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Form Paragraphs

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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2.03 Affidavits or Declarations in Prior Application

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

Examiner Note:

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

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2.05 Possible Status as Continuation

This application discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. 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 continuation, 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 "continuation" of the provisional application.

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2.06 Possible Status as Continuation-in-Part

This application repeats a substantial portion of prior Application No. [1], filed [2], and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120 , 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 qualify as a continuation-in-part, but no benefit claim has 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 "continuation-in-part" of the provisional 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.

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2.13.01 [Reserved]

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2.13.02 [Reserved]

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2.14 [Reserved]

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

This application makes reference to or appears to claim subject matter disclosed in Application No. [1], filed [2]. If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e) , 120 , 121 , 365(c) or 386(c) , the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78 . If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 CFR 1.76 ; if the application was filed on or after September 16, 2012, the specific reference must be included in an ADS in compliance with 37 CFR 1.76 . 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.

If the instant application is a utility or plant application filed under 35 U.S.C. 111(a) , the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a national stage application under 35 U.S.C. 371 , the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) , 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. See 37 CFR 1.78(a)(4) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d)(3) for benefit claims under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) . This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120 , where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e) , 120 , 121 , 365(c) , and 386(c) . A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c) ) or under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) (see 37 CFR 1.78(e) ). The petition must be accompanied by (1) the reference required by 35 U.S.C. 120 or 119(e) and by 37 CFR 1.78 to the prior application (unless previously submitted), (2) the 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.

If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78 and the 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 ADS in compliance with 37 CFR 1.76 with the reference (or, if the application was filed before September 16, 2012, by filing either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 CFR 1.76 ). See MPEP § 211.02 .

Examiner Note:

  • 1. Use this paragraph when an application does not claim the benefit of a prior-filed application, but makes a reference to, or appears to claim subject matter disclosed in, the prior-filed application.
  • 2. In bracket 1, insert the application number of the prior-filed application.
  • 3. In bracket 2, insert the filing date of the prior-filed application.
  • 4. In a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (design applications 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.

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2.26 Claimed Foreign Priority - Certified Copy Filed

Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55 .

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2.27 Acknowledge Certified Copy of Foreign Priority Paper in Parent

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

Examiner Note:

  • 1. For problems with foreign priority, see form paragraphs 2.18 to 2.23 .
  • 2. In bracket 1, insert series code and serial no. of parent.

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2.30 CPA Status Acceptable (for Design Applications)

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

Examiner Note:

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

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

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

Examiner Note:

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

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

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

Examiner Note:

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

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2.33 New Inventor Identified in CPA (for Design Applications)

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

Examiner Note:

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

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

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

Examiner Note:

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

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

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

Examiner Note:

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

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2.38 Claiming Benefit to a Non-English Language Provisional Application

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

Examiner Note:

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

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

The benefit claim filed on [1] was not entered because the required reference was not timely filed within the time period set forth in 37 CFR 1.78 . If the application is an application filed under 35 U.S.C. 111(a) , the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371 , the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) , 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:

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

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4.10 Employ Services of Attorney or Agent

It appears the inventor(s) filed the current application pro se (i.e., without the benefit of representation by a registered patent practitioner). While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.

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

Examiner Note:

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

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5.01 Proper Heading for Incoming Papers

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

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

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

3. Filing date.

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

5. Title of invention.

6. Confirmation number (see MPEP § 503 ).

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5.01.01 Separate Paper Required

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

Examiner Note:

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

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5.02 Format of Certificate of Mailing or Transmission

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

Certificate of Mailing

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

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

on ___________.

(Date)

Typed or printed name of person signing this certificate:

_____________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Certificate of Transmission

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

Typed or printed name of person signing this certificate:

_________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Certificate of EFS-Web Transmission

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

Typed or printed name of person signing this certificate:

_________________________________________

Signature: ________________________________________

Registration Number: ______________________________

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

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5.04 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 .

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6.11.01 Title of Invention, Suggested Change

The following title is suggested: “ [1]

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6.12 Abstract Missing (Background)

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

Examiner Note:

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

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6.13 Abstract Objected To

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

Examiner Note:

  • 1. In bracket 1, indicate the informalities that require correction such as the inclusion of legal phraseology, undue length, etc.
  • 2. For a pro se applicant, this paragraph should be followed by form paragraphs 6.14 to 6.16 as applicable.

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6.14 Abstract of the Disclosure: Content

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

A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. 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) .

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6.18.01 Claims: Placement

The claims in this application do not commence on a separate sheet or electronic page in accordance with 37 CFR 1.52(b)(3) and 1.75(h) . Appropriate correction is required in response to this action.

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

The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g) .

Examiner Note:

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

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6.19.01 Ineffective Incorporation by Reference, General

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

Examiner Note:

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

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

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

Examiner Note:

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

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6.19.03 Correction of Ineffective Incorporation by Reference

The incorporation by reference will not be effective until correction is made to comply with 37 CFR 1.57(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.

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6.21 New Drawings, Competent Draftsperson

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

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6.22 Drawings Objected To

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

Examiner Note:

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

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6.22.01 Drawings Objected To, Details Not Shown

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

Examiner Note:

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

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6.22.02 Drawings Objected to, Different Numbers Refer to Same Part

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

Examiner Note:

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

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

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

Examiner Note:

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

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6.22.04 Drawings Objected to, Incomplete

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

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

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

Examiner Note:

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

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6.22.05 Drawings Objected to, Modifications in Same Figure

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

Examiner Note:

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

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6.22.06 Drawings Objected to, Reference Numbers Not in Drawings

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

Examiner Note:

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

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6.22.07 Drawings Objected to, Reference Numbers Not in Specification

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

Examiner Note:

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

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6.23 Subject Matter Admits of Illustration

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

Examiner Note:

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

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

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

Applicant is given a 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.

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6.36.01 Illustration of “Prior Art”

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

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6.37 Acknowledgment of Replacement Drawing Sheets

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

Examiner Note:

  • 1. In bracket 2, insert either --acceptable-- or --unacceptable--.
  • 2. Identify any drawing(s) not entered because they contain new matter and explain the correction(s) necessary to obtain entry upon resubmission.
  • 3. If unacceptable because of noncompliance with 37 CFR 1.121(d) , an explanation must be provided. Form PTOL-324 may be used instead of this form paragraph to provide the explanation.

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6.39 USPTO Does Not Make Drawing Changes

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

Examiner Note:

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

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6.40 Information on How To Effect Drawing Changes

INFORMATION ON HOW TO EFFECT DRAWING CHANGESReplacement Drawing Sheets

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

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

Annotated Drawing Sheets

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

Timing of Corrections

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

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

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6.41 Reminder That USPTO Does Not Make Drawing Changes

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

Examiner Note:

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

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6.42 Reminder That Applicant Must Make Drawing Changes

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

Examiner Note:

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

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6.43 Drawings Contain Informalities, Application Allowed

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

Examiner Note:

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6.47 Examiner’s Amendment Involving Drawing Changes

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

Examiner Note:

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

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

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

Applicant is given 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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6.49 Information Disclosure Statement Not Considered

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

Examiner Note:

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

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

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

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

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

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

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

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

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

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6.49.06 Information Disclosure Statement Not Considered, References Listed in Specification

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

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6.49.07 Information Disclosure Statement Not Considered, No Copy of References

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

Examiner Note:

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

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

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

Examiner Note:

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

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

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

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

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

Examiner Note:

This form paragraph may be used when the IDS that includes patents and non-patent literature documents is submitted on 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.

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

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6.52 Information Disclosure Statement Filed After Prosecution Has Been Closed

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

Examiner Note:

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

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6.53 References Considered in 35 U.S.C. 371 Application Based Upon Search Report - Prior to Allowance

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

Examiner Note:

  • 1. In bracket [1], identify the office (e.g., JPO, EPO, etc.) that issued the international search report and the date it issued.
  • 2. This form paragraph may be used for national stage applications under 35 U.S.C. 371 where the examiner has obtained copies of the cited references or where copies of such references are not required under 37 CFR 1.98. If receipt of copies of references required under 37 CFR 1.98 is not indicated on the PCT/DO/EO/903 form in the file, burden is on the applicant to supply such copies for consideration. See MPEP § 1893.03(g) .
  • 3. Instead of using this form paragraph, the examiner may list the references on a PTO-892, thereby notifying the applicant that the references have been considered and will be printed on any patent resulting from this application.
  • 4. This form paragraph should only be used prior to allowance when a statutory period for reply is being set in the Office action.
  • 5. If the application is being allowed, form paragraph 6.54 should be used with the Notice of Allowability instead of this form paragraph.

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6.54 References Considered in 35 U.S.C. 371 Application Based Upon Search Report - Ready for Allowance

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

Examiner Note:

  • 1. In bracket [1], identify the office (e.g., JPO, EPO, etc.) that issued the international search report and the date it issued.
  • 2. This form paragraph may be used for national stage applications under 35 U.S.C. 371 where the examiner has obtained copies of the cited references or where copies of such references are not required under 37 CFR 1.98 . If receipt of copies of references required under 37 CFR 1.98 is not indicated on the PCT/DO/EO/903 form in the file, burden is on the applicant to supply such copies for consideration. See MPEP § 1893.03(g) .
  • 3. Instead of using this form paragraph, the examiner may list the references on a PTO-892, thereby notifying the applicant that the references have been considered and will be printed on any patent resulting from this application.

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

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

Examiner Note:

  • 1. This form paragraph may be used in national stage applications 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.

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6.61.02 Specification Lacking An Incorporation By Reference Statement for Read-only Optical Disc or Text File Submitted Via the Office Electronic Filing System

This application contains read-only optical disc(s) or text file(s) submitted via Electronic Filing System as part of the originally filed subject matter, but does not contain an incorporation by reference statement for the read-only optical discs or text files. See   37 CFR 1.77(b)(5) and   MPEP § 502.05 . Applicant(s) is required to insert in the specification an appropriate incorporation-by-reference statement that includes the name of the ASCII text file or XML file (as applicable), the date of creation, and the size of the ASCII text file or XML files (as applicable).

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6.62 Data File on Read-only Optical Disc Not in ASCII File Format or XML File Format (only for a “Sequence Listing XML”)

This application contains a data file on a read-only optical disc that is not in an ASCII file format or an XML file format (only for “Sequence Listing XML”). See  37 CFR 1.52(e) . File  [1]  is not in an ASCII format or XML format. Applicant is required to resubmit file(s) in ASCII format or XML format. No new matter may be introduced in presenting the file(s) in ASCII format or XML format.

Examiner Note:

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

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6.63.01 Table Less Than 51 Pages Submitted Only as Text File

The description portion of this application contains a table consisting of less than fifty one (51) pages only in ASCII text format submitted either via the Office Electronic Filing System or on read-only optical disc. In accordance with   37 CFR 1.58(c)(1) , only a table of at least fifty one (51) pages may be submitted as an ASCII text file. Accordingly, applicant is required to cancel the references to the table in text format appearing in the specification on pages  [1] , file a paper version of the table in compliance with  37 CFR 1.52  or file a PDF version via EFS-Web, and change all appropriate references to the former table in text format to the newly added paper or PDF version of the table in the remainder of the specification.

Examiner Note:

  • 1. This form paragraph must be used whenever a table on a read-only optical disc or submitted as a text file via the Patent Electronic System consisting of less than fifty one (51) pages as part of the descriptive portion of the specification is filed on or after September 8, 2000. See MPEP § 608.05(b) .
  • 2. In bracket 1, insert the range of page numbers of the specification which reference the table.

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6.63.02 Table Column/Row Relationship Not Maintained

This application contains a table in ASCII text format submitted either via the Office Electronic Filing System or on read-only optical disc. “Large Tables” submitted as an ASCII text file in compliance with   37 CFR 1.58(d)(1)  must maintain the spatial orientation of the cell entries. The table submitted does not maintain the data within each table cell in its proper row/column alignment. The data is misaligned in the table as follows:   [1] . Applicant is required to submit a replacement text file via the Office Electronic Filing System or on read-only optical disc with the table data properly aligned.

Examiner Note:

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

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6.64.01 Computer Program Listing Appendix of More Than 300 Lines in Specification

The specification of this application contains a computer program listing consisting of more than three hundred (300) lines. In accordance with   37 CFR 1.96(c) , a computer program listing of more than three hundred lines must be submitted as an appendix in text format. The “Computer Program Listing Appendix” may be submitted as a text file via the Office Electronic Filing System or on a read-only optical disc conforming to the standards set forth in   37 CFR 1.96(c)(1) . The “Computer Program Listing Appendix” must be appropriately referenced in the specification (see  37 CFR 1.77(b)(5)  ). Accordingly, applicant is required to cancel the current computer program listing, file a ”Computer Program Listing Appendix” as a text file via the Office Electronic Filing System or on a read-only optical disc in compliance with   37 CFR 1.96(c) , and insert an appropriate reference to the newly added “Computer Program Listing Appendix” at the beginning of the specification.

Examiner Note:

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

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

This application contains a computer program listing of over sixty (60) lines and less than three hundred and one (301) lines within the written specification. In accordance with   37 CFR 1.96(b) , a computer program listing contained on over sixty (60) lines and less than three hundred-one (301) lines must, if submitted as part of the specification, be positioned at the end of the specification and before the claims. Accordingly, applicant is required to cancel the computer program listing and either incorporate such listing in a text file submitted via the Office Electronic Filing System or on read-only optical disc in compliance with   37 CFR 1.96 , or insert the computer program listing after the detailed description of the invention but before the claims.

Examiner Note:

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

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6.64.04 “Microfiche Appendix” Unacceptable

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

Examiner Note:

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

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6.70.01 Read-only Optical Disc Requirements (Amendment Does Not Include Statement that Discs are Identical)

The amendment filed   [1]  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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6.70.02 Read-only Optical Disc Requirements (No Listing in Transmittal Letter Submitted With Amendment)

The amendment filed   [1]  contains data on read-only optical disc(s). Read-only optical disc labeled   [2]  is not identified in the transmittal letter and/or 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 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 specified information is required.

Examiner Note:

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

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6.71.01 Specification Lacking List of Read-only optical Disc(s) and/or Associated Files (Amendment Filed With Read-only optical Disc(s))

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

Examiner Note:

  • 1. In bracket 1, insert the date of the amendment.
  • 2. In bracket 2, insert the name on the label of the read-only optical disc.

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6.71.02 Specification Lacking Incorporation By Reference Statement for Amended or Added Read-only Optical Disc or Text File or XML File

The amendment filed   [1]  amends or adds read-only optical disc(s) or text file(s) or XML file(s) (as applicable) submitted via the Patent Electronic Filing System, but does not include an incorporation by reference statement for the read-only optical discs or the text files or XML files (as applicable). Applicant is required to update or insert an appropriate incorporation by reference statement in the specification that includes the name of the ASCII text file or XML file (as applicable), the date of creation, and the size of the ASCII text file or XML file (as applicable). See 37 CFR 1.77(b)(5)   and   1.52(e)(8) and MPEP § 502.05 .

Examiner Note:

  • 1. Use this form paragraph when a read-only optical disc or text file submitted via the Patent Electronic Filing System is filed with an amendment, but the required incorporation-by-reference statement is neither amended nor added to the specification.
  • 2. In bracket 1, insert the date of the amendment.

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6.72.01 Read-only Optical Disc Requirements (Discs Not Identical)

The amendment filed   [1]  is objected to under   37 CFR 1.58(i) for “Large Tables” or 1.96(c)(7) for a “Computer Program  Listing Appendix” because the two read-only optical discs are not identical. Providing a correct duplicate copy is required.

Examiner Note:

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

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6.72.02 Data File, Submitted With Amendment, on Read-only Optical Disc Not in ASCII File Format or XML File Format (only for a “Sequence Listing XML” submission)

The amendment filed [1] contains a data file on read-only optical disc that is not in an ASCII file format or an XML file format (only for a “Sequence Listing XML” submission). File [2] is not in an ASCII format or an XML file format. Applicant is required to resubmit file(s) in ASCII format or XML format as required by 37 CFR 1.52(e)(3)(iii) . No new matter may be introduced in presenting the file(s) in ASCII format or XML format.

Examiner Note:

  • 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]

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7.05.02 Rejection, 35 U.S.C. 101, Utility Lacking

the claimed invention lacks patentable utility. [1]

Examiner Note:

In bracket 1, provide explanation of lack of utility. See MPEP §§ 2105 - 2107.03 .

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7.05.03 Rejection, 35 U.S.C. 101, Inoperative

the disclosed invention is inoperative and therefore lacks utility. [1]

Examiner Note:

In bracket 1, explain why invention is inoperative.

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7.05.04 Utility Rejections Under 35 U.S.C. 101 and 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), First Paragraph

Claim [1] rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a [2] asserted utility or a well established utility.

[3]

Claim [4] also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph. Specifically, because the claimed invention is not supported by either a [5] asserted utility or a well established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.

Examiner Note:

  • 1. Where the specification would not enable one skilled in the art to make the claimed invention, or where alternative reasons support the enablement rejection, a separate rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, enablement should be made using the factors set forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) and an undue experimentation analysis. See MPEP §§ 2164 - 2164.08(c) .
  • 2. Use Format A, B, or C below as appropriate.
      • Format A:
      • (a) Insert the same claim numbers in brackets 1 and 4.
      • (b) Insert --specific and substantial-- in inserts 2 and 5.
      • (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility or a well established utility.
      • (d) Format A is to be used when there is no asserted utility and when there is an asserted utility but that utility is not specific and substantial.
      • Format B:
      • (a) Insert the same claim numbers in brackets 1 and 4.
      • (b) Insert --credible-- in inserts 2 and 5.
      • (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a credible asserted utility or a well established utility.
      • Format C:
      • For claims that have multiple utilities, some of which are not specific and substantial, some of which are not credible, but none of which are specific, substantial and credible:
        • (a) Insert the same claim numbers in brackets 1 and 4.
        • (b) Insert --specific and substantial asserted utility, a credible-- in inserts 2 and 5.
        • (c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility, a credible asserted utility or a well established utility. Each utility should be addressed.

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7.05.05 Duplicate Claims, Warning

Applicant is advised that should claim [1] be found allowable, claim [2] will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 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.

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7.103 Statute Cited in Prior Office Action

The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.

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7.104.02 Requirement for Information, Rescission of Statement Under 37 CFR 1.55 or 1.78

Applicant submitted a rescission of the prior-filed 1.55 / 1.78 statement which indicated that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013. In order for the examiner to properly consider patentability of the claimed invention, additional information regarding this issue is required as follows: [1]

Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. This form paragraph should only be used in an application filed on or after March 16, 2013, where the applicant rescinded a statement pursuant to 37 CFR 1.55 or 1.78 and clarification on the reasoning why pre-AIA law applies is needed.
  • 3. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability.
  • 4. In bracket 1, insert the information that is sought from the applicant.
  • 5. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having a shortened statutory period (SSP), in which case the period for reply will apply also to the requirement.

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7.104.aia Requirement for Information, Public Use or Sale or Other Public Availability

An issue of public use, on sale activity, or other public availability has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under 35 U.S.C. 102(a)(1) , additional information regarding this issue is required as follows: [1]

Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 7.126 as appropriate.
  • 2. This 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 .
  • 3. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. See MPEP § 2133.03 .
  • 4. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having a shortened statutory period (SSP), in which case the period for reply will apply also to the requirement.
  • 5. If sufficient evidence already exists to establish a prima facie case of public use, sale, or other public availability use form paragraph 7.16.aia to make a rejection under 35 U.S.C. 102(a)(1) . See MPEP § 2133.03 .

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7.104.fti Requirement for Information, Public Use or Sale

An issue of public use or on sale activity has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under pre-AIA 35 U.S.C. 102(b) , additional information regarding this issue is required as follows: [1]

Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.

Examiner Note:

  • 1. 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. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. See MPEP § 2133.03 .
  • 3. A two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having an SSP, in which case the SSP will apply also to the requirement.
  • 4. If sufficient evidence already exists to establish a prima facie case of public use or on sale, use form paragraph 7.16.fti to make a rejection under pre-AIA 35 U.S.C. 102(b) . See MPEP § 2133.03 .

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7.105 Requirement for Information, Heading

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

Examiner Note:

  • 1. This form paragraph should appear at the beginning of any requirement for information under 37 CFR 1.105 , and should be followed by an explanation of why the required information is necessary for examination. Form 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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7.107 Level of Skill and Knowledge in the Art

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

Examiner Note:

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

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7.108 Background Description

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

Examiner Note:

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

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7.109 Products and Services Embodying Invention

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

Examiner Note:

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

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7.10.fti Pre-AIA 102(c), Invention Abandoned

(c) he has abandoned the invention.

Examiner Note:

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 and 7.09.fti .

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7.110 Art Suggested as Relevant

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

Examiner Note:

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

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7.111 List of Keywords

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

Examiner Note:

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

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7.112 Citations for Electronically Searchable Databases or Other Indexed Collections

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

Examiner Note:

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

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

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

Examiner Note:

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

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7.114 Copies of Publications Authored by Inventor(s)

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

Examiner Note:

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

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7.115 Art Relied Upon for Description of Prior Art

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

Examiner Note:

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

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7.116 Art Relied Upon for Development of Invention

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

Examiner Note:

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

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7.117 Art Relied Upon for Drafting Claimed Subject Matter

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

Examiner Note:

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

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7.118 Results of Prior Art Search

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

Examiner Note:

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

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7.119 Names of Products or Services Incorporating Claimed Invention

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

Examiner Note:

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

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7.11.fti Pre-AIA 102(d), Foreign Patenting

(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.

Examiner Note:

This 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 7.10.fti .

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7.120 Names of Products or Services Incorporating Disclosed Prior Art

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

Examiner Note:

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

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7.12.01.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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7.121 Details of Improvement Over the Prior Art

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

Examiner Note:

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

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7.122 Submission of Only Pertinent Pages Where Document is Large

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

Examiner Note:

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

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7.123 Waiver of Fee and Statement Requirements for Certain Information Disclosures

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

Examiner Note:

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

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7.124 Contents of Good Faith Reply

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

Examiner Note:

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

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7.125 Conclusion of Requirement That Accompanies Office Action

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

Examiner Note:

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

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7.126 Conclusion Of Requirement Mailed Without Any Other Office Action

This requirement is subject to the provisions of 37 CFR 1.134 , 1.135 and 1.136 and has a shortened statutory period of [1] months. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) 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. This form paragraph must be preceded by form paragraph 7.105 , and should appear at the conclusion of any requirement for information mailed without any other Office action. If the requirement for information is mailed with an Office action, use form paragraph 7.125 instead.
  • 2. The period for reply is ordinarily set for TWO (2) MONTHS .

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

This requirement is subject to the provisions of 37 CFR 1.134 , 1.135 and 1.136 and has a shortened statutory period of 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.

If any of these three types of prior art documents under 35 U.S.C. 102(a)(2) was published before the effective filing date of the claims under examination, then the prior art document is also applicable under 35 U.S.C. 102(a)(1) .

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7.12.fti Pre-AIA 35 U.S.C 102(e), Patent Application Publication or Patent to Another with Earlier Filing Date, in view of the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002

(e) the invention was described in (1) an application for patent, published under section 122(b) , by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.

Examiner Note:

  • 1. This form paragraph should only be used 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 (i.e., a PCT application) 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.
  • 2. 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)). 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).

  • 3. In order to rely on an international filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e) , the international application (PCT) must have been filed on or after November 29, 2000, it must have designated the U.S., and the international publication under PCT Article 21(2) by WIPO must have been in English. If any one of the conditions is not met, the international filing date is not a U.S. filing date for prior art purposes under pre-AIA 35 U.S.C. 102(e) .
  • 4. If an international application (PCT) was published by WIPO in a language other than English, or did not designate the U.S., the international application’s publication by WIPO, the U.S. publication of the national stage application ( 35 U.S.C. 371 ) of the international application and a U.S. patent issued from the national stage of the international application may not be applied as a 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 .
  • 5. If an international application (PCT) was published by WIPO in a language other than English, the U.S. publication of, or a U.S. patent issued from, a continuing application claiming benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to such an international application, has a pre-AIA 35 U.S.C. 102(e) date as of the earliest U.S. filing date after the international filing date.
  • 6. If the reference is a U.S. patent issued directly, or indirectly, from an international application (PCT) that has an international filing date prior to November 29, 2000, use form paragraph 7.12.01.fti . In that situation, pre-AIPA 35 U.S.C. 102(e) is applicable in the determination of the prior art date of the patent issued from such an international application.
  • 7. If the reference is a publication of an international application (PCT), including the U.S. publication of a national stage ( 35 U.S.C. 371 ), that has an international filing date prior to November 29, 2000, do not use this form paragraph. Such a reference may not be applied as 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 .
  • 8. 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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7.13.fti Pre-AIA 102(f), Applicant Not the Inventor

(f) he did not himself invent the subject matter sought to be patented.

Examiner Note:

  • 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 7.12.fti .

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7.147 Supplemental Reply Not Approved for Entry

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

Examiner Note:

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

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7.14.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.

A rejection on this statutory basis ( 35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) 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 (2) a specific reference under 35 U.S.C. 120 , 121 , or 365(c) to any patent or application that contains or contained at any time such a claim.

Examiner Note:

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

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7.14.fti 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.

Examiner Note:

  • 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 7.13.fti .

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7.15.01.aia Provisional Rejection, 35 U.S.C. 102(a)(2) - Common Assignee, Common Applicant, or At Least One Common (Joint) Inventor

Claim(s) [1] is/are provisionally rejected under 35 U.S.C. 102(a)(2) 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 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122(b) or patented under 35 U.S.C. 151 . This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application. [4].

This provisional 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 copending application 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 in the copending application 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.

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 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:

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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 .

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7.207 Petition To Expunge, Conclusion, Lacks Fee

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

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

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

Examiner Note:

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

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7.209 Petition To Expunge, Conclusion, Information Made Public

the information has been made public. [1]

Examiner Note:

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

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7.20.aia Statement of Statutory Basis, 35 U.S.C. 103

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.

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

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

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7.21.01.aia Provisional Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant, or at Least One Common (Joint) Inventor

Claim [1] is/are provisionally rejected under 35 U.S.C. 103 as being obvious over copending Application No. [2] which has a common [3] with the instant application. The copending application would constitute prior art under 35 U.S.C. 102(a)(2) if published or patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption of future publication or patenting of the copending application. [4]

This provisional rejection might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application 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 in the copending application and the claimed invention either were 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 form paragraph is used to provisionally reject claims 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. If the claimed invention is fully disclosed in the copending application, use form paragraph 7.15.01.aia .
  • 4. In bracket 1, insert the claim number(s) which is/are under rejection.
  • 5. In bracket 2, insert the application number.
  • 6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
  • 7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144 .
  • 8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional nonstatutory double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37 .

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

Claim [1] is/are provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over 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 or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the copending application. [4]

This provisional rejection might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor or joint inventors (i.e., the inventive entity) of this application and is thus not the invention “by another,” or by a showing of a date of invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e) date of the copending application under 37 CFR 1.131(a) . This rejection might also be overcome by showing that the copending application 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.

Examiner Note:

  • 1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application that would be prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention if published or issued as a patent and also has 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 when the copending application 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(a) .
  • 2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) 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) to determine the copending application’s prior art date. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
  • 3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01.fti .
  • 4. In bracket 1, insert the claim number(s) which is/are under rejection.
  • 5. In bracket 2, insert the application number.
  • 6. In bracket 3, insert --assignee--, --applicant--, or --joint inventor--.
  • 7. In bracket 4, insert an explanation of obviousness. See MPEP § 2144 .
  • 8. If the claimed invention is not patentably distinct from the invention claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using form paragraphs 8.33 and 8.37 .
  • 9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:

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7.21.02.aia Rejection, 35 U.S.C. 103, Common Assignee, Common Applicant, or at Least One Common (Joint) Inventor

Claim [1] is/are rejected under 35 U.S.C. 103 as being obvious over [2].

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.

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7.214 Papers Not Returned, Pro Se

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

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7.21.aia Rejection, 35 U.S.C. 103

Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [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 by either form paragraph 7.20.aia or form paragraph 7.103 .
  • 3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144 .
  • 4. If this rejection is a provisional 35 U.S.C. 103 rejection based upon a copending application that would constitute prior art under 35 U.S.C. 102(a)(2) if patented or published, use form paragraph 7.21.01.aia instead of this paragraph.
  • 5. In bracket 1, insert the claim numbers which are under rejection.
  • 6. In bracket 2, insert the prior art relied upon.
  • 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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7.21.fti Rejection, Pre-AIA 35 U.S.C. 103(a)

Claim [1] is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2].

Examiner Note:

  • 1. This paragraph must be preceded by either form paragraph 7.20.fti or form paragraph 7.103 .
  • 2. An explanation of the rejection must follow this form paragraph. See MPEP § 2144 .
  • 3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e) , use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120 , 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
  • 4. If the applicability of this rejection (e.g., the availability of the prior art as a reference under pre-AIA 35 U.S.C. 102(a) or pre-AIA 35 U.S.C. 102(b) ) prevents the reference from being disqualified under pre-AIA 35 U.S.C. 103(c) , form paragraph 7.20.01.fti must follow this form paragraph.
  • 5. If this rejection is a provisional pre-AIA 35 U.S.C. 103(a) rejection based upon a copending application that would comprise prior art under pre-AIA 35 U.S.C. 102(e) if patented or published, use form paragraph 7.21.01.fti instead of this paragraph.
  • 6. In bracket 1, insert the claim numbers which are under rejection.
  • 7. In bracket 2, insert the prior art relied upon.

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7.22.aia Rejection, 35 U.S.C. 103, Further in View Of

Claim [1] is/are rejected under 35 U.S.C. 103 as being unpatentable over [2] as applied to claim [3] above, and further in view of [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. This form paragraph must be preceded by form paragraph 7.21.aia .
  • 3. An explanation of the rejection must follow this form paragraph. See MPEP § 2144 .

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7.22.fti Rejection, pre-AIA 35 U.S.C. 103(a), Further in View Of

Claim [1] rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [2] as applied to claim [3] above, and further in view of [4].

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.21.fti .
  • 2. An explanation of the rejection must follow this form paragraph. See MPEP § 2144 .
  • 3. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e) , use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120 , 121 , 365(c) or 386(c) to an international application having an international filing date prior to November 29, 2000. 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.

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7.23.aia Test for Obviousness

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.

Examiner Note:

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

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

Examiner Note:

  • 1. This form paragraph should only be used in an application filed on or after March 16, 2013, where the claims are being examined under 35 U.S.C. 102 / 103 as amended by the Leahy-Smith America Invents Act. This form paragraph must be preceded by form paragraph 7.03.aia .
  • 2. This form paragraph is NOT intended to be commonly used as a substitute for a rejection under 35 U.S.C. 102 . In other words, a single rejection under either 35 U.S.C. 102 or 35 U.S.C. 103 should be made whenever possible. Examples of circumstances where this paragraph may be used are as follows:
    • When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under 35 U.S.C. 102 is appropriate and given another interpretation, a rejection under 35 U.S.C. 103 is appropriate. See MPEP §§ 2111 - 2116.01 for guidelines on claim interpretation.
    • When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02 .
    • When the reference teaches a small genus which places a claimed species in the possession of the public as in In re Schaumann , 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102 . See MPEP §§ 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus.
    • When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi , 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe , 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113 .
    • When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain whether the element disclosed in the reference is an equivalent of the claimed element and therefore anticipatory, or whether the prior art element is an obvious variant of the claimed element. See MPEP §§ 2183 - 2184 .
    • When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range. See the concurring opinion in Ex parte Lee , 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See MPEP § 2131.03 .
  • 3. If the interpretation of the claim(s) renders the claim(s) indefinite, a rejection under 35 U.S.C. 112(b) may be appropriate.
  • 4. In bracket 1, insert the claim number(s) which is/are under rejection.
  • 5. In bracket 2, insert the appropriate paragraph letter(s) in parenthesis.
  • 6. In bracket 3, insert the prior art reference relied upon for the rejection.
  • 7. A full explanation must follow this form paragraph, i.e., the examiner must provide an explanation of how the claims at issue could be considered to be anticipated, as well as how they could be considered to be obvious.
  • 8. This form paragraph must be preceded by 7.07.aia and 7.08.aia and/or 7.12.aia or by form paragraph 7.103 .
  • 9. 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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7.27.fti Rejection, pre-AIA 35 U.S.C. 102 or pre-AIA 103(a)

Claim(s) [1] is/are rejected under pre-AIA 35 U.S.C. 102 ( [2]) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over [3].

Examiner Note:

  • 1. This form paragraph is NOT intended to be commonly used as a substitute for a rejection under pre-AIA 35 U.S.C. 102 . In other words, a single rejection under either pre-AIA 35 U.S.C. 102 or pre-AIA 35 U.S.C. 103(a) should be made whenever possible using appropriate form paragraphs 7.15.fti to 7.19.fti , 7.21.fti and 7.22.fti . Examples of circumstances where this paragraph may be used are as follows:
    • When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under pre-AIA 35 U.S.C. 102 is appropriate and given another interpretation, a rejection under pre-AIA 35 U.S.C. 103(a) is appropriate. See MPEP §§ 2111 - 2116.01 for guidelines on claim interpretation.
    • When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02 .
    • When the reference teaches a small genus which places a claimed species in the possession of the public as in In re Schaumann , 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102 . See MPEP §§ 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus.
    • When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi , 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe , 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113 .
    • When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain whether the element disclosed in the reference is an equivalent of the claimed element and therefore anticipatory, or whether the prior art element is an obvious variant of the claimed element. See MPEP §§ 2183 - 2184 .
    • When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range. See the concurring opinion in Ex parte Lee , 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See MPEP § 2131.03 .
  • 2. If the interpretation of the claim(s) renders the claim(s) indefinite, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , 2nd paragraph, may be appropriate.
  • 3. In bracket 1, insert the claim number(s) which is/are under rejection.
  • 4. In bracket 2, insert the appropriate paragraph letter(s) in parenthesis.
  • 5. In bracket 3, insert the prior art reference relied upon for the rejection.
  • 6. A full explanation should follow this form paragraph.
  • 7. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e) , use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventors Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120 , 121 or 365(c) , or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
  • 8. This form paragraph must be preceded by 7.07.fti , one or more of form paragraphs 7.08.fti to 7.14.fti as appropriate, and form paragraph 7.20.fti or by form paragraph 7.103 .
  • 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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7.28 Objection to New Matter Added to Specification

The amendment filed [1] is objected to under 35 U.S.C. 132 (a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: [2].

Applicant is required to cancel the new matter in the reply to this Office action.

Examiner Note:

  • 1. This form paragraph is not to be used in reissue applications; use form paragraph 14.22.01 instead.
  • 2. In bracket 2, identify the new matter by page and the line numbers and 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 .
  • 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 .

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7.34.07 Claims Are a Literal Translation

The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01 .

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7.34.08 Indefinite Claim Language: “For Example”

Regarding claim [1], the phrase “for example” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d) .

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01 .

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7.34.09 Indefinite Claim Language: “Or The Like”

Regarding claim [1], the phrase “or the like” renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by “or the like”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d) .

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01 .

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7.34.10 Indefinite Claim Language: “Such As”

Regarding claim [1], the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d) .

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01 .

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7.34.12 Essential Steps Omitted

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01 . The omitted steps are: [2]

Examiner Note:

  • 1. This rejection must be preceded by form paragraph 7.30.02 or 7.103 .
  • 2. In bracket 2, recite the steps omitted from the claims.
  • 3. Give the rationale for considering the omitted steps critical or essential. The rationale must explain the basis for concluding that the inventor regards the omitted matter to be essential to the invention.

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7.34.13 Essential Elements Omitted

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01 . The omitted elements are: [2]

Examiner Note:

  • 1. This rejection must be preceded by form paragraph 7.30.02 or 7.103 .
  • 2. In bracket 2, recite the elements omitted from the claims.
  • 3. Give the rationale for considering the omitted elements critical or essential. The rationale must explain the basis for concluding that the inventor regards the omitted matter to be essential to the invention.

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7.34.14 Essential Cooperative Relationships Omitted

Claim [1] rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01 . The omitted structural cooperative relationships are: [2]

Examiner Note:

  • 1. This rejection must be preceded by form paragraph 7.30.02 or 7.103 .
  • 2. In bracket 2, recite the structural cooperative relationships of elements omitted from the claims.
  • 3. Give the rationale for considering the omitted structural cooperative relationships of elements being critical or essential.

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

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

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

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7.34.23  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:

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7.37 Arguments Are Not Persuasive

Applicant’s arguments filed [1] have been fully considered but they are not persuasive. [2]

Examiner Note:

  • 1. The examiner must address all arguments which have not already been responded to in the statement of the rejection.
  • 2. In bracket 2, provide explanation as to non-persuasiveness.

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7.37.01 Unpersuasive Argument: Age of Reference(s)

In response to applicant’s argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

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7.37.02 Unpersuasive Argument: Bodily Incorporation

In response to applicant’s argument that [1], the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).

Examiner Note:

  • 1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of bodily incorporation.
  • 2. This form paragraph must be preceded by form paragraph 7.37 .

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7.37.03 Unpersuasive Argument: Hindsight Reasoning

In response to applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37 .

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

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

Examiner Note:

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

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7.37.05 Unpersuasive Argument: Nonanalogous Art

In response to applicant’s argument that [1] is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, [2].

Examiner Note:

  • 1. In bracket 1, enter the name of the reference which applicant alleges is nonanalogous.
  • 2. In bracket 2, explain why the reference is analogous art.
  • 3. This form paragraph must be preceded by form paragraph 7.37 .

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7.37.06 Unpersuasive Argument: Number of References

In response to applicant’s argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37 .

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7.37.07 Unpersuasive Argument: The Invention Obtains Result Not Contemplated by Prior Art

In response to applicant’s argument that [1], the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).

Examiner Note:

  • 1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of results not contemplated by the prior art.
  • 2. This form paragraph must be preceded by form paragraph 7.37 .

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7.37.08 Unpersuasive Argument: Arguing Limitations Which Are Not Claimed

In response to applicant’s argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., [1]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).

Examiner Note:

  • 1. In bracket 1, recite the features upon which applicant relies, but which are not recited in the claim(s).
  • 2. This form paragraph must be preceded by form paragraph 7.37 .

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7.37.09 Unpersuasive Argument: Intended Use

In response to applicant’s argument that [1], a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.

Examiner Note:

  • 1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of intended use.
  • 2. This form paragraph must be preceded by form paragraph 7.37 .

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7.37.10 Unpersuasive Argument: Limitation(s) in Preamble

Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) [1]. When reading the preamble in the context of the entire claim, the recitation [2] is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02 .

Examiner Note:

  • 1. In bracket 1, identify the claim(s) the applicant’s unpersuasive argument addresses.
  • 2. In bracket 2, briefly restate the recitation about which applicant is arguing.
  • 3. This form paragraph must be preceded by form paragraph 7.37 .

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7.37.11 Unpersuasive Argument: General Allegation of Patentability

Applicant’s arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37 .

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7.37.12 Unpersuasive Argument: Novelty Not Clearly Pointed Out

Applicant’s arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37 .

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7.37.13 Unpersuasive Argument: Arguing Against References Individually

In response to applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37 .

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7.38 Arguments Are Moot Because of New Ground of Rejection

Applicant’s arguments with respect to claim(s) [1] have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.

Examiner Note:

  • 1. In bracket 1, insert the claim number(s).
  • 2. The examiner must, however, address any arguments presented by the applicant which are still relevant to any references being applied.

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7.38.01 Arguments Persuasive, Previous Rejection/Objection Withdrawn

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

Examiner Note:

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

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7.38.02 Arguments Persuasive, New Ground(s) of Rejection

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

Examiner Note:

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

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7.39 Action Is Final

THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a) .

A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.

Examiner Note:

  • 1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).
  • 2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.

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7.39.01 Final Rejection, Options for Applicant, Pro Se

This action is a final rejection and 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.

If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.

The application will become abandoned unless a Notice of Appeal, an after final reply that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b) .

Examiner Note:

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

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7.40 Action Is Final, Necessitated by Amendment

Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a) . Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a) .

A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.

Examiner Note:

  • 1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).
  • 2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.

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7.40.01 Action Is Final, Necessitated by IDS With Fee

Applicant’s submission of an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) on [1] prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b) . Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a) .

A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.

Examiner Note:

  • 1. This form paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner that was not necessitated by amendment to the claims.
  • 2. In bracket 1, insert the filing date of the information disclosure statement containing the identification of the item of information used in the new ground of rejection.

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7.40.02.aia Action Is Final, Necessitated by Invoking the Joint Research Agreement Prior Art Exception Under 35 U.S.C. 102(b)(2)(C)

Applicant’s submission of the requirements for the joint research agreement prior art exception under 35 U.S.C. 102(b)(2)(C) on [1] prompted the new double patenting rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 2156 . 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 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 not be used, and a final rejection is improper, where there is another new ground of rejection introduced by the examiner that was not necessitated by amendment to 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) .
  • 3. In bracket 1, insert the filing date of the submission of the requirements for the joint research agreement prior art exception as defined under 35 U.S.C. 102(c) .

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7.40.02.fti Action Is Final, Necessitated by Invoking the Joint Research Agreement Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c)

Applicant’s submission of the requirements for the joint research agreement prior art disqualification under pre-AIA 35 U.S.C. 103(c) on [1] prompted the new double patenting rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a) . Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a) .

A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.

Examiner Note:

  • 1. This form paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner that was not necessitated by amendment to 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 .
  • 2. In bracket 1, insert the filing date of the submission of the requirements for the joint research agreement prior art disqualification under pre-AIA 35 U.S.C. 103(c) .

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7.41 Action Is Final, First Action

This is a [1] of applicant’s earlier Application No. [2]. All claims are drawn to the same invention claimed in the earlier application and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b) . Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a) .

A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.

Examiner Note:

  • 1. In bracket 1, insert either --continuation-- or --substitute--, as appropriate.
  • 2. If an amendment was refused entry in the parent case on the grounds that it raised new issues or new matter, this form paragraph cannot be used. See MPEP § 706.07(b) .
  • 3. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP-1 or 2 months).
  • 4. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.

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7.41.01.fti Transitional After Final Practice, First Submission (37 CFR 1.129(a))

This application is subject to the provisions of Public Law 103-465, effective June 8, 1995. Accordingly, since this application has been pending for at least two years as of June 8, 1995, taking into account any reference to an earlier-filed application under 35 U.S.C. 120 , 121 or 365(c) , applicant, under 37 CFR 1.129(a) , is entitled to have a first submission entered and considered on the merits if, prior to abandonment, the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 41.37 . Upon the timely filing of a first submission and the appropriate fee of $ [1] for a [2] entity under 37 CFR 1.17(r) , the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 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.

If applicant has filed multiple proposed amendments which, when entered, would conflict with one another, specific instructions for entry or non-entry of each such amendment should be provided upon payment of any fee under 37 CFR 1.17(r) .

Examiner Note:

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

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7.41.02.fti Transitional After Final Practice, Second Submission (37 CFR 1.129(a))

Since the fee set forth in 37 CFR 1.17(r) for a first submission subsequent to a final rejection has been previously paid, applicant, under 37 CFR 1.129(a) , is entitled to have a second submission entered and considered on the merits if, prior to abandonment, the second submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 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.

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7.42 Withdrawal of Finality of Last Office Action

Applicant’s request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.

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7.42.01.fti Withdrawal of Finality of Last Office Action - Transitional Application Under 37 CFR 1.129(a)

Since this application is eligible for the transitional procedure of 37 CFR 1.129(a) , and the fee set forth in 37 CFR 1.17(r) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.129(a) . Applicant’s [1] submission after final filed on [2] has been entered.

Examiner Note:

  • Insert --first-- or --second-- in bracket 1.

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7.42.02.fti Nonresponsive Submission Filed Under 37 CFR 1.129(a)

The timely submission under 37 CFR 1.129(a) filed on [1] is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of TWO MONTHS from the mailing date of this letter to submit a complete reply. This shortened statutory period supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a) . If a notice of appeal and the appeal fee set forth in 37 CFR 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 is construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a) . The appeal stands dismissed.

Examiner Note:

The reasons why the examiner considers the submission not to be fully responsive must be set forth in bracket 2.

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7.42.031.fti Action Is Final, Action Following Submission Under 37 CFR 1.129(a) Filed On or After June 8, 2005

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) .

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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7.42.04 Continued Examination under 37 CFR 1.114 after Final Rejection

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

Examiner Note:

  • 1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a final rejection.
  • 2. In bracket 1, insert the date(s) of receipt of the submission. The submission may be a previously filed amendment(s) after final rejection and/or an amendment accompanying the RCE. As set forth in 37 CFR 1.114 , a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If a reply to the Office action is outstanding the submission must meet the reply requirements of 37 CFR 1.111 . Use instead form paragraph 7.42.08 if the submission does not comply with 37 CFR 1.111 . Arguments which were previously submitted in a reply after final rejection, which were entered but not found persuasive, may be considered a submission under 37 CFR 1.114 if the arguments are responsive within the meaning of 37 CFR 1.111 to the outstanding Office action. If the last sentence of this form paragraph does not apply (e.g., the submission consists of previously entered arguments), it may be deleted or modified as necessary.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The RCE must be filed on or after May 29, 2000.

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

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

Examiner Note:

  • 1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a notice of allowance (or notice of allowability) or Office action under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
  • 2. In bracket 1 insert the date(s) of receipt of the submission. As set forth in 37 CFR 1.114 , a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The RCE must be filed on or after May 29, 2000.
  • 4. If the RCE was filed after the issue fee was paid, a petition under 37 CFR 1.313 to withdraw the application from issue must have been filed and granted.

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

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

Examiner Note:

  • 1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a Notice of Appeal or an appeal brief, but there has not been a decision on the appeal. Note that it is not necessary for an appeal brief to have been filed.
  • 2. As set forth in 37 CFR 1.114 , a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. The submission may consist of arguments in a previously filed appeal brief or reply brief, or an incorporation of such arguments in the transmittal letter or other paper accompanying the RCE.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The RCE must be filed on or after May 29, 2000.

