MPEP 707: Difference between revisions

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==707 Examiner’s Letter or Action==
<noinclude>{{MPEP Section|706|700|708}}</noinclude>


37 CFR 1.104. Nature of examination.
==[[MPEP 707|707 Examiner's Letter or Action]]==
 
<noinclude><div class="noautonum">__TOC__</div></noinclude>
 
{{Statute|37 CFR 1.104. Nature of examination.}}


(a)Examiner’s action.
(a)Examiner’s action.
Line 22: Line 26:
aiding the applicant, or in the case of a reexamination proceeding  
aiding the applicant, or in the case of a reexamination proceeding  
the patent owner, to judge the propriety of continuing the prosecution.
the patent owner, to judge the propriety of continuing the prosecution.


(3)An international-type search will be made in all  
(3)An international-type search will be made in all  
Line 31: Line 34:
national examination on the merits, upon specific written request  
national examination on the merits, upon specific written request  
therefor and payment of the international-type search report fee  
therefor and payment of the international-type search report fee  
set forth in §
set forth in § 1.21(e). The Patent and Trademark Office does not  
1.21(e). The Patent and Trademark Office does not  
require that a formal report of an international-type search be prepared  
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  
in order to obtain a search fee refund in a later filed international  
Line 66: Line 67:
facts within his or her knowledge pursuant to paragraph (d)(2) of  
facts within his or her knowledge pursuant to paragraph (d)(2) of  
this section.
this section.


(4)Subject matter which is developed by another person  
(4)Subject matter which is developed by another person  
Line 112: Line 111:
made, and that the claimed invention was made as a result of  
made, and that the claimed invention was made as a result of  
activities undertaken within the scope of the joint research agreement.
activities undertaken within the scope of the joint research agreement.


(5)The claims in any original application naming an  
(5)The claims in any original application naming an  
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examiner to respond to any statement commenting on reasons for  
examiner to respond to any statement commenting on reasons for  
allowance does not give rise to any implication.
allowance does not give rise to any implication.
|}


For Office actions in reexamination proceedings,
Current procedure allows the examiner, in the  
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  
exercise of his or her professional judgment to indicate  
that a discussion with applicant’s or patent  
that a discussion with applicant's or patent  
owner’s representative may result in agreements  
owner’s representative may result in agreements  
whereby the application or patent under reexamination  
whereby the application or patent under reexamination  
Line 195: Line 185:
the file wrapper with a better record, including applicant’s  
the file wrapper with a better record, including applicant’s  
arguments for allowability as required by  
arguments for allowability as required by  
37  
37 CFR 1.111.
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  
Replies to Office actions should include the application  
Line 225: Line 201:
information and references as may be useful in judging  
information and references as may be useful in judging  
the propriety of continuing the prosecution  
the propriety of continuing the prosecution  
(35  
(35 U.S.C. 132) should be given.
U.S.C. 132) should be given.


When considered necessary for adequate information,  
When considered necessary for adequate information,  
Line 252: Line 227:
all first actions and will identify any allowed claims.
all first actions and will identify any allowed claims.


One of form paragraphs 7.100, 7.101, or 7.102should conclude all actions.
===707.01 Primary Examiner Indicates Action for New Assistant===


¶ 7.100 Name And Number of Examiner To Be Contacted
After the search has been completed, action is taken
 
in the light of the references found. Where the assistant
Any inquiry concerning this communication should be directed
examiner has been in the Office but a short time,
to [1] at telephone number [2].
it is the duty of the primary examiner to review the
 
application thoroughly. The usual procedure is for the  
Examiner Note:
assistant examiner to explain the invention and discuss
 
the references which he or she regards as most
1.This form paragraph, form paragraph 7.101, or form paragraph
pertinent. The primary examiner may indicate the  
7.102 should be used at the conclusion of all actions.
action to be taken, whether restriction or election of
 
species is to be required, or whether the claims are to
2.In bracket 1, insert the name of the examiner designated to be
be considered on their merits. If action on the merits is
contacted first regarding inquiries about the Office action. This
to be given, the primary examiner may indicate
could be either the non-signatory examiner preparing the action or  
how the references are to be applied in cases where
the signatory examiner.
the claim is to be rejected, or authorize allowance if it
 
is not met in the references and no further field of
3.In bracket 2, insert the individual area code and phone number
search is known.
of the examiner to be contacted.
 
¶ 7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule


Any inquiry concerning this communication or earlier communications
===707.02 Applications Up for Third Action and 5-Year Applications===
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 supervisory patent examiners should impress
the examiner’s supervisor, [6], can be reached on [7]. The fax
their assistants with the fact that the shortest path to  
phone number for the organization where this application or proceeding
the final disposition of an application is by finding the
is assigned is 571-273-8300.
best references on the first search and carefully applying
them.


Information regarding the status of an application may be
The supervisory patent examiners are expected to
obtained from the Patent Application Information Retrieval
personally check on the pendency of every application  
(PAIR) system. Status information for published applications may
which is up for the third or subsequent Office
be obtained from either Private PAIR or Public PAIR. Status information
action with a view to finally concluding its prosecution.
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.
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.


2.In bracket 2, insert your individual area code and phone
===707.05 Citation of References===
number.


3.In bracket 3, insert the days that you work every week, e.g.  
{{Statute|37 CFR 1.104. Nature of examination.}}
“Monday-Thursday” for an examiner off every Friday.
{{Ellipsis}}
(d)Citation of references.


4.In brackets 4 and 5, insert your normal duty hours, e.g. “6:30
(1)If domestic patents are cited by the examiner, their
AM - 5:00 PM.”
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.


