Editing MPEP 707

<noinclude>{{MPEP Section|706|700|708}}</noinclude>

==[[MPEP 707|707 Examiner's Letter or Action]]==

<noinclude><div class="noautonum">__TOC__</div></noinclude>

37 CFR 1.104. Nature of examination.

(a)Examiner’s action.

(1)On taking up an application for examination or a 
patent in a reexamination proceeding, the examiner shall make a 
thorough study thereof and shall make a thorough investigation of 
the available prior art relating to the subject matter of the claimed 
invention. The examination shall be complete with respect both to 
compliance of the application or patent under reexamination with 
the applicable statutes and rules and to the patentability of the 
invention as claimed, as well as with respect to matters of form, 
unless otherwise indicated.

(2)The applicant, or in the case of a reexamination proceeding, 
both the patent owner and the requester, will be notified 
of the examiner’s action. The reasons for any adverse action or 
any objection or requirement will be stated in an Office action and 
such information or references will be given as may be useful in 
aiding the applicant, or in the case of a reexamination proceeding 
the patent owner, to judge the propriety of continuing the prosecution.


(3)An international-type search will be made in all 
national applications filed on and after June 1, 1978.

(4)Any national application may also have an international-
type search report prepared thereon at the time of the 
national examination on the merits, upon specific written request 
therefor and payment of the international-type search report fee 
set forth in §
 
1.21(e). The Patent and Trademark Office does not 
require that a formal report of an international-type search be prepared 
in order to obtain a search fee refund in a later filed international 
application.

(b)Completeness of examiner’s action. The examiner’s 
action will be complete as to all matters, except that in appropriate 
circumstances, such as misjoinder of invention, fundamental 
defects in the application, and the like, the action of the examiner 
may be limited to such matters before further action is made. 
However, matters of form need not be raised by the examiner until 
a claim is found allowable.

(c)Rejection of claims.

(1)If the invention is not considered patentable, or not 
considered patentable as claimed, the claims, or those considered 
unpatentable will be rejected.

(2)In rejecting claims for want of novelty or for obviousness, 
the examiner must cite the best references at his or her command. 
When a reference is complex or shows or describes 
inventions other than that claimed by the applicant, the particular 
part relied on must be designated as nearly as practicable. The 
pertinence of each reference, if not apparent, must be clearly 
explained and each rejected claim specified.

(3)In rejecting claims the examiner may rely upon 
admissions by the applicant, or the patent owner in a reexamination 
proceeding, as to any matter affecting patentability and, insofar 
as rejections in applications are concerned, may also rely upon 
facts within his or her knowledge pursuant to paragraph (d)(2) of 
this section.



(4)Subject matter which is developed by another person 
which qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) 
may be used as prior art under 35 U.S.C. 103 against a claimed 
invention unless the entire rights to the subject matter and the 
claimed invention were commonly owned by the same person or 
subject to an obligation of assignment to the same person at the 
time the claimed invention was made.

(i)Subject matter developed by another person and a 
claimed invention shall be deemed to have been commonly owned 
by the same person or subject to an obligation of assignment to the 
same person in any application and in any patent granted on or 
after December 10, 2004, if: 

(A)The claimed invention and the subject matter 
was made by or on behalf of parties to a joint research agreement 
that was in effect on or before the date the claimed invention was 
made;

(B)The claimed invention was made as a result of 
activities undertaken within the scope of the joint research agreement; 
and

(C)The application for patent for the claimed 
invention discloses or is amended to disclose the names of the parties 
to the joint research agreement.

(ii)For purposes of paragraph (c)(4)(i) of this section, 
the term “joint research agreement” means a written contract, 
grant, or cooperative agreement entered into by two or more persons 
or entities for the performance of experimental, developmental, 
or research work in the field of the claimed invention.

(iii)To overcome a rejection under 35 U.S.C. 103(a) 
based upon subject matter which qualifies as prior art under only 
one or more of 35 U.S.C. 102(e), (f) or (g) via 35 U.S.C. 
103(c)(2), the applicant must provide a statement to the effect that 
the prior art and the claimed invention were made by or on the 
behalf of parties to a joint research agreement, within the meaning 
of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of this section, that 
was in effect on or before the date the claimed invention was 
made, and that the claimed invention was made as a result of 
activities undertaken within the scope of the joint research agreement.


(5)The claims in any original application naming an 
inventor will be rejected as being precluded by a waiver in a published 
statutory invention registration naming that inventor if the 
same subject matter is claimed in the application and the statutory 
invention registration. The claims in any reissue application naming 
an inventor will be rejected as being precluded by a waiver in 
a published statutory invention registration naming that inventor if 
the reissue application seeks to claim subject matter:

(i)Which was not covered by claims issued in the 
patent prior to the date of publication of the statutory invention 
registration; and

(ii)Which was the same subject matter waived in the 
statutory invention registration.

(d)Citation of references.

(1)If domestic patents are cited by the examiner, their 
numbers and dates, and the names of the patentees will be stated. 
If domestic patent application publications are cited by the examiner, 
their publication number, publication date, and the names of 
the applicants will be stated. If foreign published applications or 
patents are cited, their nationality or country, numbers and dates, 
and the names of the patentees will be stated, and such other data 
will be furnished as may be necessary to enable the applicant, or 
in the case of a reexamination proceeding, the patent owner, to 
identify the published applications or patents cited. In citing foreign 
published applications or patents, in case only a part of the 
document is involved, the particular pages and sheets containing 
the parts relied upon will be identified. If printed publications are 
cited, the author (if any), title, date, pages or plates, and place of 
publication, or place where a copy can be found, will be given.

(2)When a rejection in an application is based on facts 
within the personal knowledge of an employee of the Office, the 
data shall be as specific as possible, and the reference must be 
supported, when called for by the applicant, by the affidavit of 
such employee, and such affidavit shall be subject to contradiction 
or explanation by the affidavits of the applicant and other persons.

(e)Reasons for allowance. If the examiner believes that the 
record of the prosecution as a whole does not make clear his or her 
reasons for allowing a claim or claims, the examiner may set forth 
such reasoning. The reasons shall be incorporated into an Office 
action rejecting other claims of the application or patent under 
reexamination or be the subject of a separate communication to 
the applicant or patent owner. The applicant or patent owner may 
file a statement commenting on the reasons for allowance within 
such time as may be specified by the examiner. Failure by the 
examiner to respond to any statement commenting on reasons for 
allowance does not give rise to any implication.

For Office actions in reexamination proceedings, 
see MPEP § 2260.

Under the current first action procedure, the examiner 
signifies on the Office Action Summary Form 
PTOL-326 certain information including the period 
set for reply, any attachments, and a “Summary of 
Action,” which is the position taken on all the claims.

Current procedure also allows the examiner, in the 
exercise of his or her professional judgment to indicate 
that a discussion with applicant’s or patent 
owner’s representative may result in agreements 
whereby the application or patent under reexamination 
may be placed in condition for allowance and that 
the examiner will telephone the representative within 
about 2 weeks. Under this practice the applicant’s or 
patent owner’s representative can be adequately prepared 
to conduct such a discussion. Any resulting 
amendment may be made either by the applicant’s or 
patent owner’s attorney or agent or by the examiner in 
an examiner’s amendment. It should be recognized 
that when extensive amendments are necessary it 
would be preferable if they were filed by the attorney 
or agent of record, thereby reducing the professional 
and clerical workload in the Office and also providing 
the file wrapper with a better record, including applicant’s 
arguments for allowability as required by 
37 
CFR 1.111.

