventive entity) named in the application is the prior inventor under pre-AIA 35 U.S.C. 104 as in effect on March 15, 2013, 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 pre-AIA 35 U.S.C. 103(c) as prior art in a rejection under pre-AIA 35 U.S.C. 103(a) . See MPEP § 2146 et seq. [4]

Examiner Note:

1. This paragraph is used to reject over a reference (patent or published application) that discloses the claimed invention, and that only qualifies as prior art under pre-AIA 35 U.S.C. 102(e) . If the reference qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or (b) , then this form paragraph should not be used (form paragraph 7.21.fti should be used instead). The reference must have either a common assignee, a common applicant ( 35 U.S.C. 118 ), or at least one common (joint) inventor. This form paragraph should not be used in applications when the reference 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. See MPEP § 2146.03 .
2. Pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) must be applied if the reference is by another and 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 (PCT) if the international application has an international filing date on or after November 29, 2000 ;
- a U.S. patent issued from, or a WIPO publication of, an international design application that designates the United States.
See the Examiner Notes for form paragraph 7.12.fti to assist in the determination of the pre-AIA 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.fti to assist in the determination of the pre-AIPA 35 U.S.C. 102(e) date of the reference.
4. In bracket 1, insert the claim number(s) which is/are under rejection.
5. In bracket 2, insert the prior art reference(s) relied upon for the obviousness rejection.
6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144 .

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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.

The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:

1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.

Examiner Note:

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 may be used, if appropriate, in response to an argument regarding the applicability of the factors for determining obviousness.

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7.23.fti Test for Obviousness

The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:

1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.

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 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 (see the requirement of 37 CFR 1.71(a) for “full, clear, concise, and exact terms”), numbering of elements (see 37 CFR 1.74 ), etc., which should be corrected. See form paragraphs 6.28 to 6.31 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 (see the requirement of 37 CFR 1.71(a) for “full, clear, concise, and exact terms”), 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 websites 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/08 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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7.30.03 Statement of Statutory Basis, 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph

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

(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

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

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

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. Use this paragraph ONLY ONCE in a given Office action when claim elements use “means” (or “step for”) or otherwise invoke treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph.
3. This form paragraph must be preceded by 7.30.03.h and followed with form paragraph 7.30.05 .

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7.30.03.h Header for Claim Interpretation

CLAIM INTERPRETATION

Examiner Note:

1. This form paragraph may be used in a first Office action or when a claim interpretation issue first arises, and need only be used once in an application, when appropriate.
2. This form paragraph may be used to preface any clarifying remarks regarding claim interpretation that the examiner chooses to add to enhance the prosecution record.
3. This form paragraph should precede form paragraphs 7.30.03 and 7.30.05 , when applicable.

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7.30.05 Broadest Reasonable Interpretation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph: Use of “Means” (or “Step”) in Claim Drafting and Rebuttable Presumptions Raised

The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, is invoked.

As explained in MPEP § 2181 , subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph:

(A) the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.

Use of the word "means" (or "step") in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.

Absence of the word "means" (or "step") in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.

Claim limitations in this application that use the word "means" (or "step") are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word "means" (or "step") are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, except as otherwise indicated in an Office action.

Examiner Note:

1. Use this paragraph ONLY ONCE in a given Office action the first time that a claim limitation uses "means" (or "step") or otherwise invokes treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, by using a substitute term for "means" that serves as a generic placeholder.
2. This paragraph must be preceded with form paragraph 7.30.03 unless already cited in a previous Office action.
3. When a claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph (i.e., it meets the three-prong test), to provide clarification the examiner may identify the structure, material, or act disclosed in the specification that supports the recited function by adding explanatory remarks after this paragraph.
4. When the presumptions raised are rebutted by the claim language, for example by not using "means" and failing to recite structure that performs the function, or by using "means" along with definite structure that performs the function, use form paragraph 7.30.06 and/or 7.30.07 .
- Follow this form paragraph with form paragraph 7.30.06 when, despite the absence of the word "means," a claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph.
- Follow this form paragraph with form paragraph 7.30.07 when, despite the presence of the word "means," a claim limitation is not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph.
5. A claim limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, that raises issues under 35 U.S.C. 112(a) and/or 112(b) or pre-AIA 35 U.S.C. 112 , first and/or second paragraphs, respectively, should also be addressed, as appropriate. See MPEP § 2185 .

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7.30.06 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph, Invoked Despite Absence of "Means"

This application includes one or more claim limitations that do not use the word "means," but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: [1] in claim [2].

Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.

If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph.

Examiner Note:

1. Use this paragraph ONLY ONCE in a given Office action the first time that a claim limitation invokes treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph by using a substitute term for "means" that serves as a generic placeholder.
2. In bracket 1, identify each claim limitation, and in bracket 2 indicate the claim(s) in which each respective limitation appears.
3. This paragraph must be preceded with form paragraph 7.30.05 unless already cited in a previous Office action.

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7.30.07 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph, Not Invoked Despite Presence of "Means" or "Step"

This application includes one or more claim limitations that use the word "means" or "step" but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: [1] in claim [2].

Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.

If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.

Examiner Note:

1. Use this paragraph ONLY ONCE in a given Office action the first time that a claim limitation includes the word "means" or "step" but does not invoke treatment under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph because sufficient structure, materials, or acts to perform the recited function are present.
2. In bracket 1, identify each claim limitation, and in bracket 2 indicate the claim(s) in which each respective limitation appears.
3. This paragraph must be preceded with form paragraph 7.30.05 unless already cited in a previous 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 applications subject to pre-AIA 35 U.S.C. 112 , 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 1, pluralize "Claim" if necessary, insert claim number(s), and insert --is-- or --are-- as appropriate.
3. 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. In bracket 1, pluralize "Claim" if necessary, insert claim number(s), and insert --is-- or --are-- as appropriate.
3. This form paragraph is to be used when the scope of the claims is not commensurate with the scope of the enabling disclosure.
4. 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.
5. In bracket 3, identify aspect(s) of the claim(s) for which the specification is not enabling.
6. In bracket 4, fill in only the appropriate portion of the statute, i.e., one of the following: --make--, --use--, or --make and use--.
7. 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 applications subject to pre-AIA 35 U.S.C. 112 , 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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7.31.05 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, First Paragraph: Scope of Enablement of a "Single Means" Claim

Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103 .
2. In bracket 1, pluralize “Claim” if necessary, insert claim number(s), and insert --is-- or --are-- as appropriate.
3. This form paragraph is to be used only when the claim recites a single element and that element is in means-plus-function format. This situation should be rare.

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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. The disclosure does not enable one of ordinary skill in the art to practice the invention without [2], which is/are critical or essential to the practice of the invention but not included in the claim(s). 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 applications subject to pre-AIA 35 U.S.C. 112 the applicant, regards as the invention. Evidence that claim [2] fail(s) to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA applications the applicant, regards as the invention can be found in the reply filed [3]. In that paper, the inventor or a joint inventor, or for pre-AIA applications 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 applications subject to pre-AIA 35 U.S.C. 112 , the applicant), regards as the invention.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103 .
2. In bracket 1, pluralize "Claim" if necessary, insert claim number(s), and insert --is-- or --are-- as appropriate. Any claim dependent on a listed rejected claim should be reviewed to determine if the dependent claim should be rejected as indefinite for the same reason(s) as the listed rejected claim(s), and if so, the dependent claim(s) should be added to the listed rejected claim(s).
3. This form paragraph should be followed by one or more of the following form paragraphs 7.34.02 - 7.34.10 , and/or 7.34.23 - 7.34.24 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) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c) . 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. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.

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 .

7.34.23 Rejections Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph: Claim Limitation is Interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth paragraph, but Disclosure of the Structure, Material, or Acts for Performing the Function Recited in a Claim Is Lacking, Insufficient, or Not Clearly Linked

Claim limitation " [1]" 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 performing the entire claimed function and to clearly link the structure, material, or acts to the function. [2] Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph.

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;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter ( 35 U.S.C. 132(a) ); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, 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 and clearly links them to the function 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(f) or pre-AIA 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 entire claimed function or why there is no clear linkage between the structure, material, or acts and the function. For example, explain that (i) the disclosure is devoid of any structure that performs the function in the claim, (ii) the structure described in the specification does not perform the entire function in the claim, or (iii) no association between the structure and the function can be found in the specification.
3. This form paragraph must be preceded by form paragraphs 7.30.03.h , 7.30.03 , and 7.30.05 (to set forth the claim interpretation and statutory basis for 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph), and then 7.30.02 or 7.103 and 7.34.01 (to set forth the statutory basis for the indefiniteness rejection and identify the claim at issue) and 7.30.06 , if appropriate (invoked despite the absence of means).
4. When a rejection is made under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph, because the disclosure is inadequate to support the limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, for lack of written description should also be considered. See MPEP § 2181 , subsection IV.