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


6.In bracket 7, insert your SPE’s area code and phone number.
During the examination of an application or reexamination
 
of a patent, the examiner should cite appropriate
¶ 7.102 Telephone Inquiry Contacts- 5/4/9 Schedule
prior art which is nearest to the subject matter
 
defined in the claims. When such prior art is cited, its
Any inquiry concerning this communication or earlier communications
pertinence should be explained.
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 must consider all the prior art references
the examiner’s supervisor, [7], can be reached on [8]. The fax
(alone and in combination) cited in the application  
phone number for the organization where this application or proceeding
or reexamination, including those cited by the
is assigned is 571-273-8300.
applicant in a properly submitted Information Disclosure
Statement. See MPEP § 609.


Information regarding the status of an application may be
Effective June 8, 1995, Public Law 103-465
obtained from the Patent Application Information Retrieval
amended 35 U.S.C. 154 to change the term of a
(PAIR) system. Status information for published applications may  
patent to 20 years measured from the filing date of the
be obtained from either Private PAIR or Public PAIR. Status information
earliest U.S. application for which benefit under
for unpublished applications is available through Private
35 U.S.C. 120, 121 or 365(c) is claimed. The 20-year
PAIR only. For more information about the PAIR system, see
patent term applies to all utility and plant patents
http://pair-direct.uspto.gov. Should you have questions on access
issued on applications filed on or after June 8, 1995.
to the Private PAIR system, contact the Electronic Business Center
As a result of the 20-year patent term, it is expected,
(EBC) at 866-217-9197 (toll-free).
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.


Examiner Note:
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.


1.In bracket 1, insert your name.
In all continuation and continuation-in-part applications,  
the parent applications should be reviewed for
pertinent prior art.


2.In bracket 2, insert your individual area code and phone
Applicants and/or applicants’ attorneys in PCT
number.
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.


3.In bracket 3, insert the days that you work every week, e.g.
In those instances where no information disclosure
“Monday-Thursday” for an examiner off on alternate Fridays.
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.


4.In brackets 4 and 5, insert your normal duty hours, e.g. “6:30
Copies of documents cited will be provided as set
AM - 4:00 PM.”
forth in MPEP § 707.05(a). That is, copies of documents
cited by the examiner will be provided to applicant
except where the documents:


5.In bracket 6, insert the day in each pay-period that is your
(A)are cited by applicant in accordance with
compressed day off, e.g. “Fridays” for an examiner on a 5/4/9
MPEP § 609, § 707.05(b), and § 708.02;
work schedule with the first Friday off.


6.In bracket 7, insert your SPE’s name.
(B)have been referred to in applicant’s disclosure
statement;


7.In bracket 8, insert your SPE’s area code and phone number.
(C)are cited and have been provided in a parent
application;


Where the text of sections of Title 35, U.S. Code
(D)are cited by a third party in a submission
was previously reproduced in an Office action, form
under 37 CFR 1.99 (MPEP § 1134.01); or
paragraph 7.103 may be used.  


¶ 7.103 Statute Cited in Prior Action
(E)are U.S. Patents or U.S. application publications.  


The text of those sections of Title 35, U.S. Code not included
See MPEP § 707.05(e) regarding data used in citing
in this action can be found in a prior Office action.
references.


Form PTO-326. Office Action SummaryForm PTO-326. Office Action Summary
====707.05 (a)Copies of Cited References====


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


After the search has been completed, action is taken
Copies of references cited by applicant in accordance
in the light of the references found. Where the assistant
with MPEP § 609, § 707.05(b) and § 708.02 are
examiner has been in the Office but a short time,  
not furnished to applicant with the Office action.  
it is the duty of the primary examiner to review the
Additionally, copies of references cited in continuation
application thoroughly. The usual procedure is for the
applications if they had been previously cited in
assistant examiner to explain the invention and discuss
the parent application are not furnished. The examiner  
the references which he or she regards as most
should check the left hand column of form PTO-892 if
pertinent. The primary examiner may indicate the
a copy of the reference is not to be furnished to the  
action to be taken, whether restriction or election of  
applicant.
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===
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.


The supervisory patent examiners should impress
In the rare instance where no art is cited in a continuing
their assistants with the fact that the shortest path to
application, all the references cited during the  
the final disposition of an application is by finding the
prosecution of the parent application will be listed at
best references on the first search and carefully applying
allowance for printing in the patent.
them.


The supervisory patent examiners are expected to  
To assist in providing copies of , or access to,
personally check on the pendency of every application
references, the examiner should:
which is up for the third or subsequent Office
action with a view to finally concluding its prosecution.


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


Any application that has been pending five years
(B)Place the form PTO-892 in the front of the file
should be carefully studied by the supervisory patent
wrapper;
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===
(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);


37 CFR 1.104. Nature of examination.
(D) Turn the application in to the technical support
 
staff for counting. Any application which is
(d)Citation of references.
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.


(1)If domestic patents are cited by the examiner, their
====707.05(b) Citation of Related Art and Information by Applicants====
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
I. CITATION OF RELATED ART BY
within the personal knowledge of an employee of the Office, the
APPLICANTS
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
MPEP § 609 sets forth guidelines for applicants,  
of a patent, the examiner should cite appropriate
their attorneys and agents who desire to submit prior  
prior art which is nearest to the subject matter
art for consideration by the U.S. Patent and Trademark
defined in the claims. When such prior art is cited, its
Office.
pertinence should be explained.


The examiner must consider all the prior art references
Submitted citations will not in any way diminish
(alone and in combination) cited in the application
the obligation of examiners to conduct independent
or reexamination, including those cited by the
prior art searches, or relieve examiners of citing
applicant in a properly submitted Information Disclosure
other pertinent prior art of which they may be
Statement. See MPEP § 609.
aware.