The list of references cited appears on a separate 
form, Notice of References Cited, PTO-892 (copy in 
MPEP §
 
707.05) attached to applicant’s copies of the 
action. Where applicable, Notice of Draftsperson’s 
Patent Drawing Revision, PTO-948 and Notice of 
Informal Patent Application  are attached to the 
first action.

The attachments have the same paper number and 
are to be considered as part of the Office action.

Replies to Office actions should include the application 
number as well as the 4-digit art unit number 
and the examiner’s name to expedite handling within 
the Office. Further, applicants are encouraged to 
include the 4-digit confirmation number on every 
paper filed in the Office. See MPEP § 503 for an 
explanation of the confirmation number.

In accordance with the patent statute, “Whenever, 
on examination, any claim for a patent is rejected, or 
any objection . . . made,” notification of the reasons 
for rejection and/or objection together with such 
information and references as may be useful in judging 
the propriety of continuing the prosecution 
(35 
U.S.C. 132) should be given.

When considered necessary for adequate information, 
the particular figure(s) of the drawing(s), and/or 
page(s) or paragraph(s) of the reference(s), and/or any 
relevant comments briefly stated should be included. 
For rejections under 35 U.S.C. 103, the way in which 
a reference is modified or plural references are combined 
should be set out.

In exceptional cases, as to satisfy the requirements 
under 37 CFR 1.104(c)(2), and in pro se cases where 
the inventor is unfamiliar with patent law and practice, 
a more complete explanation may be needed.

Objections to the disclosure, explanation of references 
cited but not applied, indication of allowable 
subject matter, requirements (including requirements 
for restriction if applicable) and any other pertinent 
comments may be included. Office Action Summary 
form PTOL-326, which serves as the first page of the 
Office action (although a Form PTOL-90 may be used 
as a coversheet for the correspondence address and 
the mail date of the Office action), is to be used with 
all first actions and will identify any allowed claims.

One of form paragraphs 7.100, 7.101, or 7.102should conclude all actions.

¶ 7.100 Name And Number of Examiner To Be Contacted

Any inquiry concerning this communication should be directed 
to [1] at telephone number [2].

Examiner Note:

1.This form paragraph, form paragraph 7.101, or form paragraph 
7.102 should be used at the conclusion of all actions.

2.In bracket 1, insert the name of the examiner designated to be 
contacted first regarding inquiries about the Office action. This 
could be either the non-signatory examiner preparing the action or 
the signatory examiner.

3.In bracket 2, insert the individual area code and phone number 
of the examiner to be contacted.

¶ 7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule

Any inquiry concerning this communication or earlier communications 
from the examiner should be directed to [1] whose telephone 
number is [2]. The examiner can normally be reached on 
[3] from [4] to [5].

If attempts to reach the examiner by telephone are unsuccessful, 
the examiner’s supervisor, [6], can be reached on [7]. The fax 
phone number for the organization where this application or proceeding 
is assigned is 571-273-8300.

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

Examiner Note:

1.In bracket 1, insert your name.

2.In bracket 2, insert your individual area code and phone 
number.

3.In bracket 3, insert the days that you work every week, e.g. 
“Monday-Thursday” for an examiner off every Friday.

4.In brackets 4 and 5, insert your normal duty hours, e.g. “6:30 
AM - 5:00 PM.” 

5.In bracket 6, insert your SPE’s name. 

6.In bracket 7, insert your SPE’s area code and phone number. 

¶ 7.102 Telephone Inquiry Contacts- 5/4/9 Schedule

Any inquiry concerning this communication or earlier communications 
from the examiner should be directed to [1] whose telephone 
number is [2]. The examiner can normally be reached on 
[3] from [4] to [5]. The examiner can also be reached on alternate 
[6]. 

If attempts to reach the examiner by telephone are unsuccessful, 
the examiner’s supervisor, [7], can be reached on [8]. The fax 
phone number for the organization where this application or proceeding 
is assigned is 571-273-8300.

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

Examiner Note:

1.In bracket 1, insert your name.

2.In bracket 2, insert your individual area code and phone 
number.

3.In bracket 3, insert the days that you work every week, e.g. 
“Monday-Thursday” for an examiner off on alternate Fridays.

4.In brackets 4 and 5, insert your normal duty hours, e.g. “6:30 
AM - 4:00 PM.” 

5.In bracket 6, insert the day in each pay-period that is your 
compressed day off, e.g. “Fridays” for an examiner on a 5/4/9 
work schedule with the first Friday off.

6.In bracket 7, insert your SPE’s name. 

7.In bracket 8, insert your SPE’s area code and phone number.

Where the text of sections of Title 35, U.S. Code 
was previously reproduced in an Office action, form 
paragraph 7.103 may be used. 

¶ 7.103 Statute Cited in Prior Action

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

Form PTO-326. Office Action SummaryForm PTO-326. Office Action Summary

===707.01 Primary Examiner Indicates Action for New Assistant===

After the search has been completed, action is taken 
in the light of the references found. Where the assistant 
examiner has been in the Office but a short time, 
it is the duty of the primary examiner to review the 
application thoroughly. The usual procedure is for the 
assistant examiner to explain the invention and discuss 
the references which he or she regards as most 
pertinent. The primary examiner may indicate the 
action to be taken, whether restriction or election of 
species is to be required, or whether the claims are to 
be considered on their merits. If action on the merits is 
to be given, the primary examiner may indicate 
how the references are to be applied in cases where 
the claim is to be rejected, or authorize allowance if it 
is not met in the references and no further field of 
search is known.

===707.02 Applications Up for Third Action and 5-Year Applications===

The supervisory patent examiners should impress 
their assistants with the fact that the shortest path to 
the final disposition of an application is by finding the 
best references on the first search and carefully applying 
them.

The supervisory patent examiners are expected to 
personally check on the pendency of every application 
which is up for the third or subsequent Office
action with a view to finally concluding its prosecution.


Any application that has been pending five years 
should be carefully studied by the supervisory patent 
examiner and every effort should be made to terminate 
its prosecution. In order to accomplish this result, 
the application is to be considered “special” by the 
examiner.

===707.05 Citation of References===

37 CFR 1.104. Nature of examination.

(d)Citation of references.

(1)If domestic patents are cited by the examiner, their 
numbers and dates, and the names of the patentees will be stated. 
If domestic patent application publications are cited by the examiner, 
their publication number, publication date, and the names of 
the applicants will be stated. If foreign published applications or 
patents are cited, their nationality or country, numbers and dates, 
and the names of the patentees will be stated, and such other data 
will be furnished as may be necessary to enable the applicant, or 
in the case of a reexamination proceeding, the patent owner, to 
identify the published applications or patents cited. In citing foreign 
published applications or patents, in case only a part of the 
document is involved, the particular pages and sheets containing 
the parts relied upon will be identified. If printed publications are 
cited, the author (if any), title, date, pages or plates, and place of 
publication, or place where a copy can be found, will be given.

(2)When a rejection in an application is based on facts 
within the personal knowledge of an employee of the Office, the 
data shall be as specific as possible, and the reference must be 
supported, when called for by the applicant, by the affidavit of 
such employee, and such affidavit shall be subject to contradiction 
or explanation by the affidavits of the applicant and other persons.

During the examination of an application or reexamination 
of a patent, the examiner should cite appropriate 
prior art which is nearest to the subject matter 
defined in the claims. When such prior art is cited, its 
pertinence should be explained.

The examiner must consider all the prior art references 
(alone and in combination) cited in the application 
or reexamination, including those cited by the 
applicant in a properly submitted Information Disclosure 
Statement. See MPEP § 609.

Form paragraph 7.96 may be used as an introductory 
sentence.

