Patent Office Action
The applicant is notified in writing of the examiner’s decision by an Office “action” which is normally mailed to the attorney or agent of record. The reasons for any adverse action or any objection or requirement are stated in the Office action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application.
If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first Office action by the examiner, relatively few applications are allowed as filed.
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Applicant’s Reply
The applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner’s Office action. The applicant must reply to every ground of objection and rejection in the prior Office action. The applicant’s reply must appear throughout to be a bona fide attempt to advance the case to final action or allowance. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration.
In amending an application in reply to a rejection, the applicant must clearly point out why he/she thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made. He/she must also show how the claims as amended avoid such references or objections. After reply by the applicant, the application will be reconsidered, and the applicant will be notified as to the status of the claims, that is, whether the claims are rejected, or objected to, or whether the claims are allowed, in the same manner as after the first examination. The second Office action usually will be made final.
Interviews with examiners may be arranged, but an interview does not remove the necessity of replying to Office actions within the required time.
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Final Rejection
On the second or later consideration, the rejection or other action may be made final. The applicant’s reply is then limited to appeal in the case of rejection of any claim and further amendment is restricted. Petition may be taken to the Director in the case of objections or requirements not involved in the rejection of any claim. Reply to a final rejection or action must include cancellation of, or appeal from the rejection of, each claim so rejected and, if any claim stands allowed, compliance with any requirement or objection as to form. In making such final rejection, the examiner repeats or states all grounds of rejection then considered applicable to the claims in the application.
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Amendments to Application
Following are some details concerning amendments to the application: The applicant may amend before or after the first examination and action as specified in the rules, or when and as specifically required by the examiner.
After final rejection or action, amendments may be made canceling claims or complying with any requirement of form which has been made in an Office action. The admission of any such amendment or its refusal, and any proceedings relative thereto, shall not operate to relieve the application from its condition as subject to appeal or to save it from abandonment. If amendments touching the merits of the application are presented after final rejection, or after appeal has been taken, or when such amendment might not otherwise be proper, they may be admitted upon a showing of good and sufficient reasons why they are necessary and were not earlier presented.
No amendment can be made as a matter of right in appealed cases. After decision on appeal, amendments can only be made as provided in the rules.
The specifications, claims, and drawing must be amended and revised when required, to correct inaccuracies of description and definition or unnecessary words, and to provide substantial correspondence between the claims, the description, and the drawing. All amendments of the drawings or specifications, and all additions thereto must not include new matter beyond the original disclosure. Matter not found in either, involving a departure from or an addition to the original disclosure, cannot be added to the application even though supported by a supplemental oath or declaration, and can be shown or claimed only in a separate application.
Amendments to the specification must be made by the submission of clean new or replacement paragraph(s), section(s), specification, or claim(s). This practice will provide a specification (including claims) in clean, or substantially clean, form that can be effectively captured and converted by optical character recognition (OCR) scanning during the patent printing process. This practice requires applicant to provide, in addition to the clean version of a replacement paragraph/section/claim, a marked-up version using applicant’s choice of a conventional marking system to indicate the changes, which will aid the examiner in identifying the changes that have been made. The marked-up version must be based on the previous version and indicate (by markings) how the previous version has been modified to produce the clean version submitted in the current amendment. The term “previous version” means the version of record in the application as originally filed or from a previously entered amendment. In addition, when presenting new or amended claims, the applicant must point out how they avoid any reference or ground rejection of record, which may be pertinent, in a remarks/arguments section.
The following format is suggested in an amendment paper: (1) a clean version of each replacement paragraph/section/claim with clear instructions for entry, (2) starting on a separate page, any remarks/arguments (37 CFR 1.111 and MPEP 714), and (3) starting on a separate page, a marked-up version entitled “Version with markings to show changes made.”
No change in the drawing may be made except by permission of the Office. Changes in the construction shown in any drawing may be made only by submitting new drawings. A sketch in permanent ink showing proposed changes, to become part of the record, must be filed for approval by the Office before the new drawings are filed. The paper requesting amendments to the drawing should be separate from other papers.
The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When claims are added by amendment or substituted for canceled claims, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented. When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant.
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Time for Reply and Abandonment
The reply of an applicant to an action by the Office must be made within a prescribed time limit. The maximum period for reply is set at six months by the statute which also provides that the Director may shorten the time for reply to not less than 30 days. The usual period for reply to an Office action is three months. A shortened time for reply may be extended up to the maximum six-month period. An extension of time fee is normally required to be paid if the reply period is extended. The amount of the fee is dependent upon the length of the extension. Extensions of time are generally not available after an application has been allowed. If no reply is received within the time period, the application is considered as abandoned and no longer pending. However, if it can be shown that the failure to prosecute was unavoidable or unintentional, the application may be revived by the Director. The revival requires a petition to the Director, and a fee for the petition, which must be filed without delay. The proper reply must also accompany the petition if it has not yet been filed.