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

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

Examiner Note:

  • 1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was timely filed after a decision by the Patent Trial and Appeal Board but before further appeal or civil action. Generally, the deadline for filing a notice of appeal to the Federal Circuit or for commencing a civil action is sixty-three (63) days after the date of the final Board decision. See 37 CFR 90.3 and MPEP § 1216 .
  • 2. A Patent Trial and Appeal Board decision in an application has res judicata effect and is the “law of the case” and is thus controlling in that application and any subsequent, related application. Therefore, a submission containing arguments without either an amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection. See MPEP § 2190 , subsection II.
  • 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.

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

Receipt is acknowledged of a request for continued examination under 37 CFR 1.114 , including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of 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 time period may be extended pursuant to 37 CFR 1.136(a) . 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. 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.

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

Receipt is acknowledged of a request for continued examination under 37 CFR 1.114 , including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of 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 shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.

Examiner Note:

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

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

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

Examiner Note:

  • 1. If a request for continued examination was filed after a Notice of Appeal or after an appeal brief, but before a decision on the appeal, and the request lacks the fee set forth in 37 CFR 1.17(e) or a submission or both, use this form paragraph to withdraw the appeal and hold the application abandoned if there are no allowed claims.
  • 2. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The RCE must be filed on or after May 29, 2000.

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

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

Examiner Note:

  • 1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or after an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
  • 2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims that have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01 .
  • 3. This form paragraph should be used with the mailing of a Notice of Allowability.
  • 4. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The RCE must be filed on or after May 29, 2000.

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

A request for continued examination under 37 CFR 1.114 , including the fee set forth in 37 CFR 1.17(e) , was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114 . The request, however, lacks the submission required by 37 CFR 1.114 . The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01 . Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire 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 but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
  • 2. In bracket 3, explain the formal matters that must be corrected.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The RCE must be filed on or after May 29, 2000.

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

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

Examiner Note:

  • 1. If a request for continued examination, including the submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required fee, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.
  • 2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01 .
  • 3. This form paragraph should be used with the mailing of a Notice of Allowability.
  • 4. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The RCE must be filed on or after May 29, 2000.

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

A request for continued examination under 37 CFR 1.114 , including a submission, was filed in this application on [1] after appeal to the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114 . The request, however, lacks the fee required by 37 CFR 1.17(e) . Therefore, the submission has not been entered. See 37 CFR 1.116(c) . The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01 . Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire 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 a submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the fee required by 37 CFR 1.17(e) , use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.
  • 2. In bracket 3, explain the formal matters that must be corrected.
  • 3. To be eligible for continued examination under 37 CFR 1.114 , the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The RCE must be filed on or after May 29, 2000.

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

The request for a continued prosecution application (CPA) under 37 CFR 1.53(d) filed on [1] is acknowledged. A CPA may only be filed in a design application filed under 35 U.S.C. chapter 16 . See 37 CFR 1.53(d)(1) . Since a CPA of this application is not permitted under 37 CFR 1.53(d)(1) , the improper request for a CPA is being treated as a request for continued examination of this application under 37 CFR 1.114 .

Examiner Note:

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

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

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

Examiner Note:

  • 1. This form paragraph should be used with the mailing of a Notice of Allowability or a Notice of Abandonment, as appropriate, if the time for seeking court review has passed without such review being sought, or it should be used on a PTOL-90 if time still remains.
  • 2. This form paragraph should not be used if the application is not a utility application or a plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . In that situation, a “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application.
  • 3. In general, if a submission was filed with the improper RCE in this situation, it should not be entered. An exception exists for an amendment that obviously places the application in condition for allowance. See MPEP § 1214.07 . The examiner should also include a statement as to whether or not any such submission has been entered (e.g., “The submission filed with the improper RCE has not been entered.”).

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7.43 Objection to Claims, Allowable Subject Matter

Claim [1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.

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

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

Examiner Note:

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

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

Claim [1] would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.

Examiner Note:

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

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7.43.03 Allowable Subject Matter, Formal Requirements Outstanding

As allowable subject matter has been indicated, applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a) .

Examiner Note:

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

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

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

[3].

Examiner Note:

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

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7.44 Claimed Subject Matter Not in Specification

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

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7.45 Improper Multiple Dependent Claims

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

Examiner Note:

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

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

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

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

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

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

Examiner Note:

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

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7.48.aia Failure To Present Claims for Interference

Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].

Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie , 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).

Examiner Note:

  • 1. This 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, and the application also contains or contained at any time (1) 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 (2) a specific reference under 35 U.S.C. 120 , 121 , or 365(c) to any patent or application that contains or contained at any time such a claim.
  • 2. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.
  • 3. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.
  • 4. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 102(g) / 103(a) , the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300 .
  • 5. This form paragraph must be preceded by form paragraph 7.14.aia , or by form paragraph 7.103 .

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7.48.fti Failure To Present Claims for Interference

Claim [1] rejected under pre-AIA 35 U.S.C. [2] based upon claim [3] of Patent No. [4].

Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie , 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).

Examiner Note:

  • 1. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.
  • 2. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.
  • 3. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under pre-AIA 35 U.S.C. 103(a) , the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300 .

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7.49 Rejection, Disclaimer, Failure To Appeal

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

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7.50 Claims Previously Allowed, Now Rejected, New Art

The indicated allowability of claim [1] is withdrawn in view of the newly discovered reference(s) to [2]. Rejection(s) based on the newly cited reference(s) follow.

Examiner Note:

  • 1. In bracket 2, insert the name(s) of the newly discovered reference.
  • 2. Any action including this form paragraph requires the signature of a Primary Examiner. MPEP § 1004 .

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7.51 Quayle Action

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

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

A shortened statutory period for reply to this action is 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 Office action beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).

Examiner Note:

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

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7.51.AE Quayle Action - Application Under Accelerated Examination

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

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

Since this application has been granted special status under the accelerated examination program, a shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter. 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. Explain the formal matters which must be corrected in bracket 1.
  • 2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d) .
  • 3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

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7.52 Suspension of Action, Awaiting New Reference

A reference relevant to the examination of this application may soon become available. Ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application.

Examiner Note:

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

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7.53 Suspension of Action, Possible Interference

All claims are allowable. However, due to a potential interference, ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application.

Examiner Note:

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

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7.54 Suspension of Action, Applicant’s Request

Pursuant to applicant’s request filed on [1], action by the Office is suspended on this application under 37 CFR 1.103(a) for a period of [2] months. At the end of this period, applicant is required to notify the examiner and request continuance of prosecution or a further suspension. See MPEP § 709 .

Examiner Note:

  • 1. Maximum period for suspension is 6 months.
  • 2. Only the Technology Center Director can grant second or subsequent suspensions. See MPEP § 1002.02(c) . Such approval must appear on the Office letter.

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

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

Examiner Note:

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

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7.54.02 Request for Termination of a Suspension of Action, Granted

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

Examiner Note:

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

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7.56 Request for Suspension, Denied, Outstanding Office Action

Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(a) , is denied as being improper. Action cannot be suspended in an application awaiting a reply by the applicant. See MPEP § 709 .

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

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

Examiner Note:

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

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

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

See MPEP § 709 .

Examiner Note:

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

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7.57.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective- Heading

The [1] filed on [2] under 37 CFR 1.131(a) has been considered but is ineffective to overcome the [3] reference.

Examiner Note:

  • 1. In bracket 1, insert either --affidavit-- or --declaration--.
  • 2. This form paragraph must be followed by one or more of form paragraphs 7.58.fti to 7.63.fti or a paragraph setting forth proper basis for the insufficiency, such as failure to establish acts performed in this country, or that the scope of the declaration or affidavit is not commensurate with the scope of the claim(s).

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

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

Examiner Note:

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

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7.59.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Reduction to Practice Before Reference Date

The evidence submitted is insufficient to establish a reduction to practice of the invention in this country or a NAFTA or WTO member country prior to the effective date of the [1] reference. [2]

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.57.fti .
  • 2. An explanation of the lack of showing of the alleged reduction to practice must be provided in bracket 2.

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7.60.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Reference Is a Statutory Bar

The [1] reference is a statutory bar under pre-AIA 35 U.S.C. 102(b) and thus cannot be overcome by an affidavit or declaration under 37 CFR 1.131(a) .

Examiner Note:

This form paragraph must be preceded by form paragraph 7.57.fti .

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7.61.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Conception

The evidence submitted is insufficient to establish a conception of the invention prior to the effective date of the [1] reference. While conception is the mental part of the inventive act, it must be capable of proof, such as by demonstrative evidence or by a complete disclosure to another. Conception is more than a vague idea of how to solve a problem. The requisite means themselves and their interaction must also be comprehended. See Mergenthaler v. Scudder, 1897 C.D. 724, 81 OG 1417 (D.C. Cir. 1897). [2]

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.57.fti .
  • 2. An explanation of the deficiency in the showing of conception must be presented in bracket 2.
  • 3. If the affidavit additionally fails to establish either diligence or a subsequent reduction to practice, this form paragraph should be followed by form paragraph 7.62.fti and/or 7.63.fti . If either diligence or a reduction to practice is established, a statement to that effect should follow this paragraph.

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7.62.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Diligence Lacking

The evidence submitted is insufficient to establish diligence from a date prior to the date of reduction to practice of the [1] reference to either a constructive reduction to practice or an actual reduction to practice. [2]

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.57.fti .
  • 2. If the affidavit additionally fails to establish conception, this paragraph must also be preceded by form paragraph 7.61.fti . If the affidavit establishes conception, a statement to that effect should be added to this paragraph.
  • 3. If the affidavit additionally fails to establish an alleged reduction to practice prior to the application filing date, this paragraph must be followed by form paragraph 7.63.fti . If such an alleged reduction to practice is established, a statement to that effect should be added to this paragraph.
  • 4. An explanation of the reasons for a holding of non-diligence must be provided in bracket 2.
  • 5. See MPEP § 715.07(a) which explains that diligence is not required after reduction to practice.

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7.63.fti Affidavit or Declaration Under 37 CFR 1.131(a): Ineffective, Insufficient Evidence of Actual Reduction to Practice

The evidence submitted is insufficient to establish the inventor’s alleged actual reduction to practice of the invention in this country or a NAFTA or WTO member country after the effective date of the [1] reference. [2].

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 7.57.fti .
  • 2. If the alleged reduction to practice is prior to the effective date of the reference, do not use this paragraph. See form paragraph 7.59.fti .
  • 3. If the affidavit additionally fails to establish either conception or diligence, form paragraphs 7.61.fti and/or 7.62.fti should precede this paragraph. If either conception or diligence is established, a statement to that effect should be included after this paragraph.
  • 4. An explanation of the lack of showing of the alleged reduction to practice must be given in bracket 2.

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7.64.fti Affidavit or Declaration Under 37 CFR 1.131(a): Effective To Overcome Reference

The [1] filed on [2] under 37 CFR 1.31(a) is sufficient to overcome the [3] reference.

Examiner Note:

  • 1. In bracket 1, insert either --affidavit-- or --declaration--.
  • 2. In bracket 2, insert the filing date of the affidavit or declaration.
  • 3. In bracket 3, insert the name of the reference.

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

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

Examiner Note:

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

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7.66 Affidavit or Declaration Under 37 CFR 1.132: Insufficient

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

Examiner Note:

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

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

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

Examiner Note:

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

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

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

Examiner Note:

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

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

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

Examiner Note:

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

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

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

Examiner Note:

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

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

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

Examiner Note:

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

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7.67.aia Affidavit or Declaration Under 37 CFR 1.130: Effective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)

The [1] under 37 CFR 1.130 [2] filed on [3] is sufficient to overcome the rejection of claim [4] based on [5]. [6]

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 either --affidavit-- or --declaration--.
  • 3. In bracket 2, insert either --(a)-- or --(b)--.
  • 4. In bracket 3, insert the filing date of the affidavit or declaration
  • 5. In bracket 4, insert the affected claim or claims.
  • 6. In bracket 5, insert the specific reference applied under 35 U.S.C. 102 or 103 that the affidavit or declaration has disqualified as prior art.
  • 7. In bracket 6, insert the explanation of how the affidavit/declaration provides evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1) or 102(b)(2) .

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7.68.aia Affidavit or Declaration Under 37 CFR 1.130: Ineffective to Disqualify a Reference as Prior Art Via 35 U.S.C. 102(b)

The [1] under 37 CFR 1.130 [2] filed [3] is insufficient to overcome the rejection of claim [4] based upon [5] as set forth in the last Office action because [6]:

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 either --affidavit-- or --declaration--.
  • 3. In bracket 2, insert either --(a)-- or --(b)--.
  • 4. In bracket 3, insert the filing date of the affidavit or declaration.
  • 5. In bracket 4, insert the affected claim or claims.
  • 6. In bracket 5, insert the rejection that has not been overcome, including statutory grounds.
  • 7. In bracket 6, insert the explanation of how the affidavit or declaration fails to provide evidence of reliance on one of the exception provisions of 35 U.S.C. 102(b)(1) or 102(b)(2) .

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

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

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

Examiner Note:

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

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

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

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

Any payment of fees via EFS-Web must be accompanied by selection of a proper fee code.  An improper fee code may potentially delay processing of the application.  Instructions on payment of fees via EFS-Web are available at   www.uspto.gov/learning-and-resources/fees-and-payment .

Examiner Note:

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

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7.81 Correction Letter Re Last Office Action

In response to applicant’s [1] regarding the last Office action, the following corrective action is taken.

The period for reply of [2] MONTHS set in said Office action is restarted to begin with the mailing date of this letter.

Examiner Note:

  • 1. In bracket 1, insert --telephone inquiry of _____-- or --communication dated ______--.
  • 2. In bracket 2, insert new period for reply.
  • 3. This form paragraph must be followed by one or more of form paragraphs 7.82 , 7.82.01 or 7.83 .
  • 4. Before restarting the period, the SPE should be consulted.

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7.82 Correction of Reference Citation

The reference [1] was not correctly cited in the last Office action. The correct citation is shown on the attached PTO-892.

Examiner Note:

  • 1. Every correction MUST be reflected on a corrected or new PTO-892.
  • 2. This form paragraph must follow form paragraph 7.81 .
  • 3. If a copy of the PTO-892 is being provided without correction, use form paragraph 7.83 instead of this form paragraph.
  • 4. Also use form paragraph 7.82.01 if reference copies are being supplied.

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7.82.01 Copy of Reference(s) Furnished

Copies of the following references not previously supplied are enclosed:

Examiner Note:

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

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

Immediately below this section is a citation to U.S. patent(s) and/or U.S. patent application publication(s).

The USPTO does not provide copies of U.S. patents or U.S. patent application publications with Office actions. Reviewing the U.S. patent(s) and/or U.S. patent application publication(s) cited below is important in deciding how to respond to the Office action. To obtain copies of the cited U.S. patent(s) and/or U.S. patent application publication(s), any of the following options may be used, free of charge:

  • 1) Patent Center (for all users if this application is published; for registered users associated with this application if this application has not published) — A link to Patent Center is available at www.uspto.gov/PatentCenter . To obtain the below cited U.S. patent(s) or U.S. patent application publication(s), open Patent Center. Enter the present application number (Application #) in the search box and then select the search button (magnifying glass). Once the “Application Data” is retrieved, select the “Display References” link on the left side of the screen. With the “U.S. Patent Documents” tab selected, select “View” next to the document which cites the desired U.S. patent(s) and/or U.S. patent application publication(s). Select the “PDF” link next to each desired U.S. patent and/or U.S. patent application publication to download the relevant document(s). Information on becoming a registered user can be found at www.uspto.gov/patents/apply/applying-online/getting-started-new-users . For additional information regarding Patent Center or becoming a registered user, contact the Electronic Business Center at 1-866-217-9197 (toll-free), 571-272-4100 (local), or by email at ebc@uspto.gov;
  • 2) Patent Public Search tool (for all users) — A link to the Patent Public Search tool is available at www.uspto.gov/PatentPublicSearch . To find a U.S. patent or U.S. patent application publication, open the Patent Public Search tool by selecting “Start search”. Type the U.S. patent or U.S. patent application publication number in the “Search” panel without any punctuation and followed by a “.pn.”. For example, for U.S. Patent No. 10,000,000 or U.S. Publ. No. 2016/0266243, one would type “10000000.pn.” or “20160266243.pn.”, respectively. Then select the “Search” button. The U.S. patent or U.S. patent application publication will be displayed in the “Document Viewer” panel in text view. To view the images of the U.S. patent or U.S. patent application publication, select the icon in the top left of the “Document Viewer” panel that looks like a camera on top of a “T”. The pages of the U.S. patent or U.S. patent application publication can be navigated by using the next page and previous page arrows in the top left of the “Document Viewer” panel. Additional information and support are available at the above website.
  • 3) Patent and Trademark Resource Center (PTRC) (for all users) — PTRCs are libraries located throughout the U.S. that provide specialized resources regarding patents and trademarks to the public. Information about PTRCs may be found at www.uspto.gov/PTRC ;
  • 4) Patent Full-Text Databases (for all users) — Patent Full Text Databases are available on the USPTO website at www.uspto.gov/SearchPatentFullText ;
  • 5) E-Patent Reference (for registered users associated with this application) — E-Patent Reference is provided through the USPTO Private Patent Application Information Retrieval system (Private PAIR) which is available at https://ppair-my.uspto.gov/pair/PrivatePair . Information on becoming a registered user can be found at www.uspto.gov/patents/apply/applying-online/getting-started-new-users . For additional information regarding E-Patent Reference or becoming a registered user, contact the Electronic Business Center at 1-866-217-9197 (toll-free), 571-272-4100 (local), or by email at ebc@uspto.gov; or
  • 6) commercial sources.

Copies of the U.S patent(s) and/or U.S. patent application publication(s) cited below may also be purchased for a fee preferably from the Patent and Trademark Copy Fulfillment Branch’s Certified Copy Center storefront at https://certifiedcopycenter.uspto.gov or by written request to Mail Stop Patent and Trademark Copy Fulfillment Branch, Director of the U.S. Patent & Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450. For information regarding purchasing copies of U.S. patents and U.S. patent application publications, contact the Patent and Trademark Copy Fulfillment Branch at 1-800-972-6382 (toll free), 571-272-3150 (local), or by email at dsd@uspto.gov.

Some of the above options will cause U.S. patent(s) and/or U.S. patent application publication(s) to be downloaded in Portable Document Format (PDF). The downloaded documents can be viewed and printed using most commercially available web browsers. Free PDF viewers are additionally available through online sources, such as Adobe Systems Incorporated at www.adobe.com/acrobat/pdf-reader.html .

For additional information or questions, contact the Pro Se Assistance Program at 1-866-767-3848 or by email at innovationdevelopment@uspto.gov or the Inventors Assistance Center at 1-800-786-9199 (toll free), 571-272-1000 (local), or 1-800-877-8339 (TDD/TTY).

Examiner Note:

  • 1. This form paragraph is recommended for use in Office actions citing U.S. patent(s) or U.S. patent application publication(s) when the applicant is not represented by a registered patent attorney or a registered patent agent.
  • 2. This form paragraph should be followed by a citation to a U.S. patent(s) and/or a U.S. patent application publication(s).

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7.83 Copy of Office Action Supplied

[1] of the last Office action is enclosed.

Examiner Note:

  • 1. In bracket 1, explain what is enclosed. For example:
    • “A corrected copy”
    • “A complete copy”
    • A specific page or pages, e.g., “Pages 3-5”
    • “A Notice of References Cited, Form PTO-892”
  • 2. This form paragraph should follow form paragraph 7.81 and may follow form paragraphs 7.82 and 7.82.01 .

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7.84 Amendment Is Non-Responsive to Interview

The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 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 ).

Examiner Note:

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

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7.84.01 Paper Is Unsigned

The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) 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 ).

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7.84.01.AE Paper Is Unsigned – Application Under Accelerated Examination

The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS within which to supply the omission or correction in order to avoid abandonment. 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. Examiner should first try to contact applicant by telephone and ask for a properly signed reply or ratification of the reply. If attempts to contact applicant are unsuccessful, examiner may use this form paragraph in a letter requiring a properly signed reply or ratification if the reply is to a non-final Office action.
  • 2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d) .
  • 3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

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

The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. 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. In bracket 2, insert the date of the interview.
  • 2. In bracket 3, explain the deficiencies.
  • 3. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d) .
  • 4. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

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7.85 Amendment Under 37 CFR 1.312 Entered

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

Examiner Note:

Use this form paragraph both for amendments under 37 CFR 1.312 that do not affect the scope of the claims (may be signed and approved by the primary examiner without forwarding to the supervisory patent examiner for approval) and for amendments being entered under 37 CFR 1.312 which do affect the scope of the claims (requires signature of the supervisory patent examiner). See MPEP § 714.16 .

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7.86 Amendment Under 37 CFR 1. 312 Entered in Part

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

Examiner Note:

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

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7.87 Amendment Under 37 CFR 1.312 Not Entered

The proposed amendment filed on [1] under 37 CFR 1.312 has not been entered. [2]

Examiner Note:

  • 1. Use this form paragraph to indicate that an amendment under 37 CFR 1.312 will not be entered. The signature of the supervisory patent examiner is required.
  • 2. The reasons for non-entry should be specified in bracket 2, for example:
  • --The amendment changes the scope of the claims.--

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7.90 Abandonment, Failure to Reply

This application is abandoned in view of applicant’s failure to submit a proper reply to the Office action mailed on [1] within the required period for reply.

Examiner Note:

  • 1. A letter of abandonment should not be mailed until after the period for requesting an extension of time under 37 CFR 1.136(a) has expired.
  • 2. In pro se cases see form paragraph 7.98.02 .

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7.91 Reply Is Not Fully Responsive, Extension of Time Suggested

The reply filed on [1] is not fully responsive to the prior Office action because: [2]. Since the period for reply set forth in the prior Office action has expired, this application will become abandoned unless applicant corrects the deficiency and obtains an extension of time under 37 CFR 1.136(a) .

The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. In no case may an applicant reply outside the SIX (6) MONTH statutory period or obtain an extension for more than FIVE (5) MONTHS beyond the date for reply set forth in an Office action. A fully responsive reply must be timely filed to avoid abandonment of this application.

Examiner Note:

  • 1. In bracket 2, set forth why the examiner considers there to be a failure to take “complete and proper action” within the statutory period.
  • 2. If the reply appears to be a bona fide attempt to respond with an inadvertent omission, do not use this form paragraph; instead use form paragraph 7.95 .

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7.95 Bona Fide, Non-Responsive Amendments

The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111 . Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 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 ).

Examiner Note:

This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91 .

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7.95.01 Lack of Arguments in Response

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

Examiner Note:

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

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

The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111 . Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. 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. This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91 .
  • 2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d) .
  • 3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

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7.96 Citation of Relevant Prior Art

The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. [1]

Examiner Note:

When such prior art is cited, its relevance should be explained in bracket 1 in accordance with MPEP § 707.05 .

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7.97 Claims Allowed

Claim [1] allowed.

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7.98 Reply Is Late, Extension of Time Suggested

Applicant’s reply was received in the Office on [1], which is after the expiration of the period for reply set in the last Office action mailed on [2]. This application will become abandoned unless applicant obtains an extension of time to reply to the last Office action under 37 CFR 1.136(a) . 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:

Since the provisions of 37 CFR 1.136(a) do not apply to reexamination proceedings or to litigation related reissue applications, do not use this form paragraph in these cases.

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

Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the above noted Office action. The application will become abandoned unless applicant obtains an extension of the period for reply set in the above noted Office action. An extension of the reply period may be obtained by filing a petition under 37 CFR 1.136(a) . The petition must be accompanied by the appropriate fee as set forth in 37 CFR 1.17(a) (copy of current fee schedule attached). The date on which the reply, the petition, and the fee have been filed is the date of the reply and also the date for purposes of determining the period of extension and the corresponding amount of the fee due. The expiration of the time period is determined by the amount of the fee paid. Although 37 CFR 1.136(a) provides for payment of up to five months of extension, applicant is advised that in no case can any extension carry the date for reply to an Office action beyond the maximum period of SIX MONTHS set by statute in 35 U.S.C. 133 .

Examiner Note:

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

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

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

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

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

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

By mail:

Mail Stop Petition

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX:

571-273-8300

Attn: Office of Petitions

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

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8.01 Election of Species; Species Claim(s) Present

This application contains claims directed to the following patentably distinct species [1]. The species are independent or distinct because [2]. In addition, these species are not obvious variants of each other based on the current record.

Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, [3] generic.

There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4].

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed ( 37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species , including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.

The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144 . If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.

Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.

Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141 .

Examiner Note:

  • 1. In bracket 1, identify the species and/or grouping(s) of patentably indistinct species from which an election is to be made. The species may be identified as the species of figures 1, 2, and 3, for example, or the species of examples I, II, and III, respectively. Where the election requirement identifies a grouping of patentably indistinct species, applicant should not be required to elect a specific species within that grouping.
  • 2. In bracket 2 insert the reason(s) why the species or grouping(s) of species are independent or distinct. See MPEP § 806.04(b) , § 806.04(f) and § 806.04(h) . For example, insert --the claims to the different species recite the mutually exclusive characteristics of such species--, and provide a description of the mutually exclusive characteristics of each species or grouping of species.
  • 3. In bracket 3 insert the appropriate generic claim information.
  • 4. In bracket 4 insert the applicable reason(s) why there is a serious search and/or examination burden as listed below.
    • -For a serious search burden list one or more of the following:
    • --the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification;
    • --the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and/or
    • --the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
    • -For a serious examination burden explain the reason, such as non-prior art issues under 35 U.S.C. 101 , pre-AIA 35 U.S.C. 112 , first paragraph, and/or 35 U.S.C. 112(a) are relevant to one species or grouping of patentably indistinct species that are not relevant to the other species or grouping(s) of patentably indistinct species.
  • 5. This form paragraph does not need to be followed by form paragraph 8.21 .

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8.02 Requiring an Election of Species; No Species Claim Present

Claim(s) [1] is/are generic to the following disclosed patentably distinct species: [2]. The species are independent or distinct because [3]. In addition, these species are not obvious variants of each other based on the current record.

Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.

There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: [4]

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species , including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.

The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144 . If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.

Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other species.

Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141 .

Examiner Note:

  • 1. This form paragraph should be used for the election of species requirement described in MPEP § 803.02 (Markush group) and MPEP § 808.01(a) where only generic claims are presented.
  • 2. In bracket 1, insert the claim number(s).
  • 3. In bracket 2, clearly identify the species and/or grouping(s) of patentably indistinct species from which an election is to be made. The species may be identified as the species of figures 1, 2, and 3, for example, or the species of examples I, II, and III, respectively. Where the election requirement identifies a grouping of patentably indistinct species, applicant should not be required to elect a specific species within that grouping.
  • 4. In bracket 3 insert the reason(s) why the species or groupings of species as disclosed are independent or distinct. See MPEP § 806.04(b) , § 806.04(f) and MPEP § 806.04(h) . For example, insert --as disclosed the different species have mutually exclusive characteristics for each identified species--, and provide a description of the mutually exclusive characteristics of each species or grouping of species.
  • 5. In bracket 4 insert the applicable reason(s) why there is a serious search and/or examination burden as listed below.
    • -For a serious search burden list one or more of the following:
    • --the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification;
    • --the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and/or
    • --the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
    • -For a serious examination burden explain the reason, such as non-prior art issues under 35 U.S.C. 101 , pre-AIA 35 U.S.C. 112 , first paragraph, and/or 35 U.S.C. 112(a) are relevant to one species or grouping of patentably indistinct species that are not relevant to the other species or grouping(s) of patentably indistinct species.
  • 6. This form paragraph does not need to be followed by form paragraph 8.21 .

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8.03 In Condition for Allowance, Non-elected Claims Withdrawn with Traverse

This application is in condition for allowance except for the presence of claim [1] directed to an invention non-elected with traverse in the reply filed on [2]. Applicant is given TWO MONTHS from the date of this letter to cancel the noted claims or take other appropriate action ( 37 CFR 1.144 ). Failure to take action during this period will be treated as authorization to cancel the noted claims by Examiner’s Amendment and pass the case to issue. Extensions of time under 37 CFR 1.136(a) will not be permitted since this application will be passed to issue.

The prosecution of this case is closed except for consideration of the above matter.

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8.04 Election by Original Presentation

Newly submitted claim [1] directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: [2]

Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03 .

To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.

Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.

Examiner Note:

  • 1. In bracket 2, insert the particular reason(s) why the newly submitted claim(s) is/are directed to independent or distinct invention(s).

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8.05 Claims Stand Withdrawn With Traverse

Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b) , as being drawn to a nonelected [2], there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on [3].

Examiner Note:

In bracket 2, insert --invention-- or --species--.

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8.06 Claims Stand Withdrawn Without Traverse

Claim [1] withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected [2], there being no allowable generic or linking claim. Election was made without traverse in the reply filed on [3].

Examiner Note:

In bracket 2, insert --invention--, or --species--.

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8.07 Ready for Allowance, Non-elected Claims Withdrawn Without Traverse

This application is in condition for allowance except for the presence of claim [1] directed to [2] nonelected without traverse. Accordingly, claim [3] been canceled.

Examiner Note:

In bracket 2, insert --an invention--, --inventions--, --a species--, or --species--.

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8.08 Restriction, Two Groupings

Restriction to one of the following inventions is required under 35 U.S.C. 121 :

I. Claim [1], drawn to [2], classified in [3].

II. Claim [4], drawn to [5], classified [6].

Examiner Note:

In brackets 3 and 6, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter CPC main group xxx, subgroup yyy.

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8.09 Restriction, 3rd Grouping

III. Claim [1], drawn to [2], classified in [3].

Examiner Note:

In bracket 3, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter CPC main group xxx, subgroup yyy.

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8.10 Restriction, 4th Grouping

IV. Claim [1], drawn to [2], classified in [3].

Examiner Note:

In bracket 3, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification. For example, if examined in CPC, enter main group xxx, subgroup yyy.

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8.11 Restriction, Additional Groupings

[1]. Claim [2], drawn to [3], classified in [4].

Examiner Note:

  • 1. In bracket 1, insert the appropriate roman numeral, e.g., --V--, --VI--, etc.
  • 2. In bracket 4, insert CPC subclass and main group/subgroup if classified in the Cooperative Patent Classification or USPC class and subclass if classified in the United States Patent Classification or. For example, if examined in CPC, enter CPC main group xxx, subgroup yyy.

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8.12 Restriction, Linking Claims

Claim [1] link(s) inventions [2] and [3]. The restriction requirement [4] the linked inventions is subject to the nonallowance of the linking claim(s), claim [5]. Upon the indication of allowability of the linking claim(s), the restriction requirement as to the linked inventions shall be withdrawn and any claim(s) depending from or otherwise requiring all the limitations of the allowable linking claim(s) will be rejoined and fully examined for patentability in accordance with 37 CFR 1.104. Claims that require all the limitations of an allowable linking claim will be entered as a matter of right if the amendment is presented prior to final rejection or allowance, whichever is earlier. Amendments submitted after final rejection are governed by 37 CFR 1.116 ; amendments submitted after allowance are governed by 37 CFR 1.312 .

Applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, the allowable linking claim, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Where a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 .

Examiner Note:

  • 1. This form paragraph must be included in any restriction requirement with at least one linking claim present.
  • 2. In bracket 4, insert either --between-- or --among--.
  • 3. In bracket 5, insert the claim number(s) of the linking claims.
  • 4. See related form paragraphs 8.45 , 8.46 and 8.47 .

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8.13 Distinctness (Heading)

The inventions are independent or distinct, each from the other because:

Examiner Note:

This form paragraph should be followed by one of form paragraphs 8.14 - 8.20.02 to show independence or distinctness.

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8.14 Intermediate-Final Product

Inventions [1] and [2] are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product and the species are patentably distinct ( MPEP § 806.05(j) ). In the instant case, the intermediate product is deemed to be useful as [3] and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both an intermediate and final product ( MPEP § 806.05(j) ).
  • 2. Conclude restriction requirement with form paragraph 8.21 .

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8.14.01 Distinct Products or Distinct Processes

Inventions [1] and [2] are directed to related [3]. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j) . In the instant case, the inventions as claimed [4]. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.

Examiner Note:

  • 1. This form paragraph may be used when claims are presented to two or more related product inventions, or two or more related process inventions, wherein the inventions as claimed are mutually exclusive, i.e., there is no product (or process) that would infringe both of the identified inventions. Use form paragraph 8.15 to restrict between combination(s) and subcombination(s).
  • 2. If a generic claim or claim linking multiple product inventions or multiple process inventions is present, see MPEP § 809 - § 809.03 .
  • 3. In bracket 3, insert --products -- or --processes--.
  • 4. In bracket 4, explain why the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect.
  • 5. Conclude restriction requirement with form paragraph 8.21 .

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8.15 Combination-Subcombination

Inventions [1] and [2] are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations ( MPEP § 806.05(c) ). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because [3]. The subcombination has separate utility such as [4].

The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104 . See MPEP § 821.04(a) . Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both combination(s) and subcombination(s) ( MPEP § 806.05(c) ).
  • 2. In bracket 3, specify the limitations of the claimed subcombination that are not required by the claimed combination, or the evidence that supports the conclusion that the combination does not rely upon the specific details of the subcombination for patentability. See MPEP § 806.05(c) , subsection II and § 806.05(d) .
  • 3. In bracket 4, suggest utility other than used in the combination.
  • 4. Conclude restriction requirement with form paragraph 8.21 .

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8.16 Subcombinations, Usable Together

Inventions [1] and [2] are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case subcombination [3] has separate utility such as [4]. See MPEP § 806.05(d) .

The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104 . See MPEP § 821.04(a) . Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to subcombinations usable together ( MPEP § 806.05(d) ).
  • 2. In bracket 3, insert the appropriate group number or identify the subcombination.
  • 3. In bracket 4, suggest utility other than with the other subcombination.
  • 4. Conclude restriction requirement with form paragraph 8.21 .

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8.17 Process and Apparatus

Inventions [1] and [2] are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another materially different process. ( MPEP § 806.05(e) ). In this case [3].

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both a process and apparatus for its practice ( MPEP § 806.05(e) ).
  • 2. In bracket 3, use one or more of the following reasons:
    • --the process as claimed can be practiced by another materially different apparatus such as......--,
    • --the process as claimed can be practiced by hand--,
    • --the apparatus as claimed can be used to practice another materially different process such as......--.
  • 3. A process can be practiced by hand if it can be performed without using any apparatus.
  • 4. Conclude restriction requirement with form paragraph 8.21 .
  • 5. All restriction requirements between a process and an apparatus (or product) for practicing the process should be followed by form paragraph 8.21.04 to notify the applicant that if an apparatus claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable apparatus may be rejoined.

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8.18 Product and Process of Making

Inventions [1] and [2] are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another materially different product or (2) that the product as claimed can be made by another materially different process ( MPEP § 806.05(f) ). In the instant case [3].

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both a product and the process of making the product ( MPEP § 806.05(f) ).
  • 2. In bracket 3, use one or more of the following reasons:
    • --the process as claimed can be used to make a materially different product such as......--,
    • --the product as claimed can be made by a materially different process such as......--.
  • 3. Conclude the basis for the restriction requirement with form paragraph 8.21 .
  • 4. All restriction requirements between a product and a process of making the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.

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8.19 Apparatus and Product Made

Inventions [1] and [2] are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another materially different apparatus ( MPEP § 806.05(g) ). In this case [3].

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both the apparatus and product made ( MPEP § 806.05(g) ).
  • 2. In bracket 3, use one or more of the following reasons:
    • --the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make a different product such as......--,
    • --the product can be made by a materially different apparatus such as......--.
  • 3. Conclude restriction requirement with form paragraph 8.21 .

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8.20 Product and Process of Using

Inventions [1] and [2] are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h) . In the instant case [3].

Examiner Note:

  • 1. This form paragraph is to be used when claims are presented to both the product and process of using the product ( MPEP § 806.05(h) . If claims to a process specially adapted for (i.e., not patentably distinct from) making the product are also presented such process of making claims should be grouped with the product invention. See MPEP § 806.05(i) .
  • 2. In bracket 3, use one or more of the following reasons:
    • --the process as claimed can be practiced with another materially different product such as......--,
    • --the product as claimed can be used in a materially different process such as......--.
  • 3. Conclude the basis for the restriction requirement with form paragraph 8.21 .
  • 4. All restriction requirements between a product and a process of using the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.

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8.20.02 Unrelated Inventions

Inventions [1] and [2] are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together, and they have different designs, modes of operation, and effects. ( MPEP § 802.01 and MPEP § 806.06 ). In the instant case, the different inventions [3] .

Examiner Note:

  • 1. This form paragraph is to be used only when claims are presented to unrelated inventions, e. g., a necktie and a locomotive bearing not disclosed as capable of use together.
  • 2. In bracket 3, insert reasons for concluding that the inventions are unrelated.
  • 3. This form paragraph must be followed by form paragraph 8.21 .

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8.20.03 Unrelated Product and Process Inventions

Inventions [1] and [2] are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06 . In the instant case, [3] .

Examiner Note:

  • 1. In bracket 3, insert reasons for concluding that the inventions are unrelated.
  • 2. This form paragraph must be followed by form paragraph 8.21 .

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8.21 To Establish Burden AND Requirement for Election and Means for Traversal for all Restrictions, other than an Election of Species

Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:

[1].

Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed ( 37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected invention.

The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144 . If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.

Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.

Examiner Note:

  • 1. THIS FORM PARAGRAPH MUST BE ADDED TO ALL RESTRICTION REQUIREMENTS other than those containing only election of species, with or without an action on the merits, or an those containing only an election by original presentation requirement. This form paragraph only needs to be used once, after all restriction requirements are set out.
  • 2. In bracket 1 insert the applicable reason(s) why there is a serious search and/or examination burden.
    • -For a serious search burden list one or more of the following:
    • --the inventions have acquired a separate status in the art in view of their different classification;
    • --the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
    • --the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
    • -For a serious examination burden explain the reason, such as non-prior art issues under 35 U.S.C. 101 , pre-AIA 35 U.S.C. 112 , first paragraph, and/or 35 U.S.C. 112(a) are relevant to one invention that are not relevant to the other invention(s).

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8.21.04 Notice of Potential Rejoinder of Process Claims

The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.

In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104 . Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101 , 102 , 103 and 112 . Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04 . Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.

Examiner Note:

This form paragraph should appear at the end of any requirement for restriction between a process and a product/apparatus for practicing the process (see form paragraph 8.17 ), a product/apparatus and a process of making the product/apparatus (see form paragraph 8.18 ) or between a product/apparatus and a process of using the product/apparatus (see form paragraph 8.20 ). See MPEP § 821.04 for rejoinder practice.

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8.23 Requirement, When Elected by Telephone

During a telephone conversation with [1] on [2] a provisional election was made [3] traverse to prosecute the invention of [4], claim [5]. Affirmation of this election must be made by applicant in replying to this Office action. Claim [6] withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being drawn to a non-elected invention.

Examiner Note:

  • 1. In bracket 3, insert --with-- or --without--, whichever is applicable.
  • 2. In bracket 4, insert either the elected group or species.
  • 3. An action on the merits of the claims to the elected invention should follow.

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8.23.01 Requirement, No Election by Telephone

A telephone call was made to [1] on [2] to request an oral election to the above restriction requirement, but did not result in an election being made.

Examiner Note:

  • 1. In bracket 1, insert the name of the applicant or attorney or agent contacted.
  • 2. In bracket 2, insert the date(s) of the telephone contact(s).
  • 3. This form paragraph should be used in all instances where a telephone election was attempted and the applicant’s representative did not or would not make an election.
  • 4. This form paragraph should not be used if no contact was made with applicant or applicant’s representative.

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8.23.02 Joint Inventors, Correction of Inventorship

Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i) .

Examiner Note:

This form paragraph must be included in all restriction requirements for applications having joint inventors.

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08.23.03 No Telephone Restriction Permitted, No Attorney or Agent of Record, Practitioner Included in ADS

Telephone restriction practice is not permitted because it appears applicant has legal representation but a valid power of attorney has not been filed in the present application. Providing representative information in an Application Data Sheet (ADS) does not constitute a power of attorney. See 37 CFR 1.76(b)(4) and MPEP § 408 . For information on appointing a power of attorney, see MPEP § 402.02 et seq.

Examiner Note:

  • This form paragraph should be used ONLY when a practitioner or customer number is identified in the ADS but no power of attorney is of record.

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8.25 Answer to Arguments With Traverse

Applicant’s election with traverse of [1] in the reply filed on [2] is acknowledged. The traversal is on the ground(s) that [3]. This is not found persuasive because [4].

The requirement is still deemed proper and is therefore made FINAL.

Examiner Note:

  • 1. In bracket 1, insert the invention elected.
  • 2. In bracket 3, insert in summary form, the ground(s) on which traversal is based.
  • 3. In bracket 4, insert the reasons why the traversal was not found to be persuasive.

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8.25.01 Election Without Traverse

Applicant’s election without traverse of [1] in the reply filed on [2] is acknowledged.

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8.25.02 Election Without Traverse Based on Incomplete Reply

Applicant’s election of [1] in the reply filed on [2] is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse ( MPEP § 818.01(a) ).

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8.26 Canceled Elected Claims, Non-Responsive

The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive ( MPEP § 821.03 ) and has not been entered. The remaining claims are not readable on the elected invention because [2].

Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD UNDER 37 CFR 1.136(a) ARE AVAILABLE 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:

  • This form paragraph should not be used for 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) . Form paragraph 8.26.AE should be used instead. See MPEP § 708.02 , subsection IX.

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8.26.AE Canceled Elected Claims, Non-Responsive – Application Under Accelerated Examination

The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive ( MPEP § 821.03 ) and has not been entered. The remaining claims are not readable on the elected invention because [2].

Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. This application has been granted special status under the accelerated examination program. Extensions of time under 37 CFR 1.136(a) are available. 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. This form paragraph should only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or on other grounds under 37 CFR 1.102(c)(2) or (d) .
  • 2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

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8.27.aia Different Inventors, Common Assignee, Same Invention, Examined under First Inventor To File (FITF) Provisions of the AIA

Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. Under 35 U.S.C. 101 , more than one patent may not be issued on the same invention.

The USPTO may not institute a derivation proceeding in the absence of a timely filed petition. The U.S. Patent and Trademark Office normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). The applicant should amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention.

Examiner Note:

  • 1. Form paragraph 7.03.aia must be included in any Office action that contains this paragraph.
  • 2. In bracket 3, insert the U.S. patent number or the copending application number.
  • 3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.aia .
  • 4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32 .
  • 5. If the commonly assigned application or patent is prior art under 35 U.S.C. 102(a)(2) , a rejection may also be made using form paragraph 7.15.01.aia or 7.15.02.aia .

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8.27.fti Different Inventors, Common Assignee, Same Invention, Examined Under Pre-AIA (First to Invent) Provisions

Claim [1] directed to the same invention as that of claim [2] of commonly assigned [3]. The issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) of this single invention must be resolved.

The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application having common ownership (see MPEP Chapter 2300 ). Either the applicant must amend or cancel claims such that the reference and the instant application no longer contain claims directed to the same invention, or the assignee must state which entity is the prior inventor of the commonly claimed subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under pre-AIA 35 U.S.C. 102(f) or (g) and not an extension of monopoly.

Failure to comply with this requirement will result in a holding of abandonment of this application.

Examiner Note:

  • 1. Form paragraph 7.03.fti must be included in any Office action that contains this paragraph.
  • 2. In bracket 3, insert the U.S. patent number or the copending application number.
  • 3. The claims listed in brackets 1 and 2 must be for the same invention. If one invention would have been obvious in view of the other, do not use this form paragraph; see form paragraph 8.28.fti .
  • 4. A provisional or actual statutory double patenting rejection should also be made using form paragraph 8.31 or 8.32 .
  • 5. If the commonly assigned application or patent is prior art under pre-AIA 35 U.S.C. 102(e) , a rejection may also be made using form paragraph 7.15.01.fti or 7.15.02.fti .

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8.28.01.aia Advisory Information Relating to Form Paragraph 8.28.aia

The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned [1], discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.

In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.

A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.

Examiner Note:

This form paragraph should follow form paragraph 8.28.aia and should only be used ONCE in an Office action.

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8.28.01.fti Advisory Information Relating to Form Paragraph 8.28.fti

The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP Chapter 2300 ). Commonly assigned [1], discussed above, may form the basis for a rejection of the noted claims under pre-AIA 35 U.S.C. 102 or 103(a) if the commonly assigned case qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) and the patentably indistinct inventions were not commonly owned at the time the claimed invention in this application was made. In order for the examiner to resolve this issue the assignee can, under pre-AIA 35 U.S.C. 103(c) and 37 CFR 1.78(g) , either show that the patentably indistinct inventions were commonly owned at the time the claimed invention in this application was made, or name the prior inventor of the subject matter at issue.

A showing that the inventions were commonly owned at the time the claimed invention in this application was made will preclude a rejection under pre-AIA 35 U.S.C. 103(a) based upon the commonly assigned application that qualifies as a reference under pre-AIA 35 U.S.C. 102(e), (f) or (g) . Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.

Examiner Note:

This form paragraph should follow form paragraph 8.28.fti and should only be used ONCE in an Office action.

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8.28.aia Different Inventors, Common Assignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership Not Later Than the Effective Filing Date of the Claimed Invention, Examined Under First Inventor to File (FITF) Provisions of the AIA

Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].

Examiner Note:

  • 1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but it has not been established that they were commonly owned or deemed to have been commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention. See 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) .
  • 2. A rejection under 35 U.S.C. 102(a)(2) / 103 using form paragraph 7.21.aia , 7.21.01.aia or 7.21.02.aia also should be made, as appropriate.
  • 3. In bracket 3, insert the number of the patent or application that includes claims patentably indistinct from those in the present application.
  • 4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37 .
  • 5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.
  • 6. Form paragraph 8.28.01.aia MUST follow this paragraph.

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8.28.fti Different Inventors, Common Assignee, Inventions Not Patentably Distinct, No Evidence of Common Ownership at Time of Invention, Examined Under Pre-AIA (First To Invent) Provisions

Claim [1] directed to an invention not patentably distinct from claim [2] of commonly assigned [3]. Specifically, [4].