Form paragraph 7.96 may be used as an introductory
Prior art submitted by applicant in the manner provided
sentence.
in MPEP § 609 will not be supplied with an  
Office action.


¶ 7.96 Citation of Relevant Prior Art
II. CITATION OF RELATED INFORMATION
BY APPLICANTS


The prior art made of record and not relied upon is considered
37 CFR 1.105 and MPEP § 704.10 et seq. set forth
pertinent to applicant’s disclosure. [1]
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.


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


When such prior art is cited, its relevance should be explained
====707.05(c) Order of Listing====
in bracket 1 in accordance with MPEP § 707.05.


Effective June 8, 1995, Public Law 103-465
In citing references for the first time, the identifying
amended 35 U.S.C. 154 to change the term of a  
data of the citation should be placed on form PTO-
patent to 20 years measured from the filing date of the
892 “Notice of References Cited,” a copy of which
earliest U.S. application for which benefit under
will be attached to the Office action. No distinction is  
35
to be made between references on which a claim is  
U.S.C. 120, 121 or 365(c) is claimed. The 20-year
rejected and those formerly referred to as “pertinent.”
patent term applies to all utility and plant patents
With the exception of applicant submitted citations,
issued on applications filed on or after June 8, 1995.
MPEP § 609 and § 708.02, it is recommended that the  
As a result of the 20-year patent term, it is expected,
pertinent features of references which are not used as
in certain circumstances, that applicants may cancel
a basis for rejection be pointed out briefly.
their claim to priority by amending the specification
 
to delete any references to prior applications. Therefore,  
See MPEP § 1302.12.
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
====707.05(d) Reference Cited in SubsequentActions====
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,  
Where an applicant in an amendatory paper refers
the parent applications should be reviewed for
to a reference that is subsequently relied upon by the
pertinent prior art.
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====


Applicants and/or applicants’ attorneys in PCT
37 CFR 1.104(d) (see also MPEP § 707.05 and  
related national applications may wish to cite the
§ 901.05(a)) requires the examiner to provide certain
material citations from the PCT International Search
data when citing references. The examiner should
Report by an information disclosure statement under
provide the citations on the "Notice of References
37 CFR 1.97 and 1.98 in order to ensure consideration
Cited" form PTO-892 (copy at MPEP § 707.05).  
by the examiner.


In those instances where no information disclosure
I. U.S. PATENT DOCUMENTS
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
If a U.S. patent application publication is cited by
forth in MPEP § 707.05(a). That is, copies of documents
the examiner, the publication number, publication
cited by the examiner will be provided to applicant
date, name of the applicant, class, and subclass should
except where the documents:
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.


(A)are cited by applicant in accordance with
Defensive Publications and Statutory Invention
MPEP §
Registrations (SIRs) should be cited under the section
“U.S. Patent Documents” on the form PTO-892 (see
609, § 707.05(b), and § 708.02;
MPEP § 711.06(a) and § 901.06(a)).


(B)have been referred to in applicant’s disclosure
II. FOREIGN PATENTS AND FOREIGN
statement;
PUBLISHED APPLICATIONS


(C)are cited and have been provided in a parent
In citing foreign patents, the patent number, kind
application;
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.


(D)are cited by a third party in a submission
Where less than the entire disclosure of the reference
under 37 CFR 1.99 (MPEP § 1134.01); or
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.


(E)are U.S. Patents or U.S. application publications
Publications such as German allowed applications
.  
and Belgian and Netherlands printed specifications
should be similarly handled.  


See MPEP § 707.05(e) regarding data used in citing
See MPEP § 901.05(a) for a chart in which foreign
references.
language terms indicative of foreign patent and publication
dates to be cited are listed.


====707.05 (a)Copies of Cited References====
III. PUBLICATIONS


Copies of cited foreign patent documents and non-
Abstracts, abbreviatures, Alien Property Custodian
patent literature references (except as noted below)  
publications, withdrawn U.S. patents, withdrawn U.S.
are automatically furnished without charge to applicant
patent application publications, and other non-patent
together with the Office action in which they are
documents should be cited under the section “Non-
cited. Copies of the cited references are also placed in  
Patent Documents” on the form PTO-892). See MPEP
the application file for use by the examiner during the  
§ 711.06(a) for citation of abstracts, and abbreviatures.
prosecution.Copies of U.S. patents and U.S. patent
See MPEP § 901.06(c) for citation of Alien
application publications are not provided in paper to  
Property Custodian publications. In citing a publication,
applicants and are not placed in the application file.
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.


Copies of references cited by applicant in accordance
The following are examples of nonpatent bibliographical
with MPEP § 609, § 707.05(b) and § 708.02 are  
citations:
not furnished to applicant with the Office action.
 
Additionally, copies of references cited in continuation
(A) For books:
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
Winslow. C. E. A. Fresh Air and Ventilation. N.Y.,  
literature (NPL) which are cited by the examiner at
E. P. Dutton, 1926. p. 97-112. TI17653.W5.
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
(B) For parts of books:
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,
Smith, J. F. “Patent Searching.” in: Singer, T.E.R.,  
references, the examiner should:
Information and Communication Practice in
Industry (New York, Reinhold, 1958), pp. 157-
165. T 175.S5.
 
(C) For encyclopedia articles:  


(A)Type the citation of the references on
Calvert, R. “Patents (Patent Law).” in: Encyclopedia
form PTO-892, “Notice of References Cited” using
of Chemical Technology (1952 ed.), vol. 9, pp.
OACS;
868-890. Ref. TP9.E68.