¶ 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.

Effective June 8, 1995, Public Law 103-465 
amended 35 U.S.C. 154 to change the term of a 
patent to 20 years measured from the filing date of the 
earliest U.S. application for which benefit under 
35 
U.S.C. 120, 121 or 365(c) is claimed. The 20-year 
patent term applies to all utility and plant patents 
issued on applications filed on or after June 8, 1995. 
As a result of the 20-year patent term, it is expected, 
in certain circumstances, that applicants may cancel 
their claim to priority by amending the specification 
to delete any references to prior applications. Therefore, 
examiners should search all applications based 
on the actual U.S. filing date of the application rather 
than on the filing date of any parent U.S. application 
for which priority is claimed. Examiners should 
cite 
of interest all material prior art having an effective 
filing date after the filing date of the U.S. parent 
application but before the actual filing date of the 
application being examined.

Allowed applications should generally contain a 
citation of pertinent prior art for printing in the patent, 
even if no claim presented during the prosecution was 
considered unpatentable over such prior art. Only in 
those instances where a proper search has not revealed 
any prior art relevant to the claimed invention is it 
appropriate to send an application to issue with no art 
cited. In the case where no prior art is cited, the examiner 
must write “None” on a form PTO-892 and insert 
it in the file wrapper. For Image File Wrapper (IFW) 
processing, see IFW Manual section 3.7. Where references 
have been cited during the prosecution of parent 
applications and a continuing application, having no 
newly cited references, is ready for allowance, the 
cited references of the parent applications should be 
listed on a form PTO-892. The form should then be 
placed in the file of the continuing application. For 
Image File Wrapper (IFW) processing, see IFW Manual 
section 3.7. See MPEP § 1302.12. In a continued 
prosecution application filed under 37 CFR 1.53(d), it 
is not necessary to prepare a new form PTO-892 since 
the form from the parent application is in the same file 
wrapper and will be used by the printer.

In all continuation and continuation-in-part applications, 
the parent applications should be reviewed for 
pertinent prior art.

Applicants and/or applicants’ attorneys in PCT 
related national applications may wish to cite the 
material citations from the PCT International Search 
Report by an information disclosure statement under 
37 CFR 1.97 and 1.98 in order to ensure consideration 
by the examiner.

In those instances where no information disclosure 
statement has been filed by the applicant and where 
documents are cited in the International Search Report 
but neither a copy of the documents nor an English 
translation (or English family member) is provided, 
the examiner may exercise discretion in deciding 
whether to take necessary steps to obtain the copy 
and/or translation.

Copies of documents cited will be provided as set 
forth in MPEP § 707.05(a). That is, copies of documents 
cited by the examiner will be provided to applicant 
except where the documents:

(A)are cited by applicant in accordance with 
MPEP §
 
609, § 707.05(b), and § 708.02;

(B)have been referred to in applicant’s disclosure 
statement;

(C)are cited and have been provided in a parent 
application;

(D)are cited by a third party in a submission 
under 37 CFR 1.99 (MPEP § 1134.01); or

(E)are U.S. Patents or U.S. application publications 
. 

See MPEP § 707.05(e) regarding data used in citing 
references.

====707.05 (a)Copies of Cited References====

Copies of cited foreign patent documents and non-
patent literature references (except as noted below) 
are automatically furnished without charge to applicant 
together with the Office action in which they are 
cited. Copies of the cited references are also placed in 
the application file for use by the examiner during the 
prosecution.Copies of U.S. patents and U.S. patent 
application publications are not provided in paper to 
applicants and are not placed in the application file.

Copies of references cited by applicant in accordance 
with MPEP § 609, § 707.05(b) and § 708.02 are 
not furnished to applicant with the Office action. 
Additionally, copies of references cited in continuation 
applications if they had been previously cited in 
the parent application are not furnished. The examiner 
should check the left hand column of form PTO-892 if 
a copy of the reference is not to be furnished to the 
applicant.

Copies of foreign patent documents and nonpatent 
literature (NPL) which are cited by the examiner at 
the time of allowance will be furnished to applicant 
with the Office action, and copies of the same will 
also be retained in the file. For Image File Wrapper 
(IFW) processing, see IFW Manual section 3.7. This 
will apply to all allowance actions, including first 
action allowances and Ex Parte Quayle actions.

In the rare instance where no art is cited in a continuing 
application, all the references cited during the 
prosecution of the parent application will be listed at 
allowance for printing in the patent.

To assist in providing copies of , or access to,
references, the examiner should:

(A)Type the citation of the references on 
form PTO-892, “Notice of References Cited” using 
OACS;

(B)Place the form PTO-892 in the front of the file 
wrapper;

(C)Include in the application file wrapper all of 
the references cited by the examiner which are to be 
furnished to the applicant  (for Image File Wrapper 
(IFW) processing, see IFW Manual);

(D) Turn the application in to the technical support 
staff for counting. Any application which is 
handed in without all of the required references will 
be returned to the examiner. The missing reference(s) 
should be obtained and the file returned to the technical 
support staff as quickly as possible. For Image File 
Wrapper (IFW) processing, see IFW Manual section 
3.7.

In the case of design applications, procedures are 
the same as set forth in MPEP § 707.05 (a)-(g) .

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

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

All U.S. patents and U.S. patent application publications are 
available free of charge from the USPTO web site 
(www.uspto.gov/patft/index.html), for a fee from the Office of 
Public Records (http://ebiz1.uspto.gov/oems25p/index.html), and 
from commercial sources. Copies are also available at the Patent 
and Trademark Depository Libraries (PTDLs). A list of the 
PTDLs may be found on the USPTO web site (www.uspto.gov/
web/offices/ac/ido/ptdl/ptdlib_1.html). Additionally, a simple 
new feature in the Office’s Private Patent Application Information 
Retrieval system (PAIR), E-Patent Reference, is available for 
downloading and printing of U.S. patents and U.S. patent application 
publications cited in U.S. Office Actions.

STEPS TO USE THE E-PATENT REFERENCE FEATURE

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

Instructions for performing the 5 steps:

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

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

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

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

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

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

Examiner Note:

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

Form PTO-892. Notice of References CitedForm PTO-892. Notice of References Cited

====707.05(b) Citation of Related Art and Information by Applicants====

I. CITATION OF RELATED ART BY 
APPLICANTS

MPEP § 609 sets forth guidelines for applicants, 
their attorneys and agents who desire to submit prior 
art for consideration by the U.S. Patent and Trademark 
Office.

Submitted citations will not in any way diminish 
the obligation of examiners to conduct independent 
prior art searches, or relieve examiners of citing 
other pertinent prior art of which they may be 
aware.

Prior art submitted by applicant in the manner provided 
in MPEP § 609 will not be supplied with an 
Office action.

II. CITATION OF RELATED INFORMATION 
BY APPLICANTS

37 CFR 1.105 and MPEP § 704.10 et seq. set forth 
procedures for examiners to require applicants, their 
attorneys and agents to submit information reasonably 
necessary for the Office to examine an application or 
treat a matter being addressed in an application.

Any such requirement, and any information submitted 
in reply thereto, will not in any way diminish 
the obligation of examiners to conduct independent 
prior art searches, or relieve examiners of citing 
other pertinent prior art of which they may be 
aware.

Information submitted by applicant in the manner 
provided in MPEP § 704.10 et seq. will not be supplied 
with an Office action.