Examiner Note:

  • 1. This form paragraph should be used when the application being examined is commonly assigned with an application or patent that includes claims patentably indistinct from those in the present application, but there is no indication that they were commonly assigned at the time the invention was made.
  • 2. A rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) using form paragraph 7.21.fti , 7.21.01.fti or 7.21.02.fti also should be made, as appropriate. Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 3. In bracket 3, insert the number of the reference patent or application.
  • 4. A nonstatutory double patenting rejection should also be included in the action using one of form paragraphs 8.34 to 8.37 .
  • 5. In bracket 4, explain why the claims in the present application and the reference patent or application are patentably indistinct.
  • 6. Form paragraph 8.28.01.fti MUST follow this paragraph.

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8.29 Patentably Indistinct Claims, Copending Applications

Claim [1] of this application is patentably indistinct from claim [2] of Application No. [3]. Pursuant to 37 CFR 1.78(f) , when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822 .

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8.30 35 U.S.C. 101, Statutory Basis for Double Patenting “Heading” Only

A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).

A statutory type ( 35 U.S.C. 101 ) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101 .

Examiner Note:

The above form paragraph must be used as a heading for all subsequent double patenting rejections of the statutory (same invention) type using either of form paragraphs 8.31 or 8.32 .

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8.31 Rejection, 35 U.S.C. 101, Double Patenting

Claim [1] is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of prior U.S. Patent No. [3]. This is a statutory double patenting rejection.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 8.30 and is used only for double patenting rejections of the same invention claimed in an earlier patent; that is, the “scope” of the inventions claimed is identical.
  • 2. If the claims directed to the same invention are in another copending application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.32 .
  • 3. Do not use this form paragraph for nonstatutory-type double patenting rejections. If nonstatutory type, use appropriate form paragraphs 8.33 to 8.39 .
  • 4. This form paragraph may be used where the patent and the application under examination:
    • name the same inventive entity, or
    • name different inventive entities but are commonly assigned, or
    • are not commonly assigned but name at least one common (joint) inventor, or
    • are filed by a common applicant ( 35 U.S.C. 118 ), or
    • claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) for applications examined under pre-AIA (first to invent) law, or
    • claim patentably indistinct inventions and the claimed invention and the patent were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
  • 5. In bracket 3, insert the number of the patent.
  • 6. For applications being examined under pre-AIA (first to invent) law : If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.
  • 7. If evidence is of record to indicate that the patent is prior art under either pre-AIA 35 U.S.C. 102(f) or (g) , a rejection should also be made using form paragraphs 7.15.fti and/or 7.19.fti , if applicable, in addition to this double patenting rejection.
  • 8. For applications being examined under pre-AIA (first to invent) law : If the patent is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention, a rejection should additionally be made using form paragraph 7.15.02.fti .
  • 9. For applications being examined under the first inventor to file (FITF) provisions of the AIA : If the patent is to a different inventive entity and is commonly assigned with the application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the application no longer contains claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) should also be made if appropriate.

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8.32 Provisional Rejection, 35 U.S.C. 101, Double Patenting

Claim [1] provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim [2] of copending Application No. [3] (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 8.30 and is used only for double patenting rejections of the same invention claimed in another copending application; that is, the scope of the claimed inventions is identical.
  • 2. If the claims directed to the same invention are in an issued patent, do not use this paragraph. See form paragraph 8.31 .
  • 3. Do not use this paragraph for nonstatutory-type double patenting rejections. See form paragraphs 8.33 to 8.39 .
  • 4. This form paragraph may be used where the reference application and the application under examination:
    • name the same inventive entity, or
    • name different inventive entities but are commonly assigned, or
    • are not commonly assigned but name at least one common (joint) inventor (unless disclosure of the reference application would violate the duty of the USPTO to keep the reference application confidential under 35 U.S.C. 122 e.g., the applicant or assignee of record has specifically requested that the inventor not be permitted to access the record in the manner provided in MPEP § 106 ), or
    • are filed by a common applicant ( 35 U.S.C. 118 ), or
    • claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) , for applications examined under pre-AIA (first to invent) law, or
    • claim patentably indistinct inventions and the claimed invention and the reference application were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
  • 5. Form paragraph 8.28.fti or 8.28.aia , as appropriate, should also be used.
  • 6. In bracket 3, insert the number of the reference application.
  • 7. A provisional double patenting rejection should also be made in the reference application.
  • 8. For applications being examined under pre-AIA (first to invent) law : If the reference application is by a different inventive entity and is commonly assigned, form paragraph 8.27.fti should additionally be used to require the assignee to name the first inventor.
  • 9. If evidence is also of record to show that either application is prior art unto the other under pre-AIA 35 U.S.C. 102(f) or (g) , a rejection should also be made in the reference application using form paragraphs 7.15.fti and/or 7.19.fti , if applicable, in addition to this provisional double patenting rejection.
  • 10. For applications being examined under pre-AIA (first to invent) law : If the reference application is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention, a provisional pre-AIA 35 U.S.C. 102(e) rejection should additionally be made using form paragraph 7.15.01.fti . If the reference application has been published, use form paragraph 7.15.02.fti instead.
  • 11. For applications being examined under first inventor to file (FITF) provisions of the AIA : If the reference application is to a different inventive entity and is commonly assigned with the instant application, form paragraph 8.27.aia should additionally be used to request that the applicant take action to amend or cancel claims such that the applications no longer contain claims directed to the same invention. A rejection under 35 U.S.C. 102(a)(2) should also be made if appropriate.

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8.33 Basis for Nonstatutory Double Patenting, “Heading” Only

The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159 . See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b) .

The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804 , subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a) . For a reply to final Office action, see 37 CFR 1.113(c) . A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13 .

The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/ patent/patents-forms . The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/ patents/apply/applying-online/eterminal-disclaimer .

Examiner Note:

This form paragraph is to be used as a heading before a nonstatutory double patenting rejection using any of form paragraphs 8.34 - 8.39 . Although nonstatutory double patenting is sometimes called obviousness-type double patenting (“ODP”), an obviousness analysis is required only if the examined application claim(s) is not anticipated by the reference claim(s).

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8.34 Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)

Claim [1] rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of U.S. Patent No. [3]. Although the claims at issue are not identical, they are not patentably distinct from each other because [4].

Examiner Note:

  • 1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
  • 2. This form paragraph is used for nonstatutory double patenting rejections based upon a patent.
  • 3. If the nonstatutory double patenting rejection is based upon another application, do not use this form paragraph. A provisional double patenting rejection should be made using form paragraph 8.33 and either form paragraph 8.35 or 8.37 .
  • 4. This form paragraph may be used where the patent and the application under examination:
    • name the same inventive entity, or
    • name different inventive entities but are commonly assigned, or
    • are not commonly assigned but name at least one common (joint) inventor, or
    • are filed by a common applicant ( 35 U.S.C. 118 ), or
    • claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103 , for applications examined under pre-AIA (first to invent) law, or
    • claim patentably indistinct inventions and the claimed invention and the patent were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
  • 5. In bracket 3, insert the number of the patent.
  • 6. In bracket 4, provide appropriate explanation for anticipation or rationale for obviousness of the claims being rejected over the claims of the cited patent.
  • 7. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
  • 8. For applications being examined under pre-AIA (first to invent) law : If the patent is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention, a rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) may be made using form paragraph 7.21.02.fti . Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 9. For applications being examined under the first inventor to file (FITF) provisions of the AIA : A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

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8.35 Provisional Rejection, Nonstatutory Double Patenting - No Secondary Reference(s)

Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because [4].

This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.

Examiner Note:

  • 1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
  • 2. This form paragraph should be used when the patentably indistinct claims are in another copending application.
  • 3. If the patentably indistinct claims are in a patent, do not use this form paragraph. Use form paragraphs 8.33 and 8.34 .
  • 4. This form paragraph may be used where the reference application and the application under examination:
    • name the same inventive entity, or
    • name different inventive entities but are commonly assigned, or
    • are not commonly assigned but name at least one common (joint) inventor (unless disclosure of the reference application would violate the duty of the USPTO to keep the reference application confidential under 35 U.S.C. 122 e.g., the applicant or assignee of record has specifically requested that the inventor not be permitted to access the record in the manner provided in MPEP § 106 ), or
    • are filed by a common applicant ( 35 U.S.C. 118 ), or
    • claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) , for applications examined under pre-AIA (first to invent) law, or
    • claim patentably indistinct inventions and the claimed invention and the reference application were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
  • 5. If the reference application is currently commonly assigned but the file does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g) .
  • 6. In bracket 3, insert the number of the reference application.
  • 7. A provisional nonstatutory double patenting rejection should also be made in the reference application.
  • 8. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
  • 9. For applications being examined under pre-AIA (first to invent) law : If the reference application is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention, use form paragraph 7.21.01.fti to additionally make a provisional rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) . Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the reference application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 10. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.
  • 11. For applications being examined under the first inventor to file (FITF) provisions of the AIA : A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
  • 12. In bracket 4, provide appropriate explanation for anticipation or rationale for obviousness of the claims being rejected over the claims of the cited application.

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8.36 Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)

Claim [1] rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim [2] of U.S. Patent No. [3] in view of [4]. [5]

Examiner Note:

  • 1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
  • 2. This form paragraph is used for nonstatutory double patenting rejections where the primary reference is a patent that includes claims patentably indistinct from those in the application under examination.
  • 3. If the nonstatutory double patenting rejection is based on another application, do not use this form paragraph. A provisional nonstatutory double patenting rejection should be made using form paragraphs 8.33 and either 8.35 or 8.37 .
  • 4. This form paragraph may be used where the patentably indistinct invention is claimed in a patent where the patent and the application under examination:
    • name the same inventive entity, or
    • name different inventive entities but are commonly assigned, or
    • are not commonly assigned but have at least one common (joint) inventor, or
    • are filed by a common applicant ( 35 U.S.C. 118 ), or
    • claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) , for applications examined under pre-AIA (first to invent) law, or
    • claim patentably indistinct inventions and the claimed invention and the patent were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
  • 5. In bracket 3, insert the number of the primary reference patent.
  • 6. In bracket 4, insert the secondary reference, which must be prior art under 35 U.S.C. 102 or pre-AIA 35 U.S.C. 102 , as applicable.
  • 7. In bracket 5, insert an explanation of the obviousness analysis.
  • 8. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
  • 9. For applications being examined under pre-AIA (first to invent) law : If the primary reference patent is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention, a rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) may be made using form paragraph 7.21.02.fti. Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 10. For applications being examined under first inventor to file (FITF) provisions of the AIA : A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

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8.37 Provisional Rejection, Nonstatutory Double Patenting - With Secondary Reference(s)

Claim [1] provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim [2] of copending Application No. [3] in view of [4]. [5]

This is a provisional nonstatutory double patenting rejection.

Examiner Note:

  • 1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
  • 2. This form paragraph is used for nonstatutory double patenting rejections requiring an obviousness analysis where the primary reference is a copending application.
  • 3. If the patentably indistinct claims are in a patent, do not use this form paragraph, use form paragraph 8.36 .
  • 4. This form paragraph may be used where the patentably indistinct claims are in a copending application where the copending application and the application under examination:
    • name the same inventive entity, or
    • name different inventive entities but are commonly assigned, or
    • are not commonly assigned but name at least one common (joint) inventor (unless disclosure of the reference application would violate the duty of the USPTO to keep the reference application confidential under 35 U.S.C. 122 e.g., the applicant or assignee of record has specifically requested that the inventor not be permitted to access the record in the manner provided in MPEP § 106 ), or
    • are filed by a common applicant ( 35 U.S.C. 118 ), or
    • claim patentably indistinct inventions made as a result of activities undertaken within the scope of a joint research agreement under pre-AIA 35 U.S.C. 103(c) , for applications examined under pre-AIA (first to invent) law, or
    • claim patentably indistinct inventions and the claimed invention and the primary reference application were commonly owned under 35 U.S.C. 102(b)(2)(C) or deemed to be commonly owned under 35 U.S.C. 102(c) not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention, for applications examined under the first inventor to file (FITF) provisions of the AIA.
  • 5. If the application under examination and primary reference application are currently commonly assigned but the application under examination does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to also resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g) .
  • 6. For applications being examined under first inventor to file (FITF) provisions of the AIA : If the primary reference application is to a different inventive entity and is commonly assigned with the application under examination, form paragraph 8.28.aia should additionally be used if there is no evidence of common ownership not later than the effective filing date of the invention claimed in the examined application. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
  • 7. In bracket 3, insert the number of the primary reference application.
  • 8. In bracket 4, insert the secondary reference, which must be prior art under 35 U.S.C. 102 or pre-AIA 35 U.S.C. 102 , as applicable.
  • 9. In bracket 5, insert an explanation of the obviousness analysis.
  • 10. A provisional nonstatutory double patenting rejection should also be made in the primary reference application.
  • 11. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
  • 12. For applications being examined under pre-AIA (first to invent) law : If the reference application is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) . Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the primary reference application is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 13. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.

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8.38 Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With a Patent

Claim [1] rejected on the ground of nonstatutory double patenting over claim [2] of U.S. Patent No. [3] since the claims, if allowed, would improperly extend the “right to exclude” already granted in the patent.

The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: [4]

Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804 .

Examiner Note:

  • 1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
  • 2. This form paragraph should only be used where approval from the TC Director to make a nonstatutory double patenting rejection based on In re Schneller has been obtained.
  • 3. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one claim of, an issued U.S. Patent which is commonly owned or where there is at least one common (joint) inventor or a common applicant ( 35 U.S.C. 118 ).
  • 4. In bracket 3, insert the number of the patent.
  • 5. In bracket 4, insert a description of the subject matter being claimed which is covered in the patent.
  • 6. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
  • 7. For applications being examined under pre-AIA (first to invent) law : If the patent is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention, a rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) may be made using form paragraph 7.21.02.fti . Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the patent is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art in a pre-AIA 35 U.S.C. 103(a) rejection.
  • 8. For applications being examined under first inventor to file (FITF) provisions of the AIA : A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.

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8.39 Double Patenting - Nonstatutory (Based Solely on Improper Timewise Extension of Patent Rights) With Another Application

Claim [1] provisionally rejected on the ground of nonstatutory double patenting over claim [2] of copending Application No. [3]. This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.

The subject matter claimed in the instant application is fully disclosed in the referenced copending application and would be covered by any patent granted on that copending application since the referenced copending application and the instant application are claiming common subject matter, as follows: [4]

Furthermore, there is no apparent reason why applicant would be prevented from presenting claims corresponding to those of the instant application in the other copending application. See In re Schneller , 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804 .

Examiner Note:

  • 1. Form paragraph 8.33 must precede any one of form paragraphs 8.34 to 8.39 and must be used only ONCE in an Office action.
  • 2. This form paragraph should only be used where approval from the TC Director to make a nonstatutory double patenting rejection based on In re Schneller has been obtained.
  • 3. Use this form paragraph only when the subject matter of the claim(s) is fully disclosed in, and covered by at least one claim of, another copending application (reference application) which is commonly owned, or where there is at least one common (joint) inventor or a common applicant ( 35 U.S.C. 118 ).
  • 4. In bracket 3, insert the number of the reference application.
  • 5. In bracket 4, insert a description of the subject matter being claimed which is covered in the reference application.
  • 6. If the reference application is currently commonly assigned but the prosecution file of the application under examination does not establish that the patentably indistinct inventions were commonly owned at the time the later invention was made, form paragraph 8.28.fti may be used in addition to this form paragraph to resolve any issues relating to priority under pre-AIA 35 U.S.C. 102(f) and/or (g) .
  • 7. For applications being examined under first inventor to file (FITF) provisions of the AIA : If the reference application is to a different inventive entity and is commonly assigned with the application under examination, form paragraph 8.28.aia should additionally be used if there is no evidence of common ownership not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention. A rejection under 35 U.S.C. 102(a)(2) or 35 U.S.C. 103 should also be made if appropriate.
  • 8. A provisional double patenting rejection should also be made in the reference application.
  • 9. A rejection should additionally be made under pre-AIA 35 U.S.C. 103(a) using form paragraph 7.21.fti if:
  • 10. For applications being examined under pre-AIA (first to invent) law : If the reference application is prior art under pre-AIA 35 U.S.C. 102(e) to the claimed invention, use form paragraph 7.21.01.fti to additionally make a rejection under pre-AIA 35 U.S.C. 102(e) / 103(a) in the application with the later effective U.S. filing date. Rejections under pre-AIA 35 U.S.C. 102(e) / 103(a) should not be made or maintained if the reference application 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.
  • 11. See MPEP § 1490 for guidance regarding terminal disclaimers and withdrawal of nonstatutory double patenting rejections when these are the only rejections remaining. Note especially that priority or benefit claims under 35 U.S.C. 119(a) and (e) are not taken into account in determining which is the earlier-filed application for double patenting purposes.

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8.40 Improper Markush Grouping Rejection

Claim [1] rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117 .

The Markush grouping of [2] is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: [3].

To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.

Examiner Note:

  • 1. In bracket 1, insert claim number(s) and “is” or “are” as appropriate.
  • 2. In bracket 2, insert a description of the Markush group(s) that are improper.
  • 3. In bracket 3, explain why these alternatives do not meet the requirements for a proper Markush grouping, i.e., why the alternatives are not all members of the same recognized physical or chemical class or the same art-recognized class; and/or why the members are not considered to be functionally equivalent and have a common use; and/or why (if the Markush grouping describes alternative chemical compounds), the alternatives do not share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117 .
  • 4. If an election of species requirement is appropriate, this form paragraph should only be used after applicant has made an election.

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8.41 Transitional Restriction or Election of Species Requirement – pre-GATT Filing

This application is subject to the transitional restriction provisions of Public Law 103-465, which became effective on June 8, 1995, because:

  • 1. the application was filed on or before June 8, 1995, and has an effective U.S. filing date of June 8, 1992, or earlier;
  • 2. a requirement for restriction was not made in the present or a parent application prior to April 8, 1995; and
  • 3. the examiner was not prevented from making a requirement for restriction in the present or a parent application prior to April 8, 1995, due to actions by the applicant.

The transitional restriction provisions permit applicant to have more than one independent and distinct invention examined in the same application by paying a fee for each invention in excess of one.

Final rules concerning the transition restriction provisions were published in the Federal Register at 60 FR 20195 (April 25, 1995) and in the Official Gazette at 1174 OG 15 (May 2, 1995). The final rules at 37 CFR 1.17(s) include the fee amount required to be paid for each additional invention as set forth in the following requirement for restriction. See the current fee schedule for the proper amount of the fee.

Applicant must either: (1) elect the invention or inventions to be searched and examined and pay the fee set forth in 37 CFR 1.17(s) for each independent and distinct invention in excess of one which applicant elects; or (2) file a petition under 37 CFR 1.129(b) traversing the requirement.

Examiner Note:

  • 1. This form paragraph should be used in all restriction or election of species requirements made in applications subject to the transition restriction provisions set forth in 37 CFR 1.129(b) . The procedure is NOT applicable to any design or reissue application.

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8.42 Allowable Product, Rejoinder of at Least One Process Claim, Less Than All Claims

Claim [1] directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b) , claim [2], directed to the process of making or using the allowable product, previously withdrawn from consideration as a result of a restriction requirement, [3] hereby rejoined and fully examined for patentability under 37 CFR 1.104 . Claim [4], directed to the invention(s) of [5] require all the limitations of an allowable product claim, and [6] NOT been rejoined.

Because a claimed invention previously withdrawn from consideration under 37 CFR 1.142 has been rejoined, the restriction requirement [7] groups [8] as set forth in the Office action mailed on [9] is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 .

Examiner Note:

  • 1. If ALL previously withdrawn process claims are being rejoined, then form paragraph 8.43 should be used instead of this form paragraph. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined. See MPEP § 821.04(b) .
  • 2. In bracket 1, insert the claim number(s) of the allowable product claims followed by either -- is-- or -- are--.
  • 3. In bracket 2, insert the claim number(s) of ALL the rejoined process claims.
  • 4. In bracket 3, insert either --is-- or --are--.
  • 5. In bracket 4, insert the number(s) of the claims NOT being rejoined followed by either -- is-- or -- are--.
  • 6. In bracket 5, insert the group(s) or subject matter of the invention(s) to which the claims NOT being rejoined are directed, followed by either --, do not all-- or --, does not--.
  • 7. In bracket 6, insert --has-- or --have--.
  • 8. In bracket 7, insert either -- among -- or -- between--.
  • 9. In bracket 8, insert group numbers of the elected product and rejoined process.

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8.43 Allowable Product, Rejoinder of All Previously Withdrawn Process Claims

Claim [1] directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b) , claim [2] , directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, [3] hereby rejoined and fully examined for patentability under 37 CFR 1.104.

Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on [4] is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler , 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 .

Examiner Note:

  • 1. If LESS THAN ALL previously withdrawn claims are being rejoined, then form paragraph 8.42 should be used instead of this form paragraph. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined. See MPEP § 821.04(b) .
  • 2. In bracket 1, insert the claim number(s) of the allowable product claim(s) followed by either -- is-- or -- are--.
  • 3. In bracket 2, insert the claim number(s) of the process claim(s) previously withdrawn from consideration.
  • 4. In bracket 3, insert either --is-- or --are--.
  • 5. If rejoinder occurs after the first Office action on the merits and if any of the rejoined claims are unpatentable, e.g., if a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph is made, then the next Office action may be made final if proper under MPEP § 706.07(a) .

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8.45 Elected Invention Allowable, Rejoinder of All Previously Withdrawn Claims

Claim [1] allowable. Claim [2 ], previously withdrawn from consideration as a result of a restriction requirement, [3] all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a) , the restriction requirement [4] inventions [5], as set forth in the Office action mailed on [6], is hereby withdrawn and claim [7] hereby rejoined and fully examined for patentability under 37 CFR 1.104 . In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 .

Examiner Note:

  • 1. Where the elected invention is directed to a product and previously nonelected process claims are rejoined, form paragraph 8.43 should be used instead of this paragraph.
  • 2. This form paragraph should be used whenever ALL previously withdrawn claims depend from or otherwise require all the limitations of an allowable claim (e.g., a generic claim, linking claim, or subcombination claim) and wherein the non-elected claims have NOT been canceled. Use form paragraph 8.46 , 8.47 , or 8.47.01 as appropriate where the nonelected claims HAVE BEEN canceled. Use form paragraph 8.50 when the elected invention is allowable and the restriction requirement is withdrawn in part. Use form paragraph 8.49 when the elected invention is allowable and the restriction requirement is maintained without modification.
  • 3. In bracket 2, insert the number(s) of the rejoined claim(s) followed by either -- is-- or -- are--.
  • 4. In bracket 3 insert-- requires-- or -- require--.
  • 5. In bracket 4, insert either --between-- or --among--.
  • 6. In bracket 5, insert the group(s), species, or subject matter of the invention(s) being rejoined.
  • 7. In bracket 7, insert the number(s) of the rejoined claim(s) followed by either --is-- or --are--.

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8.46 Elected Invention Allowable, Non-elected Claims Canceled, Other Issues Remain Outstanding

Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a) . The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim . Specifically, the restriction requirement of [5] is [6]. Claim [7], which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction requirement, [8] canceled by applicant in the reply filed on [9]. The canceled, nonelected claim(s) may be reinstated by applicant if submitted in a timely filed amendment in reply to this action. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104 .

In view of the withdrawal of the restriction requirement as set forth above, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler , 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 .

Examiner Note:

  • 1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a) .
  • 2. This form paragraph (or form paragraph 8.47 or 8.47.01 ) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.50 when the elected invention is allowable and the restriction requirement is withdrawn in part.
  • 3. If no issues remain outstanding and application is otherwise ready for allowance, use form paragraph 8.47 or 8.47.01 instead of this form paragraph.
  • 4. In bracket 2, insert either --between-- or --among--.
  • 5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
  • 6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
  • 7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
  • 8. In bracket 7, insert the number of each claim that required all the limitations of an allowable claim but was canceled as a result of the restriction requirement.
  • 9. In bracket 8, insert either --was-- or --were--.

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8.47 Elected Invention Allowable, Non-elected Claims Canceled, Before Final Rejection, No Outstanding Issues Remaining

Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a) . The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. Claim [7], which required all the limitations of an allowable claim, previously withdrawn from consideration as a result of the restriction requirement, [8] canceled by applicant in the reply filed on [9]. The canceled, nonelected claim(s) may be reinstated by applicant if submitted in an amendment, limited to the addition of such claim(s), filed within a time period of TWO MONTHS from the mailing date of this letter. Upon entry of the amendment, such amended claim(s) will be examined for patentability under 37 CFR 1.104 . If NO such amendment is submitted within the set time period, the application will be passed to issue. PROSECUTION ON THE MERITS IS OTHERWISE CLOSED.

In view of the withdrawal of the restriction requirement as to the linked inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler , 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 .

Examiner Note:

  • 1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions and the application has not been finally rejected. See MPEP §§ 806.05(j) and 821.04(a) . After final rejection, use form paragraph 8.47.01 instead of this form paragraph.
  • 2. This form paragraph (or form paragraph 8.46 or 8.47.01 ) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.50 when the elected invention is allowable and the restriction requirement is withdrawn in part.
  • 3. This form paragraph should be used only when there are no outstanding issues remaining and is to be used with only a PTO-90C cover sheet.
  • 4. In bracket 2, insert either --between-- or --among--.
  • 5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
  • 6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
  • 7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
  • 8. In bracket 7, insert the number of each claim that required all the limitations of an allowable claim but was canceled as a result of the restriction requirement.
  • 9. In bracket 8, insert either --was-- or --were--.

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8.47.01 Elected Invention Allowable, Non-elected Claims Canceled, After Final Rejection, No Outstanding Issues Remaining

Claim [1] allowable. The restriction requirement [2] inventions [3], as set forth in the Office action mailed on [4], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a) . The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [5] is [6]. In view of the withdrawal of the restriction requirement as set forth above, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 .

Examiner Note:

  • 1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions and the application has been finally rejected. See MPEP §§ 806.05(j) and 821.04(a) . Before final rejection, use form paragraph 8.47 instead of this form paragraph.
  • 2. This form paragraph (or form paragraph 8.46 ) must be used upon the allowance of a linking claim, generic claim, or subcombination claim following a restriction requirement with at least one of these claim types present and wherein the non-elected claims requiring all the limitations of an allowable claim HAVE BEEN canceled. Use form paragraph 8.45 where the nonelected claims have NOT been canceled and all previously withdrawn claims are rejoined. Use form paragraph 8.50 when the elected invention is allowable and the restriction requirement is withdrawn in part.
  • 3. This form paragraph should be used only when there are no outstanding issues remaining and is to be used with only a PTO-90C cover sheet.
  • 4. In bracket 2, insert either --between-- or --among--.
  • 5. In bracket 3, insert the group(s), species, or subject matter of the invention(s) that were restricted.
  • 6. In bracket 5, insert the date of the restriction requirement being fully or partially withdrawn.
  • 7. In bracket 6, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.

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8.49 Elected Invention Allowable, Claims Stand Withdrawn, Restriction Maintained

Claim [1] allowable. The restriction requirement [2], as set forth in the Office action mailed on [3], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a) . The restriction requirement is maintained because the nonelected claim(s) do not require all the limitations of an allowable claim.

Examiner Note:

  • 1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a) .
  • 2. This form paragraph should be used upon the allowance of a linking claim, generic claim, or subcombination claim when none of the nonelected claims require all the limitations of an allowable claim and wherein the nonelected claims have NOT been canceled. Use form paragraph 8.46 , 8.47 , or 8.47.01 as appropriate where the nonelected claims HAVE BEEN canceled. Use form paragraph 8.45 when the elected invention is allowable and the restriction requirement is withdrawn in its entirety. Use form paragraph 8.50 when the elected invention is allowable and the restriction requirement is withdrawn in part.
  • 3. In bracket 2, insert -- between-- or --among-- followed by identification of the inventions (i.e., groups or species) restricted.
  • 4. In bracket 3, insert the date of the restriction requirement being maintained.

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8.50 Elected Invention Allowable, Some Claims No Longer Considered Withdrawn

Claim [1] allowable. The restriction requirement [2], as set forth in the Office action mailed on [3], has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a) . The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of [4] is [5]. Claim [6], directed to [7] no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. However, claim [8], directed to [9] withdrawn from consideration because [10] require all the limitations of an allowable claim.

In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.

Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler , 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01 .

Examiner Note:

  • 1. This form paragraph is applicable where a restriction requirement was made between related product inventions or between related process inventions. See MPEP §§ 806.05(j) and 821.04(a) .
  • 2. This form paragraph should be used upon the allowance of a linking claim, generic claim, or subcombination claim when some, but not all, of the nonelected claims require all the limitations of an allowable claim and wherein the nonelected claims have NOT been canceled. Use form paragraph 8.46 , 8.47 , or 8.47.01 as appropriate where the nonelected claims HAVE BEEN canceled. Use form paragraph 8.45 when the elected invention is allowable and the restriction requirement is withdrawn in its entirety. Use form paragraph 8.49 when the elected invention is allowable and the restriction requirement is maintained without modification.
  • 3. In bracket 2, insert -- between-- or --among-- followed by identification of the inventions (i.e., groups or species) restricted.
  • 4. In bracket 4, insert the date of the restriction requirement being fully or partially withdrawn.
  • 5. In bracket 5, insert “withdrawn” if the restriction requirement is no longer in effect at all or “partially withdrawn” if the restriction requirement is still partially in effect. If the restriction requirement is still partially in effect, state the claim(s) to which it still applies.
  • 6. In bracket 7, insert the subject matter of the claimed invention or species being rejoined followed by either -- is-- or -- are--.
  • 7. In bracket 9, insert the subject matter of the claimed invention or species not being rejoined followed by -- remains-- or --remain--.
  • 8. In bracket 10, insert --it does not-- or --they do not all--.
  • 9. If all of the claims are in proper form, i.e., they include all the limitations of an allowable claim, one of form paragraphs 8.45 , 8.46 or 8.47 must be used.

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10.01 Withdrawal From Issue, Fee Not Paid

In re Application of [1]:Appl. No.: [2]:: WITHDRAWAL FROM ISSUEFiled: [3]: 37 CFR 1.313 For: [4]:

The purpose of this communication is to inform you that the above identified application is being withdrawn from issue pursuant to 37 CFR 1.313 .

The application is being withdrawn to permit reopening of prosecution. The reasons therefor will be communicated to you by the examiner.

U.S. Patent and Trademark Office records reveal that the issue fee and the publication fee have not been paid. If the issue fee and the publication fee have been submitted, the applicant may request a refund, or may request that the fee be credited to a deposit account. However, applicant may wait until the application is either again found allowable or held abandoned. If the application is allowed, upon receipt of a new Notice of Allowance and Fee(s) Due, applicant may request that the previously submitted issue fee and publication fee be applied toward payment of the issue fee and publication fee in the amount identified on the new Notice of Allowance and Fee(s) Due. If the application is abandoned, applicant may request either a refund or a credit to a specified Deposit Account.

The application is being forwarded to the examiner for action.

______________________

[5]

Director,

Technology Center [6]

[7]

Examiner Note:

  • 1. This letter is printed with the USPTO letterhead and must be signed by the TC Director.
  • 2. DO NOT use this form letter if the issue fee and publication fee have been paid.
  • 3. In bracket 7, insert the correspondence address of record.

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10.13 Petition Under 37 CFR 1.324, Granted

In re Patent No. [1] :Issue Date: [2] : DECISION Appl. No.: [3] : GRANTINGFiled: [4] : PETITIONFor: [5] : 37 CFR 1.324

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324 .

The petition is granted.

The patented file is being forwarded to Certificates of Correction Branch for issuance of a certificate naming only the actual inventor or inventors.

_______________________

[7]

Supervisory Patent Examiner,

Art Unit [8],

Technology Center [9]

[10]

Examiner Note:

  • 1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner, as set forth in the Commissioner’s memorandum dated June 2, 1989.
  • 2. In bracket 10, insert the correspondence address of record.
  • 3. This form paragraph is printed with the USPTO letterhead.
  • 4. Prepare Certificate using form paragraph 10.15.

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10.14 Treatment of Request Under 37 CFR 1.48 Petition Under 37 CFR 1.324, Petition Granted

In re Patent No. [1] :Issue Date: [2] : DECISION Appl. No.: [3] : GRANTINGFiled: [4] : PETITIONFor: [5] : 37 CFR 1.324

This is a decision on the request under 37 CFR 1.48 , filed [6]. In view of the fact that the patent has already issued, the request under 37 CFR 1.48 has been treated as a petition to correct inventorship under 37 CFR 1.324 .

The petition is granted.

The patented file is being forwarded to Certificates of Correction Branch for issuance of a certificate naming only the actual inventor or inventors.

_______________________

[7]

Supervisory Patent Examiner,

Art Unit [8],

Technology Center [9]

[10]

Examiner Note:

  • 1. Petitions to correct inventorship of an issued patent are decided by the Supervisory Patent Examiner, as set forth in the Commissioner’s memorandum dated June 2, 1989.
  • 2. This form paragraph is printed with the USPTO letterhead.
  • 3. Prepare Certificate using form paragraph 10.15 .
  • 4. In bracket 10, insert the correspondence address of record.

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10.15 Memorandum - Certificate of Correction (Inventorship)

DATE: [1]TO: Certificates of Correction BranchFROM: [2], SPE, Art Unit [3]SUBJECT: Request for Certificate of Correction

Please issue a Certificate of Correction in U. S. Letters Patent No. [4] as specified on the attached Certificate.

______________________

[5], SPE

Art Unit [6]

UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATEPatent No. [7]Patented: [8]

On petition requesting issuance of a certificate for correction of inventorship pursuant to 35 U.S.C. 256 , it has been found that the above identified patent improperly sets forth the inventorship. Accordingly, it is hereby certified that the correct inventorship of this patent is:

[9]

_________________________

[10], Supervisory Patent Examiner

Art Unit [11]

Examiner Note:

  • 1. In bracket 9, insert the full name and residence (City, State) of each actual inventor.
  • 2. This is an internal memo, not to be mailed to applicant, which accompanies the patented file to Certificates of Correction Branch as noted in form paragraphs 10.13 and 10.14 .
  • 3. In brackets 5 and 10, insert name of SPE; in brackets 6 and 11 the Art Unit and sign above each line.
  • 4. Two separate pages of USPTO letterhead will be printed when using this form paragraph.

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10.16.01 Petition Under 37 CFR 1.324 filed on or after September 16, 2012, Dismissed

In re Patent No. [1] :

Issue Date: [2] : DECISION

Appl. No.: [3] : DISMISSING

Filed: [4] : PETITION

For: [5] : 37 CFR 1.324

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324 .

The petition is dismissed.

A petition to correct inventorship under 37 CFR 1.324 filed on or after September 16, 2012, requires (1) a statement from each person who is being added as an inventor and each person who is currently named as an inventor (including any “inventor” being deleted) either agreeing to the change of inventorship or stating that he or she has no disagreement in regard to the requested change, (2) a statement in compliance with 37 CFR 3.73(c) from all assignees of the parties submitting a statement under “(1)” agreeing to the change of inventorship in the patent; and (3) the fee set forth in 37 CFR 1.20(b) . This petition lacks item(s) [7].

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Technology Center [10]

[11]

Examiner Note:

  • 1. If each of the three specified items has been submitted but one or more is insufficient, the petition should be denied. See form paragraph 10.17 . However, if the above noted deficiency can be cured by the submission of a renewed petition, a dismissal would be appropriate.
  • 2. If the petition includes a request for suspension of the rules ( 37 CFR 1.183 ) of one or more provisions of 37 CFR 1.324 that are required by the statute ( 35 U.S.C. 256 ), form paragraph 10.18 should follow this form paragraph.
  • 3. In bracket 7, pluralize as necessary and insert the item number(s) which are missing.
  • 4. In bracket 11, insert correspondence address of record.
  • 5. This form paragraph is printed with the USPTO letterhead.

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10.16.fti Petition Under 37 CFR 1.324 filed prior to September 16, 2012, Dismissed

In re Patent No. [1] :Issue Date: [2] : DECISION Appl. No.: [3] : DISMISSING Filed: [4] : PETITIONFor: [5] : 37 CFR 1.324

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324 .

The petition is dismissed.

A petition to correct inventorship under 37 CFR 1.324 filed before September 16, 2012, requires (1) a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on their part, (2) a statement from the current named inventors (including any “inventor” being deleted) who have not submitted a statement as per “(1)” either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change, (3) a statement in compliance with 3.73(b) from all assignees of the parties submitting a statement under “(1)” and “(2)” agreeing to the change of inventorship in the patent; and (4) the fee set forth in 37 CFR 1.20(b) .This petition lacks item(s) [7].

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Technology Center [10]

[11]

Examiner Note:

  • 1. If each of the four specified items has been submitted but one or more is insufficient, the petition should be denied. See form paragraph 10.17 . However, if the above noted deficiency can be cured by the submission of a renewed petition, a dismissal would be appropriate.
  • 2. If the petition includes a request for suspension of the rules ( 37 CFR 1.183 ) of one or more provisions of 37 CFR 1.324 that are required by the statute ( 35 U.S.C. 256 ), form paragraph 10.18 should follow this form paragraph.
  • 3. In bracket 7, pluralize as necessary and insert the item number(s) which are missing.
  • 4. In bracket 11, insert correspondence address of record.
  • 5. This form paragraph is printed with the USPTO letterhead.
  • 6 This form paragraph should only be used if the petition under 37 CFR 1.324 was filed before September 16, 2012. If the petition was filed on or after September 16, 2012, use form paragraph 10.16.01 .

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10.17 Petition Under 37 CFR 1.324, Denied

In re Patent No. [1]:Issue Date: [2]: DECISION DENYING PETITIONAppl. No.: [3]: 37 CFR 1.324 Filed: [4]:For: [5]:

This is a decision on the petition filed [6] to correct inventorship under 37 CFR 1.324 .

The petition is denied.

[7]

_______________________

[8]

Supervisory Patent Examiner,

Art Unit [9],

Technology Center [10]

[11]

Examiner Note:

  • 1. In bracket 7, a full explanation of the deficiency must be provided.
  • 2. If the petition lacks one or more of the required parts set forth in 37 CFR 1.324 , it should be dismissed using form paragraph 10.14 or 10.20 , rather than being denied.
  • 3. In bracket 11, insert correspondence address of record.
  • 4. This form paragraph is printed with the USPTO letterhead.

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10.18 Waiver of Requirements of 37 CFR 1.324 Under 37 CFR 1.183, Dismissed

Suspension of the rules under 37 CFR 1.183 may be granted for any requirement of the regulations which is not a requirement of the statutes. In this instance, 35 U.S.C. 256 requires [1]. Accordingly, the petition under 37 CFR 1.183 is dismissed.

Examiner Note:

1. This form paragraph should follow form paragraph 10.16.fti whenever the petition requests waiver of one or more of the provisions of 37 CFR 1.324 that are also requirements of 35 U.S.C. 256 .

2. If the petition requests waiver of requirements of 37 CFR 1.324 that are not specific requirements of the statute (i.e., the fee or the oath or declaration by all inventors), the application must be forwarded to a petitions attorney in the Office of Petitions for decision.

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10.19 Memorandum - Certificate of Correction (Cross-Reference to Other Reissues in Family)

DATE: [1]

TO: Certificates of Correction Branch

FROM: [2], SPE, Art Unit [3]

SUBJECT: Request for Certificate of Correction

Please issue a Certificate of Correction in U. S. Letters Patent No. [4] as specified on the attached Certificate.

______________________

[5], SPE

Art Unit [6]

UNITED STATES PATENT AND TRADEMARK OFFICE CERTIFICATE

Patent No. [7]

Patented: [8]

The present reissue patent issued from an application that is one of a family of divisional reissue applications resulting from Patent No. [9]. The present reissue patent has issued without the cross reference to the other reissue application(s) of the family which is required pursuant to 37 CFR 1.177(a) . Accordingly, insert in the first sentence of the specification as follows:

Notice: More than one reissue application has been filed for the reissue of patent [9]. The reissue applications are [10].

_________________________

[11], Supervisory Patent Examiner

Art Unit [12]

Examiner Note:

  • 1 In bracket 9, insert the patent number of the patent for which multiple reissue divisional applications have been filed.
  • 2 This is an internal memo and must not be mailed to the applicant. This memo should accompany the patented file to the Certificates of Correction Branch as noted in form paragraphs 10.13 and 10.14 .
  • 3. In brackets 5 and 11, insert the name of SPE and provide the signature of the SPE above each line.
  • 4. In brackets 6 and 12, insert the Art Unit number.
  • 5. Two separate pages of USPTO letterhead will be printed when using this form paragraph.
  • 6. In bracket 10, identify each of the reissue applications (including the present application) and their relationship within the family of reissue applications, and to the original patent.

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10.20 Petition or Request Dismissed, Proper Fee Not Submitted

Applicant’s petition or request under 37 CFR [1] filed [2] is DISMISSED because the proper petition or processing fee of [3] required under 37 CFR 1.17 has not been submitted.

Examiner Note:

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10.30 Petition Header Information

In re Application of: [1] : Appl. No.: [2] : DECISION ON PETITION Filed: [3] : [5] For: [4] :

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12.209 Appeal Dismissed - Allowed Claims, Formal Matters Remaining

In view of applicant’s failure to file a brief within the time prescribed by 37 CFR 41.37(a) , the appeal stands dismissed and the proceedings as to the rejected claims are considered terminated. See 37 CFR 1.197(b) .

This application will be passed to issue on allowed claim [1] provided the following formal matters are corrected. Prosecution is otherwise closed.

[2]

Applicant is required to make the necessary corrections within a shortened statutory period set to expire TWO (2) MONTHS from the mailing date of this letter to avoid ABANDONMENT of the application. 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. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. This form paragraph should only be used if the formal matters cannot be handled by examiner’s amendment. See MPEP § 1215.04 .
  • 3. In bracket 2, insert a description of the formal matters to be corrected.
  • 4. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected. See MPEP § 1215.04 .

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12.210 Extension To File Brief - Granted

The request for an extension of time under 37 CFR 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on [1] has been approved for [2].

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 2, insert the amount of time the extension of time has been approved for.
  • 3. This form paragraph should only be used when 37 CFR 1.136(a) is not available or has been exhausted, such as in litigation reissues or when appellant requests to reopen prosecution or file a reply brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2) .

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12.211 Extension To File Brief - Denied

The request for an extension of time under 37 CFR 1.136(b) for filing the appeal brief under 37 CFR 41.37 filed on [1] has been disapproved because no sufficient cause for the extension has been shown.

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. This form paragraph should only be used when 37 CFR 1.136(a) is not available or has been exhausted, such as in litigation reissues or when appellant requests to reopen prosecution or file a reply brief as set forth in 37 CFR 41.39(b) and 37 CFR 41.50(a)(2) .

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12.239 Reopening of Prosecution After Appeal Brief

In view of the [1] filed on [2], PROSECUTION IS HEREBY REOPENED. [3] set forth below.

To avoid abandonment of the application, appellant must exercise one of the following two options:

(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,

(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37 . The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.

A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:

[4]

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert --appeal brief-- or --amended appeal brief--.
  • 3. In bracket 2, insert the date on which the brief was filed.
  • 4. In bracket 3, insert --A new ground of rejection is-- or --New grounds of rejection are--.
  • 5. In bracket 4, insert the SPE’s signature. Approval of the SPE is required to reopen prosecution after an appeal. See MPEP §§ 1002.02(d) and 1207.04 .
  • 6. Use this form paragraph to reopen prosecution in order to make a new ground of rejection of claims. The Office action following a reopening of prosecution may be made final if all new grounds of rejection were either (A) necessitated by amendment or (B) based on information presented in an information disclosure statement under 37 CFR 1.97(c) where no statement under 37 CFR 1.97(e) was filed. See MPEP § 706.07(a) .

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12.249 Examiner’s Answer Cover Sheet

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Application Number: [1]

Filing Date: [2]

Appellant(s): [3]

__________________

[4]

For Appellant

EXAMINER’S ANSWER

This is in response to the appeal brief filed [5].

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. This form paragraph is printed with the USPTO letterhead.
  • 3. In bracket 1, insert the application number of the appealed application.
  • 4. In bracket 2, insert the filing date of the appealed application.
  • 5. In bracket 3, insert the name(s) of the appellant.
  • 6. In bracket 4, insert the name of the registered representative of the appellant.
  • 7. In bracket 5, indicate the date on which the brief was filed.

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12.254 Grounds of Rejection to be Reviewed on Appeal

(1) Grounds of Rejection to be Reviewed on Appeal

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. Follow this form paragraph with form paragraph 12.254.01 or 12.254.02 .

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12.254.01 Statement of Grounds of Rejection, not modified

Every ground of rejection set forth in the Office action dated [1] from which the appeal is taken is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading “WITHDRAWN REJECTIONS.” New grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF REJECTION.”

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
  • 3. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
  • 4. Use form paragraph 12.256 to introduce any new grounds of rejection.
  • 5. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
  • 6. Use this form paragraph when there was no modification made to the grounds of rejection in an advisory action or pre-appeal conference decision.

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12.254.02 Statement of Grounds of Rejection, modified

The ground(s) of rejection set forth in the Office action dated [1] from which the appeal is taken have been modified by the [2] dated [3]. A list of rejections withdrawn by the examiner (if any) is included under the subheading “WITHDRAWN REJECTIONS.” New grounds of rejection (if any) are provided under the subheading “NEW GROUNDS OF REJECTION.”

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the mailing date of the Office action from which the appeal is being taken.
  • 3. In bracket 2, insert --advisory action-- and/or --pre-appeal brief conference decision--.
  • 4. In bracket 3, insert the mailing date of the advisory action and/or pre-appeal brief conference decision--.
  • 5. Use form paragraph 12.255 to restate the grounds of rejection and supporting rationale for each rejection involved in the appeal, when needed.
  • 6. Use form paragraph 12.256 to introduce any new grounds of rejection.
  • 7. Use form paragraph 12.257 to withdraw a ground of rejection previously made in the final Office action or last Office action.
  • 8. Use this form paragraph when the grounds of rejection were modified in an advisory action or pre-appeal brief conference decision.