(B)Place the form PTO-892 in the front of the file
(D) For sections of handbooks:
wrapper;


(C)Include in the application file wrapper all of
Machinery’s Handbook, 16th ed. New York, International
the references cited by the examiner which are to be
Press, 1959. pp. 1526-1527. TJ151.M3
furnished to the applicant  (for Image File Wrapper
1959.
(IFW) processing, see IFW Manual);


(D) Turn the application in to the technical support
(E) For periodical articles:
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
Noyes, W. A. A Climate for Basic Chemical
the same as set forth in MPEP § 707.05 (a)-(g) .
Research


¶ 7.82.03 How To Obtain Copies of U.S. Patents and U.S.  
Chemical & Engineering News, Vol. 38, no. 42
Patent Application Publications
(Oct. 17, 1960), pp. 91-95. TP1.I418.


In June 2004, the USPTO ceased mailing paper copies of cited
The following are examples of how withdrawn U.S.  
U.S. patents and U.S. patent application publications with all
patents and withdrawn U.S. patent application publications  
Office actions. See “USPTO to Provide Electronic Access to
should be cited:
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
(A) Withdrawn U.S. patents:
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
US 6,999,999, 10/2002, Brown et al., 403/155
(withdrawn).


Access to Private PAIR is required to utilize E-Patent Reference.
(B) Withdrawn U.S. patents application publications:
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:
US 2002/0009999 A1, 7/2002, Jones et al., 403/
155 (withdrawn).


Step 1: Full instructions for obtaining a PKI digital certificate
Titles of books and periodicals SHOULD NOT be
are available at the Office’s Electronic Business Center (EBC)
abbreviated because an abbreviation such as
web page (www.uspto.gov/ebc/downloads.html). Note that a notarized
P.S.E.B.M. will not be sufficient to identify the publication.  
signature will be required to obtain a digital certificate.
References are to be cited so that anyone reading
 
a patent may identify and retrieve the publications
Step 2: To get a Customer Number, download and complete
cited. Bibliographic information provided must be at
the Customer Number Request form, PTO-SB/125, from the  
least enough to identify the publication. author, title
USPTO web site (www.uspto.gov/web/forms/sb0125.pdf). The
and date. For books, minimal information includes the  
completed form can be transmitted by facsimile to the Patent
author, title, and date. For periodicals, at least the title
Electronic Business Center at (571) 273-0177, or mailed to the  
of the periodical, the volume number, date, and pages
address on the form. If you are a registered attorney or agent, your
should be given. These minimal citations may be  
registration number must be associated with your customer number.  
made ONLY IF the complete bibliographic details are
This association is accomplished by adding your registration
unknown or unavailable.
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:
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.


This form paragraph is recommended for use in Office actions
If the original publication is located outside the
citing U.S. patents or U.S. patent application publications when
Office, the examiner should immediately make or
the applicant is not represented by a registered patent attorney or a
order a photocopy of at least the portion relied upon
registered patent agent.
and indicate the class and subclass in which it will be
filed, if any.  


Form PTO-892. Notice of References CitedForm PTO-892. Notice of References Cited
IV. ELECTRONIC DOCUMENTS


====707.05(b) Citation of Related Art and Information by Applicants====
An electronic document is one that can be retrieved
 
from an online source (e.g., the Internet, online database,
I. CITATION OF RELATED ART BY
etc.) or sources found on electronic storage
APPLICANTS
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.


MPEP § 609 sets forth guidelines for applicants,
The U.S. Patent and Trademark Office follows the
their attorneys and agents who desire to submit prior
format recommended by World Intellectual Property
art for consideration by the U.S. Patent and Trademark  
Organization (WIPO) Standard ST.14, “Recommendation
Office.
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:


Submitted citations will not in any way diminish
(A)the type of electronic medium provided in  
the obligation of examiners to conduct independent
square brackets [ ] after the title of the publication or  
prior art searches, or relieve examiners of citing
the designation of the host document, e.g., [online],
other pertinent prior art of which they may be
[CD-ROM], [disk], [magnetic tape];
aware.


Prior art submitted by applicant in the manner provided
(B)the date when the document was retrieved
in MPEP § 609 will not be supplied with an
from the electronic media in square brackets following
Office action.
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.


II. CITATION OF RELATED INFORMATION
(C)identification of the source of the document
BY APPLICANTS
using the words “Retrieved from” and its address
where applicable. This item will precede the citation
of the relevant passages.


37 CFR 1.105 and MPEP § 704.10 et seq. set forth
(D)specific passages of the text could be indicated
procedures for examiners to require applicants, their
if the format of the document includes pagination
attorneys and agents to submit information reasonably
or an equivalent internal referencing system, or
necessary for the Office to examine an application or
by the first and last words of the passage cited.
treat a matter being addressed in an application.


Any such requirement, and any information submitted
Office copies of an electronic document must be
in reply thereto, will not in any way diminish
retained if the same document may not be available
the obligation of examiners to conduct independent
for retrieval in the future. This is especially important
prior art searches, or relieve examiners of citing
for sources such as the Internet and online databases.
other pertinent prior art of which they may be
 
aware.
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.


Information submitted by applicant in the manner
Examples 1-4: Documents retrieved from online
provided in MPEP § 704.10 et seq. will not be supplied
databases outside the Internet
with an Office action.


====707.05(c) Order of Listing====
Example 1:


In citing references for the first time, the identifying
SU 1511467 A (BRYAN MECH) 1989-09-30
data of the citation should be placed on form PTO-
(abstract) World Patents Index [online]. London,  
892 “Notice of References Cited,” a copy of which
U.K.: Derwent Publications, Ltd. [retrieved on  
will be attached to the Office action. No distinction is
1998-02-24]. Retrieved from: Questel/Orbit, Paris,  
to be made between references on which a claim is
France. DW9016, Accession No. 90-121923.
rejected and those formerly referred to as “pertinent.”
 
With the exception of applicant submitted citations,  
Example 2:
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.
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.


====707.05(d) Reference Cited in SubsequentActions====
Example 3:


Where an applicant in an amendatory paper refers
JENSEN, B. P. ‘Multilayer printed circuits: production
to a reference that is subsequently relied upon by the
and application II’. Electronik, June-July
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====
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.


37 CFR 1.104(d) (see also MPEP § 707.05 and
Example 4:
§
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).


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


I. U.S. PATENT DOCUMENTS
Example 5:


If a U.S. patent application publication is cited by
(Entire Work – Book or Report)
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
WALLACE, S., and BAGHERZADEH, N. Multiple
Registrations (SIRs) should be cited under the section
Branch and Block Prediction. Third International
“U.S. Patent Documents” on the form PTO-892 (see
Symposium on High-Performance
MPEP § 711.06(a) and §
Computer Architecture [online], February 1997
[retrieved on 1998-05-20]. Retrieved from the
901.06(a)).
Internet: URL: http://www.eng.uci.edu/
 
comp.arch/papers-wallace/hpca3-block.ps.
II. FOREIGN PATENTS AND FOREIGN
PUBLISHED APPLICATIONS


In citing foreign patents, the patent number, kind
Example 6:
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
(Part of Work – chapter or equivalent designation)
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
National Research Council, Board on Agriculture,
and Belgian and Netherlands printed specifications
Committee on Animal Nutrition, Subcommittee on
should be similarly handled.  
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.


See MPEP § 901.05(a) for a chart in which foreign
Example 7:
language terms indicative of foreign patent and publication
dates to be cited are listed.


III. PUBLICATIONS
(Electronic Serial – articles or other contributions)


Abstracts, abbreviatures, Alien Property Custodian
Ajtai. Generating Hard Instances of Lattice Problems.  
publications, withdrawn U.S. patents, withdrawn U.S.  
Electronic Colloquium on Computational
patent application publications, and other non-patent
Complexity, Report TR96-007 [online], [retrieved
documents should be cited under the section “Non-
on 1996-01-30]. Retrieved from the Internet
Patent Documents” on the form PTO-892). See MPEP
URL: ftp://ftp.eccc.uni-trier.de/pub/eccc/reports/
§ 711.06(a) for citation of abstracts, and abbreviatures.  
1996/TR96-007/index.html
See MPEP § 901.06(c) for citation of Alien
 
Property Custodian publications. In citing a publication,
Example 8:
sufficient information should be given to determine
 
the identity and facilitate the location of the
(Electronic bulletin boards, message systems,
publication. For books, the data required by 37 CFR
and discussion lists – Entire System)
1.104(d) (MPEP §
 
BIOMET-L (A forum for the Bureau of Biometrics
707.05) with the specific pages
of New York) [online]. Albany (NY): Bureau of  
relied on identified together with the Scientific and
Biometrics, New York State Health Department,  
Technical Information Center (STIC) call number will
July, 1990 [retrieved 1998-02-24]. Retrieved from
suffice. The call number appears on the “spine” of the
the Internet: [email protected].us, message:
book if the book is thick enough and, in any event, on
subscribe BIOMET-L your real name.
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
Example 9:
citations:


(A) For books:
(Electronic bulletin boards, message systems,
and discussion lists – Contributions)


Winslow. C. E. A. Fresh Air and Ventilation. N.Y.,  
PARKER, Elliott. ‘Re: citing electronic journals’.  
E. P. Dutton, 1926. p. 97-112. TI17653.W5.
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.


(B) For parts of books:  
Example 10:


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


(C) For encyclopedia articles:  
‘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: [email protected], subscribe message:
info scout-report. ISSN: 1092-3861\cf15.


Calvert, R. “Patents (Patent Law).” in: Encyclopedia
Example 11:
of Chemical Technology (1952 ed.), vol. 9, pp.
868-890. Ref. TP9.E68.


(D) For sections of handbooks:
Corebuilder 3500 Layer 3 High-function Switch.
 
Datasheet [online]. 3Com Corporation, 1997
Machinery’s Handbook, 16th ed. New York, International
[retrieved on 1998-02-24]. Retrieved from the
Press, 1959. pp. 1526-1527. TJ151.M3
Internet: URL: www.3com.com/products/
1959.
dsheets/400347.html.


(E) For periodical articles:
(Product Manual/Catalogue or other information
obtained from a Web-site)


Noyes, W. A. A Climate for Basic Chemical
Example 12:
Research


Chemical & Engineering News, Vol. 38, no. 42
HU D9900111 Industrial Design Application,  
(Oct. 17, 1960), pp. 91-95. TP1.I418.
(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/.


The following are examples of how withdrawn U.S.
Examples 13 and 14: Documents retrieved from
patents and withdrawn U.S. patent application publications
CD-ROM products
should be cited:


(A) Withdrawn U.S. patents:
Examples 13 and 14:
 
JP 0800085 A (TORAY IND INC), (abstract),
1996-05-31. In: Patent Abstracts of Japan [CD-
ROM].


US 6,999,999, 10/2002, Brown et al., 403/155
Examples 14:
(withdrawn).


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


US 2002/0009999 A1, 7/2002, Jones et al., 403/
====707.05(f) Effective Dates of Declassified Printed Matter====
155 (withdrawn).