====707.05(c) Order of Listing====

In citing references for the first time, the identifying 
data of the citation should be placed on form PTO-
892 “Notice of References Cited,” a copy of which 
will be attached to the Office action. No distinction is 
to be made between references on which a claim is 
rejected and those formerly referred to as “pertinent.” 
With the exception of applicant submitted citations, 
MPEP § 609 and § 708.02, it is recommended that the 
pertinent features of references which are not used as 
a basis for rejection be pointed out briefly.

See MPEP § 1302.12.

====707.05(d) Reference Cited in SubsequentActions====

Where an applicant in an amendatory paper refers 
to a reference that is subsequently relied upon by the 
examiner, such reference shall be cited by the examiner 
in the usual manner using a form PTO-892, 
“Notice of References Cited,” unless applicant has 
listed the reference on a form  PTO/SB/08 that has 
been initialed by the examiner.

====707.05(e) Data Used in Citing References====

37 CFR 1.104(d) (see also MPEP § 707.05 and 
§
 
901.05(a)) requires the examiner to provide certain 
data when citing references. The examiner should 
provide the citations on the “Notice of References 
Cited” form PTO-892 (copy at MPEP § 707.05). 



I. U.S. PATENT DOCUMENTS

If a U.S. patent application publication is cited by 
the examiner, the publication number, publication 
date, name of the applicant, class, and subclass should 
be cited under the section “U.S. Patent Documents” 
on the form PTO-892. For U.S. patents, the patent 
number, patent date, name of the patentee, class and 
subclass should also be cited under the same section. 
In addition, examiners are encouraged to cite the kind 
codes printed on U.S. patent application publications 
and patents. See MPEP § 901.04(a) for an explanation 
of the kind codes. See MPEP § 901.04 for details concerning 
the various series of U.S. patents and how to 
cite them. Note that patents of the X-Series (dated 
prior to July 4, 1836) are not to be cited by number. 
Some U.S. patents issued in 1861 have two numbers 
thereon. The larger number should be cited.

Defensive Publications and Statutory Invention 
Registrations (SIRs) should be cited under the section 
“U.S. Patent Documents” on the form PTO-892 (see 
MPEP § 711.06(a) and §
 
901.06(a)).

II. FOREIGN PATENTS AND FOREIGN 
PUBLISHED APPLICATIONS

In citing foreign patents, the patent number, kind 
code, citation date, name of the country, name of the 
patentee, and U.S. class and subclass, if appropriate, 
must be given. Foreign patents searched in those 
Technology Centers (TCs) filing by International 
Patent Classification (IPC) will be cited using the 
appropriate IPC subclass/group/subgroup. On the file 
wrapper “Searched” box and PTO-892, the IPC subclass/
group/subgroup shall be cited in the spaces provided 
for “Classification.” For Image File Wrapper 
(IFW) processing, see IFW Manual section 3.7.

Where less than the entire disclosure of the reference 
is relied upon, the sheet and page numbers specifically 
relied upon and the total number of sheets of 
drawing and pages of specification must be included 
(except applicant submitted citations). If the entire 
disclosure is relied on, the total number of sheets and 
pages are not required to be included on the PTO-892.

Publications such as German allowed applications 
and Belgian and Netherlands printed specifications 
should be similarly handled. 

See MPEP § 901.05(a) for a chart in which foreign 
language terms indicative of foreign patent and publication 
dates to be cited are listed.

III. PUBLICATIONS

Abstracts, abbreviatures, Alien Property Custodian 
publications, withdrawn U.S. patents, withdrawn U.S. 
patent application publications, and other non-patent 
documents should be cited under the section “Non-
Patent Documents” on the form PTO-892). See MPEP 
§ 711.06(a) for citation of abstracts, and abbreviatures. 
See MPEP § 901.06(c) for citation of Alien 
Property Custodian publications. In citing a publication, 
sufficient information should be given to determine 
the identity and facilitate the location of the 
publication. For books, the data required by 37 CFR 
1.104(d) (MPEP §
 
707.05) with the specific pages 
relied on identified together with the Scientific and 
Technical Information Center (STIC) call number will 
suffice. The call number appears on the “spine” of the 
book if the book is thick enough and, in any event, on 
the back of the title page. Books on interlibrary loan 
will be marked with the call numbers of the other 
library, of course. THIS NUMBER SHOULD NOT 
BE CITED. The same convention should be followed 
in citing articles from periodicals. The call number 
should be cited for periodicals owned by the STIC, 
but not for periodicals borrowed from other libraries. 
In citing periodicals, information sufficient to identify 
the article includes the author(s) and title of the article 
and the title, volume number issue number, date, and 
pages of the periodical. If the copy relied on is located 
only in the Technology Center making the action 
(there may be no call number), the additional information, 
“Copy in Technology Center — —” should be 
given.

The following are examples of nonpatent bibliographical 
citations:

(A) For books: 

Winslow. C. E. A. Fresh Air and Ventilation. N.Y., 
E. P. Dutton, 1926. p. 97-112. TI17653.W5.

(B) For parts of books: 

Smith, J. F. “Patent Searching.” in: Singer, T.E.R., 
Information and Communication Practice in 
Industry (New York, Reinhold, 1958), pp. 157-
165. T 175.S5.

(C) For encyclopedia articles: 

Calvert, R. “Patents (Patent Law).” in: Encyclopedia 
of Chemical Technology (1952 ed.), vol. 9, pp. 
868-890. Ref. TP9.E68.

(D) For sections of handbooks: 

Machinery’s Handbook, 16th ed. New York, International 
Press, 1959. pp. 1526-1527. TJ151.M3 
1959.

(E) For periodical articles: 

Noyes, W. A. A Climate for Basic Chemical 
Research

Chemical & Engineering News, Vol. 38, no. 42 
(Oct. 17, 1960), pp. 91-95. TP1.I418.

The following are examples of how withdrawn U.S. 
patents and withdrawn U.S. patent application publications 
should be cited:

(A) Withdrawn U.S. patents:

US 6,999,999, 10/2002, Brown et al., 403/155 
(withdrawn).

(B) Withdrawn U.S. patents application publications: 

US 2002/0009999 A1, 7/2002, Jones et al., 403/
155 (withdrawn).

Titles of books and periodicals SHOULD NOT be 
abbreviated because an abbreviation such as 
P.S.E.B.M. will not be sufficient to identify the publication. 
References are to be cited so that anyone reading 
a patent may identify and retrieve the publications 
cited. Bibliographic information provided must be at 
least enough to identify the publication. author, title 
and date. For books, minimal information includes the 
author, title, and date. For periodicals, at least the title 
of the periodical, the volume number, date, and pages 
should be given. These minimal citations may be 
made ONLY IF the complete bibliographic details are 
unknown or unavailable.

Where a nonpatent literature reference with a document 
identification number is cited, the identification 
number and the class and subclass should be included 
on form PTO-892. For example, the citation should be 
as follows: (S00840001) Winslow, C.E.A. Fresh Air 
and Ventilation N.Y., E.P. Dutton, 1926, p. 97-112, 
TH 7653, W5, 315/22.

If the original publication is located outside the 
Office, the examiner should immediately make or 
order a photocopy of at least the portion relied upon 
and indicate the class and subclass in which it will be 
filed, if any. 

IV. ELECTRONIC DOCUMENTS

An electronic document is one that can be retrieved 
from an online source (e.g., the Internet, online database, 
etc.) or sources found on electronic storage 
media (e.g., CD-ROM, magnetic disk or tape, etc.). 
Many references in paper format may also be 
retrieved as electronic documents. Other references 
are retrievable only from electronic sources. 