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12.255 Restatement of Rejection

The following ground(s) of rejection are applicable to the appealed claims.

[1]

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. Precede this form paragraph with either 12.254.01 or 12.254.02 .
  • 3. Use this form paragraph to optionally include a statement of rejection and/or supporting rationale for every ground of rejection involved in the appeal.
  • 4. Only use this form paragraph when the restatement of the rejection does not include any new ground(s) of rejection.
  • 5. In bracket 1, explain each ground of rejection maintained by the examiner.

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12.256 New Grounds of Rejection - Heading

NEW GROUNDS OF REJECTION

[1]

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. Any new ground(s) of rejection in the examiner’s answer must be prominently identified (e.g., using this form paragraph).
  • 3. Provide a concise statement of each new ground of rejection presented for review in bracket 1; and
  • 4. Conclude an examiner’s answer raising new grounds of rejection with form paragraph 12.279.01 : (1) to notify applicant of the reply period and options following the new grounds of rejection; and (2) to include the required approval of the TC Director or the TC Director's designee.

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12.257 Withdrawn Rejections

WITHDRAWN REJECTIONS

The following grounds of rejection are not presented for review on appeal because they have been withdrawn by the examiner. [1].

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the grounds of rejection that have been withdrawn.

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12.261 Response to Argument

(2) Response to Argument

Examiner Note:

1. For use if the notice of appeal was filed on or after January 23, 2012.

2. If an issue raised by appellant was fully responded to under the "Grounds of Rejection to be Reviewed on Appeal" portion, no additional response is required here.

3. If an issue has been raised by appellant that was not fully responded to under "Grounds of Rejection to be Reviewed on Appeal," a full response must be provided after this form paragraph.

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12.278 Warning in Examiner's Answer containing NSDP rejection not argued

This appeal includes a rejection of claims [1] which are rejected on the ground of non-statutory double patenting. This rejection was not addressed in the appellant's appeal brief. Should the Board either summarily affirm or not reach the rejection and the appellant should fail to overcome the rejection with a properly filed terminal disclaimer prior to seeking judicial review either by an appeal to the U.S. Court of Appeals for the Federal Circuit ( 35 U.S.C. 141 ) or by civil action in the U.S. District Court for the Eastern District of Virginia ( 35 U.S.C. 145 ) the appeal may be dismissed by the Court for lack of jurisdiction because the claims on appeal are subject to the non-statutory double patenting rejection. Alternatively, the Court may summarily affirm the non-statutory double patenting rejection without considering other grounds of rejection challenged on the appeal.

Examiner Note:

  • 1. For use when claims are subject to the non-statutory double patenting rejection that has not been argued in the appeal brief.
  • 2. In bracket 1, insert the claim numbers of the claims subject to the non-statutory double patenting rejection.

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12.279 Conclusion to Examiner’s Answer, No New Grounds of Rejection

For the above reasons, it is believed that the rejections should be sustained.

Respectfully submitted,

[1]

Conferees:

[2]

[3]

Requirement to pay appeal forwarding fee. In order to avoid dismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of an appeal forwarding fee within the time permitted by 37 CFR 41.45(a) , unless appellant had timely paid the fee for filing a brief required by 37 CFR 41.20(b) in effect on March 18, 2013.

Examiner Note:

1. For use if the notice of appeal was filed on or after January 23, 2012.

2. In bracket 1, insert initials of the examiner and the date.

3. In bracket 2, insert names of the conferees. The conferees must also place their initials next to their names.

4. In bracket 3, insert correspondence address of record.

5. If the examiner’s answer includes a new ground of rejection, use form paragraph 12.279.01 instead of this form paragraph.

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12.279.01 Conclusion to Examiner’s Answer Raising New Grounds of Rejection

For the above reasons, it is believed that the rejections should be sustained.

This examiner’s answer contains a new ground of rejection set forth in section (1) above. Accordingly, appellant must within TWO MONTHS from the date of this answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection:

(1) Reopen prosecution. Request that prosecution be reopened before the primary examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit or other evidence. Any amendment, affidavit or other evidence must be relevant to the new grounds of rejection. A request that complies with 37 CFR 41.39(b)(1) will be entered and considered. Any request that prosecution be reopened will be treated as a request to withdraw the appeal.

(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41 . Such a reply brief must address each new ground of rejection as set forth in 37 CFR 41.37(c)(1) and should be in compliance with the other requirements of 37 CFR 41.37(c) . If a reply brief filed pursuant to 37 CFR 41.39(b)(2) is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened before the primary examiner under 37 CFR 41.39(b)(1) .

Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.

Respectfully submitted,

[1]

A Technology Center Director or designee must personally approve the new ground(s) of rejection set forth in section (1) above by signing below:

[2]

Conferees:

[3]

[4]

Requirement to pay appeal forwarding fee. In order to avoid dismissal of the instant appeal in any application or ex parte reexamination proceeding, 37 CFR 41.45 requires payment of an appeal forwarding fee within the time permitted by 37 CFR 41.45(a) , unless appellant had timely paid the fee for filing a brief required by 37 CFR 41.20(b) in effect on March 18, 2013.

Examiner Note:

1. For use if the notice of appeal was filed on or after January 23, 2012.

2. In bracket 1, insert initials of the examiner and the date.

3. In bracket 2, insert TC Director’s or designee’s signature. All new grounds of rejection must be approved by a TC Director or designee.

4. In bracket 3, insert names of the conferees. The conferees must also place their initials next to their names.

5. In bracket 4, insert correspondence address of record.

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12.279.02 Dismissal Following New Ground(s) of Rejection in Examiner’s Answer

Appellant failed to timely respond to the examiner’s answer mailed on [1] that included a new ground of rejection. Under 37 CFR 41.39(b) , if an examiner’s answer contains a rejection designated as a new ground of rejection, appellant must, within two months from the date of the examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111 ; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41 , addressing each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.39 , the appeal as to claims [2] is dismissed, and these claims are canceled .

Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the mailing date of the examiner’s answer.
  • 3. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
  • 4. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.

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12.279.03 Request to Present Oral Arguments

The examiner requests the opportunity to present arguments at the oral hearing.

Examiner Note:

1. For use if the notice of appeal was filed on or after January 23, 2012.

2. Use this form paragraph only if an oral hearing has been requested by appellant and the primary examiner intends to present an oral argument.

3. This form paragraph must be included as a separate letter on a form PTOL-90.

4. After mailing to the applicant, the examiner must email a copy of the PTOL-90 to PTABHearings@uspto.gov.

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12.285 Substitute Examiner’s Answer - On Remand FOR FURTHER CONSIDERATION OF A REJECTION

Pursuant to the remand under 37 CFR 41.50(a)(1) by the Patent Trial and Appeal Board on [1] for further consideration of a rejection, a substitute Examiner’s Answer under 37 CFR 41.50(a)(2) is set forth below: [2].

The appellant must within TWO MONTHS from the date of the substitute examiner’s answer exercise one of the following two options to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding:

(1) Reopen prosecution. Request that prosecution be reopened before the examiner by filing a reply under 37 CFR 1.111 with or without amendment, affidavit, or other evidence. Any amendment, affidavit, or other evidence must be relevant to the issues set forth in the remand or raised in the substitute examiner’s answer. Any request that prosecution be reopened will be treated as a request to withdraw the appeal. See 37 CFR 41.50(a)(2)(i) .

(2) Maintain appeal. Request that the appeal be maintained by filing a reply brief as set forth in 37 CFR 41.41 . If such a reply brief is accompanied by any amendment, affidavit or other evidence, it shall be treated as a request that prosecution be reopened under 37 CFR 41.50(a)(2)(i) . See 37 CFR 41.50(a)(2)(ii) .

Extensions of time under 37 CFR 1.136(a) are not applicable to the TWO MONTH time period set forth above. See 37 CFR 1.136(b) for extensions of time to reply for patent applications and 37 CFR 1.550(c) for extensions of time to reply for ex parte reexamination proceedings.

A Technology Center Director or designee has approved this substitute examiner’s answer by signing below:

[3]

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the date of the remand.
  • 3. In bracket 2, provide reasons supporting the rejections set forth in the substitute Examiner’s Answer.
  • 4. In bracket 3, insert the TC Director’s or designee’s signature. A TC Director or designee must approve every substitute examiner’s answer.

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12.286 Dismissal Following A Substitute Examiner’s Answer Written in Response to a Remand for Further Consideration of a Rejection

Appellant failed to timely respond to the substitute examiner’s answer mailed on [1] that was written in response to a remand by the Board for further consideration of a rejection. Under 37 CFR 41.50(a)(2) , appellant must, within two months from the date of the substitute examiner’s answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111 ; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41 , to avoid sua sponte dismissal of the appeal as to the claims subject to the rejection for which the Board has remanded the proceeding. In view of appellant’s failure to file a reply under 37 CFR 1.111 or a reply brief within the time period required by 37 CFR 41.50(a)(2) , the appeal as to claims [2] is dismissed, and these claims are canceled .

Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the mailing date of the substitute examiner’s answer.
  • 3. In bracket 2, insert the claim numbers of the claims subject to the rejection for which the Board has remanded the proceeding.
  • 4. In bracket 3, insert the claim numbers of the claims that are not subject to the rejection.

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12.291 Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (No Allowed Claim)

The Patent Trial Appeal Board affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. There are no allowed claims in the application. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06 . Applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this letter in which to present the dependent claim(s) in independent form to avoid ABANDONMENT of the application. EXTENSIONS OF TIME UNDER 37 CFR 1.136(a) ARE AVAILABLE 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 ). Prosecution is otherwise closed.

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).
  • 3. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).

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12.292 Examiner Sustained in Part - Requirement of Rewriting Dependent Claims (At Least One Allowed Claim)

The Patent Trial and Appeal Board affirmed the rejection(s) against independent claim(s) [1], but reversed all rejections against claim(s) [2] dependent thereon. The independent claim(s) is/are cancelled by the examiner in accordance with MPEP § 1214.06 . Applicant is given a TWO (2) MONTH TIME PERIOD from the mailing date of this letter in which to present the dependent claim(s) in independent form. EXTENSIONS OF TIME UNDER 37 CFR 1.136 ARE AVAILABLE. If the applicant does not timely present the dependent claim(s) in independent form, the dependent claim(s) will be cancelled and the application will be allowed with claim(s) [3]. Prosecution is otherwise closed.

Examiner Note:

  • 1 For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, enter the independent claim number(s) for which the Board affirmed the rejection(s).
  • 3. In bracket 2, enter the dependent claim number(s) for which the Board reversed the rejection(s).
  • 4. In bracket 3, enter the claim number(s) of the allowed claims.

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12.297 Period For Seeking Court Review Has Lapsed

The period under 37 CFR 90.3 for seeking court review of the decision by the Patent Trial and Appeal Board rendered [1] has expired and no further action has been taken by appellant. The proceedings as to the rejected claims are considered terminated; see 37 CFR 1.197(b) .

The application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed.

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 to avoid ABANDONMENT of the application. 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. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, enter the mailing date of the decision (or notification date of the decision if electronic mail notification was sent to the appellant under the e-Office Action program).
  • 3. In bracket 2, identify the allowed claims.
  • 4. In bracket 3, identify the formal matters that need correction.

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12.298 Amendment After Board Decision, Entry Refused

The amendment filed [1] after a decision by the Patent Trial and Appeal Board is not entered because prosecution is closed. As provided in 37 CFR 1.198 , prosecution of the proceeding before the primary examiner will not be reopened or reconsidered by the primary examiner after a final decision of the Board except under the provisions of 37 CFR 1.114 (request for continued examination) or 37 CFR 41.50 without the written authority of the Director, and then only for the consideration of matters not already adjudicated, sufficient cause being shown.

Examiner Note:

  • 1. For use if the notice of appeal was filed on or after January 23, 2012.
  • 2. In bracket 1, insert the date the amendment was filed.
  • 3. This form paragraph is not to be used where a 37 CFR 41.50(b) rejection has been made by the Board.

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13.01 Requirement for Rewritten Specification

The interlineations or cancellations made in the specification or amendments to the claims could lead to confusion and mistake during the issue and printing processes. Accordingly, the portion of the specification or claims as identified below is required to be rewritten before passing the case to issue. See 37 CFR 1.125 and MPEP § 608.01(q) .

Examiner Note:

  • 1. Specific discussion of the sections of the specification or claims required to be rewritten must be set forth.
  • 2. See form paragraph 6.28.01 for a substitute specification.

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13.02 Examiner’s Amendment

An examiner’s amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312 . To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.

Examiner Note:

This form paragraph is NOT to be used in a reexamination proceeding (use form paragraph 22.06 instead).

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13.02.01 Examiner’s Amendment Authorized

Authorization for this examiner's amendment was given in an interview with [1] on [2].

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13.02.02 Extension of Time and Examiner’s Amendment Authorized

An extension of time under 37 CFR 1.136(a) is required in order to make an examiner’s amendment that places this application in condition for allowance. During a conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension and authorized the following examiner’s amendment. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312 . To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.

Examiner Note:

  • 1. See MPEP § 706.07(f) which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.
  • 2. In no case can any extension carry the date for reply to an Office action beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).

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13.03 Reasons for Allowance

The following is an examiner’s statement of reasons for allowance: [1]

Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”

Examiner Note:

  • 1. Do not use this form paragraph in reexamination proceedings, see form paragraph 22.16 .
  • 2. In bracket 1, provide a detailed statement of the reason(s) certain claim(s) have been indicated as being allowable or as containing allowable subject matter.

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13.03.01 Reasons for Indication of Allowable Subject Matter

The following is a statement of reasons for the indication of allowable subject matter: [1]

Examiner Note:

  • 1. This form paragraph is for use in an Office action prior to allowance of the application. Use form paragraph 13.03 in the Notice of Allowability.
  • 2. In bracket 1, provide a detailed statement of the reason(s) certain claim(s) have been indicated as being allowable or as containing allowable subject matter.

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13.04 Reopen Prosecution - After Notice of Allowance

Prosecution on the merits of this application is reopened on claim [1] considered unpatentable for the reasons indicated below:

[2]

Examiner Note:

  • 1. This paragraph should be used when a rejection is made on any previously allowed claim(s) which for one reason or another is considered unpatentable after the Notice of Allowance (PTOL-85) has been mailed.
  • 2. Make appropriate rejection(s) as in any other action.
  • 3. In bracket 1, identify claim(s) that are considered unpatentable.
  • 4. In bracket 2, state all appropriate rejections for each claim considered unpatentable.

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13.05 Reopen Prosecution - Vacate Notice of Allowance

Applicant is advised that the Notice of Allowance mailed [1] is vacated. If the issue fee has already been paid, applicant may request a refund or request that the fee be credited to a deposit account. However, applicant may wait until the application is either found allowable or held abandoned. If allowed, upon receipt of a new Notice of Allowance, applicant may request that the previously submitted issue fee be applied. If abandoned, applicant may request refund or credit to a specified Deposit Account.

Examiner Note:

  • 1. This form paragraph must be used when the prosecution is reopened after the mailing of the Notice of Allowance.
  • 2. In bracket 1, insert date of the Notice of Allowance.

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13.06 Extension of Time by Examiner’s Amendment

An extension of time under 37 CFR 1.136(a) is required to place this application in condition for allowance. During a telephone conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension.

Examiner Note:

  • 1. See MPEP § 706.07(f) , item J which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance. In no case can any extension carry the date for reply to an Office action beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).
  • 2. When an examiner’s amendment is also authorized, use form paragraph 13.02.02 instead.

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13.09 Information Disclosure Statement, Issue Fee Paid

Applicant’s information disclosure statement of [1] was filed after the issue fee was paid. Information disclosure statements filed after payment of the issue fee will not be considered, but will be placed in the file. However, the application may be withdrawn from issue in order to file a request for continued examination (RCE) under 37 CFR 1.114 upon the grant of a petition under 37 CFR 1.313(c)(2) , or a continuing application under 37 CFR 1.53(b) (or a continued prosecution application (CPA) under 37 CFR 1.53(d) if the CPA is for a design patent and the prior application of the CPA is a design application filed under 35 U.S.C. chapter 16) upon the grant of a petition filed under the provisions of 37 CFR 1.313(c)(3) . Alternatively, the other provisions of 37 CFR 1.313 may apply, e.g., a petition to withdraw the application from issue under the provisions of 37 CFR 1.313(c)(1) may be filed together with an unequivocal statement by the applicant that one or more claims are unpatentable over the information contained in the statement. The information disclosure statement would then be considered upon withdrawal of the application from issue under 37 CFR 1.313(c)(1) .

Examiner Note:

  • 1. For information disclosure statements submitted after the issue fee has been paid, use this form paragraph with form PTOL-90 or PTO-90C.
  • 2. In bracket 1, insert the filing date of the IDS.

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13.10 Amendment Filed After the Payment of Issue Fee, Not Entered

Applicant’s amendment filed on [1] will not be entered because the amendment was filed after the issue fee was paid. 37 CFR 1.312 no longer permits filing an amendment after the date the issue fee has been paid.

Examiner Note:

  • 1. Use this paragraph with form PTOL-90 or PTO-90C.
  • 2. In bracket 1, insert the date of the amendment.

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14.01 Reissue Application, Applicable Laws and Rules Heading

For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172 , 1.175 , and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA” provisions.

For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172 , 1.175 , and 3.73 are to the current provisions.

Examiner Note:

  • This paragraph should be used as a heading in all Office actions in reissue applications.

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14.01.01 Defective Reissue Oath/Declaration, 37 CFR 1.175 - No Statement of a Specific Error

The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414 .

Examiner Note:

  • 1. Use this form paragraph when the reissue oath or declaration does not contain any statement of an error which is relied upon to support the reissue application.
  • 2. This form paragraph can be used where the reissue oath or declaration does not even mention error. It can also be used where the reissue oath or declaration contains some discussion of the concept of error but never in fact identifies a specific error to be relied upon. For example, it is not sufficient for an oath or declaration to merely state “this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure.”
  • 3. Form paragraph 14.14 must follow this form paragraph.

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14.01.02 Defective Reissue Oath/Declaration, 37 CFR 1.175 - The Identified “Error” Is Not Appropriate Error

The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414 .

Examiner Note:

  • 1. Use this form paragraph when the reissue oath/declaration identifies only one error which is relied upon to support the reissue application, and that one error is not an appropriate error upon which a reissue can be based.
  • 2. Form paragraph 14.14 must follow this form paragraph.

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14.01.03 Defective Reissue Oath/Declaration, 37 CFR 1.175 - Multiple Identified “Errors” Not Appropriate Errors

The reissue oath/declaration filed with this application is defective because none of the errors which are relied upon to support the reissue application are errors upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414 .

Examiner Note:

  • 1. Use this form paragraph when the reissue oath/declaration identifies more than one error relied upon to support the reissue application, and none of the errors are appropriate errors upon which a reissue can be based.
  • 2. Note that if the reissue oath/declaration identifies more than one error relied upon, and at least one of the errors is an error upon which reissue can be based, this form paragraph should not be used, despite the additional reliance by applicant on “errors” which do not support the reissue. Only one appropriate error is needed to support a reissue.
  • 3. Form paragraph 14.14 must follow this form paragraph.

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14.01.04.fti Defective Reissue Oath/Declaration in Application Filed Before Sept. 16, 2012, 37 CFR 1.175- Lack of Statement of “Without Any Deceptive Intention”

The reissue oath/declaration filed with this application, which has a filing date before September 16, 2012, is defective because it fails to contain a statement that all errors which are being corrected in the reissue application up to the time of filing of the oath/declaration arose without any deceptive intention on the part of the applicant. See pre-AIA 37 CFR 1.175 and MPEP § 1414 .

Examiner Note:

  • 1. For reissue applications filed before September 16, 2012, use this form paragraph when the reissue oath/declaration does not contain the statement required by pre-AIA 37 CFR 1.175 that all errors being corrected in the reissue application arose without any deceptive intention on the part of the applicant.
  • 2. This form paragraph is appropriate to use for a failure by applicant to comply with the requirement, as to any of pre-AIA 37 CFR 1.175(a)(2) , 37 CFR 1.175(b)(1) , or 37 CFR 1.175(b)(2) .
  • 3. Form paragraph 14.14 must follow.

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14.01.05 Defective Reissue Oath/Declaration, 37 CFR 1.175 - No Statement of Defect in the Patent

The reissue oath/declaration filed with this application is defective because it fails to contain the statement(s) required under 37 CFR 1.175 as to applicant’s belief that the original patent is wholly or partly inoperative or invalid. [1]

Examiner Note:

  • 1. Use this form paragraph when applicant: (a) fails to allege that the original patent is inoperative or invalid and/or (b) fails to state the reason of a defective specification or drawing, or of patentee claiming more or less than patentee had the right to claim in the patent. In bracket 1, point out the specific defect to applicant by using the language of (a) and/or (b), as it is appropriate.
  • 2. Form paragraph 14.14 must follow this form paragraph.

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14.01.06 Defective Reissue Oath/Declaration, 37 CFR 1.175 - General

The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414 ) because of the following:

Examiner Note:

  • 1. Use this form paragraph when the reissue oath/declaration does not comply with 37 CFR 1.175 , and none of form paragraphs 14.01.01 - 14.01.05 or 14.05.02.fti apply.
  • 2. This form paragraph must be followed by an explanation of why the reissue oath/declaration is defective.
  • 3. Form paragraph 14.14 must follow the explanation of the defect.

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14.05.02.fti Supplemental Oath or Declaration Required Prior to Allowance - Application Filed Before Sept. 16, 2012

In accordance with pre-AIA 37 CFR 1.175(b)(1) , for applications filed before September 16, 2012, a supplemental reissue oath/declaration must be received before this reissue application can be allowed.

Claim [1] rejected as being based upon a defective reissue [2] under 35 U.S.C. 251 . See 37 CFR 1.175 . The nature of the defect is set forth above.

Receipt of an appropriate supplemental oath/declaration will overcome this rejection. An example of acceptable language to be used in the supplemental oath/declaration is as follows:

“Every error in the patent which was corrected in the present reissue application, and is not covered by a prior oath/declaration submitted in this application, arose without any deceptive intention on the part of the applicant.”

See MPEP § 1414.01 .

Examiner Note:

  • 1. In bracket 1, list all claims in the reissue application.
  • 2. In bracket 2, insert either --oath-- or --declaration--.
  • 3. This form paragraph is used in an Office action to: (a) remind applicant of the requirement for submission of the supplemental reissue oath/declaration under pre-AIA 37 CFR 1.175(b)(1) before allowance and (b) at the same time, reject all the claims since the reissue application is defective until the supplemental oath/declaration is submitted.
  • 4. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.
  • 5. Do not use this form paragraph if no amendments (or other corrections of the patent) have been made subsequent to the last oath/declaration filed in the case; instead allow the case.
  • 6. This form paragraph cannot be used in an Ex parte Quayle action to require the supplemental oath/declaration, because the rejection under 35 U.S.C. 251 is more than a matter of form.
  • 7. Do not use this form paragraph in an examiner’s amendment. The supplemental oath/declaration must be filed prior to mailing of the Notice of Allowability.

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14.06 Litigation-Related Reissue

The patent sought to be reissued by this application [1] involved in litigation. Any documents and/or materials which would be material to patentability of this reissue application are required to be made of record in response to this action.

Due to the related litigation status of this application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED DURING THE PROSECUTION OF THIS APPLICATION.

Examiner Note:

In bracket 1, insert either —is— or —has been—.

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14.07 Action in Reissue Not Stayed or Suspended — Related Litigation Stayed

While there is a stay of the concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed or suspended because a stay of that litigation is in effect for the purpose of awaiting the outcome of these reissue proceedings. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.

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14.08 Action in Reissue Not Stayed — Related Litigation Terminated

Since the litigation related to this reissue application is terminated and final, action in this reissue application will NOT be stayed. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.

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14.09 Action in Reissue Not Stayed — Related Litigation Not Overlapping

While there is concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed because there are no significant overlapping issues between the application and that litigation. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.

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14.10 Action in Reissue Not Stayed — Applicant’s Request

While there is concurrent litigation related to this reissue application, action in this reissue application will NOT be stayed because of applicant’s request that the application be examined at this time. Due to the related litigation status of this reissue application, EXTENSIONS OF TIME UNDER THE PROVISIONS OF 37 CFR 1.136(a) WILL NOT BE PERMITTED.

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14.11 Action in Reissue Stayed - Related Litigation

In view of concurrent litigation, and in order to avoid duplication of effort between the two proceedings, action in this reissue application is STAYED until such time as it is evident to the examiner that (1) a stay of the litigation is in effect, (2) the litigation has been terminated, (3) there are no significant overlapping issues between the application and the litigation, or (4) applicant requests that the application be examined.

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14.11.01 Reminder of Duties Imposed by 37 CFR 1.178(b) and 37 CFR 1.56

Applicant is reminded of the continuing obligation under 37 CFR 1.178(b) , to timely apprise the Office of any prior or concurrent proceeding in which Patent No. [1] is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.

Applicant is further reminded of the continuing obligation under 37 CFR 1.56 , to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.

These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404 , 1442.01 and 1442.04 .

Examiner Note:

  • 1. This form paragraph is to be used in the first action in a reissue application.
  • 2. In bracket 1, insert the patent number of the original patent for which reissue is requested.

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14.12 Rejection, 35 U.S.C. 251, Broadened Claims After Two Years

Claim [1] rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. [2] A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.

Examiner Note:

The claim limitations that broaden the scope should be identified and explained in bracket 2. See MPEP § 1412.03 .

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14.13 Rejection, 35 U.S.C. 251, Broadened Claims Filed by Assignee

Claim [1] rejected under 35 U.S.C. 251 as being improperly broadened in a reissue application made and sworn to by the assignee. The application for reissue may be made and sworn to by the assignee of the entire interest only if the application does not seek to enlarge the scope of the claims of the original patent or, for reissue applications filed on or after September 16, 2012, the application for the original patent was filed by the assignee of the entire interest under 37 CFR 1.46 .

[2] A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.

Examiner Note:

The claim limitations that broaden the scope should be identified and explained in bracket 2. See MPEP § 1412.03 .

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14.14 Rejection, Defective Reissue Oath or Declaration

Claim [1] rejected as being based upon a defective reissue [2] under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175 .

The nature of the defect(s) in the [3] is set forth in the discussion above in this Office action.

Examiner Note:

  • 1. In bracket 1, list all claims in the reissue application. See MPEP § 1444 , subsection II.
  • 2. This paragraph must be preceded by form paragraph 14.01 and should be preceded by form paragraphs 14.01.01 to 14.01.06 as appropriate
  • 3. In brackets 2 and 3, insert either --oath-- or --declaration--.

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14.15 Consent of Assignee to Reissue Lacking

This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172 . See MPEP § 1410.01 .

A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.

Examiner Note:

  • 1. This form paragraph may be used in an Office action which rejects any of the claims on other grounds.
  • 2. If a consent document/statement has been submitted but is insufficient (e.g., not by all the assignees) or is otherwise ineffective (e.g., a conditional consent, or a copy of the consent from the parent reissue application was filed in this continuation reissue application and the parent reissue application is not being abandoned), an explanation of such is to be included following this form paragraph.
  • 3. If the case is otherwise ready for allowance, this form paragraph should be followed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 of form paragraph 7.51 ).

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14.16 Failure of Assignee To Establish Ownership

This application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested. An assignee must establish its ownership interest in order to support the consent to a reissue application required by 37 CFR 1.172(a) . The assignee’s ownership interest is established by:

(a) filing in the reissue application evidence of a chain of title from the original owner to the assignee, or

(b) specifying in the record of the reissue application where such evidence is recorded in the Office (e.g., reel and frame number, etc.).

The submission with respect to (a) and (b) to establish ownership must be signed by a party authorized to act on behalf of the assignee. See MPEP § 1410.01 .

An appropriate paper satisfying the requirements of 37 CFR 3.73 must be submitted in reply to this Office action.

Examiner Note:

  • 1. This form paragraph may be used in an Office action which rejects any of the claims on other grounds.
  • 2. If otherwise ready for allowance, this form paragraph should be followed by form paragraph 7.51 (insert the phrase --See above-- in bracket 1 of form paragraph 7.51 ).

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14.16.01 Establishment of Ownership Not Signed by Appropriate Party

This application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested. An assignee must establish its ownership interest in order to support the consent to a reissue application required by 37 CFR 1.172(a) . The submission establishing the ownership interest of the assignee is informal. There is no indication of record that the party who signed the submission is an appropriate party to sign on behalf of the assignee. See 37 CFR 3.73 .

A proper submission establishing ownership interest in the patent, pursuant to 37 CFR 1.172(a) , is required in response to this action.

Examiner Note:

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14.16.02 Failure To State Capacity To Sign

The person who signed the submission establishing ownership interest has failed to state in what capacity the submission on behalf of the corporation or other business entity was signed, and the person who signed it has not been established as being authorized to act on behalf of the assignee. For reissue applications filed on or after September 16, 2012, the submission establishing ownership may be signed by a patent practitioner of record. See 37 CFR 3.73 ; MPEP § 325 .

Examiner Note:

  • 1. This form paragraph is to be used when the person signing the submission establishing ownership interest does not state the person's capacity (e.g., as a recognized officer) to sign for the assignee, and is not established as being authorized to act on behalf of the assignee. For reissue applications filed on or after September 16, 2012, the submission establishing ownership may be signed by a patent practitioner of record (i.e., who has been given power in a power of attorney document in the file).
  • 2. Use form paragraph 14.16.06 to explain how an official, other than a recognized officer, may properly sign a submission establishing ownership interest.

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14.16.03 Lack of Capacity To Sign

The person who signed the submission establishing ownership interest is not recognized as an officer of the assignee, and the person who signed it has not been established as being authorized to act on behalf of the assignee. See MPEP § 324 (for applications filed before September 16, 2012) and § 325 (for applications filed on or after September 16, 2012).

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14.16.04.fti Attorney/Agent of Record Signs - Application Filed Before Sept. 16, 2012

The submission establishing ownership interest was signed by applicant’s [1]. For reissue applications filed before September 16, 2012, an attorney or agent of record is not authorized to sign a submission establishing ownership interest, unless the attorney or agent has been established as being authorized to act on behalf of the assignee. See MPEP § 324 .

Examiner Note:

  • 1. This form paragraph is to be used in reissue applications filed before September 16, 2012, when the person signing the submission establishing ownership interest is an attorney or agent of record who is not an authorized officer as defined in MPEP § 324 and has not been established as being authorized to act on behalf of the assignee. For reissue applications filed on or after September 16, 2012, the submission may be signed by a patent practitioner of record. See 37 CFR 3.73(d)(3) .
  • 2. Use form paragraph 14.16.06 to explain how an official, other than a recognized officer, may properly sign a submission establishing ownership interest.
  • 3. In bracket 1, insert either --attorney-- or --agent--.

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14.16.06 Criteria To Accept When Signed by a Non-Recognized Officer

It would be acceptable for a person, other than a recognized officer, to sign a submission establishing ownership interest, provided the record for the application includes a duly signed statement that the person is empowered to sign a submission establishing ownership interest and/or act on behalf of the assignee.

Accordingly, a new submission establishing ownership interest which includes such a statement above, will be considered to be signed by an appropriate official of the assignee. A separately filed paper referencing the previously filed submission establishing ownership interest and containing a proper empowerment statement would also be acceptable.

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraphs 14.16.02 , 14.16.03 or 14.16.04.fti .
  • 2. When one of form paragraphs 14.16.02 , 14.16.03 or 14.16.04.fti is used to indicate that a submission establishing ownership interest is not proper because it was not signed by a recognized officer, this form paragraph should be used to point out one way to correct the problem.
  • 3. While an indication of the person’s title is desirable, its inclusion is not mandatory when this option is employed.

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14.17 Rejection, 35 U.S.C. 251, Recapture

Claim [1] rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC , 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith , 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc. , 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States , 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251 , and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.

[2]

Examiner Note:

In bracket 2, the examiner should explain the specifics of why recapture exists, including an identification of the omitted/broadened claim limitations in the reissue which provide the “broadening aspect” to the claim(s), where in the original application the narrowed claim scope was presented/argued to obviate a rejection/objection, and that the reissue claim is not materially narrowed to avoid recapture (i.e., explain the prima facie analysis done for steps 1-3). See MPEP § 1412.02 .

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14.20.01 Amendments To Reissue-37 CFR 1.173(b)

Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b) . In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01 .

Examiner Note:

This form paragraph may be used in the first Office action to advise applicant of the proper manner of making amendments, and to notify applicant of the need to file a supplemental oath/declaration before the application can be allowed.

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14.21.01 Improper Amendment To Reissue - 37 CFR 1.173(b)

The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.173(b) , which sets forth the manner of making amendments in reissue applications. A supplemental paper correctly amending the reissue application is required.

A shortened statutory period for reply to this letter is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter.

Examiner Note:

  • 1. This form paragraph may be used for any 37 CFR 1.173(b) informality as to an amendment submitted in a reissue application prior to final rejection. After final rejection, applicant should be informed that the amendment will not be entered by way of an Advisory Office action .
  • 2. In bracket 2, specify the proposed amendments that are not in compliance.

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14.21.09.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive Intention - Application filed Before Sept. 16, 2012, External Knowledge

Claims [1] rejected under pre-AIA 35 U.S.C. 251 because this application was filed before September 16, 2012 and error “without any deceptive intention” has not been established. In view of the judicial determination in [2] of [3] on the part of applicant, a conclusion that any error was “without deceptive intention” cannot be supported. [4]

Examiner Note:

  • 1. In bracket 1, list all claims in the reissue application.
  • 2. In bracket 2, list the Court or administrative body which made the determination of fraud or inequitable conduct on the part of applicant.
  • 3. In bracket 3, insert --fraud--, --inequitable conduct-- and/or --violation of duty of disclosure--.
  • 4. In bracket 4, point out where in the opinion (or holding) of the Court or administrative body the determination of fraud, inequitable conduct or violation of duty of disclosure is set forth. Page number, column number, and paragraph information should be given as to the opinion (or holding) of the Court or administrative body. The examiner may add explanatory comments.
  • 5. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.

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14.22.01 Rejection, 35 U.S.C. 251 , New Matter

Claim [1] rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows: [2]

Examiner Note:

  • 1. In bracket 2, fill in the applicable page and line numbers and provide an explanation of your position, as appropriate.
  • 2. A rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, should also be made if the new matter is added to the claims or is added to the specification and affects the claims. If new matter is added to the specification and does not affect the claims, an objection should be made based upon 35 U.S.C. 132 using form paragraph 7.28 .

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14.22.fti Rejection, Pre-AIA 35 U.S.C. 251, No Error Without Deceptive Intention — Application filed Before Sept. 16, 2012, Evidence in the Application

Claims [1] rejected under pre-AIA 35 U.S.C. 251 because this application was filed before September 16, 2012 and error “without any deceptive intention” has not been established. In view of the reply filed on [2], a conclusion that any error was “without deceptive intention” cannot be supported. [3]

Examiner Note:

  • 1. In bracket 1, list all claims in the reissue application.
  • 2. In bracket 2, insert the filing date of the reply which provides an admission of fraud, inequitable conduct or violation of duty of disclosure, or that there was a judicial determination of same.
  • 3. In bracket 3, insert a statement that there has been an admission or a judicial determination of fraud, inequitable conduct or violation of duty of disclosure which provide circumstances why applicant’s statement in the oath or declaration of lack of deceptive intent should not be taken as dispositive. Any admission of fraud, inequitable conduct or violation of duty of disclosure must be explicit, unequivocal, and not subject to other interpretation.
  • 4. Do not use this form paragraph in a reissue application filed on or after September 16, 2012.

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14.23 Terminal Disclaimer Proper

The terminal disclaimer filed on [1] disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of [2] has been reviewed and is accepted. The terminal disclaimer has been recorded.

Examiner Note:

  • 1. In bracket 1, insert the date the terminal disclaimer was filed.
  • 2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
  • 3. See MPEP § 1490 for discussion of requirements for a proper terminal disclaimer.
  • 4. Use form paragraph 14.23.01 for reexamination proceedings.
  • 5. For improper terminal disclaimers, see form paragraphs 14.24 et seq.

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14.23.01 Terminal Disclaimer Proper (Reexamination Only)

The terminal disclaimer filed on [1] disclaiming the terminal portion of the patent being reexamined which would extend beyond the expiration date of [2] has been reviewed and is accepted. The terminal disclaimer has been recorded.

Examiner Note:

  • 1. In bracket 1, insert the date the terminal disclaimer was filed.
  • 2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
  • 3. See MPEP § 1490 for discussion of requirements for a proper terminal disclaimer.
  • 4. For improper terminal disclaimers, see the form paragraphs which follow.

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14.24 Terminal Disclaimer Not Proper - Introductory Paragraph

The terminal disclaimer filed on [1] disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of [2] has been reviewed and is NOT accepted.

Examiner Note:

  • 1. In bracket 1, insert the date the terminal disclaimer was filed.
  • 2. In bracket 2, list the Patent Number and/or Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
  • 3. One or more of the appropriate form paragraphs 14.26 to 14.32 MUST follow this form paragraph to indicate why the terminal disclaimer is not accepted.
  • 4. Form paragraph 14.35 may be used to inform applicant that the previously submitted disclaimer fee will be applied when a replacement or supplemental terminal disclaimer is submitted.
  • 5. Do not use in reexamination proceedings; use form paragraph 14.25 instead.

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14.25 Terminal Disclaimer Not Proper - Introductory Paragraph (Reexamination Only)

The terminal disclaimer filed on [1] disclaiming the terminal portion of the patent being reexamined which would extend beyond the expiration date of [2] has been reviewed and is NOT accepted.

Examiner Note:

  • 1. In bracket 1, insert the date the terminal disclaimer was filed.
  • 2. In bracket 2, list the Patent Number and/or the Application Number (including series code and serial no.). Where an Application Number is listed, it must be preceded by the phrase --any patent granted on Application Number--.
  • 3. One or more of the appropriate form paragraphs 14.26 to 14.32 MUST follow this form paragraph to indicate why the terminal disclaimer is not accepted.
  • 4. Form paragraph 14.35 may be used to inform applicant that the previously submitted disclaimer fee will be applied when a replacement or supplemental terminal disclaimer is submitted.

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14.26 Does Not Comply With 37 CFR 1.321 “Sub-Heading” Only

The terminal disclaimer does not comply with 37 CFR 1.321 because:

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 and followed by one or more of the appropriate form paragraphs 14.26.01 to 14.27.03 .

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14.26.01 Extent of Interest Not Stated

The person who has signed the disclaimer has not stated the extent of the applicant's or assignee’s interest in the application/patent. See 37 CFR 1.321(b)(3) .

Examiner Note:

This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .

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14.26.02 Directed to Particular Claim(s)

It is directed to a particular claim or claims, which is not acceptable, since “the disclaimer must be of a terminal portion of the term of the entire [patent or] patent to be granted.” See MPEP § 1490 .

Examiner Note:

This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .

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14.26.03 Not Signed

The terminal disclaimer was not signed.

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .

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14.26.04 Application/Patent Not Identified

The application/patent being disclaimed has not been identified.

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .

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14.26.05 Application/Patent Improperly Identified

The application/patent being disclaimed has been improperly identified since the number used to identify the [1] being disclaimed is incorrect. The correct number is [2].

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .
  • 2. In bracket 1, insert --application-- or --patent--.
  • 3. In bracket 2, insert the correct Application Number (including series code and serial no.) or the correct Patent Number being disclaimed.
  • 4. A terminal disclaimer is acceptable if it includes the correct Patent Number or the correct Application Number or the serial number together with the proper filing date or the proper series code.

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14.26.06.fti Not Signed by All Owners - Application Filed Before Sept. 16, 2012

This application was filed before September 16, 2012. The terminal disclaimer was not signed by all owners and, therefore, supplemental terminal disclaimers are required from the remaining owners.

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .
  • 2. Do not use this form paragraph in an application filed on or after September 16, 2012.

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14.26.07 No Disclaimer Fee Submitted

The disclaimer fee of $ [1] in accordance with 37 CFR 1.20(d) has not been submitted, nor is there any authorization in the application file to charge a specified Deposit Account or credit card.

Examiner Note:

  • 1. In bracket 1, insert the fee for a disclaimer.
  • 2. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 . If the disclaimer fee was paid for a terminal disclaimer which was not accepted, the previously submitted disclaimer fee will be applied when a replacement or supplemental terminal disclaimer is submitted, and this form paragraph should not be used.

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14.26.08 Terminal Disclaimer Not Properly Signed - Application Filed On or After Sept. 16, 2012

This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b) .

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .
  • 2. Do not use this form paragraph in an application filed before September 16, 2012.

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14.26.09 Failure To State Capacity To Sign - Application Filed On or After Sept. 16, 2012

This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer has failed to state in what capacity it was signed on behalf of the juristic entity, and the person who signed it has not been established as being authorized to act on behalf of the juristic entity.

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .
  • 2. Do not use this form paragraph in an application filed before September 16, 2012.

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14.26.10 Terminal Disclaimer Identifies Party Who Is Not The Applicant - Application Filed On or After Sept. 16, 2012

This application was filed on or after September 16, 2012. The party identified in the terminal disclaimer is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73 . To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c) .

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .
  • 2. Do not use this form paragraph in an application filed before September 16, 2012.

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14.27.01 Lacks Clause of Enforceable Only During Period of Common Ownership

It does not include a recitation that any patent granted shall be enforceable only for and during such period that said patent is commonly owned with the application(s) or patent(s) which formed the basis for the double patenting rejection. See 37 CFR 1.321(c)(3) .

Examiner Note:

This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .

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14.27.011 Lacks 37 CFR 1.321(d) Statement for Joint Research Agreement under 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2)&(3)

It does not include the waiver and enforceability provisions of 37 CFR 1.321(d) . The terminal disclaimer must include a provision:

(1) waiving the right to separately enforce (a) any patent granted on that application or the patent being reexamined and (b) the reference patent, or any patent granted on the reference application which formed the basis for the double patenting rejection; and

(2) agreeing that any patent granted on that application or patent being reexamined shall be enforceable only for and during such period that said patent and the reference patent, or any patent granted on the reference application, which formed the basis for the double patenting are not separately enforced.

See 37 CFR 1.321(d)(3) .

Examiner Note:

  • 1. For applications filed before September 16, 2012, this form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 , and should be followed by either form paragraph 14.27.07.fti or form paragraph 14.27.08 .
  • 2. For applications filed on or after September 16, 2012, this form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 , and should be followed by either form paragraph 14.27.07.1 or form paragraph 14.27.08 .

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14.27.02 Fails To Disclaim Terminal Portion of Any Patent Granted On Subject Application

It fails to disclaim the terminal portion of any patent granted on the subject application.

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .
  • 2. Use this form paragraph when the period disclaimed is not the correct period or when no period is specified at all.
  • 3. When using this form paragraph, give an example of proper terminal disclaimer language using form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) following this or the series of statements concerning the defective terminal disclaimer.

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14.27.03 Fails To Disclaim Terminal Portion of Subject Patent

It fails to disclaim the terminal portion of the subject patent.

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .
  • 2. Use this form paragraph in a reissue application or reexamination proceeding when the period disclaimed is not the correct period or when no period is specified at all.

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14.27.04.1 Examples of Acceptable Terminal Disclaimer Language in Patent To Be Granted – Application Filed On or After Sept. 16, 2012

This application was filed on or after September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:

  • I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, use:

    The applicant, ________________, owner of ____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference application Number ______________, filed on ____________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The applicant hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and any patent granted on the reference application are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.

  • II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, use:

    The applicant, ________________, owner of ____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of reference patent No. ________________ as the term of said reference patent is presently shortened by any terminal disclaimer. The applicant hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and the reference patent are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.

Alternatively, Form PTO/AIA/25 may be used for situation I, and Form PTO/AIA/26 may be used for situation II. A copy of the forms may be found at the end of MPEP § 1490 .

Examiner Note:

  • 1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation), other than for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.06 .
  • 2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.1 for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

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14.27.04.fti Examples of Acceptable Terminal Disclaimer Language in Patent To Be Granted -Application Filed Before Sept. 16, 2012

This application was filed before September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:

  • I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, use:

    The owner, _________________, of _____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference application Number ________________, filed on _____________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and any patent granted on the reference application are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.

  • II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, use:

    The owner, _________________, of _____ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of patent No. ________________ (the "reference patent") as the term of said reference patent is presently shortened by any terminal disclaimer. The owner hereby agrees that any patent so granted on the instant application shall be enforceable only for and during such period that it and the reference patent are commonly owned. This agreement runs with any patent granted on the instant application and is binding upon the grantee, its successors or assigns.

Alternatively, Form PTO/SB/25 may be used for situation I, and Form PTO/SB/26 may be used for situation II. A copy of the forms may be found at the end of MPEP § 1490 .

Examiner Note:

  • 1. This form paragraph may be used in an application filed before September 16, 2012.
  • 2. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation), other than for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.06 .
  • 3. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.fti for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

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14.27.06 Examples of Acceptable Terminal Disclaimer Language in Patent (Reexamination Situation)

Examples of acceptable language for making the disclaimer of the terminal portion of the patent being reexamined (or otherwise for an existing patent) follow:

  • I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, or is otherwise believed to be applicable to the patent, use:

    The patentee, ___________, owner of __________ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference application No. ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application. The patentee hereby agrees that the instant patent shall be enforceable only for and during such period that the instant patent and any patent granted on the reference application are commonly owned. This agreement is binding upon the patentee, its successors, or assigns.

  • II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, or is otherwise believed to be applicable to the instant patent, use:

    The patentee, ___________, owner of ________ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of reference patent No. ______________ as the term of said reference patent is presently shortened by any terminal disclaimer. The patentee hereby agrees that the instant patent shall be enforceable only for and during such period that the instant patent and the reference patent are commonly owned. This agreement is binding upon the patentee, its successors, or assigns.