Titles of books and periodicals SHOULD NOT be
In using declassified material as references there
abbreviated because an abbreviation such as  
are usually two pertinent dates to be considered,
P.S.E.B.M. will not be sufficient to identify the publication.  
namely, the printing date and the publication date. The
References are to be cited so that anyone reading
printing date in some instances will appear on the
a patent may identify and retrieve the publications
material and may be considered as that date when the  
cited. Bibliographic information provided must be at
material was prepared for limited distribution. The
least enough to identify the publication. author, title
publication date is the date of release when the material
and date. For books, minimal information includes the  
was made available to the public. See Ex parteHarris, 79 USPQ 439 (Comm’r Pat. 1948). If the date
author, title, and date. For periodicals, at least the title
of release does not appear on the material, this date  
of the periodical, the volume number, date, and pages
may be determined by reference to the Office of Technical
should be given. These minimal citations may be
Services, Department of Commerce.
made ONLY IF the complete bibliographic details are
 
unknown or unavailable.
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.


Where a nonpatent literature reference with a document
For the purpose of anticipation predicated upon
identification number is cited, the identification
prior knowledge under 35 U.S.C. 102(a) the above
number and the class and subclass should be included
noted declassified material may be taken as prima
on form PTO-892. For example, the citation should be  
facie evidence of such prior knowledge as of its printing
as follows: (S00840001) Winslow, C.E.A. Fresh Air
date even though such material was classified at
and Ventilation N.Y., E.P. Dutton, 1926, p. 97-112,
that time. When so used the material does not constitute
TH 7653, W5, 315/22.
an absolute statutory bar and its printing date may
be antedated by an affidavit or declaration under 37
CFR 1.131.


If the original publication is located outside the
====707.05(g) Incorrect Citation of References====
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
Where an error in citation of a reference is brought
 
to the attention of the Office by applicant, a letter correcting
An electronic document is one that can be retrieved
the error, together with a correct copy of the
from an online source (e.g., the Internet, online database,  
reference, is sent to applicant. See MPEP § 710.06.  
etc.) or sources found on electronic storage
Where the error is discovered by the examiner, applicant
media (e.g., CD-ROM, magnetic disk or tape, etc.).
is also notified and the period for reply restarted.
Many references in paper format may also be
In either case, the examiner is directed to correct the
retrieved as electronic documents. Other references
error, in ink, in the paper in which the error appears,  
are retrievable only from electronic sources.  
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.


The U.S. Patent and Trademark Office follows the
In any application otherwise ready for issue, in  
format recommended by World Intellectual Property
which the erroneous citation has not been formally
Organization (WIPO) Standard ST.14, “Recommendation
corrected in an official paper, the examiner is directed
for the Inclusion of References Cited in Patent
to correct the citation by examiner’s amendment
Documents.” The format for the citation of an electronic
accompanying the Notice of Allowability form
document is as similar as possible to the format
PTOL-37.
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
If a FOREIGN patent is incorrectly cited: for example,
square brackets [ ] after the title of the publication or
the wrong country is indicated or the country
the designation of the host document, e.g., [online],
omitted from the citation, the General Reference
[CD-ROM], [disk], [magnetic tape];
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.


(B)the date when the document was retrieved
===707.06 Citation of Decisions, Orders Memorandums, and Notices===
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
In citing court decisions, the USPQ citation should
using the words “Retrieved from” and its address
be given and, when it is convenient to do so, the U.S.,
where applicable. This item will precede the citation  
CCPA or Federal Reporter citation should also be provided.
of the relevant passages.


(D)specific passages of the text could be indicated
The citation of manuscript decisions which are not
if the format of the document includes pagination
available to the public should be avoided.
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
It is important to recognize that a federal district
retained if the same document may not be available
court decision that has been reversed on appeal cannot
for retrieval in the future. This is especially important  
be cited as authority.
for sources such as the Internet and online databases.  


If an electronic document is also available in paper  
In citing a manuscript decision which is available to
form it does not need to be identified as an electronic
the public but which has not been published, the tribunal
document, unless it is considered desirable or useful
rendering the decision and complete data identifying
to do so.
the paper should be given. Thus, a decision of the
 
Board of Patent Appeals and Interferences which has
Examples 1-4: Documents retrieved from online
not been published but which is available to the public
databases outside the Internet
in the patented file should be cited, as “ Ex parte —
— , decision of the Board of Patent Appeals and Interferences,  
Patent No. — — — , paper No. — — , —
— — pages.”


Example 1:
Decisions found only in patented files should be
cited only when there is no published decision on the
same point.


SU 1511467 A (BRYAN MECH) 1989-09-30
When a Director’s order, notice or memorandum
(abstract) World Patents Index [online]. London,  
not yet incorporated into this manual is cited in
U.K.: Derwent Publications, Ltd. [retrieved on
any official action, the title and date of the order,  
1998-02-24]. Retrieved from: Questel/Orbit, Paris,  
notice or memorandum should be given. When appropriate
France. DW9016, Accession No. 90-121923.
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.