The U.S. Patent and Trademark Office follows the 
format recommended by World Intellectual Property 
Organization (WIPO) Standard ST.14, “Recommendation 
for the Inclusion of References Cited in Patent 
Documents.” The format for the citation of an electronic 
document is as similar as possible to the format 
used for paper documents of the same type, but with 
the addition of the following information in the locations 
indicated, where appropriate:

(A)the type of electronic medium provided in 
square brackets [ ] after the title of the publication or 
the designation of the host document, e.g., [online], 
[CD-ROM], [disk], [magnetic tape];

(B)the date when the document was retrieved 
from the electronic media in square brackets following 
after the date of publication, e.g., [retrieved on 
March 4, 1998], [retrieved on 1998-03-04]. The four-
digit year must always be given.

(C)identification of the source of the document 
using the words “Retrieved from” and its address 
where applicable. This item will precede the citation 
of the relevant passages.

(D)specific passages of the text could be indicated 
if the format of the document includes pagination 
or an equivalent internal referencing system, or 
by the first and last words of the passage cited.

Office copies of an electronic document must be 
retained if the same document may not be available 
for retrieval in the future. This is especially important 
for sources such as the Internet and online databases. 

If an electronic document is also available in paper 
form it does not need to be identified as an electronic 
document, unless it is considered desirable or useful 
to do so.

Examples 1-4: Documents retrieved from online 
databases outside the Internet

Example 1:

SU 1511467 A (BRYAN MECH) 1989-09-30 
(abstract) World Patents Index [online]. London, 
U.K.: Derwent Publications, Ltd. [retrieved on 
1998-02-24]. Retrieved from: Questel/Orbit, Paris, 
France. DW9016, Accession No. 90-121923.

Example 2:

DONG, X. R. ‘Analysis of patients of multiple 
injuries with AIS-ISS and its clinical significance 
in the evaluation of the emergency managements’, 
Chung Hua Wai Ko Tsa Chih, May 1993, Vol. 31, 
No. 5, pages 301-302. (abstract) Medline [online]. 
Bethesda, MD, USA: United States National 
Library of Medicine [retrieved on 24 February 
1998]. Retrieved from: Dialog Information Services, 
Palo Alto, CA, USA. Medline Accession no. 
94155687, Dialog Accession No. 07736604.

Example 3:

JENSEN, B. P. ‘Multilayer printed circuits: production 
and application II’. Electronik, June-July 

1976, No. 6-7, pages 8, 10,12,14,16. (abstract) 
INSPEC [online]. London, U.K.: Institute of Electrical 
Engineers [retrieved on 1998-02-24]. 
Retrieved from: STN International, Columbus, 
Ohio, USA. Accession No. 76:956632.

Example 4:

JP 3002404 (TAMURA TORU) 1991-03-13 
(abstract). [online] [retrieved on 1998-09-02]. 
Retrieved from: EPO PAJ Database.

Examples 5-11: Documents retrieved from the 
Internet

Example 5:

(Entire Work – Book or Report)

WALLACE, S., and BAGHERZADEH, N. Multiple 
Branch and Block Prediction. Third International 
Symposium on High-Performance 
Computer Architecture [online], February 1997 
[retrieved on 1998-05-20]. Retrieved from the 
Internet: URL: http://www.eng.uci.edu/
comp.arch/papers-wallace/hpca3-block.ps.

Example 6:

(Part of Work – chapter or equivalent designation)

National Research Council, Board on Agriculture, 
Committee on Animal Nutrition, Subcommittee on 
Beef Cattle Nutrition. Nutrient Requirements of 
Beef Cattle [online]. 7th revised edition. Washington, 
DC: National Academy Press, 1996 [retrieved 
on 1998-06-10]. Retrieved from the Internet: 
URL: http://www2.nap.edu/htbin/docpage/
title=Nutrient+Requirements+of+Beef+Cattle%
3A+Seventh+
Revised+Edtion%2C+1996&dload=0& 
path=/ext5/extra&name=054265%2Erdo&docid= 
00805F50FE7b%3A840052612&colid=4%7C6%
7C41&start=38 Chapter 3, page 24, table 3-1.

Example 7:

(Electronic Serial – articles or other contributions)

Ajtai. Generating Hard Instances of Lattice Problems. 
Electronic Colloquium on Computational 
Complexity, Report TR96-007 [online], [retrieved 
on 1996-01-30]. Retrieved from the Internet 
URL: ftp://ftp.eccc.uni-trier.de/pub/eccc/reports/
1996/TR96-007/index.html

Example 8:

(Electronic bulletin boards, message systems, 
and discussion lists – Entire System)

BIOMET-L (A forum for the Bureau of Biometrics 
of New York) [online]. Albany (NY): Bureau of 
Biometrics, New York State Health Department, 
July, 1990 [retrieved 1998-02-24]. Retrieved from 
the Internet: listserv@health.state.ny.us, message: 
subscribe BIOMET-L your real name.

Example 9:

(Electronic bulletin boards, message systems, 
and discussion lists – Contributions)

PARKER, Elliott. ‘Re: citing electronic journals’. 
In PACS-L (Public Access Computer Systems 
Forum) [online]. Houston (TX): University of 
Houston Libraries, November 24, 1989; 13:29:35 
CST [retrieved on 1998-02-24]. Retrieved from 
the Internet: URL:telnet://bruser@a.cni.org.

Example 10:

(Electronic mail)

‘Plumb design of a visual thesaurus’. The Scout 
Report [online]. 1998, vol. 5 no. 3 [retrieved on 
1998-05-18]. Retrieved from Internet electronic 
mail: listserv@cs.wisc.edu, subscribe message: 
info scout-report. ISSN: 1092-3861\cf15.

Example 11:

Corebuilder 3500 Layer 3 High-function Switch. 
Datasheet [online]. 3Com Corporation, 1997 
[retrieved on 1998-02-24]. Retrieved from the 
Internet: URL: www.3com.com/products/
dsheets/400347.html.

(Product Manual/Catalogue or other information 
obtained from a Web-site)

Example 12:

HU D9900111 Industrial Design Application, 
(HADJDUTEJ TEJIPARI RT, DEBRECEN) 1999-
09-28, [online], [retrieved on 1999-10-26] 
Retrieved from the Industrial Design Database of 
the Hungarian Patent Office using Internet URL: 
http:/www.hpo.hu/English/db/indigo/.

Examples 13 and 14: Documents retrieved from 
CD-ROM products

Examples 13 and 14:

JP 0800085 A (TORAY IND INC), (abstract), 
1996-05-31. In: Patent Abstracts of Japan [CD-
ROM].

Examples 14:

HAYASHIDA, O. et. al.: Specific molecular recognition 
by chiral cage-type cyclophanes having 
leucine, valine, and alanine residues. In: Tetrahedron 
1955, Vol. 51 (31), p.
 
8423-36. In: CA on CD 
[CD-ROM]. Columbus, OH: CAS.\f5Abstract 
124:9350.

====707.05(f) Effective Dates of DeclassifiedPrinted Matter====

In using declassified material as references there 
are usually two pertinent dates to be considered, 
namely, the printing date and the publication date. The 
printing date in some instances will appear on the 
material and may be considered as that date when the 
material was prepared for limited distribution. The 
publication date is the date of release when the material 
was made available to the public. See Ex parteHarris, 79 USPQ 439 (Comm’r Pat. 1948). If the date 
of release does not appear on the material, this date 
may be determined by reference to the Office of Technical 
Services, Department of Commerce.

In the use of any of the above noted material as an 
anticipatory publication, the date of release following 
declassification is the effective date of publication 
within the meaning of the statute.