Alternatively, Form PTO/SB/25a may be used for situation I, and Form PTO/SB/26a may be used for situation II. A copy of the forms may be found at the end of MPEP § 1490 .

Examiner Note:

  • 1. To provide examples of acceptable terminal disclaimer language in a patent to be granted on an application (generally, an application being examined), other than for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012).
  • 2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.07.fti (for applications filed before September 16, 2012) or form paragraph 14.27.07.1 (for applications filed on or after September 16, 2012) for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.08 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

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14.27.07.1 Examples of Acceptable Terminal Disclaimer Language – Application Filed On or After Sept. 16, 2012, Activities Undertaken Within the Scope of a Joint Research Agreement

This application was filed on or after September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:

  • I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, use:

    The applicant, __________________, owner of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference application Number ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.

    The applicant of the instant application waives the right to separately enforce any patent granted on the instant application and any patent granted on the reference application. The applicant of the instant application hereby agrees that any patent granted on the instant application shall be enforceable only for and during such period that any patent granted on the instant application and any patent granted on the reference application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the applicant of the instant application, its successors, or assigns.

  • II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, use:

    The applicant, __________________, owner of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of reference patent No. _________________, as the term of said reference patent is presently shortened by any terminal disclaimer.

    The applicant of the instant application waives the right to separately enforce the reference patent and any patent granted on the instant application. The applicant of the instant application hereby agrees that any patent granted on the instant application shall be enforceable only for and during such period that the reference patent and any patent granted on the instant application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the applicant of the instant application, its successors, or assigns.

Examiner Note:

  • 1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.08 .
  • 2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.04.1 for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

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14.27.07.fti Examples of Acceptable Terminal Disclaimer Language – Application Filed Before Sept. 16, 2012, Activities Undertaken Within the Scope of a Joint Research Agreement

This application was filed before September 16, 2012. Examples of acceptable language for making the disclaimer of the terminal portion of any patent granted on the subject application follow:

  • I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, use:

    The owner, __________________, of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference application Number ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.

    The owner of the instant application waives the right to separately enforce any patent granted on the instant application and any patent granted on the reference application. The owner of the instant application hereby agrees that any patent granted on the instant application shall be enforceable only for and during such period that any patent granted on the instant application and any patent granted on the reference application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the owner of the instant application, its successors, or assigns.

  • II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, use:

    The owner, __________________, of _______ percent interest in the instant application hereby disclaims the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of reference patent No. _________________, as the term of said reference patent is presently shortened by any terminal disclaimer.

    The owner of the instant application waives the right to separately enforce the reference patent and any patent granted on the instant application. The owner of the instant application hereby agrees that any patent granted on the instant application shall be enforceable only for and during such period that the reference patent and any patent granted on the instant application are not separately enforced. The waiver, and this agreement, run with any patent granted on the instant application and are binding upon the owner of the instant application, its successors, or assigns.

Examiner Note:

  • 1. To provide examples of acceptable terminal disclaimer language in a patent (e.g., for a reexamination situation) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.08 .
  • 2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

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14.27.08 Examples of Acceptable Terminal Disclaimer Language in Patent (Reexamination Situation; activities undertaken within the scope of a joint research agreement)

Examples of acceptable language for making the disclaimer of the terminal portion of the patent being reexamined (or otherwise for an existing patent) follow:

  • I. If a Provisional Nonstatutory Double Patenting Rejection Over A Pending Application was made, or is otherwise believed to be applicable to the patent, use:

    The patentee, ______________, owner of _______ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of any patent granted on pending reference Application Number ______________, filed on ______________, as the term of any patent granted on said reference application may be shortened by any terminal disclaimer filed prior to the grant of any patent on the pending reference application.

    The patentee waives the right to separately enforce the instant patent and any patent granted on the pending reference application. The patentee agrees that the instant patent shall be enforceable only for and during such period that the instant patent and the patent granted on the pending reference application are not separately enforced. The waiver and this agreement run with the instant patent and are binding upon the patentee, its successors, or assigns.

  • II. If a Nonstatutory Double Patenting Rejection Over A Reference Patent was made, or is otherwise believed to be applicable to the instant patent, use:

    The patentee, owner of _______ percent interest in the instant patent hereby disclaims the terminal part of the statutory term of the instant patent, which would extend beyond the expiration date of the full statutory term of reference patent No. _________________, as the term of said reference patent is presently shortened by any terminal disclaimer.

    The patentee waives the right to separately enforce the instant patent and the reference patent. The patentee agrees that the instant patent shall be enforceable only for and during such period that the instant patent and the reference patent are not separately enforced. The waiver and this agreement run with the instant patent and are binding upon the patentee, its successors, or assigns.

Examiner Note:

  • 1. To provide examples of acceptable terminal disclaimer language in a patent to be granted on an application (generally, an application being examined) for a terminal disclaimer based on activities undertaken within the scope of a joint research agreement, use form paragraph 14.27.07.fti (for applications filed before September 16, 2012) or form paragraph 14.27.07.1 (for applications filed on or after September 16, 2012).
  • 2. To provide examples of acceptable terminal disclaimer language for a terminal disclaimer in a situation other than one based on activities undertaken within the scope of a joint research agreement, (a) use form paragraph 14.27.04.fti (for applications filed before September 16, 2012) or form paragraph 14.27.04.1 (for applications filed on or after September 16, 2012) for making the disclaimer of the terminal portion of a patent to be granted on an application (generally, an application being examined), and (b) use form paragraph 14.27.06 for making the disclaimer of the terminal portion of an existing patent (e.g., for a reexamination situation).

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14.28.fti Failure To State Capacity To Sign – Application Filed Before Sept. 16, 2012

This application was filed before September 16, 2012. The person who signed the terminal disclaimer has failed to state in what capacity it was signed on behalf of the corporation, or other business entity or organization, and the person who signed it has not been established as being authorized to act on behalf of the assignee.

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.26 .
  • 2. Do not use this form paragraph in an application filed on or after September 16, 2012.

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14.29.02.fti Criteria To Accept Terminal Disclaimer When Signed by a Non-Recognized Officer – Application Filed Before September 16, 2012

This application was filed before September 16, 2012. It would be acceptable for a person, other than a recognized officer, to sign a terminal disclaimer, provided the record for the application includes a statement that the person is empowered to sign terminal disclaimers and/or act on behalf of the assignee.

Accordingly, a new terminal disclaimer which includes the above empowerment statement will be considered to be signed by an appropriate official of the assignee. A separately filed paper referencing the previously filed terminal disclaimer and containing a proper empowerment statement would also be acceptable, if filed with another copy of the previously filed terminal disclaimer.

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 AND form paragraph 14.29.fti .
  • 2. When form paragraph 14.29.fti is used to indicate that a terminal disclaimer is denied because it was not signed by a recognized officer nor by an attorney or agent of record, this form paragraph should be used to point out one way to correct the problem.
  • 3. While an indication of the person’s title is desirable, its inclusion is not mandatory when this option is employed.
  • 4. A sample terminal disclaimer should be sent with the Office action.

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14.29.fti Not Recognized as Officer of Assignee – Application Filed Before Sept. 16, 2012, “Sub-Heading” Only

This application was filed before September 16, 2012. The person who signed the terminal disclaimer is not an attorney or agent of record, is not recognized as an officer of the assignee, and has not been established as being authorized to act on behalf of the assignee. See MPEP § 324 .

Examiner Note:

  • 1. This form paragraph is to be used ONLY in applications filed before September 16, 2012 when the person signing the terminal disclaimer is not an authorized officer as defined in MPEP § 324 or is an attorney or agent not of record (e.g., acting in a representative capacity under 37 CFR 1.34 ).
  • 2. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 and followed by form paragraph 14.29.02.fti when appropriate. An attorney or agent of record is authorized to sign the terminal disclaimer, even though there is no indication that the attorney or agent is an officer of the assignee.
  • 3. Use form paragraph 14.29.02.fti to explain how an official, other than a recognized officer, may properly sign a terminal disclaimer.

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14.30.01 No Evidence of Chain of Title to Assignee (Reexamination Situations)

The assignee has not established its ownership interest in the patent, in order to support the terminal disclaimer. There is no submission in the record establishing the ownership interest by either: (a) providing documentary evidence of a chain of title from the original inventor(s) to the assignee and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11 ; or (b) specifying (by reel and frame number) where such documentary evidence is recorded in the Office ( 37 CFR 3.73 ).

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 .
  • 2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide a statement under 37 CFR 3.73 . Thus, this form paragraph should not be used.
  • 3. It should be noted that the documentary evidence or the specifying of reel and frame number may be found in the terminal disclaimer itself or in a separate paper in the application.

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14.30.02.fti Evidence of Chain of Title to Assignee - Submission Not Signed by Appropriate Party – Application Filed Before Sept. 16, 2012, Terminal Disclaimer Is Thus Not Entered

This application was filed before September 16, 2012. The submission establishing the ownership interest of the assignee is informal. There is no indication of record that the party who signed the submission establishing the ownership interest is authorized to sign the submission ( 37 CFR 3.73 ).

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 .
  • 2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide any statement under 37 CFR 3.73 . Thus, this form paragraph should not be used.
  • 3. This form paragraph should be followed by one of form paragraphs 14.16.02 or 14.16.03 . In rare situations where BOTH form paragraphs 14.16.02 and 14.16.03 do not apply and thus cannot be used, the examiner should instead follow this form paragraph with a detailed statement of why there is no authorization to sign.
  • 4. Use form paragraph 14.16.06 to point out one way to correct the problem.
  • 5. Do not use this form paragraph in an application filed on or after September 16, 2012.

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14.30.fti No Evidence of Chain of Title to Assignee - Application Filed Before Sept. 16, 2012

This application was filed before September 16, 2012. The assignee has not established its ownership interest in the application, in order to support the terminal disclaimer. There is no submission in the record establishing the ownership interest by either (a) providing documentary evidence of a chain of title from the original inventor(s) to the assignee and a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11 , or (b) specifying (by reel and frame number) where such documentary evidence is recorded in the Office ( 37 CFR 3.73 ).

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 .
  • 2. Where an attorney or agent of record signs a terminal disclaimer, there is no need to provide a statement under 37 CFR 3.73 . Thus, this form paragraph should not be used.
  • 3. It should be noted that the documentary evidence or the specifying of reel and frame number may be found in the terminal disclaimer itself or in a separate paper.

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14.32 Application/Patent Which Forms Basis for Rejection Not Identified

The application/patent which forms the basis for the double patenting rejection is not identified in the terminal disclaimer.

Examiner Note:

  • 1. This form paragraph MUST be preceded by form paragraph 14.24 or 14.25 .
  • 2. Use this form paragraph when no information is presented. If incorrect information is contained in the terminal disclaimer, use form paragraphs 14.26 and 14.26.05 .

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14.33 37 CFR 3.73 - Establishing Right of Assignee To Take Action

The following is a statement of 37 CFR 3.73 as applicable to applications filed on or after September 16, 2012:

37 CFR 3.73 Establishing right of assignee to take action.

  • (a) The original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
  • (b) In order to request or take action in a trademark matter, the assignee must establish its ownership of the trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
    • (1) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office; or
    • (2) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
  • (c)
    • (1) In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting a signed statement identifying the assignee, accompanied by either:
      • (i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment). The submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11 ; or
      • (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).
    • (2) If the submission is by an assignee of less than the entire right, title and interest (e.g., more than one assignee exists) the Office may refuse to accept the submission as an establishment of ownership unless:
      • (i) Each assignee establishes the extent (by percentage) of its ownership interest, so as to account for the entire right, title and interest in the application or patent by all parties including inventors; or
      • (ii) Each assignee submits a statement identifying the parties including inventors who together own the entire right, title and interest and stating that all the identified parties owns the entire right, title and interest.
    • (3) If two or more purported assignees file conflicting statements under paragraph (c)(1) of this section, the Director will determine while, if any, purported assignees will be permitted to control prosecution of the application.
  • (d) The submission establishing ownership under paragraph (b) or (c) of this section must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
    • (1) Including a statement that the person is authorized to act on behalf of the assignee;
    • (2) Being signed by a person having apparent authority to sign on behalf of the assignee; or
    • (3) For patent matters only, being signed by a practitioner of record.

The following is a statement of pre-AIA 37 CFR 3.73 as applicable to applications filed before September 16, 2012:

Pre-AIA 37 CFR 3.73 Establishing right of assignee to take action.

  • (a) The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.
  • (b)
    • (1) In order to request or take action in a patent or trademark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:
      • (i) Documentary evidence of a chain of title from the original owner to the assignee ( e.g., copy of an executed assignment). For trademark matters only, the documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to permitting the assignee to take action in a matter pending before the Office. For patent matters only, the submission of the documentary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to § 3.11 ; or
      • (ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office ( e.g., reel and frame number).
    • (2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:
      • (i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or
      • (ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.
    • (c) For patent matters only:
      • (1) Establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted.
      • (2) If the submission under this section is by an assignee of less than the entire right, title and interest, such assignee must indicate the extent (by percentage) of its ownership interest, or the Office may refuse to accept the submission as an establishment of ownership.

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14.34 Requirement for Statement To Record Assignment Submitted With Terminal Disclaimer

The assignment document filed on [1] is not acceptable as the documentary evidence required by 37 CFR 3.73 . The submission of the documentary evidence was not accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11 . See 37 CFR 3.11 and MPEP § 302 .

Examiner Note:

  • 1. In bracket 1, insert the date the assignment document was filed.
  • 2. This form paragraph should be used when an assignment document (an original, facsimile, or copy) is submitted to satisfy 37 CFR 3.73 was not accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was, or concurrently is being, submitted for recordation, and the documentary evidence has not been recorded among the assignment records of the Office.

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14.35 Previously Submitted Disclaimer Fee Can Be Applied - Applicant

The previously paid disclaimer fee as set forth in 37 CFR 1.20(d) can be applied when submitting a replacement or supplemental terminal disclaimer. If, however, the disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid, then applicant must pay the difference between the increased fee and the amount previously paid.

Examiner Note:

  • 1. This form paragraph can be used to notify an applicant that the previously submitted disclaimer fee can be applied when a replacement or supplemental terminal disclaimer is submitted.
  • 2. Use form paragraph 14.35.01 for providing notification to patent owner, rather than an applicant.

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14.35.01 Previously Submitted Disclaimer Fee Can Be Applied - Patent Owner

The previously submitted disclaimer fee as set forth in 37 CFR 1.20(d) can be applied when submitting a replacement or supplemental terminal disclaimer. If, however, the disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid, then patent owner must pay the difference between the increased fee and the amount previously paid.

Examiner Note:

This form paragraph can be used to notify a patent owner that the previously submitted disclaimer fee can be applied when a replacement or supplemental terminal disclaimer is submitted.

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14.36 Suggestion That “Applicant” Request a Refund

The fee for the terminal disclaimer that was previously submitted has been applied to the filing of the replacement or supplemental terminal disclaimer. If the disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid, then applicant must pay the difference between the increased fee and the amount previously paid. Therefore, applicant's payment of another terminal disclaimer fee under 37 CFR 1.20(d) is not required or is not required for the full amount. Applicant may request a refund of any payment more than the terminal disclaimer fee required when the replacement or supplemental terminal disclaimer was filed by submitting a written request for a refund and a copy of this Office action to: Mail Stop 16, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Examiner Note:

  • 1. This form paragraph should be used to notify applicant that a refund can be obtained if another terminal disclaimer fee was paid when a replacement or supplemental terminal disclaimer was submitted and the previously paid disclaimer fee was applied.
  • 2. Note - If applicant has authorized or requested a fee refund to be credited to a specific Deposit Account or credit card, then an appropriate credit should be made to that Deposit Account or credit card and this paragraph should NOT be used.
  • 3. Use form paragraph 14.36.01 for providing notification to patent owner, rather than an applicant.

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14.36.01 Suggestion That “Patent Owner” Request a Refund

The fee for the terminal disclaimer that was previously submitted has been applied to the filing of the replacement or supplemental terminal disclaimer. If the disclaimer fee set forth in 37 CFR 1.20(d) has been increased since the fee was previously paid, then patent owner must pay the difference between the increased fee and the amount previously paid. Therefore, patent owner's payment of another terminal disclaimer fee under 37 CFR 1.20(d) is not required or is not required for the full amount. Patent owner may request a refund of any payment more than the terminal disclaimer fee required when the replacement or supplemental terminal disclaimer was filed by submitting a written request for a refund and a copy of this Office action to: Mail Stop 16, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Examiner Note:

  • 1. This form paragraph should be used to notify patent owner that a refund can be obtained if another terminal disclaimer fee was paid when a replacement or supplemental terminal disclaimer was submitted and the previously paid disclaimer fee was applied.
  • 2. Note - If patent owner has authorized or requested a fee refund to be credited to a specific Deposit Account or credit card, then an appropriate credit should be made to that Deposit Account or credit card and this form paragraph should NOT be used.

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14.37 Information about a Terminal Disclaimer Over a Pending Application

A terminal disclaimer may be effective to overcome a provisional nonstatutory double patenting rejection over a pending application ( 37 CFR 1.321(b) and (c) ). A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b) .

The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional, the reply must be complete. MPEP § 804 , subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a) . For a reply to final Office action, see 37 CFR 1.113(c) . A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13 .

The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/PatentForms . The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/TerminalDisclaimer .

Examiner Note:

This form paragraph can be used to provide applicant information regarding the terminal disclaimer forms available on the USPTO website that may be used to overcome a provisional nonstatutory double patenting rejection over a pending application.

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14.38 Information about a Terminal Disclaimer Over a Reference Patent

A terminal disclaimer may be effective to overcome a nonstatutory double patenting rejection over a reference patent ( 37 CFR 1.321(b) and (c) ). A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b) .

The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional, the reply must be complete. MPEP § 804 , subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a) . For a reply to final Office action, see 37 CFR 1.113(c) . A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13 .

The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/PatentForms . The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/TerminalDisclaimer .

Examiner Note:

This form paragraph can be used to provide applicant information regarding the terminal disclaimer forms available on the USPTO website that may be used to overcome a nonstatutory double patenting rejection over a reference patent.

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15.01 Conditions Under 35 U.S.C. 119(a)-(d), 172, 386(a) and (b)

Applicant is advised of conditions as specified in 35 U.S.C. 119(a) - (d) , 172 , 386(a) and (b) . An application for a design patent for an invention filed in this country by any person who has, or whose legal representatives have previously filed an application for a design patent, or equivalent protection for the same design in a foreign country which offers similar privileges in the case of applications filed in the United States or in a WTO member country, or to citizens of the United States, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within six (6) months from the earliest date on which such foreign application was filed. If the design application is filed within two months from the expiration of the six-month period and the delay was unintentional, the right of priority in the design application may be restored by filing a petition under 37 CFR 1.55(c) .

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15.01.01 Conditions Under 35 U.S.C. 172 Not Met

The claim for priority under 35 U.S.C. 119(a) - (d) , 386(a) or (b) to the [1] application is acknowledged, however, the claim for priority cannot be based on such application since it was filed more than six (6) months before the filing date of the subsequent application in the United States and no petition to restore the right of priority under 37 CFR 1.55(c) has been granted. 35 U.S.C 172 .

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 six-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) , 386(a) or (b) 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 six-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:

In bracket 1, insert the name of the foreign country.

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15.02 Claimed Foreign Priority, No 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. In the case of a design application, the certified copy must be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(g) together with the fee set forth in 37 CFR 1.17(g), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. If the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.

Examiner Note:

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

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15.03 Certified Copy Filed, But Proper Claim Not Made

Receipt is acknowledged of a certified copy of foreign application [1]. If this copy is being filed to obtain priority to the foreign filing date under 35 U.S.C. 119(a)-(d), 386(a) or (b), applicant should also file a claim for such priority as required by 35 U.S.C. 119(b). If the application was filed before September 16, 2012, the priority claim must be made in either the oath or declaration or in an application data sheet; if the application was filed on or after September 16, 2012, the claim for foreign priority must be presented in an application data sheet.

In the case of a design application, the claim for priority must be presented during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e). If the claim for priority is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.

Examiner Note:

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

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15.03.01.fti Foreign Filing More Than 6 Months Before U.S. Filing, Application Filed Before March 16, 2013

Acknowledgment is made of the [1] application identified in the oath or declaration or application data sheet which was filed more than six months prior to the filing date of the present application. Applicant is reminded that if the [2] application matured into a form of patent protection before the filing date of the present application it would constitute a statutory bar to the issuance of a design patent in the United States under pre-AIA 35 U.S.C. 102(d) in view of pre-AIA 35 U.S.C. 172 .

Examiner Note:

In brackets 1 and 2, insert the name of country where application was filed.

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15.04 Priority Under Bilateral or Multilateral Treaties

The United States will recognize claims for the right of priority under 35 U.S.C. 119(a) - (d) based on applications filed under such bilateral or multilateral treaties as the Hague Agreement Concerning the International Deposit of Industrial Designs, the Benelux Designs Convention and European Community Design. In filing a claim for priority of a foreign application previously filed under such a treaty, certain information must be supplied to the United States Patent and Trademark Office. The required information is (1) the application number: (2) the date of filing of the application, and (3) the name and location of the national or international governmental authority which received such application.

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15.05 Design Patent Specification Arrangement (Ch. 16 Design Application)

The following order or arrangement should be observed in framing a design patent specification:

  • (1) Preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.
  • (2) Cross-reference to related applications.
  • (3) Statement regarding federally sponsored research or development.
  • (4) Description of the figure or figures of the drawing.
  • (5) Feature description.
  • (6) A single claim.

Examiner Note:

Do not use this form paragraph in an international design application.

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15.05.01 Title of Design Invention

The title of a design must designate the name of the article in which the design is embodied or applied to. In addition, the title must correspond with the claim. See MPEP § 1503.01 and 37 CFR 1.153 or MPEP § 2920.04(a) and 37 CFR 1.1067 .

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15.05.03 Drawing/Photograph Disclosure Objected To

The drawing/photograph disclosure is objected to because [1].

Examiner Note:

In bracket 1, insert the reason for the objection.

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15.05.04 Replacement Drawing Sheets Required

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. If all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. 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.

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15.05.041 Color Drawing(s)/Photograph(s) Submitted

Color photographs or drawings have been submitted in this application. If replacement drawings are submitted, any showing of color in a black and white drawing is limited to the symbols used to line a surface to show color ( MPEP § 608.02 ) and must comply with the written description requirements of 35 U.S.C. 112 . Additionally, lining entire surfaces of a design to show color(s) may interfere with a clear showing of the design as required by 35 U.S.C. 112 because surface shading cannot be used simultaneously to define the contours of those surfaces. However, a surface may be partially lined for color with a description that the color extends across the entire surface; this technique would allow for the use of shading on the rest of the surface showing the contours of the design ( 37 CFR 1.152 ). In the alternative, a separate view, properly shaded to show the contours of the design but omitting the color(s), may be submitted if identified as shown only for clarity of illustration. Photographs and ink drawings are not permitted to be combined as drawings in one application.

In any drawing lined for color, the following descriptive statement must be inserted in the specification (the specific colors may be identified for clarity):

--The drawing is lined for color.--

However, some designs disclosed in color photographs/drawings cannot be depicted in black and white drawings lined for color. For example, a design may include multiple shades of a single color which cannot be accurately represented by the single symbol for a specific color. Or, the color may be a shade other than a true primary or secondary color as represented by the drafting symbols and lining the drawing with one of the drafting symbols would not be an exact representation of the design as originally disclosed.

Examiner Note:

Use this form paragraph when color drawing(s) or photograph(s) have been submitted in an application.

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15.05.05 Drawing Correction Required Prior to Appeal

Any appeal of the design claim must include the correction of the drawings approved by the examiner in accordance with Ex parte Bevan, 142 USPQ 284 (Bd. App. 1964).

Examiner Note:

This form paragraph can be used in a FINAL rejection where an outstanding requirement for a drawing correction has not been satisfied.

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15.07 Avoidance of New Matter

When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).

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15.07.01 Statutory Basis, 35 U.S.C. 171

The following is a quotation of 35 U.S.C. 171 :

  • (a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
  • (b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
  • (c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.

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15.08 Lack of Ornamentality (Article Visible in End Use)

The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that it lacks ornamentality. To be patentable, a design must be “created for the purpose of ornamenting” the article in which it is embodied. See In re Carletti, 328 F.2d 1020, 140 USPQ 653 (CCPA 1964).

The following evidence establishes a prima facie case of a lack of ornamentality: [1]

Evidence that demonstrates the design is ornamental may be submitted from the applicant in the form of an affidavit or declaration under 37 CFR 1.132 :

(a) stating the ornamental considerations which entered into the design of the article; and

(b) identifying what aspects of the design meet those considerations.

An affidavit or declaration under 37 CFR 1.132 may also be submitted from a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design.

Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. Ex parte Webb , 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).

Examiner Note:

In bracket 1, insert source of evidence of lack of ornamentality, for example, a utility patent, a brochure, a response to a letter of inquiry, etc.

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15.08.01 Lack of Ornamentality (Article Not Visible in its Normal and Intended Use)

The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design lacks ornamentality since it appears there is no period in the commercial life of applicant’s [1] when its ornamentality may be a matter of concern. In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990); In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949).

The following evidence establishes a prima facie case of lack of ornamentality: [2]

In order to overcome this rejection, two types of evidence are needed:

(1) Evidence to demonstrate there is some period in the commercial life of the article embodying the claimed design when its ornamentality is a matter of concern. Such evidence may include a showing of a period in the life of the design when the ornamentality of the article may be a matter of concern to a purchaser during the process of sale. An example of this type of evidence is a sample of sales literature such as an advertisement or a catalog sheet which presents the appearance of the article as ornamental and not merely as a means of identification or instruction; and

(2) Evidence to demonstrate the design is ornamental. This type of evidence should demonstrate “thought of ornament” in the design and should be presented in the form of an affidavit or declaration under 37 CFR 1.132 from the applicant:

(a) stating the ornamental considerations which entered into the design of the article; and

(b) identifying what aspects of the design meet those considerations.

An affidavit or declaration under 37 CFR 1.132 may also be submitted from a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design.

Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. See Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).

Examiner Note:

  • 1. In bracket 1, insert the name of the article in which the design is embodied.
  • 2. In bracket 2, insert source of evidence of the article’s design being of no concern, for example, an analysis of a corresponding utility patent, a brochure, a response to a letter of inquiry, etc.

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15.08.02 Simulation (Entire Article)

The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design lacks originality. The design is merely simulating [1] which applicant himself did not invent. See In re Smith, 25 USPQ 359, 1935 C.D. 565 (CCPA 1935); In re Smith, 25 USPQ 360, 1935 C.D. 573 (CCPA 1935); and Bennage v. Phillippi, 1876 C.D. 135, 9 OG 1159.

Examiner Note:

  • 1. In bracket 1, insert the name of the article or person being simulated, e.g., the White House, Marilyn Monroe, an animal which is not stylized or caricatured in any way, a rock or shell to be used as paperweight, etc.
  • 2. This form paragraph should be followed by form paragraph 15.08.03 when evidence has been cited to show the article or person being simulated.

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15.08.03 Explanation of evidence cited in support of simulation rejection

Applicant’s design has in no way departed from the natural appearance of [1]. This reference is not relied on in this rejection but is supplied merely as representative of the usual or typical appearance of [2] in order that the claim may be compared to that which it is simulating.

Examiner Note:

  • 1. In bracket 1, insert name of article or person being simulated and source (patent, publication, etc.).
  • 2. In bracket 2, insert name of article or person being simulated.

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15.09 35 U.S.C. 171 Rejection

The claim is rejected under 35 U.S.C. 171 as directed to nonstatutory subject matter because the design is not shown embodied in or applied to an article.

Examiner Note:

This rejection should be used when the claim is directed to surface treatment which is not shown with an article in either full or broken lines.

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15.09.01 Offensive Subject Matter

The disclosure, and therefore the claim in this application, is rejected as being offensive and therefore improper subject matter for design patent protection under 35 U.S.C. 171 . Such subject matter does not meet the statutory requirements of 35 U.S.C. 171 . Moreover, since 37 CFR 1.3 proscribes the presentation of papers which are lacking in decorum and courtesy, and this includes depictions of caricatures in the disclosure, drawings, and/or a claim which might reasonably be considered offensive, such subject matter as presented herein is deemed to be clearly contrary to 37 CFR 1.3 . See MPEP § 608 .

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15.09.02.aia Statement of Statutory Bases, 35 U.S.C. 171 and 35 U.S.C. 115-Improper Inventorship

The following is a quotation of 35 U.S.C. 171 :

(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.

(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.

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 incorrect inventorship because [1].

The claim is rejected under 35 U.S.C. 171 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.

Examiner Note:

In bracket 1, insert the basis for concluding that the inventorship is incorrect.

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15.09.03.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 incorrect inventorship because [1].

The claim is rejected under 35 U.S.C. 171 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.

Examiner Note:

  • 1. This form paragraph is to be used ONLY when a rejection under 35 U.S.C. 171 on another basis has been made and the statutory text thereof is already present.
  • 2. This form paragraph must be preceded by form paragraph 15.07.01 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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15.10.15 Notice re prior art available under both pre-AIA and AIA

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

Examiner Note:

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

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15.10.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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15.10.fti Application Examined Under First Inventor to File 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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15.11.aia 35 U.S.C. 102(a)(1) Rejection

The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by [1] because 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. In bracket 1, identify the reference applied against the claimed design.
  • 2. 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 paragraphs 15.10.aia and 15.10.15 .

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15.11.fti Pre-AIA 35 U.S.C. 102(a) Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by [1] because 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 patent.

Examiner Note:

  • 1. In bracket 1, identify the reference applied against the claimed design.
  • 2. 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 15.10.15 .

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15.12.fti Pre-AIA 35 U.S.C. 102(b) Rejection

The claim is rejected under 35 U.S.C. 102(b) as being anticipated by [1] because 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 (1) year prior to the application for patent in the United States.

Examiner Note:

  • 1. In bracket 1, identify the reference applied against the claimed design.
  • 2. 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 15.10.15 .

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15.13.fti Pre-AIA 35 U.S.C. 102(c) Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102(c) because the invention has been abandoned.

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15.14.fti Pre-AIA 35 U.S.C. 102(d)/35 U.S.C. 172 Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102(d) , as modified by pre-AIA 35 U.S.C. 172 , as being anticipated by [1] because the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate by the applicant, or the applicant's legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than six (6) months before the filing of the application in the United States.

Examiner Note:

In bracket 1, identify the reference applied against the claimed design.

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15.15.01.aia Explanation of rejection under 35 U.S.C. 102(a)(1) or 102(a)(2)

The appearance of [1] is substantially the same as that of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp. , 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.

Examiner Note:

  • 1. This paragraph should be included after paragraph 15.11.aia or 15.15.aia to explain the basis of the rejection.
  • 2. In bracket 1, identify the reference applied against the claimed design.

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15.15.01.fti Explanation of rejection under Pre-AIA 35 U.S.C. 102(a), (b), (d), or (e)

The appearance of [1] is substantially the same as that of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp. , 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.

Examiner Note:

  • 1. This paragraph should be included after paragraph 15.11.fti , 15.12.fti , 15.14.fti or 15.15.fti to explain the basis of the rejection.
  • 2. In bracket 1, identify the reference applied against the claimed design.
  • 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 15.10.15 .

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15.15.02.aia 35 U.S.C. 102(a)(2) Provisional rejection - design disclosed in another application with common inventor and/or assignee

The claim is provisionally rejected under 35 U.S.C. 102(a)(2) as being anticipated by copending Application No. [1] which has a common [2] with the instant application.

Because the copending application names another inventor and has an earlier effectively filed date, it would constitute prior art under 35 U.S.C. 102(a)(2) , if published under 35 U.S.C. 122(b) or patented. This provisional rejection under 35 U.S.C. 102(a)(2) is based upon a presumption of future publication or patenting of the copending application.

This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the reference was obtained directly or indirectly from the inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A) ; (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a) ; (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) ; (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) ; or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.

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 (utility or design) that discloses the claimed invention and would constitute prior art under   35 U.S.C. 102(a)(2) if patented or published under  35 U.S.C. 122 . The copending application must have either a common assignee or at least one common inventor.
  • 2. In bracket 2, insert inventor or assignee.
  • 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 paragraphs 15.10.aia and 15.10.15 .
  • 4. 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 AIA.

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15.15.02.fti Provisional Pre-AIA 35 U.S.C. 102(e) rejection - design disclosed but not claimed in another application with common inventor and/or assignee

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

Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the copending application, it would constitute prior art 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.

Since the design claimed in the present application is not the same invention claimed in the [3] application, the examiner suggests overcoming this provisional rejection in one of the following ways: (A) a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “by another;” (B) a showing of a date of invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e) date of the reference under 37 CFR 1.131(a) ; (C) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; or (D) perfecting the benefit claim under 35 U.S.C. 120 by adding a specific reference to the prior filed application in compliance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.

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 (utility or design) that discloses (but does not claim) the claimed invention and would constitute prior art under  pre-AIA 35 U.S.C. 102(e) if patented or published under   35 U.S.C. 122 . The copending application must have either a common assignee or at least one common inventor.
  • 2. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) (form paragraph 7.12.fti ) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01.fti ) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA or pre-AIPA 35 U.S.C. 102(e) date.
  • 3. In bracket 2, insert inventor or assignee.
  • 4. 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 15.10.15 .

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15.15.03.fti Pre-AIA 35 U.S.C. 102(e) provisional rejection - design claimed in an earlier-filed design patent application with common inventor and/or assignee

The claim is provisionally rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by the claim in copending Design Patent Application No. [1] which has a common [2] with the instant application.

Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the copending application, it would constitute prior art if patented. This provisional rejection under  pre-AIA 35 U.S.C. 102(e)  is based upon a presumption of future patenting of the copending application. The rejection may be overcome by abandoning the earlier-filed copending application.

Examiner Note:

  • 1. In bracket 2, insert inventor or assignee.
  • 2. This form paragraph must be preceded by form paragraph 15.24.05.fti to notify the applicant that the question of patentability under pre-AIA 35 U.S.C. 102(f) / (g) also exists.
  • 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 15.10.15 .

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15.15.04.aia 35 U.S.C. 102(a)(2) rejection - design disclosed in a patent

The claim is rejected under 35 U.S.C. 102(a)(2) as being anticipated by patent [1].

Because the patent names another inventor and has an earlier effectively filed date, 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 disclosure in the reference was obtained directly or indirectly from the inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A) ; (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a) ; (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) ; (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) ; or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.

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 should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier-filed design or utility patent. When the design claimed in the application being examined is disclosed in the drawings of an earlier-filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier-filed application.
  • 2. In bracket 1, insert number of patent.
  • 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 paragraphs 15.10.aia and 15.10.15 .

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15.15.04.fti Pre-AIA 35 U.S.C. 102(e) rejection - design disclosed but not claimed in a patent

The claim is rejected under pre-AIA 35 U.S.C. 102 as being anticipated by patent [1].

Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art.

Since the design claimed in the present application is not the same invention claimed in patent [2], the examiner suggests overcoming this rejection in one of the following ways: (A) a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “by another;” (B) a showing of a date of invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e) date of the reference under 37 CFR 1.131(a) ; (C) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph; or (D) perfecting the benefit claim 35 U.S.C. 120 by adding a specific reference to the prior filed application in compliance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) or 35 U.S.C. 112, first paragraph. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet.

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 should be used when the claimed design in the application being examined is disclosed in the drawings of an earlier-filed design or utility patent but is not claimed therein. When the design claimed in the application being examined is disclosed in the drawings of an earlier-filed design patent, it would most often be in the form of subcombination subject matter, (part or portion of an article), that is patentably distinct from the claim for the design embodied by the combination or whole article. It may also be unclaimed subject matter depicted in broken lines in the earlier-filed application.
  • 2. In brackets 1 and 2, insert number of patent.
  • 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 15.10.15 .

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15.15.aia 35 U.S.C. 102(a)(2) Rejection

The claim is rejected under 35 U.S.C. 102(a)(2) as being anticipated by [1] because 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. In bracket 1, identify the reference applied against the claimed design.
  • 2. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15 .
  • 3. 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 AIA.

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15.15.fti Pre-AIA 135 U.S.C. 102(e) Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by [1] because the invention was described in a patented or published application for patent by another filed in the United States before the invention thereof by the applicant for patent.

Examiner Note:

  • 1. In bracket 1, identify the reference applied against the claimed design.
  • 2. 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 15.10.15 .

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15.16.fti Pre-AIA 35 U.S.C. 102(f) Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102 because applicant did not himself invent the subject matter sought to be patented.

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

The claim is rejected under pre-AIA 35 U.S.C. 102 because, before the applicant’s invention thereof, the invention was made in this country by another who had not abandoned, suppressed or concealed it.

A rejection based on this statutory basis can be made in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) 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 (2) a specific reference under 35 U.S.C. 120, 35 U.S.C. 121, or 35 U.S.C. 365(c) to any patent or application that contains or contained at any time such a claim.

Examiner Note:

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 paragraphs 15.10.aia and 15.10.15.

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15.17.fti Pre-AIA 35 U.S.C. 102(g) Rejection

The claim is rejected under pre-AIA 35 U.S.C. 102(g) because, before the applicant’s invention thereof, the invention was made in this country by another who had not abandoned, suppressed or concealed it.

Examiner Note:

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 paragraphs 15.10.fti and 15.10.15 .

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15.18.aia 35 U.S.C. 103 Rejection (Single Reference)

The claim is rejected under 35 U.S.C. 103 as being unpatentable over [1]. Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 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 designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.

Examiner Note:

For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15 .

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15.18.fti Pre-AIA 35 U.S.C. 103(a) Rejection (Single Reference)

The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1]. Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 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 designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

Examiner Note:

  • 1. In bracket 1, insert the reference citation.
  • 2. 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 15.10.15 .

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15.19.01 Summary Statement of Rejections

The claim stands rejected under [1].

Examiner Note:

  • 1. Use as summary statement of rejection(s) in Office action.
  • 2. In bracket 1, insert appropriate basis for rejection, i.e., statutory provisions, etc.

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15.19.02.aia Preface 35 U.S.C. 102(a)(2)/103 rejection - Different inventors, common assignee, obvious designs, no evidence of common ownership not later than effective filing date of claimed design

The claim is directed to a design not patentably distinct from the design of commonly assigned [1]. Specifically, the claimed design is different from the one in [2] in that [3]. These differences are considered obvious and do not patentably distinguish the overall appearance of the claimed design over the design in [4].

The commonly assigned [5], discussed above, names another inventor and has an earlier effectively filed date. Therefore, it qualifies as prior art under 35 U.S.C. 102(a)(2) and would form the basis for a rejection of the claimed design in the present application under 35 U.S.C. 103 if the claimed design and the designed disclosed were not commonly owned not later than the effective filing date of the claimed design under examination.

This rejection under 35 U.S.C. 102(a)(2)/103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the design disclosed and the claimed design, not later than the effective filing date of the claimed design, were 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. A nonstatutory double patenting rejection may also be included in the action.
  • 2. In brackets 1, 2, 4 and 5, insert "patent" and number, or "copending application" and serial number.
  • 3. In bracket 3, identify differences between design claimed in present application and that claimed in earlier-filed patent or copending application.
  • 4. This form paragraph should only be used ONCE in an Office action.
  • 5. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

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15.19.02.fti Preface pre-AIA 35 U.S.C. 102(e)/103(a) rejection - Different inventors, common assignee, obvious designs, no evidence of common ownership at time later design was made

The claim is directed to a design not patentably distinct from the design of commonly assigned [1]. Specifically, the claimed design is different from the one in [2] in that [3]. These differences are considered obvious and do not patentably distinguish the overall appearance of the claimed design over the design in [4].

The commonly assigned [5], discussed above, has a different inventive entity from the present application. Therefore, it qualifies as prior art under pre-AIA 35 U.S.C. 102(e) , (f) or (g) and forms the basis for a rejection of the claim in the present application under pre-AIA 35 U.S.C. 103(a) if the conflicting design claims were not commonly owned at the time the design in this application was made. In order to resolve this issue, the applicant, assignee or attorney of record can state that the conflicting designs were commonly owned at the time the design in this application was made, or the assignee can name the prior inventor of the conflicting subject matter.

A showing that the designs were commonly owned at the time the design in this application was made will overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under pre-AIA 35 U.S.C. 102(f) or 35 U.S.C. 102(g) , or pre-AIA 35 U.S.C. 102(e) for applications filed on or after November 29, 1999.

Examiner Note:

  • 1. This form paragraph should be used when the application being examined is commonly assigned with a conflicting application or patent, but there is no indication that they were commonly assigned at the time the invention was actually made.
  • 2. If the conflicting claim is in a patent with an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e) / 35 U.S.C. 103(a) should be made.
  • 3. If the conflicting claim is in a commonly assigned, copending application with an earlier filing date, a provisional rejection under pre-AIA 35 U.S.C. 102(e) / 35 U.S.C. 103(a) should be made.
  • 4. A nonstatutory double patenting rejection may also be included in the action.
  • 5. In brackets 1, 2, 4 and 5, insert patent and number, or copending application and serial number.
  • 6. In bracket 3, identify differences between design claimed in present application and that claimed in earlier filed patent or copending application.
  • 7. This form paragraph should only be used ONCE in an Office action.
  • 8. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e) , use 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371 ) which has 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. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
  • 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 15.10.15 .

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15.19.03.aia 35 U.S.C. 102(a)(2)/103 Provisional Rejection - design disclosed in another application with common inventor and/or assignee

The claim is provisionally rejected under 35 U.S.C. 103 as being obvious over copending Application No. [1] which has a common [2] with the instant application. Because the copending application names another inventor and has an earlier effectively filed date, it would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122(b) or patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption of future publication or patenting of the conflicting application.

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 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, the invention is not patentable.

[3]

This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A) ; (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a) ; (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) ; (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) ; or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were 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 be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
  • 2. In brackets 1 and 4 insert serial number of copending application.
  • 3. In bracket 2, insert inventor or assignee.
  • 4. In bracket 3, provide explanation of obviousness including differences.
  • 5. 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 15.10.15 .

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15.19.03.fti Provisional Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design disclosed but not claimed in another application with common inventor and/or assignee

The claim is provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over copending Application No. [1] which has a common [2] with the instant application. Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the copending application, it would constitute prior art if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the conflicting application.

Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 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 designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

[3]

Since the design claimed in the present application is not the same invention claimed in the [4] application, this provisional rejection may be overcome by a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “by another,” or by a showing of a date of invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e) date of the reference under 37 CFR 1.131(a) . For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 2146 et seq.

Examiner Note:

  • 1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
  • 2. In brackets 1 and 4 insert serial number of copending application.
  • 3. In bracket 2, insert inventor or assignee.
  • 4. In bracket 3, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68 .
  • 5. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102 only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
  • 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 15.10.15 .

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15.19.04.fti Pre-AIA 35 U.S.C. 102(e)/103(a) Provisional Rejection - design claimed in an earlier-filed design patent application with common inventor and/or assignee

The claim is provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in copending Design Patent Application No. [1] which has a common [2] with the instant application. Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the copending application, it would constitute prior art if patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future patenting of the conflicting application.

Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 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, the invention is not patentable.

[3]

Since the design claimed in the present application is not patentably distinct from the design claimed in the [4] application, this provisional rejection may be overcome by merging the two applications into a single continuation-in-part and abandoning the separate parent applications. For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 2146 et seq.

Examiner Note:

  • 1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a copending application that would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published under 35 U.S.C. 122 or patented.
  • 2. A provisional nonstatutory double patenting rejection must also be included in the action.
  • 3. In brackets 1 and 4, insert serial number of copending application.
  • 4. In bracket 2, insert inventor or assignee.
  • 5. In bracket 3, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68 .
  • 6. This form paragraph must be preceded by form paragraph 15.19.02.fti .
  • 7. 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 15.10.15 .

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15.19.05.aia 35 U.S.C. 102(a)(2)/103 rejection - design disclosed, no common inventors or common assignees

The claim is rejected under 35 U.S.C. 103 as being obvious over [1].

Because the reference names another inventor and has an earlier effectively filed date, it constitutes prior art under 35 U.S.C. 102(a)(2) .

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 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, the invention is not patentable.

[2]

This rejection under 35 U.S.C. 102(a)(2) / 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application 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) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a) ; (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) or (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) .

Examiner Note:

  • 1. In bracket 1, insert document number that qualifies as prior art under 35 U.S.C. 102(a)(2) .
  • 2. In bracket 2, provide explanation of obviousness including differences.
  • 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 paragraphs 15.10.aia and 15.10.15 .

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15.19.05.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design disclosed but not claimed

The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over [1].

Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art.

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 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 designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

[2]

Since the design claimed in the present application is not the same invention claimed in the [3] patent, this rejection may be overcome by a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “ by another,” or by a showing of a date of invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e) date of the reference under 37 CFR 1.131(a) . For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 2146 et seq.

Examiner Note:

  • 1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier filed design or utility patent, or application publication, but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
  • 2. In brackets 1 and 3, insert number of the U.S. patent, U.S. patent application publication, or the WIPO publication of an international application that qualifies as prior art under pre-AIA 35 U.S.C. 102(e) . See note 4 below.
  • 3. In bracket 2, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68 .
  • 4. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) to an international application having an international filing date prior to November 29, 2000. 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.
  • 5. 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 15.10.15 .

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15.19.06.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design claimed in a design patent with an earlier prior art date and common assignee

The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in design patent [1].

Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art.

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 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 designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

[2]

Since the design claimed in the present application is not patentably distinct from the design claimed in the [3] patent, this rejection may be overcome by submitting an oath or declaration under 37 CFR 1.131(c) stating that this application and the reference are currently owned by the same party and that the inventor named in this application is the prior inventor of the subject matter in the reference under 35 U.S.C. 104 as in effect on March 15, 2013. In addition, a terminal disclaimer in accordance with 37 CFR 1.321(c) is also required. For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 2146 et seq.