Example 2:
===707.07 Completeness and Clarity ofExaminer’s Action===


DONG, X. R. ‘Analysis of patients of multiple
{{Statute|37 CFR 1.104. Nature of examination.}}
injuries with AIS-ISS and its clinical significance
{{Ellipsis}}
in the evaluation of the emergency managements’,  
(b)Completeness of examiner’s action. The examiner’s
Chung Hua Wai Ko Tsa Chih, May 1993, Vol. 31,  
action will be complete as to all matters, except that in appropriate
No. 5, pages 301-302. (abstract) Medline [online].
circumstances, such as misjoinder of invention, fundamental
Bethesda, MD, USA: United States National
defects in the application, and the like, the action of the examiner
Library of Medicine [retrieved on 24 February
may be limited to such matters before further action is made.  
1998]. Retrieved from: Dialog Information Services,  
However, matters of form need not be raised by the examiner until
Palo Alto, CA, USA. Medline Accession no.  
a claim is found allowable.
94155687, Dialog Accession No. 07736604.
|}


Example 3:
====707.07(a) Complete Action on Formal Matters====


JENSEN, B. P. ‘Multilayer printed circuits: production
Forms are placed in informal applications listing
and application II’. Electronik, June-July
informalities noted by the Draftsperson (form PTO-
 
948) and the Office of Initial Patent Examination .  
1976, No. 6-7, pages 8, 10,12,14,16. (abstract)  
Each of these forms comprises an original for the file
INSPEC [online]. London, U.K.: Institute of Electrical
record and a copy to be mailed to applicant as a part
Engineers [retrieved on 1998-02-24].  
of the examiner’s first action. For Image File Wrapper
Retrieved from: STN International, Columbus,  
(IFW) processing, see IFW Manual. They are specifically
Ohio, USA. Accession No. 76:956632.
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.


Example 4:
====707.07(b) Requiring New Oath====


JP 3002404 (TAMURA TORU) 1991-03-13
See [[MPEP 600|MPEP § 602.02]].
(abstract). [online] [retrieved on 1998-09-02].
Retrieved from: EPO PAJ Database.


Examples 5-11: Documents retrieved from the
====707.07(c) Draftsperson’s Requirement====
Internet


Example 5:
See MPEP § 707.07(a); also MPEP § 608.02(a),
(e), and (s).


(Entire Work – Book or Report)
====707.07(d) Language To Be Used in Rejecting Claims====


WALLACE, S., and BAGHERZADEH, N. Multiple
Where a claim is refused for any reason relating to
Branch and Block Prediction. Third International
the merits thereof it should be “rejected” and the
Symposium on High-Performance
ground of rejection fully and clearly stated, and the
Computer Architecture [online], February 1997
word “reject” must be used. The examiner should designate
[retrieved on 1998-05-20]. Retrieved from the  
the statutory basis for any ground of rejection
Internet: URL: http://www.eng.uci.edu/
by express reference to a section of 35 U.S.C. in the
comp.arch/papers-wallace/hpca3-block.ps.
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.


Example 6:
See MPEP § 706.02 (i), (j), and (m) for language to
be used.


(Part of Work – chapter or equivalent designation)
Everything of a personal nature must be avoided.
 
Whatever may be the examiner’s view as to the utter
National Research Council, Board on Agriculture,  
lack of patentable merit in the disclosure of the application
Committee on Animal Nutrition, Subcommittee on
examined, he or she should not express in the
Beef Cattle Nutrition. Nutrient Requirements of  
record the opinion that the application is, or appears to
Beef Cattle [online]. 7th revised edition. Washington,
be, devoid of patentable subject matter. Nor should he
DC: National Academy Press, 1996 [retrieved
or she express doubts as to the allowability of allowed
on 1998-06-10]. Retrieved from the Internet:
claims or state that every doubt has been resolved in
URL: http://www2.nap.edu/htbin/docpage/
favor of the applicant in granting him or her the
title=Nutrient+Requirements+of+Beef+Cattle%
claims allowed.
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:
The examiner should, as a part of the first Office
 
action on the merits, identify any claims which he or
(Electronic Serial – articles or other contributions)
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.


Ajtai. Generating Hard Instances of Lattice Problems.
IMPROPERLY EXPRESSED REJECTIONS
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:
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.


(Electronic bulletin boards, message systems,  
A plurality of claims should never be grouped
and discussion lists – Entire System)
together in a common rejection, unless that rejection
is equally applicable to all claims in the group.


BIOMET-L (A forum for the Bureau of Biometrics
====707.07(e) Note All Outstanding Requirements====
of New York) [online]. Albany (NY): Bureau of
Biometrics, New York State Health Department,
July, 1990 [retrieved 1998-02-24]. Retrieved from
the Internet: [email protected], message:
subscribe BIOMET-L your real name.


Example 9:
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).


(Electronic bulletin boards, message systems,  
As soon as allowable subject matter is found, correction
and discussion lists – Contributions)
of all informalities then present should be
required.


PARKER, Elliott. ‘Re: citing electronic journals’.
====707.07(f) Answer All Material Traversed====
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://[email protected].


Example 10:
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.


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


‘Plumb design of a visual thesaurus’. The Scout
Where the applicant traverses any rejection, the
Report [online]. 1998, vol. 5 no. 3 [retrieved on
examiner should, if he or she repeats the rejection,  
1998-05-18]. Retrieved from Internet electronic
take note of the applicant’s argument and answer the
mail: [email protected], subscribe message:
substance of it.
info scout-report. ISSN: 1092-3861\cf15.


Example 11:
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.


Corebuilder 3500 Layer 3 High-function Switch.
If applicant’s arguments are persuasive and the
Datasheet [online]. 3Com Corporation, 1997
examiner determines that the previous rejection
[retrieved on 1998-02-24]. Retrieved from the
should be withdrawn but that, upon further consideration,
Internet: URL: www.3com.com/products/
a new ground of rejection should be made, form
dsheets/400347.html.
paragraph 7.38.02 may be used. See MPEP
§ 706.07(a) to determine whether the Office action
may be made final.