For the purpose of anticipation predicated upon 
prior knowledge under 35 U.S.C. 102(a) the above 
noted declassified material may be taken as prima 
facie evidence of such prior knowledge as of its printing 
date even though such material was classified at 
that time. When so used the material does not constitute 
an absolute statutory bar and its printing date may 
be antedated by an affidavit or declaration under 37 
CFR 1.131.

====707.05(g) Incorrect Citation of References==== 

Where an error in citation of a reference is brought 
to the attention of the Office by applicant, a letter correcting 
the error, together with a correct copy of the 
reference, is sent to applicant. See MPEP § 710.06. 
Where the error is discovered by the examiner, applicant 
is also notified and the period for reply restarted. 
In either case, the examiner is directed to correct the 
error, in ink, in the paper in which the error appears, 
and place his or her initials on the margin of such 
paper, together with a notation of the paper number of 
the action in which the citation has been correctly 
given. See MPEP § 710.06. For Image File Wrapper 
(IFW) processing, see IFW Manual.

Form paragraphs 7.81-7.83 may be used to correct 
citations or copies of references cited.

¶ 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.

¶ 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.



¶ 7.82.01 Copy of Reference(s) Furnished

Copies of the following references not previously supplied are 
enclosed:

Examiner Note:

1.The USPTO ceased mailing paper copies of U.S. patents and 
U.S. application publications cited in Office Actions in nonprovisional 
applications beginning in June 2004. See the phase-in 
schedule of the E-Patent Reference program provided in “USPTO 
to Provide Electronic Access to Cited U.S. Patent References with 
Office Actions and Cease Supplying Paper Copies,” 1282 O.G. 
109 (May 18, 2004). Therefore, this form paragraph should only 
be used for foreign patent documents, non-patent literature, pend
ing 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.

¶ 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.“A corrected copy”

b.“A complete copy”

c.A specific page or pages, e.g., “Pages 3-5”

d.“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.

In any application otherwise ready for issue, in 
which the erroneous citation has not been formally 
corrected in an official paper, the examiner is directed 
to correct the citation by examiner’s amendment 
accompanying the Notice of Allowability form 
PTOL-37.

If a FOREIGN patent is incorrectly cited: for example, 
the wrong country is indicated or the country 
omitted from the citation, the General Reference 
Branch of the Scientific and Technical Library may be 
helpful. The date and number of the patent are often 
sufficient to determine the correct country which 
granted the patent.

707.06Citation of Decisions, OrdersMemorandums, and Notices[R-2]

In citing court decisions, the USPQ citation should 
be given and, when it is convenient to do so, the U.S., 
CCPA or Federal Reporter citation should also be provided.


The citation of manuscript decisions which are not 
available to the public should be avoided.

It is important to recognize that a federal district 
court decision that has been reversed on appeal cannot 
be cited as authority.

In citing a manuscript decision which is available to 
the public but which has not been published, the tribunal 
rendering the decision and complete data identifying 
the paper should be given. Thus, a decision of the 
Board of Patent Appeals and Interferences which has 
not been published but which is available to the public 
in the patented file should be cited, as “ Ex parte — 
— , decision of the Board of Patent Appeals and Interferences, 
Patent No. — — — , paper No. — — , — 
— — pages.”

Decisions found only in patented files should be 
cited only when there is no published decision on the 
same point. 

When a Director’s order, notice or memorandum 
not yet incorporated into this manual is cited in 
any official action, the title and date of the order, 
notice or memorandum should be given. When appropriate 
other data, such as a specific issue of the Journal 
of the Patent and Trademark Office Society or of 
the Official Gazette in which the same may be found, 
should also be given.

===707.07 Completeness and Clarity ofExaminer’s Action===

37 CFR 1.104. Nature of examination.

(b)Completeness of examiner’s action. The examiner’s 
action will be complete as to all matters, except that in appropriate 
circumstances, such as misjoinder of invention, fundamental 
defects in the application, and the like, the action of the examiner 
may be limited to such matters before further action is made. 
However, matters of form need not be raised by the examiner until 
a claim is found allowable.

====707.07(a) Complete Action on FormalMatters====

Forms are placed in informal applications listing 
informalities noted by the Draftsperson (form PTO-
948) and the Office of Initial Patent Examination . 
Each of these forms comprises an original for the file 
record and a copy to be mailed to applicant as a part 
of the examiner’s first action. For Image File Wrapper 
(IFW) processing, see IFW Manual. They are specifically 
referred to as attachments to the action and are 
marked with its paper number. In every instance 
where these forms are to be used, they should be 
mailed with the examiner’s first action, and any additional 
formal requirements which the examiner 
desires to make should be included in the first action.

When any formal requirement is made in an examiner’s 
action, that action should, in all cases where it 
indicates allowable subject matter, call attention to 37 
CFR 1.111(b) and state that a complete reply must 
either comply with all formal requirements or specifically 
traverse each requirement not complied with. 

¶ 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.

====707.07(b)Requiring New Oath====

See [[MPEP 600|MPEP § 602.02]].

====707.07(c) Draftsperson’s Requirement====

See MPEP § 707.07(a); also MPEP § 608.02(a), 
(e), and (s).

====707.07(d) Language To Be Used in Rejecting Claims====

Where a claim is refused for any reason relating to 
the merits thereof it should be “rejected” and the 
ground of rejection fully and clearly stated, and the 
word “reject” must be used. The examiner should designate 
the statutory basis for any ground of rejection 
by express reference to a section of 35 U.S.C. in the 
opening sentence of each ground of rejection. If the 
claim is rejected as broader than the enabling disclosure, 
the reason for so holding should be given; if 
rejected as indefinite the examiner should point out 
wherein the indefiniteness resides; or if rejected as 
incomplete, the element or elements lacking should be 
specified, or the applicant be otherwise advised as to 
what the claim requires to render it complete.

See MPEP § 706.02 (i), (j), and (m) for language to 
be used. 

Everything of a personal nature must be avoided. 
Whatever may be the examiner’s view as to the utter 
lack of patentable merit in the disclosure of the application 
examined, he or she should not express in the 
record the opinion that the application is, or appears to 
be, devoid of patentable subject matter. Nor should he 
or she express doubts as to the allowability of allowed 
claims or state that every doubt has been resolved in 
favor of the applicant in granting him or her the 
claims allowed.

The examiner should, as a part of the first Office 
action on the merits, identify any claims which he or 
she judges, as presently recited, to be allowable and/
or should suggest any way in which he or she considers 
that rejected claims may be amended to make 
them allowable. If the examiner does not do this, then 
by implication it will be understood by the applicant 
or his or her attorney or agent that in the examiner’s 
opinion, as presently advised, there appears to be no 
allowable claim nor anything patentable in the subject 
matter to which the claims are directed. 

IMPROPERLY EXPRESSED REJECTIONS

An omnibus rejection of the claim “on the references 
and for the reasons of record” is stereotyped 
and usually not informative and should therefore be 
avoided. This is especially true where certain claims 
have been rejected on one ground and other claims on 
another ground.

A plurality of claims should never be grouped 
together in a common rejection, unless that rejection 
is equally applicable to all claims in the group. 

707.07(e)Note All Outstanding Requirements 

In taking up an amended application for action the 
examiner should note in every letter all the requirements 
outstanding against the application. Every point 
in the prior action of an examiner which is still applicable 
must be repeated or referred to, to prevent the 
implied waiver of the requirement. Such requirements 
include requirements for information under 37 CFR 
1.105 and MPEP § 704.10; however the examiner 
should determine whether any such requirement has 
been satisfied by a negative reply under 37 CFR 
1.105(a)(3).

As soon as allowable subject matter is found, correction 
of all informalities then present should be 
required.