Examiner Note:

  • 1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a design patent having an earlier prior art date under pre-AIA 35 U.S.C. 102(e) and a common assignee.
  • 2. A nonstatutory double patenting rejection must also be included in the action.
  • 3. In brackets 1 and 3, insert number of patent.
  • 4. In bracket 2, provide explanation of obviousness including differences and follow the explanation by form paragraphs 15.70.fti and 15.67 or 15.68 .
  • 5. This form paragraph must be preceded by form paragraph 15.19.02.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 15.10.15 .

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15.19.07.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design claimed in a design patent having an earlier prior art date and no common assignee

The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in design patent [1].

Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art.

Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 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 designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

[2]

Examiner Note:

  • 1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a design patent having an earlier prior art date under pre-AIA 35 U.S.C. 102(e) .
  • 2. In bracket 2, provide explanation of obviousness including differences and follow explanation with form paragraphs 15.70.fti and 15.67 or 15.68 .
  • 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 15.10.15 .

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15.19.aia 35 U.S.C. 103 Rejection (Multiple Reference)

The claim is rejected under 35 U.S.C. 103 as being unpatentable over [1] in view of [2].

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 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 designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.

Examiner Note:

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 15.10.aia and 15.10.15 .

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15.19.fti Pre-AIA 35 U.S.C. 103(a) Rejection (Multiple References)

The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1] in view of [2].

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 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 designer of ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

Examiner Note:

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 15.10.15 .

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15.20.02 Suggestion To Overcome Rejection Under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, First and Second Paragraphs (Ch. 16 Design Application)

Applicant may disclaim the areas or portions of the design which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by converting them to broken lines and amend the specification to include a statement that the portions of the [1] shown in broken lines form no part of the claimed design.

Examiner Note:

  • 1. For international design applications, use form paragraph 29.27 instead.
  • 2. In bracket 1, insert title of the article.

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15.21 Rejection, 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, First And Second Paragraphs

The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112 , first and second paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails 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.

The claim is indefinite and nonenabling [1].

Examiner Note:

  • 1. This form paragraph should not be used when it is appropriate to make one or more separate rejections under 35 U.S.C. 112(a) and/or (b) or pre-AIA 35 U.S.C. 112 , first and/or second paragraph(s).
  • 2. In bracket 1, a complete explanation of the basis for the rejection should be provided.

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15.21.01 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, (Second Paragraph) (Additional Information Requested)

The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph. The title of the article in which the design is embodied or applied is too ambiguous and therefore indefinite for the examiner to make a proper examination of the claim under 37 CFR 1.104 .

Applicant is therefore requested to provide a sufficient explanation of the nature and intended use of the article in which the claimed design is embodied or applied. See MPEP § 1503.01 . Additional information, if available, regarding analogous fields of search, pertinent prior art, advertising brochures and the filing of copending utility applications would also prove helpful. If a utility application has been filed, please furnish its application number.

This information should be submitted in the form of a separate paper, and should not be inserted in the specification ( 37 CFR 1.56 ). See also 37 CFR 1.97 and 1.98 .

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15.22 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph

The claim is 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.

The claim is indefinite [1].

Examiner Note:

  • 1. Use this form paragraph when the scope of the claimed design cannot be determined.
  • 2. In bracket 1, provide a full explanation of the basis for the rejection.

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15.22.02 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd Paragraph (“Or the Like” In Claim)

The claim is 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. The claim is indefinite because of the use of the phrase “ [1]” following the title. Cancellation of said phrase in the claim and each occurrence of the title throughout the papers, except the oath or declaration, will overcome the rejection. See Ex parte Pappas, 23 USPQ2d 1636 (Bd. App. & Inter. 1992) and 37 CFR 1.153 .

Examiner Note:

  • 1. This rejection should be used where there is another rejection in the Office action. For issue with an examiner’s amendment, see form paragraph 15.69.01 .
  • 2. In bracket 1, insert --or the like-- or --or similar article--.
  • 3. This form paragraph should not be used when “or the like” or “or similar article” in the title is directed to the environment of the article embodying the design.

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15.22.03 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph (Title Fails to Specify a Known Article of Manufacture)

The claim is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph, as indefinite in that the title, as set forth in the claim, fails to identify an article of manufacture and the drawing disclosure does not inherently identify the article in which the design is embodied. Ex parte Strijland, 26 USPQ2d 1259, 1263 (Bd. Pat. App. & Int. 1992). Therefore, any attempt to clarify the title by specifying the article in which the design is embodied may introduce new matter. See 35 U.S.C. 132 and 37 CFR 1.121 .

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15.23 35 U.S.C. 171 Double Patenting Rejection (Design-Design)

The claim is rejected under 35 U.S.C. 171 on the ground of double patenting since it is claiming the same design as that claimed in United States Design Patent No. [1].

Examiner Note:

Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.

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15.23.01 35 U.S.C. 171 Provisional Double Patenting Rejection (Design-Design)

The claim is provisionally rejected under 35 U.S.C. 171 on the ground of double patenting since it is claiming the same design as that claimed in copending Application No. [1]. This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.

Examiner Note:

Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.

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15.23.02 Summary for “Same Invention” – Type Double Patenting Rejections

Applicant is advised that a terminal disclaimer may not be used to overcome a “same invention” type double patenting rejection. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969); MPEP § 804.02 .

Examiner Note:

This form paragraph should follow all “same invention” type double patenting rejections.

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15.24 Nonstatutory Double Patenting Rejection (Single Reference)

The claim is rejected on the ground of nonstatutory double patenting of the claim in United States Patent No. [1]. Although the conflicting claims are not identical, they are not patentably distinct from each other because [2].

Examiner Note:

  • 1. In bracket 1, insert prior U.S. Patent Number.
  • 2. In bracket 2, the differences between the conflicting claims must be identified and indicated as being minor and not distinguishing the overall appearance of one over the other.
  • 3. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.67 .

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15.24.03 Provisional Nonstatutory Double Patenting Rejection (Single Reference)

The claim is provisionally rejected on the grounds of nonstatutory double patenting of the claim of copending Application No. [1]. Although the conflicting claims are not identical, they are not patentably distinct from each other because [2]. This is a provisional nonstatutory double patenting rejection because the conflicting claims have not in fact been patented.

Examiner Note:

  • 1. In bracket 1, insert conflicting application number.
  • 2. In bracket 2, the differences between the conflicting claims must be identified and indicated as being minor and not distinguishing the overall appearance of one over the other.
  • 3. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.67 .

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15.24.04 Provisional Nonstatutory Double Patenting Rejection (Multiple References)

The claim is provisionally rejected on the grounds of nonstatutory double patenting of the claim of copending Application No. [1] in view of [2]. At the time applicant made the design, it would have been obvious to a designer of ordinary skill in the art to [3] as demonstrated by [4]. This is a provisional nonstatutory double patenting rejection because the conflicting claims have not in fact been patented.

Examiner Note:

  • 1. In bracket 1, insert conflicting application number.
  • 2. In bracket 2, insert secondary reference(s).
  • 3. In bracket 3, insert an explanation of how the conflicting claim in the copending application is modified.
  • 4. In bracket 4, identify the secondary reference(s) teaching the modification(s).
  • 5. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.68.

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15.24.05.fti Identical Claim: Common Assignee

The claim is directed to the same invention as that of the claim of commonly assigned copending Application No. [1]. The issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly pre-AIA 35 U.S.C. 102(f) of this single invention must be resolved. Since the U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of common ownership (see MPEP § 2302 ), the assignee is required to state which entity is the prior inventor of the conflicting subject matter. A terminal disclaimer has no effect in this situation since the basis for refusing more than one patent is priority of invention under pre-AIA 35 U.S.C.102(f) or (g) and not an extension of monopoly. Failure to comply with this requirement will result in a holding of abandonment of this application.

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15.24.06 Basis for Nonstatutory Double Patenting, “Heading Only”

The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).

A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.131(c) . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b) .

The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional, the reply must be complete. MPEP § 804 , subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a) . For a reply to final Office action, see 37 CFR 1.113(c) . A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13 .

The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms . The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/ patents/apply/applying-online/eterminal-disclaimer .

Examiner Note:

This form paragraph must precede all nonstatutory double patenting rejections as a heading, except "same invention" type.

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15.24.07 Double Patenting Rejection (Design-Utility)

The claim is rejected under the judicially created doctrine of double patenting as being directed to the same invention as that set forth in claim [1] of United States Patent No. [2]. See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).

Examiner Note:

Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.

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15.24.08 Provisional Double Patenting Rejection (Design-Utility)

The claim is provisionally rejected under the judicially created doctrine of double patenting as being directed to the same invention as that set forth in claim [1] of copending Application No. [2]. See In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).

This is a provisional double patenting rejection because the claims have not in fact been patented.

Examiner Note:

Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.

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15.25 Nonstatutory Double Patenting Rejection (Multiple References)

The claim is rejected on the grounds of nonstatutory double patenting of the claim(s) in United States Patent No. [1] in view of [2]. At the time applicant made the design, it would have been obvious to a designer of ordinary skill in the art to [3] as demonstrated by [4].

Examiner Note:

  • 1. In bracket 1, insert conflicting patent number.
  • 2. In bracket 2, insert secondary reference(s).
  • 3. In bracket 3, insert an explanation of how the conflicting claim in the patent is modified.
  • 4. In bracket 4, identify the secondary reference(s) teaching the modification(s).
  • 5. This form paragraph must be preceded by form paragraph 15.24.06 and followed by form paragraph 15.68 .

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15.26 Identification of Prior Application(s) in Nonprovisional Applications - Benefit Claimed

Applicant is reminded of the following requirement:

To claim the benefit of a prior-filed application, a continuation or divisional application (other than a continued prosecution application filed under 37 CFR 1.53(d) ), must include a specific reference to the prior-filed application in compliance with 37 CFR 1.78 . If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120 , 121 , 365(c) , or 386(c) , the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.

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15.27 Restriction Under 35 U.S.C. 121

This application discloses the following embodiments:

Embodiment 1 - Figs. [1]

Embodiment 2 - Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The [4] create(s) patentably distinct designs.

Because of the differences identified, the embodiments are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.

The above embodiments divide into the following patentably distinct groups of designs:

Group I: Embodiment [5]

Group II: Embodiment [6]

[7]

Restriction is required under 35 U.S.C. 121 to one of the above identified patentably distinct groups of designs.

A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement is traversed, 37 CFR 1.143 . Any reply that does not include election of a single group will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.

Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art will apply equally to all other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.

In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).

Examiner Note:

  • 1. In bracket 3, add embodiments as necessary.
  • 2. In bracket 4, insert an explanation of the difference(s) between the embodiments.
  • 3. In bracket 7, add groups as necessary.

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15.27.01 Restriction Under 35 U.S.C. 121 (Obvious Variations Within Group)

This application discloses the following embodiments:

Embodiment 1 - Figs. [1]

Embodiment 2 - Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).

The above embodiments divide into the following patentably distinct groups of designs:

Group I: Embodiment [4]

Group II: Embodiment [5]

[6]

The embodiments disclosed within each group have overall appearances that are basically the same. Furthermore, the differences between them are considered minor and patentably indistinct, or are shown to be obvious in view analogous prior art cited. Therefore, they are considered by the examiner to be obvious variations of one another within the group. These embodiments thus comprise a single inventive concept and are grouped together. However, the [7] patentably distinguishes each group from the other(s).

Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.

Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of the designs.

A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement is traversed, 37 CFR 1.143 . Any reply that does not include election of a single group will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.

Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art will apply equally to all other groups. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.

In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).

Examiner Note:

  • 1. In bracket 3, add embodiments as necessary.
  • 2. In bracket 6, add groups as necessary.
  • 3. In bracket 7, insert an explanation of the difference(s) between the groups.

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15.27.02 Restriction Not Required - Change In Appearance (First Action - Non Issue)

This application discloses the following embodiments:

Embodiment 1 - Figs. [1]

Embodiment 2 - Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).

The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to all other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the above identified embodiments.

Examiner Note:

In bracket 3, add embodiments as necessary.

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15.27.03 Restriction Not Required - Change In Appearance (First Action Issue)

This application discloses the following embodiments:

Embodiment 1 - Figs. [1]

Embodiment 2 - Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).

The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application.

Examiner Note:

In bracket 3, add embodiments as necessary.

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15.27.04 Restriction Not Required – Change In Scope (First Action – Non Issue)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1]

Embodiment 2 – Figs. [2]

[3]

Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. However, design patent protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965).

The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the difference in scope between embodiments is considered minor and patentably indistinct. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to all other embodiments. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this Office action will be considered an admission of lack of patentable distinction between the embodiments.

Examiner Note:

In bracket 3, add embodiments as necessary.

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15.27.05 Restriction Not Required – Change In Scope (First Action Issue)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1]

Embodiment 2 – Figs. [2]

[3]

Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. However, design patent protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965).

The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the difference in scope between embodiments is considered minor and patentably indistinct. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application.

Examiner Note:

In bracket 3, add embodiments as necessary.

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15.27.06 Restriction Not Required (Change in Appearance and Scope – First Action Non Issue)

This application discloses the following embodiments:

Embodiment 1 - Figs. [1] drawn to a [2].

Embodiment 2 - Figs. [3] drawn to a [4].

[5]

Embodiments [6] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).

Embodiment(s) [7] directed to the combination(s) in relation to Embodiment(s) [8] directed to the subcombination(s)/element(s). Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. However, design protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford , 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd , 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965).

The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to all other embodiments. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the embodiments.

Examiner Note:

  • 1. In bracket 5, add embodiments as necessary.
  • 2. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
  • 3. It is possible and proper that embodiments may be listed in both explanatory paragraphs.

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15.27.07 Restriction Not Required (Change in Appearance and Scope – First Action Issue)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1] drawn to a [2].

Embodiment 2 – Figs. [3] drawn to a [4].

[5]

Embodiment(s) [6] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).

Embodiment(s) [7] directed to the combination(s) in relation to Embodiment(s) [8] directed to the subcombination(s)/element(s). Designs which involve a change in scope may be included in the same design application only if they are patentably indistinct. However, design protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford , 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd , 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965).

The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they were deemed to be obvious variations and are being retained and examined in the same application. Accordingly, they were deemed to comprise a single inventive concept and have been examined together.

Examiner Note:

  • 1. In bracket 5, add embodiments as necessary.
  • 2. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
  • 3. It is possible and proper that embodiments may be listed in both explanatory paragraphs.

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15.27.08 Restriction with Differences in Appearance and Scope

This application discloses the following embodiments:

Embodiment 1: Figs. [1] drawn to a [2].

Embodiment 2: Figs. [3] drawn to a [4].

[5]

The above embodiments divide into the following patentably distinct groups of designs:

Group I: Embodiment [6]

Group II: Embodiment [7]

[8]

Group(s) [9] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The [10] creates patentably distinct designs.

Because of the differences identified, the embodiments are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.

Group(s) [11] directed to the combination(s) in relation to Group(s) [12] directed to the subcombination(s)/element(s). The designs as grouped are distinct from each other since under the law a design patent covers only the design disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965). It is further noted that combination/subcombination subject matter, if patentably distinct, must be supported by separate claims, whereas only a single claim is permissible in a design patent application. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).

In any groups that include multiple embodiments, the embodiments are considered by the examiner to be obvious variations of one another within the group and, therefore, patentably indistinct. These embodiments thus comprise a single inventive concept and are grouped together.

Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.

A reply to this requirement must include an election of a single group for prosecution on the merits even if this requirement is traversed. 37 CFR 1.143 . Any reply that does not include an election of a single group will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.

Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art will apply equally to all other groups. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.

In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).

Examiner Note:

  • 1. In bracket 5, add embodiments as necessary.
  • 2. In bracket 8, add embodiments as necessary.
  • 3. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
  • 4. It is possible and proper that embodiments may be listed in both explanatory paragraphs.
  • 5. In bracket 10, insert an explanation of the differences between the designs.

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15.28 Telephone Restriction Under 35 U.S.C. 121

This application discloses the following embodiments:

Embodiment 1 - Figs. [1]

Embodiment 2 - Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The [4] create(s) patentably distinct designs. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).

Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that are not basically the same, or, if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.

The above disclosed embodiments divide into the following patentably distinct groups of designs:

Group I: Embodiment [5]

Group II: Embodiment [6]

[7]

Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.

During a telephone discussion with [8] on [9], a provisional election was made [10] traverse to prosecute the design(s) of group [11]. Affirmation of this election should be made by applicant in replying to this Office action.

Group [12] is withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being for a nonelected design(s).

Examiner Note:

  • 1. In bracket 3, add embodiments as necessary.
  • 2. In bracket 4, insert an explanation of the difference(s) between the embodiments.
  • 3. In bracket 7, add groups as necessary.
  • 4. In bracket 10, insert --with-- or --without--.

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15.28.01 Telephone Restriction Under 35 U.S.C.121 (Obvious Variations Within Group)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1]

Embodiment 2 – Figs. [2]

[3]

Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).

The above embodiments divide into the following patentably distinct groups of designs:

Group I: Embodiment [4]

Group II: Embodiment [5]

[6]

The embodiments disclosed within each group have overall appearances that are basically the same. Furthermore, the differences between them are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Therefore, they are considered by the examiner to be obvious variations of one another within the group. These embodiments thus comprise a single inventive concept and are grouped together. However, the [7] patentably distinguishes each group from the other(s).

Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.

Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.

During a telephone discussion with [8] on [9], a provisional election was made [10] traverse to prosecute the design(s) of group [11]. Affirmation of this election should be made by applicant in replying to this Office action.

Group [12] is withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being for a nonelected design(s).

Examiner Note:

  • 1. In bracket 3, add embodiments as necessary.
  • 2. In bracket 6, add groups as necessary.
  • 3. In bracket 7, insert an explanation of the differences between the groups.
  • 4. In bracket 10, insert --with--or --without--.

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15.28.02 Telephone Restriction with Differences in Appearance and Scope

This application discloses the following embodiments:

Embodiment 1: Figs. [1] drawn to a [2].

Embodiment 2: Figs. [3] drawn to a [4].

[5]

The above embodiments divide into the following patentably distinct groups of designs:

Group I: Embodiment [6]

Group II: Embodiment [7]

[8]

Group(s) [9] involve a difference in appearance. Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. In re Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The [10] creates patentably distinct designs.

Because of the differences identified, the embodiments are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.

Group(s) [11] directed to the combination(s) in relation to Group(s) [12] directed to the subcombination(s)/element(s). The designs as grouped are distinct from each other since under the law a design patent covers only the design disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburg v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965). It is further noted that combination/subcombination subject matter, if patentably distinct, must be supported by separate claims, whereas only a single claim is permissible in a design patent application. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).

In any groups that include multiple embodiments, the embodiments are considered by the examiner to be obvious variations of one another within the group and, therefore, patentably indistinct. These embodiments thus comprise a single inventive concept and are grouped together.

Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.

During a telephone discussion with [13] on [14], a provisional election was made [15] traverse to prosecute the invention of Group [16]. Affirmation of this election should be made by applicant in replying to this Office action.

Group [17] is withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being for a nonelected invention.

Examiner Note:

  • 1. In bracket 5, add embodiments as necessary.
  • 2. In bracket 8, add groups as necessary.
  • 3. Insert an explanation of the differences between the designs in the explanations of the embodiments; for example, Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a saucer.
  • 4. It is possible and proper that embodiments may be listed in both explanatory paragraphs.
  • 5. In bracket 10, insert an explanation of the differences between the designs.
  • 6. In bracket 15, insert --with-- or --without--.

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15.29 Restriction Under 35 U.S.C. 121 (Segregable Parts or Combination/Subcombination)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1] drawn to a [2].

Embodiment 2 – Figs. [3] drawn to a [4].

[5]

Restriction to one of the following inventions is required under 35 U.S.C. 121 :

Group I – Embodiment [6]

Group II – Embodiment [7]

[8]

The designs as grouped are distinct from each other since under the law a design patent covers only the invention disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. See Ex parte Sanford, 1914 CD 69, 204 OG 1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It is further noted that patentably distinct combination/subcombination subject matter must be supported by separate claims, whereas only a single claim is permissible in a design patent application. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).

[9]

Because the designs are distinct for the reason(s) given above, and have acquired separate status in the art, restriction for examination purposes as indicated is proper ( 35 U.S.C. 121 ).

A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement is traversed. 37 CFR 1.143 . Any reply that does not include an election of a single group will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.

Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over the prior art will apply equally to all other groups. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.

In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960).

Examiner Note:

  • 1. In bracket 5, add embodiments as necessary.
  • 2. In bracket 8, add groups as necessary.
  • 3. In bracket 9, add comments, if necessary.

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15.30 Telephone Restriction Under 35 U.S.C. 121 (Segregable Parts or Combination/Subcombination)

This application discloses the following embodiments:

Embodiment 1 – Figs. [1] drawn to a [2].

Embodiment 2 – Figs. [3] drawn to a [4].

[5]

Restriction to one of the following inventions is required under 35 U.S.C. 121 :

Group I – Embodiment [6]

Group II – Embodiment [7]

[8]

The designs as grouped are distinct from each other since under the law a design patent covers only the invention disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. See Ex parte Sanford, 1914 CD 69, 204 OG 1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It is further noted that patentably distinct combination/subcombination subject matter must be supported by separate claims, whereas only a single claim is permissible in a design patent application. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).

[9]

During a telephone discussion with [10] on [11], a provisional election was made [12] traverse to prosecute the invention of Group [13]. Affirmation of this election should be made by applicant in replying to this Office action.

Group [14] withdrawn from further consideration by the examiner, 37 CFR 1.142(b) as being for a nonelected invention.

Examiner Note:

  • 1. In bracket 5, add embodiments as necessary.
  • 2. In bracket 8, add groups as necessary.
  • 3. In bracket 9, insert additional comments, if necessary.

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15.31 Provisional Election Required ( 37 CFR 1.143 )

Applicant is advised that the reply to be complete must include a provisional election of one of the enumerated designs, even though the requirement may be traversed ( 37 CFR 1.143 ).

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15.33 Qualifying Statement To Be Used In Restriction When A Common Embodiment Is Included In More Than One Group

The common embodiment is included in more than a single group as it is patentably indistinct from the other embodiment(s) in those groups and to give applicant the broadest possible choices in his or her election. If the common embodiment is elected in this application, then applicant is advised that the common embodiment should not be included in any continuing application to avoid a rejection on the ground of double patenting under 35 U.S.C. 171 in the new application.

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15.34 Groups Withdrawn From Consideration After Traverse

Group [1] withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being for a nonelected design, the requirement having been traversed in the reply filed on [2].

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15.35 Cancel Nonelected Design (Traverse)

The restriction requirement maintained in this application is or has been made final. Applicant must cancel Group [1] directed to the design(s) nonelected with traverse in the reply filed on [2], or take other timely appropriate action ( 37 CFR 1.144 ).

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15.36 Groups Withdrawn From Consideration Without Traverse

Group [1] withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being for the nonelected design. Election was made without traverse in the reply filed on [2].

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15.37 Cancellation of Nonelected Groups, No Traverse

In view of the fact that this application is in condition for allowance except for the presence of Group [1] directed to a design or designs nonelected without traverse in the reply filed on [2], and without the right to petition, such Group(s) have been canceled.

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15.38 Rejection Maintained

The arguments presented have been carefully considered, but are not persuasive that the rejection of the claim under [1] should be withdrawn.

Examiner Note:

In bracket 1, insert basis of rejection.

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15.39.02.aia Final Rejection Under 35 U.S.C. 103 (Single Reference)

The claim is FINALLY REJECTED under 35 U.S.C. 103 over [1].

Examiner Note:

  • 1. In bracket 1, insert reference citation.
  • 2. See form paragraphs in MPEP Chapter 700 , for “Action is Final” and “Advisory after Final” paragraphs.

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15.39.02.fti Final Rejection Under pre-AIA 35 U.S.C. 103(a) (Single Reference)

The claim is FINALLY REJECTED under pre-AIA 35 U.S.C. 103(a) over [1].

Examiner Note:

See form paragraphs in MPEP Chapter 700 , for “Action is Final” and “Advisory after Final” paragraphs.

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15.40.01 Final Rejection Under Other Statutory Provisions

The claim is FINALLY REJECTED under [1] as [2].

Examiner Note:

  • 1. In bracket 1, insert statutory basis.
  • 2. In bracket 2, insert reasons for rejection.
  • 3. See paragraphs in MPEP Chapter 700 , for “Action is Final” and “Advisory after Final” paragraphs.

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15.40.aia Final Rejection Under 35 U.S.C. 103 (Multiple References)

The claim is FINALLY REJECTED under 35 U.S.C. 103 as being unpatentable over [1] in view of [2].

Examiner Note:

See form paragraphs in MPEP Chapter 700 for “Action is Final” and “Advisory after Final” paragraphs.

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15.40.fti Final Rejection Under pre-AIA 35 U.S.C. 103(a) (Multiple References)

The claim is FINALLY REJECTED under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1] in view of [2].

Examiner Note:

See form paragraphs in MPEP Chapter 700 for “Action is Final” and “Advisory after Final” paragraphs.

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15.41 Functional, Structural Features Not Considered

Attention is directed to the fact that design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features stressed by applicant in the papers are of no concern in design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications.

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15.42 Visual Characteristics

The design for an article consists of the visual characteristics or aspect displayed by the article. It is the appearance presented by the article which creates an impression through the eye upon the mind of the observer.

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15.43 Subject Matter of Design Patent

Since a design is manifested in appearance, the subject matter of a Design Patent may relate to the configuration or shape of an article, to the surface ornamentation on an article, or to both.

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15.44 Design Inseparable From Article to Which Applied

Design is inseparable from the article to which it is applied, and cannot exist alone merely as a scheme of ornamentation. It must be a definite preconceived thing, capable of reproduction, and not merely the chance result of a method or of a combination of functional elements (35 U.S.C. 171; 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs). See Blisscraft of Hollywood v. United Plastics Co. , 189 F. Supp. 333, 127 USPQ 452 (S.D.N.Y. 1960), 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961).

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15.46.01 Impermissible Descriptive Statement

The descriptive statement included in the specification is impermissible because [1]. See MPEP § 1503.01 , subsection II. Therefore, the description should be canceled as any description of the design in the specification, other than a brief description of the drawing, is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description.

Examiner Note:

In bracket 1, insert the reason why the descriptive statement is improper.

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15.47 Characteristic Feature Statement

A “characteristic features” statement describing a particular feature of novelty or nonobviousness in the claimed design may be permissible in the specification. Such a statement should be in terms such as “The characteristic feature of the design resides in [1],” or if combined with one of the Figure descriptions, in terms such as “the characteristic feature of which resides in [2].” While consideration of the claim goes to the total or overall appearance, the use of a “characteristic feature” statement may serve later to limit the claim ( McGrady v. Aspenglas Corp., 487 F. Supp. 859, 208 USPQ 242 (S.D.N.Y. 1980)).

Examiner Note:

In brackets 1 and 2, insert brief but accurate description of the feature of novelty or nonobviousness of the claimed design.

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15.47.01 Feature Statement Caution

The inclusion of a feature statement in the specification is noted. However, the patentability of the claimed design is not based on the specified feature but rather on a comparison of the overall appearance of the design with the prior art. In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977).

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15.48 Necessity for Good Drawings

The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity ( 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.

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15.50 Use of Broken Lines for Indicating Unimportant Features Not Permitted

The ornamental design which is being claimed must be shown in solid lines in the drawing. Broken lines for the purpose of indicating unimportant or immaterial features of the design are not permitted. There are no portions of a claimed design which are immaterial or unimportant. See In re Blum , 374 F.2d 904, 153 USPQ 177 (CCPA 1967) and In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).

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15.50.01 Use of Broken Lines in Drawing (Ch. 16 Design Application)

Environmental structure may be illustrated by broken lines in the drawing if clearly designated as environment in the specification. See 37 CFR 1.152 and MPEP § 1503.02 , subsection III.

Examiner Note:

Do not use this form paragraph in an international design application.

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15.50.02 Description of Broken Lines (Ch. 16 Design Application)

A statement similar to the following should be used to describe the broken lines on the drawing ( MPEP § 1503.02 , subsection III):

-- The broken line showing of [1] is for the purpose of illustrating [2] and forms no part of the claimed design. --

A statement similar to the one above [3] inserted in the specification preceding the claim.

Examiner Note:

  • 1. Do not use this form paragraph in an international design application.
  • 2. In bracket 1, insert name of structure.
  • 3. In bracket 2, insert --portions of the “article”-- or --environmental structure--.
  • 4. In bracket 3, insert --must be-- or --has been--.

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15.50.04 Proper Drawing Disclosure With Use of Broken Lines

Where superimposed broken lines showing environmental structure obscure the full line disclosure of the claimed design, a separate figure showing the broken lines must be included in the drawing in addition to the figures showing only claimed subject matter, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph.

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15.50.05 Description of Broken Lines as Boundary of Design (Ch. 16 Design Application)

The following statement must be used to describe the broken line boundary of a design ( MPEP § 1503.02 , subsection III):

--The [1] broken line(s) define the bounds of the claimed design and form no part thereof.--

Examiner Note:

  • 1. Do not use this form paragraph in an international design application.
  • 2. In bracket 1 insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.

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15.51 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, First Paragraph Rejection (Written Description)

The claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph as failing to comply with the description requirement thereof since the [1] is not supported by the original disclosure. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the design now claimed at the time the application was filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).

Specifically, there is no support in the original disclosure [2].

To overcome this rejection, applicant may attempt to demonstrate (by means of argument or evidence) that the original disclosure establishes that he or she was in possession of the amended claim or [3].

Examiner Note:

  • 1. In bracket 1, specify whether new drawing or amendment to the drawing, title or specification.
  • 2. In bracket 2, specifically identify what subject matter is not supported so that the basis for the rejection is clear.
  • 3. In bracket 3, insert specific suggestion how rejection may be overcome depending on the basis; such as, “the bracket in figures 3 and 4 of the new drawing may be corrected to correspond to the original drawing” or “the specification may be amended by deleting the descriptive statement.”

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15.51.01 Amendment to Disclosure Not Affecting Claim - 35 U.S.C. 132 Objection (New Matter)

The [1] is objected to under 35 U.S.C. 132 and 37 CFR 1.121 as introducing new matter. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the amended subject matter at the time the application was filed. See In re Rasmussen , 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).

Specifically, there is no support in the original disclosure [2].

To overcome this objection, applicant may attempt to demonstrate (by means of argument or evidence) that the original disclosure establishes that he or she was in possession of the amended subject matter or [3].

Examiner Note:

  • 1. In bracket 1, specify whether new drawing or amendment to the drawing, title or specification.
  • 2. In bracket 2, specifically identify what is new matter so that the basis for the objection is clear.
  • 3. In bracket 3, insert specific suggestion how the objection may be overcome depending on the basis; such as, “the broken line showing of environmental structure in Fig. 1 of the new drawing may be omitted to correspond to the original drawing” or “the title may be amended by deleting the reference to environmental structure.”

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15.55 Design Patent-Copyright Overlap

There is an area of overlap between Copyright and Design Patent Statutes where an author/inventor can secure both a Copyright and a Design Patent. Thus, an ornamental design may be copyrighted as a work of art and may also be the subject matter of a Design Patent. The author/inventor may not be required to elect between securing a copyright or a design patent. See In re Yardley, 493 F. 2d 1389, 181 USPQ 331 (CCPA 1974). In Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (U.S. 1954), the Supreme Court noted the election of protection doctrine but did not express any view on it since a Design Patent had been secured in the case and the issue was not before the Court.

It is the policy of the Patent and Trademark Office to permit the inclusion of a copyright notice in a Design Patent application, and thereby any patent issuing therefrom, under the following conditions:

  • (1) A copyright notice must be placed adjacent to the copyright material and, therefore, may appear at any appropriate portion of the patent application disclosure including the drawing. However, if appearing on the drawing, the notice must be limited in print size from 1/8 inch to 1/4 inch and must be placed within the “sight” of the drawing immediately below the figure representing the copyright material. If placed on a drawing in conformance with these provisions, the examiner will not object to the notice as extraneous matter under 37 CFR 1.84 .
  • (2) The content of the copyright notice must be limited to only those elements required by law. For example, “© 1983 John Doe” would be legally sufficient under 17 U.S.C. 401 and properly limited.
  • (3) Inclusion of a copyright notice will be permitted only if the following waiver is included at the beginning (preferably as the first paragraph) of the specification to be printed for the patent:

    A portion of the disclosure of this patent document contains material to which a claim for copyright is made. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but reserves all other copyrights whatsoever.

  • (4) Inclusion of a copyright notice after a Notice of Allowance has been mailed will be permitted only if the criteria of 37 CFR 1.312 have been satisfied.

Any departure from these conditions may result in a refusal to permit the desired inclusion. If the waiver required under condition (3) above does not include the specific language “(t)he copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records...,” the examiner will object to the copyright notice as improper.

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15.55.01 Design Patent - Trademark Overlap

A design patent and a trademark may be obtained on the same subject matter. The Court of Customs and Patent Appeals, in In re Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575 (CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593 (CCPA 1967), has held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks, and that no right accruing from the one is dependent upon or conditioned by any right concomitant to the other.

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15.58 Claimed Design Is Patentable (Ex parte Quayle Actions)

The claimed design is patentable over the references cited.

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15.58.01 Claimed Design Is Patentable (35 U.S.C. 112 Rejections)

The claimed design is patentable over the references cited. However, a final determination of patentability will be made upon resolution of the above rejection.

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15.59 Amend Title

For [1], the title, and each occurrence of the language of the title, [2] amended throughout the application, original oath or declaration excepted, to read: [3]

Examiner Note:

  • 1. In bracket 1, insert reason.
  • 2. In bracket 2, insert --should be-- or --has been--.
  • 3. When the applicant has furnished the application title, applicant's authorization is required to make an examiner’s amendment to the application title. See MPEP § 1302.04 . Where the changes are made by examiner's amendment, this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 . If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01 .

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15.60 Amend All Figure Descriptions

For [1], the figure descriptions [2] amended to read: [3]

Examiner Note:

  • 1. In bracket 1, insert reason.
  • 2. In bracket 2, insert --should be-- or --have been-.
  • 3. In bracket 3, insert amended text.
  • 4. Applicant's authorization is required to make an examiner’s amendment to the figure descriptions, and this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 . See MPEP § 1302.04 . If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01 .

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15.61 Amend Selected Figure Descriptions

For [1], the description(s) of Fig(s). [2] [3] amended to read: [4]

Examiner Note:

  • 1. In bracket 1, insert reason.
  • 2. In bracket 2, insert selected Figure descriptions.
  • 3. In bracket 3, insert --should be-- or --have been-.
  • 4. In bracket 4, insert amended text.
  • 5. Applicant's authorization is required to make an examiner's amendment to the figure descriptions, and this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 . See MPEP § 1302.04 . If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01 .

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15.61.01 Amend Specification to Add Reference to Color Drawing(s)/ Photograph(s) (Ch. 16 Design Application)

The application contains at least one color drawing or color photograph. To comply with the provisions of 37 CFR 1.84 for color drawings/photographs in design applications, the specification [1] amended to include the following language as the first paragraph of the brief description of the drawings section:

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

Examiner Note:

  • 1. Do not use this form paragraph in an international design application.
  • 2. In bracket 1, insert --must be-- or --has been--.

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15.62 Amend Claim “As Shown”

For proper form ( 37 CFR 1.153 or 37 CFR 1.1025 ), the claim [1] amended to read: “ [2] claim: The ornamental design for [3] as shown.”

Examiner Note:

  • 1. In bracket 1, insert --must be-- or --has been--.
  • 2. In bracket 2, insert --I-- or --We--.
  • 3. In bracket 3, insert title of the article in which the design is embodied or applied.

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15.63 Amend Claim “As Shown and Described”

For proper form ( 37 CFR 1.153 or 37 CFR 1.1025 ), the claim [1] amended to read: “ [2] claim: The ornamental design for [3] as shown and described.”

Examiner Note:

  • 1. In bracket 1, insert --must be-- or --has been--.
  • 2. In bracket 2, insert --I-- or --We--.
  • 3. In bracket 3, insert title of the article in which the design is embodied or applied.

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15.64 Addition of “And Described” to Claim

Because of [1] -- and described -- [2] added to the claim after “shown.”

Examiner Note:

  • 1. In bracket 1, insert reason.
  • 2. In bracket 2, insert --must be-- or --has been--.

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15.65 Amendment May Not Be Possible

The application might be fatally defective because [1]. It might not be possible to identify any definite and enabled design claim without introducing new matter ( 35 U.S.C. 132 , 37 CFR 1.121 ).

Examiner Note:

In bracket 1, identify the subject matter which is insufficiently disclosed.

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15.66 Employ Services of Patent Attorney or Agent (Design Application Only)

As the value of a design patent is largely dependent upon the skillful preparation of the drawings and specification, applicant might consider it desirable to employ the services of a registered patent attorney or agent. The U.S. Patent and Trademark Office cannot aid in the selection of an attorney or agent.

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

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15.66.01 Employ Services of Professional Patent Draftsperson (Design Application Only)

As the value of a design patent is largely dependent upon the skillful preparation of the drawings, applicant might consider it desirable to employ the services of a professional patent draftsperson familiar with design practice. The U.S. Patent and Trademark Office cannot aid in the selection of a draftsperson.

Examiner Note:

This form paragraph should only be used in pro se applications where it appears that patentable subject matter is present and the disclosure of the claimed design complies with the requirements of 35 U.S.C. 112 .

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15.67 Rationale for 35 U.S.C. 103 Rejection (Single Reference)

It is well settled that it is unobviousness in the overall appearance of the claimed design, when compared with the prior art, rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).

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15.68 Rationale for 35 U.S.C. 103 Rejection (Multiple References)

This modification of the primary reference in light of the secondary reference is proper because the applied references are so related that the appearance of features shown in one would suggest the application of those features to the other. See In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982), and In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956). Further, it is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).

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15.69.01 Remove Indefinite Language (“Or The Like”) by Examiner’s Amendment

The phrase [1] in the claim following the title renders the claim indefinite. By authorization of [2] in a telephone interview on [3], the phrase has been cancelled from the claim and at each occurrence of the title throughout the papers, except the oath or declaration 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 , second paragraph, and 37 CFR 1.153 ). See Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992).

Examiner Note:

In bracket 1, insert objectionable phrase, e.g., --or the like--, --or similar article--, etc.

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15.70.aia Preface, 35 U.S.C. 103 Rejection

It would have been obvious to a designer of ordinary skill before the effective filing date of the present claimed invention to [1].

Examiner Note:

Insert explanation of the use of the reference applied in bracket 1.

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15.70.fti Preface, Pre-AIA 35 U.S.C. 103(a) Rejection

It would have been obvious to a designer of ordinary skill in the art at the time the invention was made to [1].

Examiner Note:

Insert explanation of the use of the reference applied in bracket 1.

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15.72 Quayle Action

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

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

A shortened statutory period for reply to this action is 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 Office action beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).

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15.73 Corrected Drawing Sheets Required

Failure to submit replacement correction sheets overcoming all of the deficiencies in the drawing disclosure set forth above, or an explanation why the drawing corrections or additional drawing views are not necessary will result in the rejection of the claim under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112 , first and second paragraphs, being made FINAL in the next Office action.

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15.74 Continuation-In-Part

Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Unless the filing date of the earlier application is actually needed, such as to avoid intervening prior art, the entitlement to priority in this CIP application will not be considered. See In re Corba , 212 USPQ 825 (Comm’r Pat. 1981).

Examiner Note:

This form paragraph should be used to notify applicant that the C-I-P application is not entitled to the benefit of the parent application under 35 U.S.C. 120 .

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15.74.01 Continuation-In-Part – Not Entitled To Benefit of Earlier Filing Date

Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design claimed in the present application is not disclosed in the parent application. Therefore, the parent application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, under 35 U.S.C. 120 for the design claimed in the present application and the present application is not entitled to the benefit of the earlier filing date.

Examiner Note:

  • This form paragraph should be used to notify applicant that the C-I-P application is not entitled to the benefit of the parent application under 35 U.S.C. 120 .

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15.75.01.fti C-I-P Caution, Claim to Foreign Priority in Earlier Filed Application - Status of Foreign Application Unknown

Reference to this application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design disclosed in the parent application is not the same design as the design disclosed in this application. Therefore, this application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date.

The parent application claimed foreign priority under 35 U.S.C. 119(a) - (d) . Applicant is reminded that if the foreign application to which priority was claimed matured into a patent/registration before the filing of the present application and was filed more than six months before the filing date of the present application, the foreign patent/registration qualifies as prior art under pre-AIA 35 U.S.C. 102(d) / 35 U.S.C. 172 .

Therefore, Applicant is requested to inform the Office of the status of the foreign application to which priority is claimed.

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15.75.fti Preface to Rejection in CIP Based on pre-AIA 35 U.S.C. 102(d)/35 U.S.C.172

Reference to this design application as a continuation-in-part under 35 U.S.C. 120 is acknowledged. Applicant is advised that the design disclosed in the parent application is not the same design as the design disclosed in this application. Therefore, this application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, under 35 U.S.C. 120 and is not entitled to benefit of the earlier filing date.

The parent application claimed foreign priority under 35 U.S.C. 119(a) - (d) , however, the present application is not entitled to the benefit of the earlier filing date of the parent application. The foreign application that the parent application has claimed priority to has matured into a patent/registration before the filing date of the present application and was filed more than six months before the filing date of the present application. Therefore, the foreign patent/registration qualifies as prior art under pre-AIA 35 U.S.C. 102(d) / 35 U.S.C. 172 .

Examiner Note:

This form paragraph should be followed with a rejection under pre-AIA 35 U.S.C. 102(d) / pre-AIA 35 U.S.C. 103(a) depending on the difference(s) between this claim and the design shown in the priority papers.

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15.76 Trademark in Drawing

The [1] forming part of the claimed design is a registered trademark of [2]. The specification must be amended to include a statement preceding the claim identifying the trademark material forming part of the claimed design and the name of the owner of the trademark.

Examiner Note:

  • 1. In bracket 1, identify the trademark material.
  • 2. In bracket 2, identify the trademark owner.

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15.85 Undisclosed visible surface(s)/portion(s) of article not forming part of the claimed design

The [1] of the article [2] not shown in the drawing or described in the specification. It is understood that the appearance of any part of the article not shown in the drawing or described in the specification forms no part of the claimed design. In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, the determination of patentability is based on the design for the article shown and described.

Examiner Note:

  • 1. In bracket 1, insert surface or surfaces which are not shown.
  • 2. In bracket 2, insert “is” or “are”.

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15.90 Indication of allowability withdrawn

The indication of allowability set forth in the previous action is withdrawn and prosecution is reopened in view of the following new ground of rejection.

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16.01 Specification, Manner of Asexually Reproducing

The application is objected to under 37 CFR 1.163(a) because the specification does not “particularly point out where and in what manner the variety of plant has been asexually reproduced.” Correction is required.

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16.02 Colors Specified Do Not Correspond With Those Shown

The disclosure is objected to under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, because the [1] colors specified fail to correspond with those shown.

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16.03 Rejection, 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 1st Paragraph, Non-Support for Colors

The claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph, as being unsupported by a clear and complete disclosure with regard to [1] colors, for the following reasons: [2].

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16.04 Rejection, 35 U.S.C. 102

The claim is rejected under 35 U.S.C. 102 as failing to patentably distinguish over [1] .

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16.05 Name or Denomination for Plant Missing

The disclosure is objected to under 37 CFR 1.121(e) because no “variety denomination” of the instant plant has been set forth in the disclosure. 37 CFR 1.163(c)(4) . Correction by adding such a name is required.

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16.05.01 Latin Name of Genus and Species of the Plant Claimed Missing

The disclosure is objected to under 37 CFR 1.121(e) because the Latin name of the genus and species of the instant plant has not been set forth in the disclosure. 37 CFR 1.163(c)(4) . Correction by adding such a name is required.

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16.06 Color Drawings Must Be in Duplicate

The disclosure is objected to under 37 CFR 1.165(b) because applicant has not provided copies of the color drawing in duplicate. Correction is required.

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16.07 Drawing Figures Not Competently Executed

The disclosure is objected to under 37 CFR 1.165(a) because Fig. [1] not artistically and/or competently executed.

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16.08 Rejection, 35 U.S.C. 112

The claim is rejected under 35 U.S.C. 112 [1] because [2].

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16.09 Specification, Less Than Complete Description

The disclosure is objected to under 37 CFR 1.163(a) because the specification presents less than a full and complete botanical description and the characteristics which distinguish over related known varieties. More specifically: [1].

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16.10 Specification, Location of Plant Not Disclosed

The disclosure is objected to under 37 CFR 1.163(a) because the specification does not particularly point out the location and character of the area where the plant was discovered.

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16.11 Drawings in Improper Scale

The disclosure is objected to under 37 CFR 1.165(a) because the drawings are of an inadequate scale to show the distinguishing features of the plant.

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16.12 Report From U.S. Dept. of Agriculture

This application has been submitted to the U.S. Department of Agriculture for a report. Pertinent portions follow: [1]

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16.13 Specimens Are Required

Applicant [1] required to submit [2] in accordance with 37 CFR 1.166 .

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18.01 Lacks Novelty

Claim [1] novelty under PCT Article 33(2) as being anticipated by [2].

Examiner Note:

  • 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
  • 2. In bracket 2, insert name of prior art relied upon.

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18.02 Lacks Inventive Step - One Reference

Claim [1] an inventive step under PCT Article 33(3) as being obvious over [2]. [3]

Examiner Note:

  • 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
  • 2. In bracket 2, insert name of prior art relied upon.
  • 3. In bracket 3, add reasoning.

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18.02.01 Lacks Inventive Step - Two References

Claim [1] an inventive step under PCT Article 33(3) as being obvious over [2] in view of [3]. [4]

Examiner Note:

  • 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
  • 2. In bracket 2, insert name of PRIMARY prior art relied upon.
  • 3. In bracket 3, insert name of SECONDARY prior art relied upon.
  • 4. In bracket 4, add reasoning.

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18.02.02 Lacks Inventive Step - Additional Reference

Claim [1] an inventive step under PCT Article 33(3) as being obvious over the prior art as applied in the immediately preceding paragraph and further in view of [2]. [3]

Examiner Note:

  • 1. This form paragraph may follow either 18.02 or 18.02.01.
  • 2. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
  • 3. In bracket 2, insert name of additional prior art relied upon.
  • 4. In bracket 3, add reasoning.