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7.34.24 Rejections under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph: Unclear Whether Claim Limitation Is To Be Interpreted Under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, Sixth Paragraph – Result of 3-Prong Test Inconclusive

Claim limitation [1] has been evaluated under the three-prong test set forth in MPEP § 2181 , subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, because [2]. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph.

In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph is insufficient. Applicant may:

(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, by reciting "means" or a generic placeholder for means, or by reciting "step." The "means," generic placeholder, or "step" must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.

Examiner Note:

1. This paragraph should be used after the examiner has attempted to perform the three-prong analysis from MPEP § 2181 , subsection I, and is unable to conclude whether the claim limitation should be treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, because of ambiguous words in the claim. This situation should be rare.
2. In bracket 1, identify the claim and 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, identify the reason that the three-prong test was inclusive. The possibilities include:
- the term "means" or generic placeholder is modified by a word, which is ambiguous regarding whether it conveys structure or function;
- the term "step" is modified by a word, which is ambiguous regarding whether it conveys an act or a function;
- the claim limitation uses the word "means" or a generic placeholder coupled with functional language, but it is modified by some structure or material that is ambiguous regarding whether that structure or material is sufficient for performing the claimed function;
- the claim limitation uses the word "step" coupled with functional language, but it is modified by some act that is ambiguous regarding whether that act is sufficient for performing the claimed function.
4. This form paragraph may also be used in response to an applicant's reply in which applicant disputes the application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph. See MPEP § 706.07(a) for guidance on when the second action may be made final.
5. This form paragraph must be preceded by form paragraphs 7.30.03.h , 7.30.03 , and 7.30.05 (to set forth the claim interpretation and statutory basis for 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph), and then 7.30.02 or 7.103 and 7.34.01 (to set forth the statutory basis for the indefiniteness rejection).

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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 Pre-AIA 35 U.S.C. 112, 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 pre-AIA 35 U.S.C. 112 , fourth paragraph:

Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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:

1. In bracket 2, insert an explanation of what is in the claim and why it does not constitute a further limitation.
2. The U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of pre-AIA 35 U.S.C. 112 , 4th paragraph, are related to matters of form, non-compliance with pre-AIA 35 U.S.C. 112, 4th paragraph , renders the claim unpatentable just as non-compliance with other paragraphs of 35 U.S.C. 112 would. See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92, 79 USPQ2d 1583, 1589-90 (Fed. Cir. 2006) (holding a dependent claim in a patent invalid for failure to comply with pre-AIA 35 U.S.C. 112, 4th paragraph ). Therefore, if a dependent claim does not comply with the requirements of 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph , the dependent claim should be rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph , as unpatentable rather than objecting to the claim.
3. This form paragraph must be preceded by form paragraph 7.36 .

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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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7.39 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 closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted.

General information on the Patent Trial and Appeal Board is available at: www.uspto.gov/patents/patent-trial- and-appeal-board/about-ptab/new-ptab . The information at this page includes guidance on time limited options that may assist the applicant contemplating appealing an examiner’s rejection. The page is best reviewed promptly after applicant has received a final rejection or the claims have been twice rejected because some of the noted assistance must be requested within one month from the date of the latest rejection. See MPEP § 1204 for more information on filing a notice of appeal.

If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply. The Notice of Appeal must be accompanied by the fee required by 37 CFR 41.20(b)(1) . The current fee amount is available at: www.uspto.gov/Fees .

If applicant should desire to file an after-final amendment, entry of the proposed amendment cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made in a previous Office action. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of 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 cancellation of or appeal from the rejection 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 all of the claims to be in condition for allowance.

Since the fee set forth in 37 CFR 1.17(r) for a first submission subsequent to a final rejection has been previously paid, applicant, under 37 CFR 1.129(a) , is entitled to have a second submission entered and considered on the merits if, prior to abandonment, the second submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 41.37 . Upon the timely filing of a second submission and the appropriate fee of $ [1] for a [2] entity under 37 CFR 1.17(r) , the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r) , the payment of the fee set forth in 37 CFR 1.17(r) by applicant will be construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a) . In view of 35 U.S.C. 132 , no amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application.

Examiner Note:

1. This form paragraph is to follow any of form paragraphs 7.39 - 7.41 in any application filed prior to June 9, 1995, which has been pending for at least two years as of June 8, 1995, taking into account any reference under 35 U.S.C. 120 , 121 or 365(c) to a previously filed application and a first submission fee has been previously paid under 37 CFR 1.17(r) .
2. This form paragraph should NOT be used in a design or reissue application or in a reexamination proceeding.
3. In bracket 1, insert the current fee for a large or small entity, as appropriate.
4. In bracket 2, insert --small-- or --large--, depending on the current status of the application.
5. If the fee set forth in 37 CFR 1.17(r) has been twice paid, the provisions of 37 CFR 1.129(a) are no longer available.