====707.07(f) Answer All Material Traversed====

In order to provide a complete application file history 
and to enhance the clarity of the prosecution history 
record, an examiner must provide clear 
explanations of all actions taken by the examiner during 
prosecution of an application.

Where the requirements are traversed, or suspension 
thereof requested, the examiner should make 
proper reference thereto in his or her action on the 
amendment.

Where the applicant traverses any rejection, the 
examiner should, if he or she repeats the rejection, 
take note of the applicant’s argument and answer the 
substance of it.

If applicant’s arguments are persuasive and upon 
reconsideration of the rejection, the examiner determines 
that the previous rejection should be withdrawn, 
the examiner must provide in the next Office 
communication the reasons why the previous rejection 
is withdrawn by referring specifically to the 
page(s) and line(s) of applicant’s remarks which form 
the basis for withdrawing the rejection. It is not 
acceptable for the examiner to merely indicate that all 
of applicant’s remarks form the basis for withdrawing 
the previous rejection. Form paragraph 7.38.01 may 
be used. If the withdrawal of the previous rejection 
results in the allowance of the claims, the reasons, 
which form the basis for the withdrawal of the previous 
rejection, may be included in a reasons for allowance. 
See MPEP § 1302.14.

If applicant’s arguments are persuasive and the 
examiner determines that the previous rejection 
should be withdrawn but that, upon further consideration, 
a new ground of rejection should be made, form 
paragraph 7.38.02 may be used. See MPEP 
§ 706.07(a) to determine whether the Office action 
may be made final.

If a rejection of record is to be applied to a new or 
amended claim, specific identification of that ground 
of rejection, as by citation of the paragraph in the 
former Office letter in which the rejection was originally 
stated, should be given.

ANSWERING ASSERTED ADVANTAGES

After an Office action, the reply (in addition to 
making amendments, etc.) may frequently include 
arguments and affidavits to the effect that the prior art 
cited by the examiner does not teach how to obtain or 
does not inherently yield one or more advantages 
(new or improved results, functions or effects), which 
advantages are urged to warrant issue of a patent on 
the allegedly novel subject matter claimed.

If it is the examiner’s considered opinion that the 
asserted advantages are not sufficient to overcome the 
rejection(s) of record, he or she should state the reasons 
for his or her position in the record, preferably in 
the action following the assertion or argument relative 
to such advantages. By so doing the applicant will 
know that the asserted advantages have actually been 
considered by the examiner and, if appeal is taken, the 
Board of Patent Appeals and Interferences will also 
be advised. See MPEP § 716 et seq. for the treatment 
of affidavits and declarations under 37 CFR 1.132.

The importance of answering applicant’s arguments 
is illustrated by In re Herrmann, 261 F.2d 598, 120 
USPQ 182 (CCPA 1958) where the applicant urged 
that the subject matter claimed produced new and useful 
results. The court noted that since applicant’s 
statement of advantages was not questioned by the 
examiner or the Board of Appeals, it was constrained 
to accept the statement at face value and therefore 
found certain claims to be allowable. See also In re 
Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688 (Fed. 
Cir. 1995) (Office failed to rebut applicant’s argument).

Form paragraphs 7.37 through 7.37.13 may be used 
where applicant’s arguments are not persuasive.

Form paragraphs 7.38 through 7.38.02 may be used 
where applicant’s arguments are moot or persuasive.

¶ 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.

¶ 7.38 Arguments Are Moot Because of New Ground(s) of 
Rejection

Applicant’s arguments with respect to claim [1] have been 
considered but are moot in view of the new ground(s) of rejection.

Examiner Note:

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

¶ 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.

¶ 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.

¶ 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.

¶ 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.

¶ 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.

¶ 7.37.04 Unpersuasive Argument: No Suggestion To 
Combine

In response to applicant’s argument that there is no suggestion 
to combine the references, the examiner recognizes that obviousness 
can only 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) and In re Jones, 958 
F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). In this case, [1].

Examiner Note:

1.In bracket 1, explain where the 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.

¶ 7.37.05 Unpersuasive Argument: Nonanalogous Art

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

Examiner Note:

1.In bracket 1, enter the name of the reference which applicant 
alleges is nonanalogous.

2.In bracket 2, explain why the reference is analogous art.

3.This form paragraph must be preceded by form paragraph 
7.37.

¶ 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.

¶ 7.37.07 Unpersuasive Argument: Applicant Obtains 
Result Not Contemplated by Prior Art

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

Examiner Note:

1.In bracket 1, briefly restate applicant’s arguments with 
respect to the issue of results not contemplated by the prior art.

2.This form paragraph must be preceded by form paragraph 
7.37.

¶ 7.37.08 Unpersuasive Argument: Arguing Limitations 
Which Are Not Claimed

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

Examiner Note:

1.In bracket 1, recite the features upon which applicant relies, 
but which are not recited in the claim(s).

2.This form paragraph must be preceded by form paragraph 
7.37.

¶ 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.

¶ 7.37.10 Unpersuasive Argument: Limitation(s) in 
Preamble

In response to applicant’s arguments, the recitation [1] has not 
been given patentable weight because the recitation occurs in the 
preamble. A preamble is generally not accorded any patentable 
weight where it merely recites the purpose of a process or the 
intended use of a structure, and where the body of the claim does 
not depend on the preamble for completeness but, instead, the process 
steps or structural limitations are able to stand alone. See In 
re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. 
Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).

Examiner Note:

1.In bracket 1, briefly restate the recitation about which applicant 
is arguing.

2.This form paragraph must be preceded by form paragraph 
7.37.

¶ 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.

¶ 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.

¶ 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.

====707.07(g) Piecemeal Examination====

Piecemeal examination should be avoided as much 
as possible. The examiner ordinarily should reject 
each claim on all valid grounds available, avoiding, 
however, undue multiplication of references. (See 
MPEP § 904.03.) Major technical rejections on 
grounds such as lack of proper disclosure, lack of 
enablement, serious indefiniteness and res judicatashould be applied where appropriate even though 
there may be a seemingly sufficient rejection on the 
basis of prior art. Where a major technical rejection is 
proper, it should be stated with a full development of 
reasons rather than by a mere conclusion coupled with 
some stereotyped expression.

In cases where there exists a sound rejection on the 
basis of prior art which discloses the “heart” of the 
invention (as distinguished from prior art which 
merely meets the terms of the claims), secondary 
rejections on minor technical grounds should ordinarily 
not be made. Certain technical rejections (e.g. 
negative limitations, indefiniteness) should not be 
made where the examiner, recognizing the limitations 
of the English language, is not aware of an improved 
mode of definition.

Some situations exist where examination of an 
application appears best accomplished by limiting 
action on the claim thereof to a particular issue. These 
situations include the following:

(A)Where an application is too informal for a 
complete action on the merits. See MPEP § 702.01;

(B)Where there is an undue multiplicity of 
claims, and there has been no successful telephone 
request for election of a limited number of claims for 
full examination. See MPEP § 2173.05(n);

(C)Where there is a misjoinder of inventions and 
there has been no successful telephone request for 
election. See MPEP § 803, § 810, § 812.01;

(D)Where disclosure is directed to perpetual 
motion. See Ex parte Payne, 1904 C.D. 42, 108 O.G. 
1049 (Comm’r Pat. 1903). However, in such cases, 
the best prior art readily available should be cited and 
its pertinency pointed out without specifically applying 
it to the claims.

On the other hand, a rejection on the grounds of res 
judicata, no prima facie showing for reissue, new 
matter, or inoperativeness (not involving perpetual 
motion) should be accompanied by rejection on all 
other available grounds.