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18.03 Lacks Industrial Applicability

Claim [1] industrial applicability as defined by PCT Article 33(4) . [2]

Examiner Note:

  • 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --lack-- or --lacks--, as appropriate.
  • 2. In bracket 2, add reasoning.

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18.04 Meets Novelty and Inventive Step

Claim [1] the criteria set out in PCT Article 33(2) - (3) , because the prior art does not teach or fairly suggest [2].

Examiner Note:

  • 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and insert the verb --meet-- or --meets--, as appropriate.
  • 2. In bracket 2, insert the details of the claimed subject matter that render it unobvious over the prior art.
  • 3. If the claims also meet the industrial applicability criteria set out in PCT Article 33(4) , this form paragraph should be followed by form paragraph 18.04.01 .
  • 4. If the claims do not meet the industrial applicability criteria set out in PCT Article 33(4) , this form paragraph should be followed by form paragraph 18.03 .

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18.04.01 Meets Industrial Applicability

Claim [1] the criteria set out in PCT Article 33(4) , and thus [2] industrial applicability because the subject matter claimed can be made or used in industry.

Examiner Note:

  • 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --meet-- or -- meets--, as appropriate.
  • 2. In bracket 2, insert --have-- or --has--, as appropriate.
  • 3. If the claims meet all of the requirements of PCT Article 33(2)-(4) , use form paragraph 18.04 before this form paragraph to provide positive statements for novelty and inventive step under PCT Article 33(2)-(3) .
  • 4. If the claims have industrial applicability but lack novelty and inventive step, use this form paragraph and additionally use form paragraph 18.01 .
  • 5. If the claims have industrial applicability and novelty but lack inventive step, use this form paragraph and additionally use one or more of form paragraphs 18.02 , 18.02.01 and 18.02.02 , as appropriate.
  • 6. If the claims do not have industrial applicability, use form paragraph 18.03 instead of this form paragraph.

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18.05 Heading for Lack of Unity Action for PCT Applications During the International Phase (Including Species)

REQUIREMENT FOR UNITY OF INVENTION

As provided in 37 CFR 1.475(a) , an international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in an international application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.

The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e) .

When Claims Are Directed to Multiple Processes, Products, and/or Apparatuses:

Products, processes of manufacture, processes of use, and apparatuses are different categories of invention. When an application includes claims to more than one product, process, or apparatus, the first invention of the category first mentioned in the claims of the application and the first recited invention of each of the other categories related thereto will be considered as the “main invention” in the claims. In the case of non-compliance with unity of invention and where no additional fees are timely paid, the international search and/or international preliminary examination, as appropriate, will be based on the main invention in the claims. See PCT Article 17(3)(a) , 37 CFR 1.475(d) , 37 CFR 1.476(c) and 37 CFR 1.488(b)(3) .

As provided in 37 CFR 1.475(b) , an international application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:

  • (1) A product and a process specially adapted for the manufacture of said product; or
  • (2) A product and a process of use of said product; or
  • (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
  • (4) A process and an apparatus or means specifically designed for carrying out the said process; or
  • (5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.

Otherwise, unity of invention might not be present. See 37 CFR 1.475(c) .

This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1 .

Examiner Note:

  • 1. Begin all Lack of Unity actions for PCT applications during the international phase (including species) with this heading.
  • 2. Follow with form paragraphs 18.06 - 18.06.02 , 18.07 - 18.07.03 , as appropriate.
  • 3. Use form paragraph 18.18 for lack of unity in U.S. national stage applications submitted under 35 U.S.C. 371 .

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18.06 Lack of Unity - Three Groups of Claims

Group [1], claim(s) [2], drawn to [3].

Group [4], claim(s) [5], drawn to [6].

Group [7], claim(s) [8], drawn to [9].

Examiner Note:

  • 1. In brackets 1, 4 and 7, insert Roman numerals for each Group.
  • 2. In brackets 2, 5 and 8, insert respective claim numbers.
  • 3. In brackets 3, 6 and 9, insert respective names of grouped inventions.

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18.06.01 Lack of Unity - Two (or Additional) Groups of Claims

Group [1], claim(s) [2], drawn to [3].

Group [4], claim(s) [5], drawn to [6].

Examiner Note:

This form paragraph may be used alone or following form paragraph 18.06 .

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18.06.02 Lack of Unity - One Additional Group of Claims

Group [1], claim(s) [2], drawn to [3].

Examiner Note:

This form paragraph may be used following either form paragraph 18.06 or 18.06.01 .

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18.07 Lack of Unity - Reasons Why Inventions Lack Unity

The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2 , they lack the same or corresponding special technical features for the following reasons:

Examiner Note:

Follow with form paragraphs 18.07.01 through 18.07.03 , as appropriate.

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18.07.01 Same or Corresponding Technical Feature Lacking Among Groups

[1] lack unity of invention because the groups do not share the same or corresponding technical feature.

Examiner Note:

  • 1. This form paragraph may be used, for example, where the claims of Group I are directed to A + B, whereas the claims of Group II are directed to C + D, and thus the groups do not share a technical feature.
  • 2. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02 . For U.S. national stage applications under 35 U.S.C. 371 , identify the groups involved by Roman numerals (e.g., “Groups I and II”) where inventions have been grouped using form paragraphs 18.06 - 18.06.02 , or identify the species involved where species have been listed using form paragraph 18.20 .

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18.07.02 Shared Technical Feature Does Not Make a Contribution Over the Prior Art

[1] lack unity of invention because even though the inventions of these groups require the technical feature of [2], this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of [3]. [4]

Examiner Note:

  • 1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02. For U.S. national stage applications under 35 U.S.C. 371 , identify the groups involved by Roman numerals (e.g., “Groups I and II”) where inventions have been grouped using form paragraphs 18.06 - 18.06.02 , or identify the species involved where species have been listed using form paragraph 18.20 .
  • 2. In bracket 2, identify the technical feature shared by the groups.
  • 3. In bracket 3, insert citation of prior art reference(s) demonstrating the shared technical feature does not make a contribution over the prior art. Whether a particular technical feature makes a "contribution" over the prior art, and, therefore, constitutes a "special technical feature," is considered with respect to novelty and inventive step.
  • 4. In bracket 4, explain how the shared technical feature lacks novelty or inventive step in view of the reference(s).

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18.07.03 Heading – Chemical Compound Alternatives of Markush Group Are Not of a Similar Nature

Where a single claim defines alternatives of a Markush group, the requirement of a technical interrelationship and the same or corresponding special technical features as defined in Rule 13.2, is considered met when the alternatives are of a similar nature. When the Markush grouping is for alternatives of chemical compounds, the alternatives are regarded as being of a similar nature where the following criteria are fulfilled:

  • (A) all alternatives have a common property or activity; AND
  • (B)
    • (1) a common structure is present, that is, a significant structural element is shared by all of the alternatives; OR
  • (B)
    • (2) in cases where the common structure cannot be the unifying criteria, all alternatives belong to a recognized class of chemical compounds in the art to which the invention pertains.

The phrase “significant structural element is shared by all of the alternatives” refers to cases where the compounds share a common chemical structure which occupies a large portion of their structures, or in case the compounds have in common only a small portion of their structures, the commonly shared structure constitutes a structurally distinctive portion in view of existing prior art, and the common structure is essential to the common property or activity.

The phrase “recognized class of chemical compounds” means that there is an expectation from the knowledge in the art that members of the class will behave in the same way in the context of the claimed invention, i.e. each member could be substituted one for the other, with the expectation that the same intended result would be achieved.

Examiner Note:

  • 1. This heading should be used when the chemical alternatives of a Markush group are determined to lack unity of invention.
  • 2. Follow with form paragraphs listed using form paragraphs 18.07.03 a - 18.07.03 c, as appropriate.

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18.07.03a Alternatives Lack Common Property or Activity

The chemical compounds of [1] are not regarded as being of similar nature because all of the alternatives do not share a common property or activity. [2]

Examiner Note:

  • 1. In bracket 1: For international applications in the international phase , identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02 . For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20 .
  • 2. In bracket 2, insert reasoning.

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18.07.03b Alternatives Share a Common Structure - However, the Common Structure is Not a Significant Structural Element and the Alternatives Do Not Belong to a Recognized Class

Although the chemical compounds of [1] share a common structure of [2], the common structure is not a significant structural element because it represents only a small portion of the compound structures and does not constitute a structurally distinctive portion in view of [3]. Further, the compounds of these groups do not belong to a recognized class of chemical compounds. [4]

Examiner Note:

  • 1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02 . For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20 .
  • 2. In bracket 2, identify common structure.
  • 3. In bracket 3, insert citation of prior art reference(s) relied upon to demonstrate the commonly shared structure is not distinctive.
  • 4. In bracket 4, explain why the compounds do not belong to a recognized class of chemical compounds.

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18.07.03c Alternatives Do Not Share a Common Structure or Belong to Recognized Class

The chemical compounds of [1] are not regarded as being of similar nature because: (1) all the alternatives do not share a common structure and (2) the alternatives do not all belong to a recognized class of chemical compounds. [2]

Examiner Note:

  • 1. In bracket 1: For international applications in the international phase, identify the groups involved by Roman numerals (e.g., “Groups I and II”) in accordance with the groups listed using form paragraphs 18.06 - 18.06.02 . For U.S. national stage applications under 35 U.S.C. 371 , identify the species involved where species have been listed using form paragraph 18.20 .
  • 2. In bracket 2, insert reasoning.

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18.08 Drawing - Defect in Form or Contents Thereof

The drawings contain the following defect(s) in the form or content thereof: [1]

Examiner Note:

In bracket 1, insert identification of defects in drawings.

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18.08.01 Drawing Is Required

The subject matter of this application admits of illustration by drawing to facilitate understanding of the invention. Applicant is required under PCT Article 7(1) to furnish a drawing.

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18.09 Description - Defect in Form or Contents Thereof

The description contains the following defect(s) in the form or contents thereof: [1]

Examiner Note:

In bracket 1, insert the technical problem, e.g., misspelled word.

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18.10 Claims - Defect in Form or Contents Thereof

Claim [1] contain(s) the following defect(s) in the form or contents thereof: [2]

Examiner Note:

  • 1. In bracket 1, pluralize “claim” if needed, and insert claim no.(s).
  • 2. In bracket 2, identify the technical deficiency.

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18.11 Drawing Objections - Lack Clarity

The drawings are objected to under PCT Article 7 as lacking clarity under PCT Article 7 because: [1]

Examiner Note:

In bracket 1, insert reasons why the drawings lack clarity, e.g., inaccurate showing.

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18.12.01 Claims Objectionable - Inadequate Written Description

Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The application, as originally filed, did not describe: [3]

Examiner Note:

  • 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s), and the verb --is-- or --are--, as appropriate.
  • 2. In bracket 2, pluralize “claim” if needed, and insert the verb --is-- or --are--.
  • 3. In bracket 3, identify subject matter not described in the application as filed.

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18.13.01 Claims Objectionable - Non-Enabling Disclosure

Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The description does not disclose the claimed invention in a manner sufficiently clear and complete for the claimed invention to be carried out by a person skilled in the art as required by PCT Article 5 because: [3]

Examiner Note:

  • 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.
  • 2. In bracket 2, pluralize “claim” if needed, insert the verb --is-- or --are--.
  • 3. In bracket 3, identify the claimed subject matter that is not enabled and explain why it is not enabled.

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18.14.01 Claims Objectionable - Lack of Best Mode

Claim [1] objected to under PCT Article 6 because the claim [2] not fully supported by the description. The description fails to set forth the best mode contemplated by the applicant for carrying out the claimed invention as required by PCT Rule 5.1(a)(v) because: [3].

Examiner Note:

  • 1. In bracket 1, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.
  • 2. In bracket 2, pluralize “claim” if needed, and insert the appropriate verb --is-- or --are--.
  • 3. In bracket 3, insert the objection and reasons.

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18.15 Claims Objectionable - Indefiniteness

Claim [1] objected to under PCT Article 6 as lacking clarity because claim [2] indefinite for the following reason(s): [3]

Examiner Note:

  • 1. In brackets 1 and 2, pluralize “claim” if needed, insert claim no.(s) and the appropriate verb --is-- or --are--.
  • 2. In bracket 3, insert reasons.

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18.18 Heading for Lack of Unity Action in National Stage Applications Submitted Under 35 U.S.C. 371 (Including Species)

REQUIREMENT FOR UNITY OF INVENTION

As provided in 37 CFR 1.475( a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.

The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e) .

When Claims Are Directed to Multiple Categories of Inventions:

As provided in 37 CFR 1.475(b) , a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:

  • (1) A product and a process specially adapted for the manufacture of said product; or
  • (2) A product and a process of use of said product; or
  • (3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
  • (4) A process and an apparatus or means specifically designed for carrying out the said process; or
  • (5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.

Otherwise, unity of invention might not be present. See 37 CFR 1.475(c) .

Examiner Note:

  • 1. Begin all Lack of Unity actions in national stage applications submitted under 35 U.S.C. 371 (including species) with this heading.
  • 2. Follow with form paragraph 18.19 or 18.20 , as appropriate.
  • 3. For lack of unity during the international phase, use form paragraph 18.05 instead of this form paragraph.

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18.19 Restriction Requirement in National Stage Applications Submitted Under 35 U.S.C. 371

Restriction is required under 35 U.S.C. 121 and 372 .

This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1 .

In accordance with 37 CFR 1.499 , applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.

Examiner Note:

  • 1. This form paragraph is to be used when making a restriction requirement in a national stage application submitted under 35 U.S.C. 371 .
  • 2. This form paragraph is to be followed by form paragraphs 18.06 - 18.06.02 , as appropriate, and by form paragraphs 18.07 - 18.07.02 , as appropriate.
  • 3. All restriction requirements between a product/apparatus and a process of making the product/apparatus or between a product and a process of using the product should be followed by form paragraph 8.21.04 to notify the applicant that if all product/apparatus claims are found allowable, process claims that require all the limitations of the patentable product/apparatus should be considered for rejoinder.
  • 4. When all of the claims directed to the elected invention are in condition for allowance, the propriety of the restriction requirement should be reconsidered to verify that the non-elected claims do not share a same or corresponding technical feature with the allowable claims.

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18.20 Election of Species in National Stage Applications Submitted Under 35 U.S.C. 371

This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1 .

The species are as follows:

[1]

Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.

Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim(s) are generic: [2].

Examiner Note:

  • 1. This form paragraph is to be used when making an election of species requirement in a national stage application submitted under 35 U.S.C. 371 .
  • 2. In bracket 1, identify the species from which an election is to be made.
  • 3. In bracket 2, identify each generic claim by number or insert the word --NONE--.
  • 4. This form paragraph is to be followed by form paragraphs 18.07 - 18.07.03 , as appropriate.

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18.21 Election by Original Presentation in National Stage Applications Submitted Under 35 U.S.C. 371

Newly submitted claim [1] directed to an invention that lacks unity with the invention originally claimed for the following reasons: [2]

Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a nonelected invention. See 37 CFR 1.142(b) and MPEP § 821.03 .

To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144 . If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.

Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.

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18.22 Requirement for Election and Means for Traversal in National Stage Applications Submitted Under 35 U.S.C. 371

Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed ( 37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected invention.

The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.

Should applicant traverse on the ground that the inventions have unity of invention ( 37 CFR 1.475(a) ), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.

Examiner Note:

  • 1. This form paragraph should be used when requiring restriction (including an election of species) in an application that entered the national stage under 35 U.S.C. 371 .
  • 2. This form paragraph should follow form paragraph 8.23.01 when a telephone call was made that did not result in an election being made.

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19.01 Period for Comments on Protest by Applicant

A protest against issuance of a patent based upon this application has been filed under 37 CFR 1.291(a) on [1], and a copy [2]. Any comments or reply applicant desires to file before consideration of the protest must be filed by [3].

Examiner Note:

  • 1. Applicant is normally given one month to submit any comments, unless circumstances in the case would warrant a longer period.
  • 2. A copy of this Office action is NOT sent to the protestor. See 37 CFR 1.291(d) .
  • 3. In bracket 2, insert either-- has been served on applicant-- or-- is attached hereto--.

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19.02 Requirement for Information

The protest under 37 CFR 1.291 filed on [1] has been considered. In order to reach a full and proper consideration of the issues raised therein, it is necessary to obtain additional information from applicant regarding these issues. In particular [2]. The failure to reply to this requirement for information within a shortened statutory period of TWO (2) MONTHS of the mailing date of this requirement will result in abandonment of the application. This time period may be extended under the provisions of 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:

While the examiner normally should not need further information from applicant, this form paragraph may be used to request specific additional information from the applicant.

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19.02.AE Requirement for Information – Application Under Accelerated Examination

The protest under 37 CFR 1.291 filed on [1] has been considered. In order to reach a full and proper consideration of the issues raised therein, it is necessary to obtain additional information from applicant regarding these issues. In particular [2]. The failure to reply to this requirement for information within TWO (2) MONTHS of the mailing date of this requirement will result in abandonment of the application. This application has been granted special status under the accelerated examination program. Extensions of time under 37 CFR 1.136(a) are available. 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. While the examiner normally should not need further information from applicant, this form paragraph may be used to request specific additional information from the applicant.
  • 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 on other grounds 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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22.01 New Question of Patentability

A substantial new question of patentability affecting claim [1] of United States Patent Number [2] is raised by the request for ex parte reexamination.

Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that ex parte reexamination proceedings “will be conducted with special dispatch” ( 37 CFR 1.550(a) ). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c) .

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22.01.01 Criteria for Applying "Old Art" as Sole Basis for Reexamination

The above [1] is based solely on patents and/or printed publications already cited/considered in an earlier concluded examination or review of the patent being reexamined, or has been raised to or by the Office in a pending reexamination or supplemental examination of the patent. On November 2, 2002, Public Law 107-273 was enacted. Title III, Subtitle A, Section 13105, part (a) of the Act revised the reexamination statute by adding the following new last sentence to 35 U.S.C. 303(a) and 312(a) :

"The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office."

For any reexamination ordered on or after November 2, 2002, the effective date of the statutory revision, reliance on previously cited/considered art, i.e., “old art,” does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art. Rather, determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis.

In the present instance, there exists a SNQ based solely on [2]. A discussion of the specifics now follows:

[3]

Examiner Note:

  • 1. In bracket 1, insert "substantial new question of patentability" if the present form paragraph is used in an order granting reexamination (or a TC or CRU Director’s decision on petition of the denial of reexamination). If this form paragraph is used in an Office action, insert "ground of rejection."
  • 2. In bracket 2, insert the old art that is being applied as the sole basis of the SNQ. For example, "the patent to J. Doe" or "the patent to J. Doe when taken with the Jones publication" or "the combination of the patent to J. Doe and the Smith publication" could be inserted. Where more than one SNQ is presented based solely on old art, the examiner would insert all such bases for SNQ.
  • 3. In bracket 3, for each basis identified in bracket 2, explain how and why that fact situation applies in the proceeding being acted on. The explanation could be for example that the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier examination(s), in view of a material new argument or interpretation presented in the request. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351 (Bd. Pat. App. & Inter. 1984).
  • 4. This form paragraph is only used the first time the "already cited/considered" art is applied, and is not repeated for the same art in subsequent Office actions.

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22.02 No New Question of Patentability

No substantial new question of patentability is raised by the request for reexamination and prior art cited therein for the reasons set forth below.

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22.03 Issue Not Within Scope of Ex Parte Reexamination

An issue has been raised in the present reexamination proceeding that is not within the scope of an ex parte reexamination ordered under 35 U.S.C. 304 . [1]. This issue will not be considered in the present proceeding. 37 CFR 1.552(c) .

Examiner Note:

  • 1. In bracket 1, identify the issues.
  • 2. This paragraph may be used either when the patent owner or third party requester raises issues such as public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.

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22.04 Papers To Be Submitted in Response to Action - Ex Parte Reexamination

In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be a final action, will be governed by the requirements of 37 CFR 1.116 after final rejection and 37 CFR 41.33 after appeal, which will be strictly enforced.

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22.04.01 Extension of Time in Reexamination

Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings “will be conducted with special dispatch” ( 37 CFR 1.550(a) ). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c) .

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22.05 Reexamination (Ex Parte or Inter Partes) Based on Reissue Claims

In view of the surrender of original Patent No. [1] and the granting of Reissue Patent No. [2] which issued on [3], all subsequent proceedings in this reexamination will be based on the reissue patent claims.

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22.06 Examiner’s Amendment Accompanying Notice of Intent To Issue Ex Parte Reexamination Certificate

An examiner’s amendment to the record appears below. The changes made by this examiner’s amendment will be reflected in the reexamination certificate to issue in due course.

[1]

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22.07 Litigation Reminder (Patent Owner Request or Director Ordered Reexamination)

The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a) , to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent No. [1] throughout the course of this reexamination proceeding. See MPEP §§ 2207 , 2282 and 2286 .

Examiner Note:

This form paragraph is to be used when granting an ex parte reexamination request filed by a patent owner and in the first action in a Director Ordered reexamination or reexamination ordered under 35 U.S.C. 257 .

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22.08 Litigation Reminder (Third Party Requester)

The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a) , to apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving Patent No. [1] throughout the course of this reexamination proceeding. The third party requester is also reminded of the ability to similarly apprise the Office of any such activity or proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207 , 2282 and 2286 .

Examiner Note:

This form paragraph is to be used when granting an ex parte reexamination request filed by a third party requester.

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22.09 Ex Parte Reexamination - Action Is Final

THIS ACTION IS MADE FINAL.

A shortened statutory period for response to this action is set to expire [1] from the mailing date of this action.

Extensions of time under 37 CFR 1.136(a) do not apply in reexamination proceedings. The provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a) , it is required that reexamination proceedings “will be conducted with special dispatch within the Office.”

Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c) . A request for extension of time must specify the requested period of extension and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g) . Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request will not effect any extension of time. A request for an extension of time in a third party requested ex parte reexamination will be granted only for sufficient cause, and for a reasonable time specified. Any request for extension in a patent owner requested ex parte reexamination (including reexamination ordered under 35 U.S.C. 257 ) for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months will not effect the extension. The time for taking action in a patent owner requested ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.

The filing of a timely first response to this final rejection will be construed as including a request to extend the shortened statutory period for an additional two months. In no event, however, will the statutory period for response expire later than SIX MONTHS from the mailing date of the final action. See MPEP § 2265 .

Examiner Note:

  • 1. This form paragraph may be used only in reexamination proceedings.
  • 2. In bracket 1, insert the appropriate period for response, which is normally TWO (2) MONTHS.

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22.10 Ex Parte Reexamination - Action Is Final, Necessitated by Amendment

Patent owner’s amendment filed [1] necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL . See MPEP § 706.07(a) .

A shortened statutory period for response to this action is set to expire [2] from the mailing date of this action.

Extensions of time under 37 CFR 1.136(a) do not apply in reexamination proceedings. The provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a) , it is required that reexamination proceedings “will be conducted with special dispatch within the Office.”

Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c) . A request for extension of time must specify the requested period of extension and it must be accompanied by the petition fee set forth in 37 CFR 1.17(g) . Any request for an extension in a third party requested ex parte reexamination must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request will not effect any extension of time. A request for an extension of time in a third party requested ex parte reexamination will be granted only for sufficient cause, and for a reasonable time specified. Any request for extension in a patent owner requested ex parte reexamination (including reexamination ordered under 35 U.S.C. 257 ) for up to two months from the time period set in the Office action must be filed no later than two months from the expiration of the time period set in the Office action. A request for an extension in a patent owner requested ex parte reexamination for more than two months from the time period set in the Office action must be filed on or before the day on which action by the patent owner is due, and the mere filing of a request for an extension for more than two months will not effect the extension. The time for taking action in a patent owner requested ex parte reexamination will not be extended for more than two months from the time period set in the Office action in the absence of sufficient cause or for more than a reasonable time.

The filing of a timely first response to this final rejection will be construed as including a request to extend the shortened statutory period for an additional two months. In no event, however, will the statutory period for response expire later than SIX MONTHS from the mailing date of the final action. See MPEP § 2265 .

Examiner Note:

  • 1. This form paragraph may be used only in reexamination proceedings.
  • 2. In bracket 1, insert filing date of amendment.
  • 3. In bracket 2, insert the appropriate period for response, which is normally TWO (2) MONTHS.
  • 4. As with all other Office correspondence on the merits in a reexamination proceeding, the final Office action must be signed by a primary examiner.

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22.11 Rejection, 35 U.S.C. 305, Claim Enlarges Scope of Patent - Ex Parte Reexamination

Claim [1] rejected under 35 U.S.C. 305 as enlarging the scope of the claim(s) of the patent being reexamined. In 35 U.S.C. 305 , it is stated that "[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding...." A claim presented in a reexamination "enlarges the scope" of the patent claim(s) where the claim is broader than each and every claim of the patent. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect, even though it may be narrower in other respects.

[2]

Examiner Note:

The claim limitations which are considered to broaden the scope should be identified and explained in bracket 2. See MPEP § 2258 .

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22.12 Amendments Proposed in a Reexamination - 37 CFR 1.530(d)-(j)

Patent owner is notified that any proposed amendment to the specification and/or claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j) , must be formally presented pursuant to 37 CFR 1.52(a) and (b) , and must contain any fees required by 37 CFR 1.20(c) .

Examiner Note:

This paragraph may be used in the order granting reexamination and/or in the first Office action to advise patent owner of the proper manner of making amendments in a reexamination proceeding.

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22.13 Improper Amendment in an Ex Parte Reexamination - 37 CFR 1.530(d)-(j)

The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.530(d)-(j) , which sets forth the manner of making amendments in reexamination proceedings. A supplemental paper correctly proposing amendments in the present ex parte reexamination proceeding is required.

A shortened statutory period for response to this letter is set to expire [3] from the mailing date of this letter. If patent owner fails to timely correct this informality, the amendment will be held not to be an appropriate response, prosecution of the present ex parte reexamination proceeding will be terminated, and a reexamination certificate will issue. 37 CFR 1.550(d) .

Examiner Note:

  • 1. This paragraph may be used for any 37 CFR 1.530(d)-(j) informality as to a proposed amendment submitted in a reexamination proceeding prior to final rejection. After final rejection, the amendment should not be entered and patent owner informed of such in an advisory Office action using Form PTOL 467.
  • 2. In bracket 3, if the reexamination was requested by a third party requester, the examiner should insert “ONE MONTH or thirty days, whichever is longer”. If the reexamination was requested by the patent owner, if the reexamination was ordered under 35 U.S.C. 257 , or if it is a Director ordered reexamination, the examiner should insert “TWO MONTHS.”

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22.14 Submission Not Fully Responsive to Non-Final Office Action - Ex Parte Reexamination

The communication filed on [1] is not fully responsive to the prior Office action. [2]. The response appears to be bona fide, but through an apparent oversight or inadvertence, consideration of some matter or compliance with some requirement has been omitted. Patent owner is required to deal with the omission to thereby provide a full response to the prior Office action.

A shortened statutory period for response to this letter is set to expire [3] from the mailing date of this letter. If patent owner fails to timely deal with the omission and thereby provide a full response to the prior Office action, prosecution of the present reexamination proceeding will be terminated. 37 CFR 1.550(d) .

Examiner Note:

  • 1. In bracket 2, the examiner should explain the nature of the omitted point necessary to complete the response, i.e., what part of the Office action was not responded to. The examiner should also make it clear what is needed to deal with the omitted point.
  • 2. In bracket 3, if the reexamination was requested by a third party requester, the examiner should insert “ONE MONTH or thirty days, whichever is longer”. If the reexamination was requested by the patent owner, if the reexamination was ordered under 35 U.S.C. 257 , or if it is a Director-ordered reexamination, the examiner should insert “TWO MONTHS”.
  • 3. This paragraph may be used for a patent owner communication that is not completely responsive to the outstanding (i.e., prior) Office action. See MPEP § 2266.01 .
  • 4. This practice does not apply where there has been a deliberate omission of some necessary part of a complete response.
  • 5. This paragraph is only used for a response made prior to final rejection. After final rejection, an advisory Office action and Form PTOL 467 should be used, and the patent owner informed of any non-entry of the amendment.

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22.15 Lack of Service - 37 CFR 1.550(f)

The submission filed on [1] is defective because it appears that the submission was not served on the [2]. After the filing of a request for reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party (or parties where two or more third party requester proceedings are merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248 . See 37 CFR 1.550(f) .

It is required that service of the submission be made, and a certificate of service be provided to the Office within a shortened statutory period of ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If service of the submission is not timely made, the submission may be denied consideration.

Examiner Note:

  • 1. This paragraph may be used where a submission to the Office was not served as required in a third party requester reexamination proceeding.
  • 2. In bracket 2, insert --patent owner-- or --third party requester--, whichever is appropriate.

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22.16 Reasons For Patentability and/or Confirmation

STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION

The following is an examiner’s statement of reasons for patentability and/or confirmation of the claims found patentable in this reexamination proceeding: [1]

Any comments considered necessary by PATENT OWNER regarding the above statement must be submitted promptly to avoid processing delays. Such submission by the patent owner should be labeled: “Comments on Statement of Reasons for Patentability and/or Confirmation” and will be placed in the reexamination file.

Examiner Note:

This form paragraph may be used as an attachment to the Notice of Intent to Issue Ex Parte Reexamination Certificate, PTOL-469 (item number 2).

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22.20 Claims Held Invalid By Court, No Longer Being Reexamined

Claims [1] of the [2] patent are not being reexamined in view of the final decision of [3]. Claim(s) [1] was/were held invalid/unenforceable by the [4].

Examiner Note:

  • 1. In bracket 1, insert the claim(s) held invalid.
  • 2. In bracket 2, insert the patentee (e.g., Rosenthal, J. Doe et al).
  • 3. In bracket 3, insert the decision (e.g., ABC Corp. v. Smith, 888 F. 3d 88, 999 USPQ2d 99 (Fed. Cir. 1999) or XYZ Corp. v. Jones, 888 F. Supp. 2d 88, 999 USPQ2d 1024 (N.D. Cal. 1999)).
  • 4. In bracket 4, insert the name of the court (e.g., the Court of Appeals for the Federal Circuit, or the Federal District Court).

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22.73 Correspondence and Inquiry as to Office Actions

All correspondence relating to this ex parte reexamination proceeding should be directed:

By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/myportal/efs-registered.

By Mail to: Mail Stop Ex Parte Reexam

Central Reexamination Unit

Commissioner for Patents

United States Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX to: (571) 273-9900

Central Reexamination Unit

By hand: Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4) , and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.

Any inquiry concerning this communication should be directed to [1] at telephone number [2].

Examiner Note:

  • 1. This form paragraph is used at the end of ex parte reexamination communications.
  • 2. In bracket 1, insert the name of the examiner having charge of the proceeding.
  • 3. In bracket 2, insert the examiner’s telephone number.

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23.01 Request for Interference Premature; Examination Not Completed

The request for interference filed [1] is acknowledged. However, examination of this application has not been completed as required by 37 CFR 41.102(a) . Consideration of a potential interference is premature. See MPEP § 2303 .

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23.02 Ex Parte Prosecution Is Resumed

Interference No. [1] has been terminated by a decision [2] to applicant. Ex parte prosecution is resumed.

Examiner Note:

  • 1. In bracket 1, insert the interference number.
  • 2. In bracket 2, insert whether favorable or unfavorable.

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23.04 Requiring Applicant to Add Claim to Provoke Interference

The following allowable claim from [1] is required to be added for the purpose of an interference:

[2]

The claim must be copied exactly.

Applicant is given TWO (2) MONTHS from the mailing date of this communication to add the claim. Refusal to add a required claim will operate as a concession of priority for the subject matter of the required claim, but will not result in abandonment of this application. See 37 CFR 41.202(c) and MPEP § 2304.04(b) . EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 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 ). If the interference would be with a patent, applicant must also comply with 37 CFR 41.202(a)(2) to (a)(6) .

Examiner Note:

  • 1. In bracket 1, insert the published application number if the claim is an allowed claim from a U.S. application publication or the patent number if the claim is from a U.S. patent.
  • 2. In bracket 2, insert the claim which applicant is required to add to provoke an interference.

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23.06 Applicant Suggesting an Interference

Applicant has suggested an interference pursuant to 37 CFR 41.202(a) in a communication filed [1].

Examiner Note:

  • 1. Use this form paragraph if applicant has suggested an interference under 37 CFR 41.202(a) and applicant has failed to comply with one or more of paragraphs (a)(1) to (a)(6) of 37 CFR 41.202 .
  • 2. In bracket 1, insert the date of applicant’s communication.
  • 3. This form paragraph must be followed by one or more of form paragraphs 23.06.01 to 23.06.03 and end with form paragraph 23.06.04 .

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23.06.01 Failure to Identify the Other Application or Patent

Applicant failed to provide sufficient information to identify the application or patent with which the applicant seeks an interference. See 37 CFR 41.202(a)(1) and MPEP § 2304.02(a) .

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23.06.02 Failure to Identify the Counts and Corresponding Claims

Applicant failed to (1) identify all claims the applicant believes interfere, and/or (2) propose one or more counts, and/or (3) show how the claims correspond to one or more counts. See 37 CFR 41.202(a)(2) and MPEP § 2304.02(b) .

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23.06.03 Failure to Provide Claim Chart Comparing At Least One Claim

Applicant failed to provide a claim chart comparing at least one claim of each party corresponding to the count. See 37 CFR 41.202(a)(3) and MPEP § 2304.02(c) .

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23.06.04 Failure to Explain in Detail Why Applicant Will Prevail on Priority

Applicant failed to provide a detailed explanation as to why applicant will prevail on priority. See 37 CFR 41.202(a)(4), (a)(6), (d) and MPEP § 2304.02(c) .

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23.06.05 Claim Added/Amended; Failure to Provide Claim Chart Showing Written Description

Claim [1] has been added or amended in a communication filed on [2] to provoke an interference. Applicant failed to provide a claim chart showing the written description for each claim in the applicant’s specification. See 37 CFR 41.202(a)(5) and MPEP § 2304.02(d) .

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23.06.06 Time Period for Reply

Applicant is given TWO (2) MONTHS from the mailing date of this communication to correct the deficiency(ies). EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 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 ).

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23.14 Claims Not Copied Within One Year of Patent Issue Date

Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(1) as not being made prior to one year from the date on which U.S. Patent No. [2] was granted. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.

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23.14.01 Claims Not Copied Within One Year Of Application Publication Date

Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(2) as not being made prior to one year from the date on which [2] was published under 35 U.S.C. 122(b) . See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.

Examiner Note:

  • 1. In bracket 2, insert the publication number of the published application.
  • 2. This form paragraph should only be used if the application being examined was filed after the publication date of the published application.

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23.19 Foreign Priority Not Substantiated

Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a) -(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action, 37 CFR 41.154(b) and 41.202(e) .

Failure to provide a certified translation may result in no benefit being accorded for the non-English application.

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24.01 Heading for Sequence Requirements

REQUIREMENTS FOR PATENT APPLICATIONS CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCE DISCLOSURES

Items 1) and 2) provide general guidance related to requirements for sequence disclosures.

  • 1) 37 CFR 1.821(c) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) must contain a "Sequence Listing," as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.821 - 1.825 . This "Sequence Listing" part of the disclosure may be submitted:
  • 2) When a “Sequence Listing” has been submitted as a PDF file as in 1.c) above ( 37 CFR 1.821(c)(2) ) or on physical sheets of paper as in 1. d) above ( 37 CFR 1.821(c)(3) , 37 CFR 1.821(e)(1) ), requires a computer readable form (CRF) of the “Sequence Listing” in accordance with the requirements of  37 CFR 1.824 .
    • a) If the "Sequence Listing" required by 37 CFR 1.821(c) is filed via EFS-Web or Patent Center as a PDF, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the PDF copy and the CRF copy (the ASCII text file copy) are identical.
    • b) If the "Sequence Listing" required by 37 CFR 1.821(c) is filed on paper or read-only optical disc, then   37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii)  requires submission of a statement that the "Sequence Listing" content of the paper or read-only optical disc copy and the CRF are identical.

Specific deficiencies and the required response to this Office Action are as follows:

Examiner Note:

  • 1. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 2. This form paragraph must be followed by any of form paragraphs 24.02 - 24.16 .

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24.02 No Sequence Listing part of the disclosure and No CRF

Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.821 - 1.825 because it does not contain a "Sequence Listing" as a separate part of the disclosure or a CRF of the “Sequence Listing”.

    Required response - Applicant must provide:

  • • A "Sequence Listing" part of the disclosure; together with
  • An amendment specifically directing its entry into the application in accordance with 37 CFR 1.825(a)(2) ;
  • • A statement that the "Sequence Listing" includes no new matter as required by 37 CFR 1.825(a)(4) ; and
  • • A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(a)(3) .
  • • If the "Sequence Listing" part of the disclosure is submitted according to item 1) a) or b) above,
  • Applicant must also provide:
    • o A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
      • - A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
      • - A copy of the amended specification without markings (clean version); and
      • - A statement that the substitute specification contains no new matter.
  • • If the "Sequence Listing" part of the disclosure is submitted according to item 1) b), c), or d) above, Applicant must also provide:

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should be used for an application that has no "Sequence Listing" part of the disclosure as required by 37 CFR 1.821(c) and no CRF as required by 37 CFR 1.821(e) .
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.03 No Sequence Listing part of the disclosure and Defective CRF

Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.821 - 1.825 because it does not contain a "Sequence Listing" as a separate part of the disclosure and the CRF of the "Sequence Listing" is defective.

    Required response - Applicant must provide:

  • • A "Sequence Listing" part of the disclosure, as described above in item 1); together with
  • An amendment specifically directing its entry into the application in accordance with 37 CFR 1.825(a)(2) ;
  • • A statement that the "Sequence Listing" includes no new matter as required by 37 CFR 1.825(a)(4) ; and
  • • A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(a)(3) .
  • • If the "Sequence Listing" part of the disclosure is submitted according to item 1) a) or b) above, Applicant must also provide:
    • o A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
      • - A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
      • - A copy of the amended specification without markings (clean version); and
      • - A statement that the substitute specification contains no new matter.
  • • If the "Sequence Listing" part of the disclosure is submitted according to item 1) c) or d) above, Applicant must also provide:

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should be used for an application that has no "Sequence Listing" part of the disclosure as required by 37 CFR 1.821(c) and the CRF as required by 37 CFR 1.821(e) is defective.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.05 The “Sequence Listing” part of the disclosure and the CRF are not the same

Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.821 - 1.825 because the "Sequence Listing" part of the disclosure submitted as a PDF file ( 37 CFR 1.821(c)(2) ) or on physical sheets of paper ( 37 CFR 1.821(c)(3) )is not the same as the CRF of the "Sequence Listing" as required by 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) .

Required response - Applicant must provide:

  • • A replacement "Sequence Listing" as described above in items 1) c) or d) in accordance with 37 CFR 1.825(b)(1)(ii) or (iii) ; as well as
  • An amendment specifically directing its entry into the application as required by 37 CFR 1.825(b)(2)(ii) ;
  • • A statement that identified the locations of any deletions, replacements or additions to the “Sequence Listing” as required by 37 CFR 1.825(b)(3) ;
  • • A statement that the "Sequence Listing" added by amendment includes no new matter as required by 37 CFR 1.825(b)(5) ;
  • • A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(b)(4) ; and
  • • A statement that the content of the previously-filed CRF is identical to the "Sequence Listing" part of the disclosure added by amendment as required by 37 CFR 1.825(b)(7) , where provided under item 1) c) or d) (note that where a "Sequence Listing" part of the disclosure is provided under item 1) a) or b), the text file will also serve as the CRF, and the statement of identity is not required);

OR

Examiner Note:

  • 1. This form paragraph must be preceded by 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should be used for an application in which the "Sequence Listing" part of the disclosure as required by 37 CFR 1.821(c) is not the same as the CRF as required by 37 CFR 1.821(e) .
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.06 Missing statement that the “Sequence Listing” (paper or PDF) and the CRF are the same

Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.821 - 1.825 because the application does not contain a statement that the CRF is identical to the "Sequence Listing" part of the disclosure, as described above in item 1), as required by 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) .

Required response - Applicant must provide such statement.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should be used for an application that is missing the statement that the CRF is identical to the "Sequence Listing" part of the disclosure.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.07 No Computer Readable Form (CRF) submitted

Specific deficiency - This application contains a "Sequence Listing as a PDF file ( 37 CFR 1.821(c)(2) ) or as physical sheets of paper ( 37 CFR 1.821(c)(3) , but fails to comply with the requirements of 37 CFR 1.821 - 1.825 because a copy of the "Sequence Listing" in computer readable form (CRF) has not been submitted as required by 37 CFR 1.821(e)(1)(i) or 1.821(e)(2)(i) as indicated in item 2) above.

Required response - Applicant must provide:

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should be used for an application that is missing the CRF.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.08 Computer Readable Form (CRF) contains error(s) according to STIC report

Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.821 - 1.825 . This application contains a "Sequence Listing" as a PDF file ( 37 CFR 1.821(c)(2) ) or as physical sheets of paper ( 37 CFR 1.821(c)(3) ). A copy of the "Sequence Listing" in computer readable form (CRF) has been submitted; however, the content of the CRF does not comply with one or more of the requirements of 37 CFR 1.822 through 1.824 , as indicated in the "Error Report" that indicates the "Sequence Listing" could not be accepted. Refer to attachment or PAIR document "Computer Readable Form (CRF) for Sequence Listing – Defective" dated [1].

    Required response – Applicant must provide:

  • • A replacement "Sequence Listing" part of the disclosure, as described above in item 1); together with
  • An amendment specifically directing its entry into the application in accordance with 37 CFR 1.825(b)(2) ;
  • • A statement that the "Sequence Listing" includes no new matter as required by 37 CFR 1.825(b)(5) ; and
  • • A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(b)(4) .
  • • If the replacement "Sequence Listing" part of the disclosure is submitted according to item 1) a) or b) above, Applicant must also provide:
    • o A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
      • - A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
      • - A copy of the amended specification without markings (clean version); and
      • - A statement that the substitute specification contains no new matter and
      • - An amendment to the specification to remove the “Sequence Listing previously submitted as a PDF file ( 37 CFR 1.821(c)(2) ) or as physical sheets of paper ( 37 CFR 1.821(c)(3) )
  • • If the replacement "Sequence Listing" part of the disclosure is submitted according to item 1) c) or d) above, Applicant must also provide:

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should be used for an application where the CRF is defective.
  • 4. In bracket 1, insert the date of the appropriate document.
  • 5. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.09 Computer Readable Form (CRF) damaged or unreadable

Specific deficiency - The ASCII .txt file purported to contain the computer readable form (CRF) copy of the "Sequence Listing" filed with this application in accordance with 37 CFR 1.821(c) has been found to be damaged, unreadable, or otherwise contains an error as indicated on PAIR document "Computer Readable Form (CRF) for Sequence Listing - Defective" dated.

Required response – Applicant must provide:

  • • a replacement "Sequence Listing" in the form of an ASCII plain text file under 37 CFR 1.821(c) as provided for in 37 CFR 1.825(b)(1)(i) , together with
  • • An amendment specifically directing its entry into the application in accordance with 37 CFR 1.825(b)(3) ;
  • • A statement that the "Sequence Listing" includes no new matter as required by 37 CFR 1.825(b)(5) ; and
  • • A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(b)(4) .
  • • A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) , and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
    • • A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
    • • A copy of the amended specification without markings (clean version); and
    • • A statement that the substitute specification contains no new matter;
  • OR
  • • A "Sequence Listing" part of the disclosure, as described above in item 1 c) or 1 d) as provided for in 37 CFR 1.825(b)(1)(ii) or 1.825(b)(1)(iii) ; together with
  • • An amendment specifically directing its entry into the application in accordance with 37 CFR 1.825(b)(2) ;
  • • A statement that the "Sequence Listing" includes no new matter as required by 37 CFR 1.825(b)(5) ; and
  • • A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(b)(4) .
  • • When the "Sequence Listing" part of the disclosure is submitted according to item 1 c), or 1 d) above, Applicant must also provide:

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should be used for an application where the CRF is damaged or unreadable, e.g., SCORE - CRF Problem Report.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.10 Sequence IDs not present in the specification

Specific deficiency - Nucleotide and/or amino acid sequences appearing in the specification are not identified by sequence identifiers in accordance with 37 CFR 1.821(d) .

Required response – Applicant must provide:

  • • a substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) and 1.125 inserting the required sequence identifiers, consisting of:
    • o A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
    • o A copy of the amended specification without markings (clean version); and
    • o A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should be used for an application where reference has not been made to the sequence by use of the sequence identifier, preceded by "SEQ ID NO:" in the text of the description or claims, even if the sequence is also embedded in the text of the description or claims of the patent application.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.11 Sequence IDs not present in the drawings

Specific deficiency - Nucleotide and/or amino acid sequences appearing in the drawings are not identified by sequence identifiers in accordance with 37 CFR 1.821(d) . Sequence identifiers for nucleotide and/or amino acid sequences must appear either in the drawings or in the Brief Description of the Drawings.

Required response – Applicant must provide:

  • • Replacement and annotated drawings in accordance with 37 CFR 1.121(d) inserting the required sequence identifiers;

AND/OR

  • • a substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) and 1.125 inserting the required sequence identifiers into the Brief Description of the Drawings, consisting of:
    • o A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
    • o A copy of the amended specification without markings (clean version); and
    • o A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should be used for an application where reference has not been made to the sequence by use of the sequence identifier, preceded by "SEQ ID NO:" in either the text of the drawings or the Brief Description or the Drawings.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.12 Sequences present in the specification or drawings that are not in the CRF or listing

Specific deficiency - This application contains sequence disclosures in accordance with the definitions for nucleotide and/or amino acid sequences set forth in 37 CFR 1.821(a)(1) and (a)(2) . However, this application fails to comply with the requirements of 37 CFR 1.821 - 1.825 .

The sequence disclosures are located [1].