(Product Manual/Catalogue or other information
If a rejection of record is to be applied to a new or  
obtained from a Web-site)
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.


Example 12:
ANSWERING ASSERTED ADVANTAGES


HU D9900111 Industrial Design Application,  
After an Office action, the reply (in addition to
(HADJDUTEJ TEJIPARI RT, DEBRECEN) 1999-
making amendments, etc.) may frequently include
09-28, [online], [retrieved on 1999-10-26]
arguments and affidavits to the effect that the prior art
Retrieved from the Industrial Design Database of  
cited by the examiner does not teach how to obtain or
the Hungarian Patent Office using Internet URL:
does not inherently yield one or more advantages
http:/www.hpo.hu/English/db/indigo/.
(new or improved results, functions or effects), which
advantages are urged to warrant issue of a patent on
the allegedly novel subject matter claimed.


Examples 13 and 14: Documents retrieved from
If it is the examiner’s considered opinion that the
CD-ROM products
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.


Examples 13 and 14:
The importance of answering applicant’s arguments  
 
is illustrated by In re Herrmann, 261 F.2d 598, 120  
JP 0800085 A (TORAY IND INC), (abstract),
USPQ 182 (CCPA 1958) where the applicant urged  
1996-05-31. In: Patent Abstracts of Japan [CD-
that the subject matter claimed produced new and useful  
ROM].
results. The court noted that since applicant’s  
 
statement of advantages was not questioned by the  
Examples 14:
examiner or the Board of Appeals, it was constrained  
 
to accept the statement at face value and therefore  
HAYASHIDA, O. et. al.: Specific molecular recognition
found certain claims to be allowable. See also In re  
by chiral cage-type cyclophanes having
Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688 (Fed.  
leucine, valine, and alanine residues. In: Tetrahedron
Cir. 1995) (Office failed to rebut applicant’s argument).
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====
====707.07(g) Piecemeal Examination====
Line 1,914: Line 1,255:
====707.07(h) Notify of Inaccuracies inAmendment====
====707.07(h) Notify of Inaccuracies inAmendment====


See MPEP § 714, subsection II. G.
See [[MPEP 714|MPEP § 714]], subsection II. G.


====707.07(i) Each Claim To Be Mentioned in Each Office Action====
====707.07(i) Each Claim To Be Mentioned in Each Office Action====
Line 1,938: Line 1,279:
(IFW) processing, see IFW Manual.
(IFW) processing, see IFW Manual.


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


I.INVENTOR FILED APPLICATIONS
I.INVENTOR FILED APPLICATIONS
Line 1,996: Line 1,337:
clearly allowable, the allowance of such claims  
clearly allowable, the allowance of such claims  
should not be delayed.
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====
====707.07(l) Comment on Examples====
Line 2,097: Line 1,362:
and § 2107 et seq.
and § 2107 et seq.


===707.08 ===Reviewing and Initialing byAssistant Examiner===
===707.08 Reviewing and Initialing by Assistant Examiner===


The full surname of the examiner who prepares the  
The full surname of the examiner who prepares the  
Line 2,115: Line 1,380:
forward the action to the authorized signatory examiner  
forward the action to the authorized signatory examiner  
for signing.
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===
===707.13 Returned Office Action===
Line 2,161: Line 1,389:
support staff will check the application file record to  
support staff will check the application file record to  
ensure that the Office action was mailed to the correct  
ensure that the Office action was mailed to the correct  
correspondence address. If the Office action was notmailed to the correct correspondence address, it  
correspondence address. If the Office action was not mailed to the correct correspondence address, it  
should be stamped “remailed” with the remailing date  
should be stamped “remailed” with the remailing date  
and mailed to the correct correspondence address. The  
and mailed to the correct correspondence address. The  
Line 2,173: Line 1,401:
parte Gourtoff, 1924 C.D. 153, 329 O.G. 536  
parte Gourtoff, 1924 C.D. 153, 329 O.G. 536  
(Comm’r Pat. 1924).
(Comm’r Pat. 1924).
 
<noinclude>{{MPEP Section|706|700|708}}</noinclude>
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.

Latest revision as of 22:53, May 31, 2020

← MPEP 706 ↑ MPEP 700 MPEP 708 →


707 Examiner's Letter or Action[edit | edit source]

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.

Current procedure 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.

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.

707.01 Primary Examiner Indicates Action for New Assistant[edit | edit source]

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[edit | edit source]

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[edit | edit source]

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.

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[edit | edit source]

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.

707.05(b) Citation of Related Art and Information by Applicants[edit | edit source]

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[edit | edit source]

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[edit | edit source]

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[edit | edit source]

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: [email protected], 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://[email protected].

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: [email protected], 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 Declassified Printed Matter[edit | edit source]

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[edit | edit source]

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.

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.

707.06 Citation of Decisions, Orders Memorandums, and Notices[edit | edit source]

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[edit | edit source]

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 Formal Matters[edit | edit source]

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.

707.07(b) Requiring New Oath[edit | edit source]

See MPEP § 602.02.

707.07(c) Draftsperson’s Requirement[edit | edit source]

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

707.07(d) Language To Be Used in Rejecting Claims[edit | edit source]

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[edit | edit source]

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[edit | edit source]

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).

707.07(g) Piecemeal Examination[edit | edit source]

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[edit | edit source]

See MPEP § 714, subsection II. G.

707.07(i) Each Claim To Be Mentioned in Each Office Action[edit | edit source]

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[edit | edit source]

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.

707.07(l) Comment on Examples[edit | edit source]

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 by Assistant Examiner[edit | edit source]

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.

707.13 Returned Office Action[edit | edit source]

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 not mailed 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).

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