====707.07(h) Notify of Inaccuracies inAmendment====

See MPEP § 714, subsection II. G.

====707.07(i) Each Claim To Be Mentioned in Each Office Action====

In every Office action, each pending claim should 
be mentioned by number, and its treatment or status 
given. Since a claim retains its original numeral 
throughout the prosecution of the application, its history 
through successive actions is thus easily traceable. 
Each action should include a summary of the 
status of all claims presented for examination. Form 
PTO-326 “Office Action Summary” should be used.

Claims retained under 37 CFR 1.142 and claims 
retained under 37 CFR 1.146 should be treated as set 
out in MPEP § 821 to § 821.04(b).

See MPEP Chapter 2300 for treatment of 
claims in the application of losing party in interference.

The Index of Claims should be kept up to date as 
set forth in MPEP § 719.04. For Image File Wrapper 
(IFW) processing, see IFW Manual.

====707.07(j)State When Claims Are Allowable====

I.INVENTOR FILED APPLICATIONS

When, during the examination of a pro se application 
it becomes apparent to the examiner that there is 
patentable subject matter disclosed in the application, 
the examiner should draft one or more claims for the 
applicant and indicate in his or her action that such 
claims would be allowed if incorporated in the application 
by amendment.

This practice will expedite prosecution and offer a 
service to individual inventors not represented by a 
registered patent attorney or agent. Although this 
practice may be desirable and is permissible in any 
case deemed appropriate by the examiner, it will be 
expected to be applied in all cases where it is apparent 
that the applicant is unfamiliar with the proper preparation 
and prosecution of patent applications.

II.ALLOWABLE EXCEPT AS TO FORM

When an application discloses patentable subject 
matter and it is apparent from the claims and applicant’s 
arguments that the claims are intended to be 
directed to such patentable subject matter, but the 
claims in their present form cannot be allowed 
because of defects in form or omission of a limitation, 
the examiner should not stop with a bare objection or 
rejection of the claims. The examiner’s action should 
be constructive in nature and, when possible, should 
offer a definite suggestion for correction. Further, an 
examiner’s suggestion of allowable subject matter 
may justify indicating the possible desirability of an 
interview to accelerate early agreement on allowable 
claims.

If the examiner is satisfied after the search has been 
completed that patentable subject matter has been disclosed 
and the record indicates that the applicant 
intends to claim such subject matter, the examiner 
may note in the Office action that certain aspects or 
features of the patentable invention have not been 
claimed and that if properly claimed such claims may 
be given favorable consideration.

If a claim is otherwise allowable but is dependent 
on a canceled claim or on a rejected claim, the Office 
action should state that the claim would be allowable 
if rewritten in independent form.

III.EARLY ALLOWANCE OF CLAIMS

Where the examiner is satisfied that the prior art 
has been fully developed and some of the claims are 
clearly allowable, the allowance of such claims 
should not be delayed.

Form paragraphs 7.43, 7.43.01, and 7.43.02 may be 
used to indicate allowable subject matter.

¶ 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.

¶ 7.43.01 Allowable Subject Matter, Claims Rejected 
Under 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, 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, second paragraph, and would be allowable if 
amended to overcome the rejection.

¶ 7.43.02 Allowable Subject Matter, Claims Rejected 
Under 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, 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, 
second paragraph, and would be allowable if amended as indicated.

¶ 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.If the suggested claim is not considered to be embraced by 
the original oath or declaration, a supplemental oath or declaration 
should be required under 37 CFR 1.67.

2.In bracket 2, insert --is-- or -- are--.

3.In bracket 3, insert complete text of suggested claim(s).

Form paragraph 7.97 may be used to indicate 
allowance of claims.

¶ 7.97 Claims Allowed

Claim [1] allowed. 

====707.07(k) Numbering Paragraphs====

It is good practice to number the paragraphs of the 
Office action consecutively. This facilitates their identification 
in the future prosecution of the application. 

====707.07(l) Comment on Examples====

The results of the tests and examples should not 
normally be questioned by the examiner unless there 
is reasonable basis for questioning the results. If the 
examiner questions the results, the appropriate claims 
should be rejected as being based on an insufficient 
disclosure under 35 U.S.C. 112, first paragraph. In re 
Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 
1970). See MPEP § 2161 through § 2164.08(c) for a 
discussion of the written description and enablement 
requirements of 35 U.S.C 112, first paragraph. The 
applicant must reply to the rejection, for example, by 
providing the results of an actual test or example 
which has been conducted, or by providing relevant 
arguments that there is strong reason to believe that 
the result would be as predicted. Care should be taken 
that new matter is not entered into the application.

If questions are present as to operability or utility, 
consideration should be given to the applicability of a 
rejection under 35 U.S.C. 101. See MPEP § 706.03(a)
and § 2107 et seq.

===707.08 Reviewing and Initialing byAssistant Examiner===

The full surname of the examiner who prepares the 
Office action will, in all cases, be typed at the end of 
the action. The telephone number below this should 
be called if the application is to be discussed or an 
interview arranged. Form paragraph 7.100, 7.101 or 
7.102 should be used. 

After the action is typed, the examiner who prepared 
the action reviews it for correctness. The surname 
or initials of the examiner who prepared the 
action and the date on which the action was typed 
should appear below the action. If this examiner does 
not have the authority to sign the action, he or she 
should initial above the typed name or initials, and 
forward the action to the authorized signatory examiner 
for signing.

===707.09 Signing by Primary or Other Authorized Examiner===

Although only the original is signed, the word 
“Examiner” and the name of the signer should appear 
on the original and copies.

All Office actions and other correspondence should 
be signed promptly.

===707.10 Entry===

The original, signed by the authorized examiner, is 
the copy which is placed in the file wrapper. The character 
of the action, its paper number and the date of 
mailing are entered in black ink on the outside of the 
file wrapper under “Contents.” For Image File 
Wrapper (IFW) processing, see IFW Manual section 
3.7.

===707.11 Date===

The mailing date should not be typed when the 
Office action is written, but should be stamped or 
printed on all copies of the action after it has been 
signed by the authorized signatory examiner and the 
copies are about to be mailed.

===707.12 Mailing===

Copies of the examiner’s action are mailed by the 
Technology Center after the original, initialed by the 
assistant examiner and signed by the authorized signatory 
examiner, has been placed in the file. After the 
copies are mailed the original is returned for placement 
in the file. For Image File Wrapper (IFW) processing, 
see IFW Manual section 3.7.

===707.13 Returned Office Action===

Office actions are sometimes returned to the Office 
because the United States Postal Service has not been 
able to deliver them. Upon receipt of the returned 
Office action, the Technology Center (TC) technical 
support staff will check the application file record to 
ensure that the Office action was mailed to the correct 
correspondence address. If the Office action was notmailed to the correct correspondence address, it 
should be stamped “remailed” with the remailing date 
and mailed to the correct correspondence address. The 
period running against the application begins with the 
date of remailing. If the Office action was mailed to 
the correct correspondence address and it was 
addressed to an attorney or agent, a letter may be 
written to the inventor or assignee informing him or 
her of the returned action. The period running against 
the application begins with the date of remailing. Ex 
parte Gourtoff, 1924 C.D. 153, 329 O.G. 536 
(Comm’r Pat. 1924).

If the Office is not finally successful in delivering 
the letter, it is placed, with the envelope, in the file 
wrapper. For an Image File Wrapper (IFW), a copy of 
the letter and a copy of the envelope should be added 
to the IFW (see IFW Manual). If the period dating 
from the remailing elapses with no communication 
from applicant, the application is abandoned.