Required response – Applicant must provide:

  • • A "Sequence Listing" part of the disclosure, as described above in item 1); as well as
  • An amendment specifically directing entry of the "Sequence Listing" part of the disclosure into the application in accordance with 1.825(b)(2);
  • • A statement that the "Sequence Listing" includes no new matter in accordance with 1.825(b)(5) ; and
  • • A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(b)(4) .
  • • If the "Sequence Listing" part of the disclosure is submitted according to item 1) a) or b) above, Applicant must also provide:
    • o A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
      • - A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
      • - A copy of the amended specification without markings (clean version); and
      • - A statement that the substitute specification contains no new matter;
  • • If the "Sequence Listing" part of the disclosure is submitted according to item 1) b), c), or d) above, Applicant must also provide:
    • o A replacement CRF in accordance with 1.825(b)(6) ; and
    • o Statement according to item 2) a) or b) above.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should be used for an application containing sequence disclosures that are not contained in the Sequence Listing or CRF.
  • 4. In bracket 1, insert the specific location of the sequence disclosures that are not contained in the Sequence Listing or CRF.
  • 5. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.13 Missing or Defective Incorporation by Reference Paragraph

Specific deficiency - The Incorporation by Reference paragraph required by 37 CFR 1.821(c)(1) is missing or incomplete. See item 1) a) or 1) b) above.

Required response – Applicant must provide:

  • • A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
    • o A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
    • o A copy of the amended specification without markings (clean version); and
    • o A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should only be used for a sequence listing under 1) a) or 1) b) in form paragraph 24.01 , where the incorporation-by-reference paragraph is missing.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.14 Amendment Missing Instruction to Enter the “Sequence Listing” into the Application

Specific deficiency – The "Sequence Listing" has not been entered into the application because the amendment does not direct entry of either the "Sequence Listing" (as required by 37 CFR 1.825(a)(2) or 1.825(b)(2) ) or contain the required Incorporation by Reference paragraph into the application.

Required response – Applicant must provide:

  • • A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
    • o A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
    • o A copy of the amended specification without markings (clean version); and
    • o A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should only be used where the instruction to enter the "Sequence Listing" into the application is missing.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.15 Amendment Missing Statement of No New Matter

Specific deficiency – The "Sequence Listing" has not been entered into the application because the required statement of no new matter is missing. See 37 CFR 1.825(a)(4) or 1.825(b)(5) .

Required response – Applicant must provide:

  • • A proper statement of no new matter.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should only be used for an amendment that is missing the statement of no new matter.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.16 Amendment Missing Statement of Support

Specific deficiency – The "Sequence Listing" has not been entered into the application because the required statement of support is missing. See 37 CFR 1.825(a)(3) or 1.825(b)(4) .

Required response – Applicant must provide:

  • • A proper statement of support.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01 .
  • 2. This form paragraph should only be used for sequence listing non-compliance where a compliant sequence listing is not required for examination of the application.
  • 3. This form paragraph should only be used for an amendment that is missing the statement of support.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.17 Improper CRF transfer request

Specific deficiency - The present application contains a "Sequence Listing" submitted as either a PDF file pursuant to 37 CFR 1.821(c)(2) or as physical sheets of paper pursuant to 37 CFR 1.821(c)(3) . No computer readable form (CRF) of the “Sequence Listing” pursuant to 37 CFR 1.821(e)(1) has been received. In lieu of the CRF, Applicant has filed a request to transfer the CRF from a related or other application of the applicant to the present application to comply with the requirement in 37 CFR 1.821(e)(1) . As of November 15, 2021, the practice of transferring a CRF from a previously-filed application of applicant into the present application in order to comply with 37 CFR 1.821(e)(1) has been eliminated.

Examiner Note:

  • 1. This form paragraph must be preceded by form paragraph 24.01.
  • 2. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.17.26 Heading for ST.26 Sequence Requirements

Summary of Requirements for Patent Applications Filed On Or After July 1, 2022, That Have Sequence Disclosures

37 CFR 1.831(a) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.831(b) must contain a "Sequence Listing XML", as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.831 - 1.835 . This "Sequence Listing XML" part of the disclosure may be submitted:

Examiner Note:

  • 1. This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2. This form paragraph must be followed by one or more of form paragraphs 24.18.26 - 24.29.26 .

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24.18.26 No “Sequence Listing XML” part of the disclosure

Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.831 - 1.834 because it does not contain a "Sequence Listing XML" as a separate part of the disclosure. A “Sequence Listing XML” is required because <1>.

Required response - Applicant must provide:

  • • A "Sequence Listing XML" part of the disclosure, as described above in item 1. or 2.; together with
    • o A statement that indicates the basis for the amendment, with specific references to particular parts of the application as originally filed, as required by 37 CFR 1.835(a)(3) ;
    • o A statement that the "Sequence Listing XML" includes no new matter as required by 37 CFR 1.835(a)(4)
  • AND
  • • A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) , and 1.125 inserting the required incorporation by reference paragraph as required by 37 CFR 1.835(a)(2) , consisting of:
    •  A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
    •  A copy of the amended specification without markings (clean version); and
    •  A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1. This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2. This form paragraph must be preceded by form paragraph 24.17.26.
  • 3. This form paragraph should be used for an application that has no "Sequence Listing XML" in compliance with 37 CFR 1.831 - 1.834 . The examiner should explain why a “Sequence Listing XML” is required in <1>.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.19.26 Defective “Sequence Listing XML”

Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.831 - 1.834 because the "Sequence Listing XML," as a separate part of the disclosure, is defective, damaged or unreadable. Refer to PAIR document "Sequence Listing in Computer Readable Format is Defective " dated [1].

Required response - Applicant must provide:

  • • A replacement "Sequence Listing XML" part of the disclosure, as described above submitted in accordance with either item 1. or 2.; together with
    • o A statement that identifies the location of all additions, deletions or replacements of sequence information relative to the replaced “Sequence Listing XML” as required by 37 CFR 1.835(b)(3) ;
    • o A statement that indicates support for the replacement “Sequence Listing XML” in the application, as filed, as required by 37 CFR 1.835(b)(4) ; and
    • o A statement that the replacement "Sequence Listing XML" includes no new matter as required by 37 CFR 1.835(b)(5) .
  • AND
  • • A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) , and 1.125 , inserting the required incorporation-by-reference paragraph as required by 37 CFR 1.835(b)(2) , consisting of:
    • o A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
    • o A copy of the amended specification without markings (clean version); and
    • o A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1 This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2 This form paragraph must be preceded by form paragraph 24.17.26.
  • 3 This form paragraph should be used for an application where a defective "Sequence Listing XML" was filed and a notice was sent to the applicant including the errors identified according to STIC.
  • 4 This form paragraph may be followed by one or more deficiency form paragraphs.
  • 5 This form paragraph would only be used when an applicant provides a disc of a “Sequence Listing XML” in reply to an examiner requirement for a “Sequence Listing XML.”

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24.20.26 “Sequence Listing XML” contains errors according to STIC report

The “Sequence Listing XML” part of the disclosure filed with this application in accordance with 37 CFR 1.831 - 1.834 has been found to contain an error or errors as indicated on the PAIR document "Computer Readable Form (CRF) for Sequence Listing - Defective" dated [1]. Applicant must provide:

  • • A replacement "Sequence Listing XML" part of the disclosure, as described above submitted in accordance with either item 1. or 2., together with
    • o A statement that identifies the location of all additions, deletions, or replacements of sequence information in the replacement “Sequence Listing XML” as required by 37 CFR 1.835(b)(3) ;
    • o A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.835(b)(4) ;
    • o A statement that the replacement "Sequence Listing XML" includes no new matter as required by 37 CFR 1.835(b)(5) ; and
    • o A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) , and 1.125 inserting the required incorporation by reference paragraph as required by 37 CFR 1.835(b)(2) , consisting of:
      •  A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
      •  A copy of the amended specification without markings (clean version); and
      •  A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1. This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2. This form paragraph must be preceded by form paragraph 24.17.26.
  • 3. This form paragraph should be used for an application where a defective "Sequence Listing XML" was filed and a notice was sent to the applicant including the errors according to STIC.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.21.26 Sequence IDs not present in specification

Specific deficiency - Sequences appearing in the specification are not identified by sequence identifiers (i.e., “SEQ ID NO:X” or the like) in accordance with 37 CFR 1.831(c) .

Required response – Applicant must provide: A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) , and 1.125 inserting the required sequence identifiers, consisting of:

  • • A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
  • • A copy of the amended specification without markings (clean version); and
  • • A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1. This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2. This form paragraph must be preceded by form paragraph 24.17.26.
  • 3. This form paragraph should be used for an application where a sequence is embedded in the text of the description or claims of the patent application and reference has not also been made to the sequence by use of the sequence identifier, preceded by "SEQ ID NO:" or the like in the text of the description or claims.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.22.26 Sequence IDs not present in drawings

Specific deficiency - Sequences appearing in the drawings are not identified by sequence identifiers in accordance with 37 CFR 1.831(c) . Sequence identifiers for sequences (i.e., “SEQ ID NO:X” or the like) must appear either in the drawings or in the Brief Description of the Drawings.

Required response – Applicant must provide:

Amended drawings in accordance with 37 CFR 1.121(d) inserting the required sequence identifiers;

AND/OR

A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) , and 1.125 inserting the required sequence identifiers (i.e., “SEQ ID NO:X” or the like) into the Brief Description of the Drawings, consisting of:

  • • A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
  • • A copy of the amended specification without markings (clean version); and
  • • A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1. This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2. This form paragraph must be preceded by form paragraph 24.17.26 .
  • 3. This form paragraph should be used for an application where a sequence is embedded in the text of the drawings and reference has not also been made to the sequence by use of the sequence identifier, preceded by "SEQ ID NO:X" or the like, in either the text of the drawings or the Brief Description or the Drawings.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.23.26 Sequence in specification, drawings, or claims that is not in XML

This application contains sequence disclosures in accordance with the definitions for nucleotide and/or amino acid sequences set forth in 37 CFR 1.831(a) and 1.831(b) . However, this application fails to comply with the requirements of 37 CFR 1.831 - 1.834 . The examiner has noted that [1]. Applicant must provide:

  • • A replacement "Sequence Listing XML" part of the disclosure, as described above in item 1. or 2., as well as
  • • A statement that identifies the location of all additions, deletions, or replacements of sequence information in the “Sequence Listing XML” as required by 37 CFR 1.835(b)(3) ;
  • • A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.835(b)(4) ;
  • • A statement that the "Sequence Listing XML" includes no new matter in accordance with 37 CFR 1.835(b)(5) ; and
  • • A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) , and 1.125 inserting the required incorporation by reference paragraph as required by 37 CFR 1.835(b)(2) , consisting of:
    • o A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
    • o A copy of the amended specification without markings (clean version); and
    • o A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1. This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2. This form paragraph must be preceded by form paragraph 24.17.26 .
  • 3. Examiner needs to identify the sequences missing from the “Sequence Listing XML” that were found in the claims, drawing or specification in <1>.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.24.26 Missing, Defective, or Incomplete Incorporation by Reference Paragraph

Specific deficiency - The incorporation by reference paragraph required by 37 CFR 1.834(c)(1) , 37 CFR 1.835(a)(2) , or 1.835(b)(2) is missing, defective or incomplete.

Required response - Applicant must:

  • • Provide a substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) , and 1.125 inserting the required incorporation by reference paragraph, consisting of:
    • • A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
    • • A copy of the amended specification without markings (clean version); and
    • • A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1. This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2. This form paragraph must be preceded by form paragraph 24.17.26 .
  • 3. This form paragraph should be used for an application where incorporation by reference paragraph is missing, defective or incomplete. The examiner should clearly specify how any defective incorporation by reference paragraphs is non-compliant, if applicable.
  • 4. The form paragraph maybe used when the incorporation by reference paragraphs provides erroneous information on the size of the sequence listing XML file, recites the size in kilobytes (KB) instead of bytes, and/or the file name for the sequence listing XML contains an error.
  • 5. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.25.26 Amendment Missing Statement of No New Matter

Specific deficiency - The "Sequence Listing XML" has not been entered into the application because the required statement of no new matter, in accordance with 37 CFR 1.835(a)(4) or 37 CFR 1.835(b)(5) , is missing.

Required response - Applicant must submit a statement that the “Sequence Listing XML,” identified by the date the “Sequence Listing XML” was filed, includes no new matter.

Examiner Note:

  • 1. This form paragraph should only be used where a compliant “Sequence Listing XML” is not required for examination of the application.
  • 2. This form paragraph must be preceded by form paragraph 24.17.26 .
  • 3. This form paragraph should be used for an application where the statement of no new matter is missing.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.26.26 Amendment Missing Statement of Support

Specific deficiency - The "Sequence Listing XML" has not been entered into the application because the required statement of support for the "Sequence Listing XML" in the application as filed, in accordance with 37 CFR 1.835(a)(3) or 1.835(a)(4) , is missing.

Required response - Applicant must submit a proper statement that indicates the basis for the “Sequence Listing XML,” with specific references to particular parts of the application as originally filed (specification, claims, drawings) for added, deleted and/or modified sequence data.

Examiner Note:

  • 1. This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2. This form paragraph must be preceded by form paragraph 24.17.26 .
  • 3. This form paragraph should be used for an application where the statement that indicates the basis for the “Sequence Listing XML” is missing.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.27.26 “Sequence Listing XML” contains foreign language text

Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.831 - 1.835 because the language-dependent free text elements within the "Sequence Listing XML" are not in the English language, as required by 37 CFR 1.833(b)(3) .

Required response - As required by 37 CFR 1.835(d)(2) , applicant must provide a translated "Sequence Listing XML" part of the disclosure in compliance with 37 CFR 1.831 - 1.834 .

Examiner Note:

  • 1. This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2. This form paragraph must be preceded by form paragraph 24.17.26 .
  • 3. This form paragraph should be used for an application where the “Sequence Listing XML” contains foreign text in the language-dependent free text elements.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.28.26 “Sequence Listing XML” bibliographic information does not match application

Specific deficiency - The “Sequence Listing XML” submitted in the present application does not appear to be the correct sequence listing file. One or more of the following identifying information: invention title, applicant file reference, applicant name, inventor name, or earliest priority application do not match those in the official application.

Required response - Applicant must provide:

  • • A replacement "Sequence Listing XML" part of the disclosure, as described above in item 1. or 2., as well as
    • o A statement that identifies the location of all additions, deletions, or replacements of sequence information in the replacement “Sequence Listing XML” as required by 37 CFR 1.835(b)(3) ;
    • o A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.835(b)(4) ,
    • o A statement that the replacement "Sequence Listing XML" includes no new matter in accordance with 37 CFR 1.835(b)(5) , and
    • o A substitute specification in compliance with 37 CFR 1.52 , 1.121(b)(3) , and 1.125 inserting the required incorporation by reference paragraph as required by 37 CFR 1.835(b)(2) , consisting of:
      •  A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
      •  A copy of the amended specification without markings (clean version); and
      •  A statement that the substitute specification contains no new matter.

Examiner Note:

  • 1. This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2. This form paragraph must be preceded by form paragraph 24.17.26 .
  • 3. This form paragraph should be used for an application where there is a discrepancy between the “Sequence Listing XML” bibliographic information and the application information in an application filed under 35 U.S.C. 111(a) , if the application is a national stage, then the examiner should contact IPLA.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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24.29.26 Amendment Missing Statement of Location of Additions, Deletions or Replacements of Sequence Information

Specific deficiency - The "Sequence Listing XML" has not been entered into the application because the required statement that identifies the location of all additions, deletions or replacements of the sequence information relative to the replaced “Sequence Listing XML” is missing. See 37 CFR 1.835(b)(3) .

Required response - Applicant must provide a proper statement identifying all changes in the replacement “Sequence Listing XML” relative to the replaced sequence data.

Examiner Note:

  • 1. This form paragraph should only be used where compliance with 37 CFR 1.831 - 1.835 is not required for examination of the application, or where a lack of compliance with 37 CFR 1.831 - 1.835 arose during prosecution.
  • 2. This form paragraph must be preceded by form paragraph 24.17.26 .
  • 3. This form paragraph should be used for an application where the replacement “Sequence Listing XML” is not accompanied by a statement that indicates the location of all additions, deletions or replacements in the sequence information.
  • 4. This form paragraph may be followed by one or more deficiency form paragraphs.

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26.01 Reasonable likelihood established

The present request for inter partes reexamination establishes a reasonable likelihood that requester will prevail with respect to claim [1] of United States Patent Number [2].

Extensions of time under 37 CFR 1.136(a) will not be permitted in inter partes reexamination proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to the patent owner in a reexamination proceeding. Additionally, 35 U.S.C. 314(c) requires that inter partes reexamination proceedings "will be conducted with special dispatch" ( 37 CFR 1.937 ). Patent owner extensions of time in inter partes reexamination proceedings are provided for in 37 CFR 1.956 . Extensions of time are not available for third party requester comments, because a comment period of 30 days from service of patent owner’s response is set by statute. 35 U.S.C. 314(b)(2) .

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26.02 No reasonable likelihood established

For the reasons set forth below, the present request for inter partes reexamination fails to establish a reasonable likelihood that requester will prevail with respect to at least one of the challenged claims of United States Patent Number [1].

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26.03 Issue Not Within Scope of Inter Partes Reexamination

An issue has been raised in the present reexamination proceeding that is not within the scope of inter partes reexamination proceedings. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.906(c) .

Examiner Note:

  • 1. In bracket 1, identify the issues.
  • 2. This paragraph may be used either when the patent owner or the third party requester raises issues such as (but not limited to) public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.

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26.03.01 Rejection, 35 U.S.C. 314(a), Claim Enlarges Scope of Patent

Claim [1] rejected under 35 U.S.C. 314(a) as enlarging the scope of the claims of the patent being reexamined. 35 U.S.C. 314(a) states that "no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted" in an inter partes reexamination proceeding. A claim presented in a reexamination "enlarges the scope" of the patent claims where the claim is broader than the claims of the patent. A claim is broadened if it is broader in any one respect , even though it may be narrower in other respects. [2].

Examiner Note:

The claim limitations which are considered to broaden the scope should be identified and explained in bracket 2. See MPEP § 2658 .

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26.04 First Action Not Mailed With Order

An Office action on the merits does not accompany this order for inter partes reexamination. An Office action on the merits will be provided in due course.

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26.05 Papers To Be Submitted in Response to Action

In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be an Action Closing Prosecution (ACP), will be governed by 37 CFR 1.116(b) and (d) , which will be strictly enforced.

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26.05.01 Improper Amendment in an Inter Partes Reexamination - 37 CFR 1.530(d)-(j)

The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.530(d)-(j) , which sets forth the manner of making amendments in reexamination proceedings. A supplemental paper correctly proposing amendments in the present inter partes reexamination proceeding is required.

A shortened statutory period for response to this letter is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If the patent owner fails to timely correct this informality, the amendment will be held not to be an appropriate response, and the consequences set forth in 37 CFR 1.957(b) or (c) will result. See MPEP § 2666.10

Examiner Note:

This paragraph may be used for any 37 CFR 1.530(d)-(j) informality as to a proposed amendment submitted in a reexamination proceeding.

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26.06 Submission Not Fully Responsive to Office Action

The communication filed on [1] is not fully responsive to the prior Office action. [2]. The response appears to be bona fide, but through an apparent oversight or inadvertence, consideration of some matter or compliance with some requirement has been omitted. Patent owner is required to supply the omission or correction to thereby provide a full response to the prior Office action.

A shortened statutory period for response to this letter is set to expire (a) ONE MONTH, or THIRTY DAYS (whichever is longer), from the mailing date of this letter, or (b) after the due date for response to the last Office action, whichever of (a) or (b) is longer. THE PERIOD FOR RESPONSE SET IN THIS LETTER MAY BE EXTENDED UNDER 37 CFR 1.956 .

If patent owner fails to timely supply the omission or correction and thereby provide a full response to the prior Office action, the consequences set forth in 37 CFR 1.957(b) or (c) will result. See MPEP § 2666.10 .

Examiner Note:

  • 1. In bracket 2, the examiner should explain the nature of the omitted point necessary to complete the response, i.e., what part of the Office action was not responded to. The examiner should also clearly indicate what is needed to correct the omission.
  • 2. This paragraph may be used for a patent owner communication that is not completely responsive to the outstanding (i.e., prior) Office action. See MPEP § 2666.30 .
  • 3. This practice does not apply where there has been a deliberate omission of some necessary part of a complete response. See MPEP § 2666.30 .

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26.07 Action Closing Prosecution

This is an ACTION CLOSING PROSECUTION (ACP); see MPEP § 2671.02 .

  • (1) Pursuant to 37 CFR 1.951(a) , the patent owner may once file written comments limited to the issues raised in the reexamination proceeding and/or present a proposed amendment to the claims which amendment will be subject to the criteria of 37 CFR 1.116 as to whether it shall be entered and considered. Such comments and/or proposed amendments must be filed within a time period of 30 days or one month, whichever is longer, from the mailing date of this action . Where the patent owner files such comments and/or a proposed amendment, the third party requester may once file comments under 37 CFR 1.951(b) responding to the patent owner’s submission within 30 days from the date of service of the patent owner’s submission on the third party requester
  • (2) If the patent owner does not timely file comments and/or a proposed amendment pursuant to 37 CFR 1.951(a) , then the third party requester is precluded from filing comments under 37 CFR 1.951(b) .
  • (3) Appeal cannot be taken from this action, since it is not a final Office action.

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26.08 Right of Appeal Notice

This is a RIGHT OF APPEAL NOTICE (RAN); see MPEP § 2673.02 and § 2674 . The decision in this Office action as to the patentability or unpatentability of any original patent claim, any proposed amended claim and any new claim in this proceeding is a FINAL DECISION.

No amendment can be made in response to the Right of Appeal Notice in an inter partes reexamination. 37 CFR 1.953(c) . Further, no affidavit or other evidence can be submitted in an inter partes reexamination proceeding after the right of appeal notice, except as provided in 37 CFR 1.981 or as permitted by 37 CFR 41.77(b)(1) . 37 CFR 1.116(f) .

Each party has a thirty-day or one-month time period, whichever is longer , to file a notice of appeal. The patent owner may appeal to the Board with respect to any decision adverse to the patentability of any original or proposed amended or new claim of the patent by filing a notice of appeal and paying the fee set forth in 37 CFR 41.20(b)(1) . The third party requester may appeal to the Board with respect to any decision favorable to the patentability of any original or proposed amended or new claim of the patent by filing a notice of appeal and paying the fee set forth in 37 CFR 41.20(b)(1) .

In addition, a patent owner who has not filed a notice of appeal may file a notice of cross appeal within fourteen days of service of a third party requester’s timely filed notice of appeal and pay the fee set forth in 37 CFR 41.20(b)(1) . A third party requester who has not filed a notice of appeal may file a notice of cross appeal within fourteen days of service of a patent owner’s timely filed notice of appeal and pay the fee set forth in 37 CFR 41.20(b)(1) .

Any appeal in this proceeding must identify the claim(s) appealed, and must be signed by the patent owner (for a patent owner appeal) or the third party requester (for a third party requester appeal), or their duly authorized attorney or agent.

Any party that does not file a timely notice of appeal or a timely notice of cross appeal will lose the right to appeal from any decision adverse to that party, but will not lose the right to file a respondent brief and fee where it is appropriate for that party to do so. If no party files a timely appeal, the reexamination prosecution will be terminated, and the Director will proceed to issue and publish a certificate under 37 CFR 1.997 in accordance with this Office action.

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26.67 No Receipt of Rebuttal Brief(s)

Appellant(s) was given a period of one month from the mailing date of the examiner’s answer within which to file a rebuttal brief in response to the examiner’s answer. No rebuttal brief has been received within that time period. Accordingly, the reexamination proceeding is being forwarded to the Board for decision on the appeal(s).

Prosecution remains closed. Any further reply/comments by any party will not be considered, and may be returned to the party that submitted it.

__________________________

Central Reexamination Unit

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26.67.01 Periods for Seeking Court Review or Rehearing Have Lapsed

The periods for seeking court review of, or a rehearing of, the decision of the Board rendered [1] have expired and no further action has been taken by any party to the appeal. Accordingly, the appeal in this reexamination proceeding is considered terminated; see 37 CFR 1.979(b) . The present Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) is issued in accordance with MPEP § 2687 in order to terminate the present reexamination prosecution.

Examiner Note:

In bracket 1, enter the date of the Board decision.

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26.68 Lack of Service in inter partes examination-37 CFR 1.903

The submission filed [1] is defective because it appears that the submission was not served on [2]. After the filing of a request for inter partes reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party (or parties where two third party requester proceedings are merged) in the inter partes reexamination proceeding in the manner provided in 37 CFR 1.248 . See 37 CFR 1.903 .

It is required that service of the submission be made, and a certificate of service be provided to the Office, within ONE MONTH from the date of this letter or within the time remaining in the response period of the last Office action (if applicable), whichever is longer.

Examiner Note:

  • 1. This paragraph may be used where a submission to the Office was not served as required in an inter partes reexamination proceeding.
  • 2. In bracket 2, insert “patent owner” or “third party requester,” whichever is appropriate.

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26.69 Examiner’s Amendment Accompanying Notice of Intent to Issue Reexamination Certificate

An examiner’s amendment to the record appears below. The changes made by this examiner’s amendment will be reflected in the reexamination certificate to issue in due course.

[1]

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26.70 Reasons for Patentability and/or Confirmation in Inter Partes Reexamination

STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION

The following is an examiner’s statement of reasons for patentability and/or confirmation of the claims found patentable in this reexamination proceeding: [1]

Any comments considered necessary by the PATENT OWNER regarding the above statement must be submitted promptly to avoid processing delays. Such submission by the patent owner should be labeled: "Comments on Statement of Reasons for Patentability and/or Confirmation" and will be placed in the reexamination file.

Examiner Note:

This form paragraph may be used as an attachment to the Notice of Intent to Issue Inter Partes Reexamination Certificate, PTOL-2068 (item number 3).

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26.73 Correspondence and Inquiry as to Office Actions

All correspondence relating to this inter partes reexamination proceeding should be directed:

By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/ myportal/efs-registered .

By Mail to: Mail Stop Inter Partes Reexam

Attn: Central Reexamination Unit

Commissioner for Patents

United States Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX to: (571) 273-9900

Central Reexamination Unit

By hand: Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4) , and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.

Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.

Examiner Note:

  • 1. This form paragraph is used at the end of inter partes reexamination communications.
  • 2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.

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26.75 Time Period for Response under 37 CFR 41.77(e)

Periods for response to this determination are identified in 37 CFR 41.77(e) . Following expiration of those time periods, the proceeding will be returned to the Board for reconsideration under 37 CFR 41.77(f) . Note that under 37 CFR 41.77(e) , patent owner and third party requester responsive comments are due one month from the mailing date of this determination, and both third party requester and patent owner replies to those comments are then due one month from date of service of the comments. These time periods cannot be extended. See 37 CFR 41.77(g) .

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26.80 Claims Held Invalid by Court, No Longer Being Reexamined

Claims [1] of the [2] patent are not being reexamined in view of the final decision of [3]. Claims [1] were held invalid by the [4].

Examiner Note:

  • 1. In bracket 1, insert the claims held invalid.
  • 2. In bracket 2, insert the patentee (e.g., Rosenthal, J. Doe et al).
  • 3. In bracket 3, insert the decision (e.g., ABC Corp. v. John Doe, 888 F. 3d 88, 999 USPQ2d 99 (Fed. Cir. 1999) or XYZ Corp. v. Jones, 888 F. Supp. 2d 88, 999 USPQ2d 1024 (N.D. Cal. 1999)).
  • 4. In bracket 4, insert the name of the court (e.g., the Court of Appeals for the Federal Circuit, or the Federal District Court).

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28.01 Header for Statement of Reasons for Substantial New Question of Patentability Determination

REASONS FOR SUBSTANTIAL NEW QUESTION OF PATENTABILITY DETERMINATION

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28.02 Reasons for Finding No Substantial New Question of Patentability

[1], as presented in the request, does not raise a substantial new question of patentability because [2].

Examiner Note:

  • 1. In bracket 1, insert the name or description, as appropriate, for the item of information. For example, a patent or patent application publication may be designated using the name of the patentee or first-named inventor, such as "the Jones patent," "the Jones patent application publication," or the number of the patent or patent application publication. A non-patent literature document may be designated by the name of the author, such as the "the Sherwood publication" and the date of the publication, if desired. A sales receipt or invoice should be designated using the date of the receipt, and any appropriate descriptive information, such as "the March 11, 2011, BigBoxStore sales receipt," or "the April 1, 2011 XYZ Corporation invoice." An affidavit or declaration should be designated using the name of the declarant and the date of the affidavit or declaration, such as "the Schmidt declaration dated January 20, 2012." A transcript of an audio or video recording should be designated using the title of the recording and the date of the recording, if applicable, such as "the transcript of the September 16, 2012 XYZ Corporation Marketing Video." A discussion within the body of the request regarding a potential issue under 35 U.S.C. 101 may be designated, for example, as "the discussion on pages 7-11 of the request regarding a potential issue under 35 U.S.C. 101 ."
  • 2. In bracket 2, insert the reasons for the determination that the item of information does not raise a substantial new question of patentability.

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28.03 Reasons for Finding A Substantial New Question of Patentability

[1], as presented in the request, raises a substantial new question of patentability affecting patent claim(s) [2] because [3].

Examiner Note:

  • 1. In bracket 1, insert the name or description, as appropriate, for the item of information. For example, a patent or patent application publication may be designated using the name of the patentee or first-named inventor, such as "the Jones patent," "the Jones patent application publication," or the number of the patent or patent application publication. A non-patent literature document may be designated by the name of the author, such as the "the Sherwood publication" and the date of the publication, if desired. A sales receipt or invoice should be designated using the date of the receipt, and any appropriate descriptive information, such as " the March 11, 2011, BigBoxStore sales receipt," or "the April 1, 2011, XYZ Corporation invoice." An affidavit or declaration should be designated using the name of the declarant and the date of the affidavit or declaration, such as "the Schmidt declaration dated January 20, 2012." A transcript of an audio or video recording should be designated using the title of the recording and the date of the recording, if applicable, such as "the transcript of the September 16, 2012, XYZ Corporation Marketing Video." A discussion within the body of the request regarding a potential issue under 35 U.S.C. 101 may be designated, for example, as "the discussion on pages 7-11 of the request regarding a potential issue under 35 U.S.C. 101 ."
  • 2. In bracket 2, insert the claims for which a substantial new question of patentability has been raised.
  • 3. In bracket 3, insert the reasons for the determination that the item of information raises a substantial new question of patentability (SNQ). If a SNQ is found for only a portion of the claims identified with respect to the item of information, then an additional statement may be included explaining why a SNQ was found with respect to some of the identified claims, and why a SNQ was not found with respect to the remainder of the identified claims. For example, if the patent owner requests supplemental examination of claims 1-10 in view of the Schmidt patent, and the examiner finds that a substantial new question of patentability affecting only patent claims 1-5 is raised by that item of information, then the form paragraph may be completed by, for example, stating "The Schmidt patent, as presented in the request, raises a substantial new question of patentability affecting patent claims 1-5 because [provide reasons]. However, the Schmidt patent, as presented in the request, does not raise a substantial new question of patentability affecting patent claims 6-10 because [provide reasons]."

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28.04 Reexamination Ordered Pursuant to 35 U.S.C. 257

Reexamination Ordered Pursuant to 35 U.S.C. 257

The supplemental examination proceeding, filed on [1], concluded with the issuance of the supplemental examination certificate on [2]. The certificate indicated that one or more of the items of information submitted as part of the request for supplemental examination raises a substantial new question of patentability. See the Reasons for Substantial New Question of Patentability Determination in the file of this proceeding.

Accordingly, ex parte reexamination of claim(s) [3] of U.S. Patent No. [4] is ordered. See 35 U.S.C. 257(b) and 37 CFR 1.625(b) . This ex parte reexamination proceeding is hereby initiated by the mailing of this order. Ex parte reexamination under 35 U.S.C. 257 will be conducted in accordance with 37 CFR 1.530 through 1.570 , which govern ex parte reexamination, subject to the exceptions enumerated in 37 CFR 1.625(d) , and, in addition, to the exception that a patent owner’s statement, including any amendment, under 37 CFR 1.530(a) - (c) may not be filed. See 35 U.S.C. 257(b) . For this reason, no amendment in an ex parte reexamination proceeding ordered under 35 U.S.C. 257 may be filed until after the mailing of a first Office action on the merits (which appears below). This reexamination proceeding has been assigned to the art unit listed at the top of the cover page of this action. All future correspondence should be directed to the assigned art unit and should be identified by the control number, which is also listed at the top of the cover page of this action, and which is identical to the control number assigned to the now-concluded supplemental examination proceeding.

A first Office action on the merits appears below.

Examiner Note:

  • 1. In brackets 1 and 2, insert the filing date of the supplemental examination proceeding and the issue date of the supplemental examination certificate, respectively, as they appear on the certificate.
  • 2. In bracket 3, list the claims for which a substantial new question of patentability was found, per the Statement of Reasons for Substantial New Question of Patentability Determination.
  • 3. In bracket 4, list the patent number as shown on the supplemental examination certificate.

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29.04 Statement of Statutory Bases, Improper Inventorship in International Design Application

Requirements applicable to design applications under 35 U.S.C. chapter 16 apply to international design applications except as otherwise provided under 35 U.S.C. chapter 38. See 35 U.S.C. 382(c) , 383 , and 389(b) .

35 U.S.C. 171(b) reads as follows:

(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

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 incorrect inventorship because [1].

The claim is rejected under 35 U.S.C. 171 and 35 U.S.C. 115 for failing to set forth the correct inventorship for the reasons stated above.

Applicant may correct inventorship pursuant to 37 CFR 1.48(a) by submitting to the USPTO a properly signed and marked-up application data sheet (ADS) identifying each inventor by his or her legal name and accompanied by the required processing fee ( 37 CFR 1.17(i) ). Any request to correct or change the inventorship under 37 CFR 1.48(a) filed after the Office action on the merits has been given or mailed in the application must also be accompanied by the fee set forth in 37 CFR 1.17(d) . A corrected application data sheet in compliance with 37 CFR 1.76(c) must identify the information that is being changed, with underlining for insertions, and strike-through or brackets for text removed. In addition, an oath or declaration as required by 37 CFR 1.63 , or a substitute statement in compliance with 37 CFR 1.64 , will be required for any actual inventor who has not yet executed such an oath or declaration. See 37 CFR 1.48(b) . The ADS, inventor's declaration, and substitute statement forms are available on the website of the USPTO at www.uspto.gov/patent/forms/forms .

Examiner Note:

In bracket 1, insert the basis for concluding that the inventorship is incorrect (e.g., "under U.S. national law, the inventor cannot be a juristic entity").

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29.10 Reproductions Objected to, Amended Reproductions Do Not Comply With Formal Requirements

The amended reproductions received on [1] are objected to because [2]. See 37 CFR 1.1026 .

Examiner Note:

  • 1. Use this form paragraph in an international design application to object to amended reproductions that fail to comply with the formal requirements for reproductions set forth in Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement and Part Four of the Administrative Instructions thereunder. Do not use this form paragraph to object to reproductions that were contained in the international registration published by the International Bureau.
  • 2. In bracket 1, insert the date the amended reproductions were received.
  • 3. In bracket 2, insert the reason for the objection, for example, --the reproductions are not of a quality permitting all the details of the industrial design to be clearly distinguished-- or --the reproductions contain explanatory text or legends--.
  • 4. Follow this form paragraph with form paragraph 15.05.04 .

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29.100 Reply Reminder

Applicant is reminded that any reply to this communication must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b) .

Examiner Note:

Add this paragraph at the end of a notification of refusal or other Office action where a patent attorney or agent registered to practice before the United States Patent and Trademark Office has not been appointed as applicant's representative. If this paragraph was included in a prior Office action, it may be, but is not required to be, included in a subsequent Office action.

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29.101 Discussion of the Merits of the Application

All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP § 713 . The examiner will not discuss the merits of the application with applicant's representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.

Telephonic or in person interviews

A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO ("registered practitioner") or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).

The registered practitioner may either be of record or not of record. To become "of record," a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA/80 "Power of Attorney to Prosecute Applications Before the USPTO," available at www.uspto.gov/ patent/forms/forms-patent-applications-filed-or-after-september-16-2012 , may be used for this purpose. See MPEP § 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an "Applicant Initiated Interview Request Form" (PTOL-413A) (available at the USPTO web page indicated above). See MPEP § 405 . For acceptable ways to submit forms to the USPTO, see "When Responding to Official USPTO Correspondence" below.

Examiner Note:

Add this paragraph at the end of the Refusal where a patent attorney or agent registered to practice before the United States Patent and Trademark Office has not been appointed as applicant's representative.

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29.102 Reply Reminder for Restriction Requirements Concerning Figure Numbering

In replying to this Refusal electing a Group for prosecution, applicant should also consider amending the application to cancel the drawing figures and remove the description corresponding to the nonelected Group(s), and to correct inventorship, as appropriate, resulting from such amendment pursuant to 37 CFR 1.48 . See MPEP § 602.01(c)(1) . Applicant should note that correcting inventorship after an Office action on the merits has been given or mailed in the application will require an additional fee pursuant to 37 CFR 1.48(c) .

Renumbering of the drawing figures is not required. To maintain consistency with the published International Registration, it is recommended that the numbering of the drawing figures included in the elected Group not be changed even if non-elected embodiments are cancelled. Any amendment to the drawing figures should comply with 37 CFR 1.1026 and Part Four of the Administrative Instructions (in particular, see Section 405 of the Administrative Instructions with respect to numbering of reproductions).

Examiner Note:

Add this paragraph at the end of a restriction requirement in a nonprovisional international design application. If there is no patent practitioner of record, also include form paragraph 29.100 Reply Reminder.

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29.11 Reproductions Objected to, Design Not Fully Disclosed in Reproductions

The reproductions are objected to for failing to fully disclose the industrial design because [1]. See 37 CFR 1.1026 and Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.

Examiner Note:

  • 1. Use this form paragraph in an international design application where the reproductions are not sufficient to fully disclose the industrial design, but such failure does not render the claimed invention non-enabled and/or indefinite under 35 U.S.C. 112 . This may occur, for example, where there are minor inconsistencies in the illustration of the design among the different views of the design. Where the failure to fully disclose the industrial design in the reproductions renders the claimed invention non-enabled and/or indefinite under 35 U.S.C. 112 , use form paragraph 15.21 or 15.22 , as appropriate, instead of this form paragraph.
  • 2. In bracket 1, explain why the reproductions are not sufficient to fully disclose the industrial design.
  • 3. Follow this form paragraph with form paragraph 15.05.04 .

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29.20 Matter Not Forming Part of Design (International Design Application)

Matter, such as environmental structure or portions of the "article," which is shown in a reproduction but for which protection is not sought may be indicated by statement in the description and/or by means of dotted or broken lines or coloring in the reproduction. See 37 CFR 1.1026 and Hague Agreement Administrative Instruction 403.

Examiner Note:

  • Use this form paragraph only in an international design application.

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29.21 Rejection, 35 U.S.C. 112(b) - Undescribed Broken Lines (International Design Application)

The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b) . The claim is indefinite because the reproductions include, in figure(s) [1], broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.

If the broken line(s) represent portions of the article or environmental structure for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132 ):

--The broken line showing of [2] is for the purpose of illustrating [3] and forms no part of the claimed design.--

Examiner Note:

  • 1. Use this form paragraph in an international design application where the reproductions include broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
  • 2. In bracket 1, insert the number(s) of the figure(s) containing the broken lines.
  • 3. In bracket 2, insert name of structure.
  • 4. In bracket 3, insert --portions of the “article”-- or --environmental structure--.

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29.22 Description of Broken Lines Added by Examiner's Amendment (International Design Application)

The following sentence has been added to the specification immediately preceding the claim:

--The broken line showing of [1] is for the purpose of illustrating [2] and forms no part of the claimed design.--

Examiner Note:

  • 1. This form paragraph should only be used in an international design application in an Examiner's Amendment for explaining the meaning of the broken lines.
  • 2. In bracket 1, insert name of structure.
  • 3. In bracket 2, insert --portions of the "article"-- or --environmental structure--.
  • 4. Applicant's authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time is not necessary. If an extension of time is needed, form paragraph 13.02.02 should be used instead of form paragraphs 13.02 and 13.02.01 .

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29.23 Rejection, 35 U.S.C. 112(b) - Undescribed Broken Lines as Boundary of Design (International Design Application)

The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b) . The claim is indefinite because the reproductions include, in figure(s) [1], broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.

If the broken lines represent a boundary line for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132 ):

--The [2] broken line(s) define the bounds of the claimed design and form no part thereof.--

Examiner Note:

  • 1. Use this form paragraph in an international design application where the reproductions include broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
  • 2. In bracket 1, insert the number(s) of the figure(s) containing the broken lines.
  • 3. In bracket 2, insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.

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29.24 Description of Broken Lines as Boundary of Design Added by Examiner's Amendment (International Design Application)

The following sentence has been added to the specification immediately preceding the claim:

--The [1] broken line(s) define the bounds of the claimed design and form no part thereof.--

Examiner Note:

  • 1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of the broken line(s).
  • 2. In bracket 1, insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.
  • 3. Applicant's authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time is not necessary. If an extension of time is needed, form paragraph 13.02.02 should be used instead of form paragraphs 13.02 and 13.02.01 .

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29.25 Rejection, 35 U.S.C. 112(b) - Unclear Use of Coloring (International Design Application)

The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b) . The claim is indefinite because the reproductions include coloring, in figure(s) [1], that is not described in the specification, and the scope of the claimed design cannot be determined.

If the coloring identifies matter for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132 ):

--The portion of the design shown in the color [2] is for the purpose of illustrating [3] and forms no part of the claimed design.--

Examiner Note:

  • 1. Use this form paragraph in an international design application where the reproductions include coloring that is not described in the specification, and the scope of the claimed design cannot be determined.
  • 2. In bracket 1, insert the number(s) of the figure(s) containing the coloring.
  • 3. In bracket 2, identify the color indicating the matter excluded from the claim.
  • 4. In bracket 3, insert --portions of the “article”-- or --environmental structure--.

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29.26 Description of Coloring Added by Examiner's Amendment (International Design Application)

The following sentence has been added to the specification immediately preceding the claim:

--The portion of the design shown in the color [1] is for the purpose of illustrating [2] and forms no part of the claimed design.--

Examiner Note:

  • 1. This form paragraph should only be used in an international design application in an Examiner’s Amendment for explaining the meaning of color used in the reproductions.
  • 2. In bracket 1, identify the color indicating the matter excluded from the claim.
  • 3. In bracket 2, insert --portions of the “article”-- or --environmental structure--.
  • 4. Applicant's authorization is required. This form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 where an extension of time is not necessary. If an extension of time is needed, form paragraph 13.02.02 should be used instead of form paragraphs 13.02 and 13.02.01 .

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29.27 Suggestion To Overcome Rejection Under 35 U.S.C. 112(a) and (b) (International Design Application)

Applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by amending the reproductions to color those portions or convert those portions to broken lines and by amending the specification to include a statement that the portions of the [1] shown in broken lines form no part of the claimed design or a statement that the portions of the [1] shown by coloring form no part of the claimed design provided such amendments do not introduce new matter (see 35 U.S.C. 132 , 37 CFR 1.121 ).

Examiner Note:

  • Use this form paragraph only in an international design application.
  • 2. In bracket 1, insert title of the article.

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29.59.01 Amend Title Except for Product Indication

For [1], the title, and each occurrence of the language of the title, [2] amended throughout the application, except for the Design No./Product(s) section and original oath or declaration, to read: [3]

Examiner Note:

  • 1. This form paragraph is only to be used in a nonprovisional international design application.
  • 2. This form paragraph may be used where the product indication does not correspond to the article named in the title but is identified by terms appearing in the Locarno classification. Where the title, and each occurrence of the language of the title, is to be amended through the entire application, including the product indication (e.g., when the product indication corresponds to the article named in the title), use form paragraph 15.59 instead.
  • 3. In bracket 1, insert reason.
  • 4. In bracket 2, insert --should be-- or --has been--.
  • 5. When the applicant has furnished the application title, applicant's authorization is required to make an examiner's amendment to the application title. See MPEP §§ 1302.04 and 2920.04(a) . Where the changes are made by examiner's amendment, this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 . If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01 .

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29.59.02 Amend Application Title to Correspond to the Claim

For consistency with the claim, the title of the application has been amended to read: [1]

Examiner Note:

  • 1. This form paragraph is only to be used in a nonprovisional international design application.
  • 2. This form paragraph may be used in an Examiner's Amendment where the application title (the title appearing in the Bib Data Sheet) is being amended to correspond to the claim (i.e., the article named in the application title is being amended to correspond to the article named in the claim).
  • 3. When the applicant has furnished the application title, applicant's authorization is required to make an examiner's amendment to the application title, and this form paragraph should be preceded by form paragraphs 13.02 and 13.02.01 . See MPEP §§ 1302.04 and 2920.04(a) . If an extension of time is required, use form paragraph 13.02.02 instead of form paragraphs 13.02 and 13.02.01 .
  • 4. When the Office has established the application title, applicant's authorization is not required to make an examiner's amendment to the application title, and this form paragraph should be preceded by form paragraph 13.02 .

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29.60.01 [Reserved]

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29.60.02 Objection to Specification - Missing Figure Descriptions

The specification is objected to under 37 CFR 1.1067 for failing to provide figure descriptions. The description should indicate the type of view shown in the corresponding figure, such as "front view," "perspective view," "top view," etc.

Examiner Note:

If some, but not all, figure descriptions are missing, the examiner should indicate which descriptions are missing, e.g. "Descriptions for Figures [add numbers of figures without a corresponding description] have not been provided."

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29.61.01 At-least-one-color-drawing Statement

The application contains at least one color drawing or color photograph. The specification has been amended to include the following language as the first paragraph of the brief description of the drawings section:

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

Examiner Note:

This form paragraph is only for use in an Examiner's Amendment in international design applications. Authorization for this Examiner's Amendment is not required.

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