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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.

Under the final action practice for Office actions following a submission under 37 CFR 1.129(a) filed on or after June 8, 2005, the next Office action following timely filing of a submission under 37 CFR 1.129(a) will be equivalent to the next Office action following a reply to a non-final Office action. Under existing Office second action final practice, such an Office action on the merits will be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) . See MPEP § 706.07(a) .

In this Office action, there is no new ground of rejection that was not necessitated by applicant’s amendment of the claims or based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) . Accordingly, 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:

Also use form paragraph 7.41.02.fti if this is a final rejection following a first submission under 37 CFR 1.129(a)

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7.42.03.fti Action Is Final, First Action Following Submission Under 37 CFR 1.129(a) Filed Prior to June 8, 2005

All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.129(a) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.129(a) . Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the submission under 37 CFR 1.129(a) . See MPEP § 706.07(b) . Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a) .

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 TWO (2) MONTHS from the mailing date of this letter, to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. This application has been granted special status under the accelerated examination program. Extensions of this time period may be granted under 37 CFR 1.136(a) . However, filing a petition for extension of time will result in the application being taken out of the accelerated examination program. In no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).

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. To meet that objective, 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 OG 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 that complies with 35 U.S.C. 371 . 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 on other grounds 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 either identical to or patentably indistinct from the claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction would not be proper) and all claims 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 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 TWO (2) MONTHS from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136 , but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).

Examiner Note:

1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or an appeal brief

Form Paragraphs

2.01 Possible Status as Divisional

Examiner Note:

2.03 Affidavits or Declarations in Prior Application

Examiner Note:

2.05 Possible Status as Continuation

Examiner Note:

2.06 Possible Status as Continuation-in-Part

Examiner Note:

2.07 Definition of a Substitute

2.09 Heading for Conditions for Benefit Claims Under 35 U.S.C. 119(e) , 120 , 121 , 365(c) , or 386(c)

Examiner Note:

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

Examiner Note:

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

Examiner Note:

2.11 Application Must Be Copending With Parent

Examiner Note:

2.11.01 Application Must Be Filed Within 12 Months From the Provisional Application Unless Petition Granted

Examiner Note:

2.13.01 [Reserved]

2.13.02 [Reserved]

2.14 [Reserved]

2.15 Reference to Prior Application, 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) Benefit

Examiner Note:

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

2.19 Overcome Rejection by Translation

Examiner Note:

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

2.21.01 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) Foreign Priority Claim is Untimely

Examiner Note:

2.22 Certified Copy Filed, But Proper Claim Not Made

Examiner Note:

2.23 Foreign Filing More Than 12 Months Earlier, No Petition to Restore Priority Granted

Examiner Note:

2.25 Claimed Foreign Priority, No Papers Certified Copy Filed

Examiner Note:

2.26 Claimed Foreign Priority - Certified Copy Filed

2.27 Acknowledge Certified Copy of Foreign Priority Paper in Parent

Examiner Note:

2.30 CPA Status Acceptable (for Design Applications)

Examiner Note:

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

Examiner Note:

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

Examiner Note:

2.33 New Inventor Identified in CPA (for Design Applications)

Examiner Note:

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

Examiner Note:

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

Examiner Note:

2.38 Claiming Benefit to a Non-English Language Provisional Application

Examiner Note:

2.39 35 U.S.C. 119(e), 120, 121, or 365(c), or 386(c) Benefit Claim is Untimely

Examiner Note:

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

Examiner Note:

4.01 Double Correspondence

Examiner Note:

4.03 Death of Patent Practitioner

4.07 Attorney/Agent Suspended (Sole Practitioner)

Examiner Note:

4.08 Attorney/Agent Suspended (Plural Practitioners)

Examiner Note:

4.09 Unregistered Attorney or Agent

Examiner Note:

4.10 Employ Services of Attorney or Agent

Examiner Note:

5.01 Proper Heading for Incoming Papers

5.01.01 Separate Paper Required

Examiner Note:

5.02 Format of Certificate of Mailing or Transmission

5.04 Benefit of Certificate of Mailing Denied

Examiner Note:

5.05 Small Entity Status

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

Examiner Note:

6.02 Content of Specification

Examiner Note: