MPEP § 704 — MPEP § 704
Current through: 2022-07-01

704-Search and Requirements for Information 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 0700 

 Section 704 
 

 
 
 
 
 
 704 Search and Requirements for Information [R-08.2012]

 
 704.01 Search [R-07.2022]

 After reading the specification and claims, the examiner searches the
 prior art. The subject of searching is more fully treated in MPEP Chapter 900 . See
 especially MPEP §§
 904 through 904.03 . The invention should be
 thoroughly understood before a search is undertaken. However, informal cases, or those
 which can only be imperfectly understood when they come up for action in their regular
 turn are also given a search, in order to avoid piecemeal prosecution.
 

 PREVIOUS EXAMINER’S SEARCH When an examiner is assigned to act on an application which has
 received one or more actions by some other examiner, the examiner should review the
 previous search to ensure it is thorough and complete. See MPEP § 904.02 . In
 general the second examiner should not take an entirely new approach to the
 application or attempt to reorient the point of view of the previous examiner, or
 make a new search in the mere hope of finding something. See MPEP § 719.05 . 
 

 

 
 704.02-704.09 [Reserved]

 

 

 
 704.10 Requirements for Information [R-07.2015]

 
 37 CFR 1.105 Requirements for information. 

 
 (a) 
 
 (1) In the course of examining or treating a matter in a
 pending or abandoned application, in a patent, or in a reexamination
 proceeding, including a reexamination proceeding ordered as a result of a
 supplemental examination proceeding, the examiner or other Office
 employee may require the submission, from individuals identified under
 § 1.56(c) , or any assignee, of such information as
 may be reasonably necessary to properly examine or treat the matter, for
 example:
 
 (i) Commercial databases : The existence of any
 particularly relevant commercial database known to any of the
 inventors that could be searched for a particular aspect of the
 invention.
 

 (ii) Search : Whether a search of the prior art was
 made, and if so, what was searched.
 

 (iii) Related information : A copy of any non-patent
 literature, published application, or patent (U.S. or foreign), by
 any of the inventors, that relates to the claimed invention.
 

 (iv) Information used to draft application : A copy of
 any non-patent literature, published application, or patent (U.S.
 or foreign) that was used to draft the application.
 

 (v) Information used in invention process : A copy
 of any non-patent literature, published application, or patent
 (U.S. or foreign) that was used in the invention process, such as
 by designing around or providing a solution to accomplish an
 invention result.
 

 (vi) Improvements : Where the claimed invention is an
 improvement, identification of what is being improved.
 

 (vii) In Use : Identification of any use of the claimed
 invention known to any of the inventors at the time the application
 was filed notwithstanding the date of the use.
 

 (viii) Technical information known to applicant .
 Technical information known to applicant concerning the related
 art, the disclosure, the claimed subject matter, other factual
 information pertinent to patentability, or concerning the accuracy
 of the examiner’s stated interpretation of such items.
 

 
 

 (2) Requirements for factual information known to applicant
 may be presented in any appropriate manner, for example:
 
 (i) A requirement for factual information;

 (ii) Interrogatories in the form of specific questions
 seeking applicant’s factual knowledge; or
 

 (iii) Stipulations as to facts with which the applicant
 may agree or disagree.
 

 
 

 (3) Any reply to a requirement for information pursuant to
 this section that states either that the information required to be
 submitted is unknown to or is not readily available to the party or
 parties from which it was requested may be accepted as a complete
 reply.
 

 
 

 (b) The requirement for information of paragraph (a)(1) of this
 section may be included in an Office action, or sent separately.
 

 (c) A reply, or a failure to reply, to a requirement for
 information under this section will be governed by §§ 1.135 and
 1.136 .
 

 
 

 An examiner or other Office employee may require from individuals
 identified under 37 CFR 1.56(c) , the submission of such information as may be
 reasonably necessary to properly examine or treat a matter in a pending or abandoned
 application filed under 35 U.S.C. 111 , in a pending or
 abandoned application that has entered the national stage under 35 U.S.C. 371 , in
 a patent, or in a reexamination proceeding. The scope of 37 CFR 1.105 is
 extended to any assignee or anyone to whom there is an obligation to assign the
 application because the information required may be known to some members of the
 assignee or obligated assignee even if not known by the inventors. 
 

 The authority for the Office to make such requirements arises from the
 statutory requirements of examination pursuant to 35 U.S.C. 131 and 132 . An examiner
 or other Office employee may make a requirement for information reasonably necessary to
 the examination or treatment of a matter in accordance with the policies and practices
 set forth by the Director(s) of the Technology Center or other administrative unit to
 which that examiner or other Office employee reports. See Star Fruits S.N.C. v.
 United States , 61393 F.3d 1277, 1283, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005)
 (“Star Fruits’ argument fails to come to grips with the real issue in this case, which
 is whether the Office can use section 1.105 to compel disclosure of information that the
 examiner deems pertinent to patentability when the applicant has a contrary view of the
 applicable law. We answer this question in the affirmative.”)
 

 

 
 704.11 What Information May Be Required [R-11.2013]

 Information which may be required under 37 CFR 1.105 is
 that information reasonably necessary to properly examine or treat a matter in a pending
 or abandoned application filed under 35 U.S.C. 111 (including a reissue
 application), in a pending or abandoned application that has entered the national stage
 under 35 U.S.C.
 371 , in a patent, or in a reexamination proceeding.
 

 There must be a reasonable basis for the information required that would
 aid in the examination of an application or treatment of some matter. A requirement for
 information under 37 CFR 1.105 places a substantial burden on the applicant that is
 to be minimized by clearly focusing the reason for the requirement and the scope of the
 expected response. Thus, the scope of the requirement should be narrowly defined, and a
 requirement under 37
 CFR 1.105 may only be made when the examiner has a reasonable
 basis for requiring information.
 

 The terms “factual” and “facts” are included in 37 CFR 1.105 to
 make it clear that it is facts and factual information, that are known to applicant, or
 readily obtained after reasonable inquiry by applicant, that are sought, and that
 requirements under 37
 CFR 1.105 are not requesting opinions that may be held or would be
 required to be formulated by applicant. Where the factual information requested related
 to the subject application, and details thereof, applicant would be expected to make a
 reasonable inquiry under the circumstances to find the factual information requested
 ( 37 CFR
 11.18(b)(2) ). Applicant need not, however, derive or independently
 discover a fact, such as by experimentation, in response to a requirement for
 information. The purpose of 37 CFR 1.105 is to improve patent
 quality, and render better decisions, and not to put applicants in jeopardy of meeting
 their duties of candor and good faith in their replies to a requirement for
 information.
 

 INFORMATION REASONABLY NECESSARY FOR FINDING PRIOR
 ART The criteria stated in 37 CFR 1.105 for making a
 requirement for information is that the information be reasonably necessary to the
 examination or treatment of a matter in an application. The information required
 would typically be that necessary for finding prior art or for resolving an issue
 arising from the results of the search for art or from analysis of the application
 file. A requirement for information necessary for finding prior art is not a
 substitute for the examiner performing a search of the relevant prior art; the
 examiner must make a search of the art according to MPEP §§ 704.01 and
 904 – 904.03 .
 

 The criteria of reasonable necessity is generally met, e.g.,
 where:
 

 
 (A) the examiner’s search and preliminary analysis demonstrates
 that the claimed subject matter cannot be adequately searched by class or
 keyword among patents and typical sources of non-patent literature, or
 

 (B) either the application file or the lack of relevant prior art
 found in the examiner’s search justifies asking the applicant if he or she has
 information that would be relevant to the patentability determination.
 

 
 The first instance generally occurs where the invention as a whole is
 in a new area of technology which has no patent classification or has a class with
 few pieces of art that diverge substantially from the nature of the claimed subject
 matter. In this situation, the applicant is likely to be among the most knowledgeable
 in the art, as evidenced by the scarcity of art, and requiring the applicant’s
 information of areas of search is justified by the need for the applicant’s
 expertise.
 

 The second instance generally occurs where the application file, or
 other related applications or publications authored by the applicant, suggests the
 applicant likely has access to information necessary to a more complete understanding
 of the invention and its context. In this situation, the record suggests that the
 details of such information may be relevant to the issue of patentability, and thus
 shows the need for information in addition to that already submitted by the
 applicant. 
 

 
 704.11(a) Examples of Information Reasonably Required [R-07.2022]

 37 CFR
 1.105(a)(1)(i)-(viii) list specific examples of information
 that may be reasonably required. Other examples, not meant to be exhaustive, of
 information that may be reasonably required for examination of an application
 include:
 

 
 (A) The name and citation of any particularly relevant indexed
 journal, or treatise.
 

 (B) The trade name of any goods or services the claimed subject
 matter is embodied in.
 

 (C) The citation for, the dates initially published and copies of
 any advertising and promotional literature prepared for any goods or services
 the claimed subject matter has been embodied in.
 

 (D) The citation for and copies of any journal articles describing
 any goods or services the claimed subject matter has been embodied in.
 

 (E) The trade names and providers of any goods or services in
 competition with the goods or services the claimed subject matter has been
 embodied in.
 

 (F) Any written descriptions or analyses, prepared by any of the
 inventors or assignees, of goods or services in competition with the goods or
 services the claimed subject matter has been embodied in.
 

 (G) Identification of pending or abandoned applications filed by at
 least one of the inventors or assigned to the same assignee as the current
 application that disclose similar subject matter that are not otherwise
 identified in the current application. Regarding the identification of
 applications filed before June 8, 1995, 35 U.S.C. 122(a) requires
 the identified applications to be kept in confidence by the Office and no
 information concerning the same is to be given without authority of the
 applicant or owner unless necessary to carry out the provisions of an Act of
 Congress or in such special circumstances as may be determined by the Director.
 See MPEP §
 103 and Hyatt v. United States Patent and
 Trademark Office , No. 1:13-cv-1535 (E.D. Va., May 29, 2014) (2014
 WL 2446176).
 

 (H) A reply to a matter raised in a protest under 37 CFR
 1.291 .
 

 (I) An explanation of technical material in a publication, such as
 one of the inventor’s publications.
 

 (J) The identification of changes made in a reformatted continuing
 application filed under 37 CFR 1.53(b) .
 

 (K) A mark-up for a continuation-in-part application showing the
 subject matter added where there is an intervening reference.
 

 (L) Comments on a new decision by the Federal Circuit that appears
 on point.
 

 (M) The publication date of an undated document mentioned by
 applicant that may qualify as printed publication prior art ( 35 U.S.C.
 102(a) or pre-AIA 35 U.S.C. 102(a) or
 (b) ).
 

 (N) Comments on information of record which raises a question of
 whether the inventor derived the invention from another under 35 U.S.C.
 101 and 115 , and pre-AIA 35 U.S.C.
 102(f) . 
 

 (O) Art related to the claimed invention, applicant’s disclosure,
 or the claimed subject matter.
 

 (P) Other factual information pertinent to patentability.

 (Q) The accuracy of the examiner’s stated analysis of such
 items.
 

 (R) Clarification of the correlation and identification of what
 structure, material, or acts set forth in the specification would be capable of
 carrying out a function recited in a means or steps plus function claim
 limitation. If it is not apparent to the examiner where in the specification
 and drawings there is support for a particular claim limitation reciting a
 means to accomplish a function, and if an inquiry by the examiner for such
 support is met by a stated lack of knowledge thereof by the applicant, the
 examiner could very well conclude that there is no such support and make
 appropriate rejections under, for example, 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112, first paragraph (written
 description) and 35 U.S.C. 112(b) or pre-AIA
 35 U.S.C. 112, second paragraph.
 

 (S) Interrogatories or Stipulations.
 
 (1) Of the common technical features shared among all claims,
 or admission that certain groups of claims do not share any common
 technical features,
 

 (2) About the support found in the disclosure for means or
 steps plus function claims ( 35 U.S.C. 112(f) or
 pre-AIA 35 U.S.C. 112, paragraph 6),
 

 (3) Of precisely which portion(s) of the disclosure provide
 the written description and enablement support for specific claim
 element(s),
 

 (4) Of the meaning of claim limitations or terms used in the
 claims, such as what teachings in the prior art would be covered by
 particular limitations or terms in a claim and which dictionary
 definitions would define a particular claim term, particularly where
 those terms are not used per se in the
 specification,
 

 (5) Of which portions of each claim correspond to any
 admitted prior art in the specification,
 

 (6) Of the specific utility provided by the claimed subject
 matter on a claim-by-claim basis,
 

 (7) As to whether a dependent claim element is known in the
 prior art based on the examiner having a reasonable basis for believing
 so,
 

 (8) Of support for added limitations in an amended claim,

 (9) Of facts related to public use or sale situations.

 
 

 (T) Information from the applicant regarding a
 third-party submission under 37 CFR 1.290 . In no
 circumstance may an examiner direct a requirement for information to the third
 party that submitted the paper under 37 CFR
 1.290 . See MPEP § 1134 . 
 

 (U) Information from the applicant regarding
 rescission of a statement under 37 CFR 1.55 or
 1.78 . See MPEP § 704.14(a) for form
 paragraph 7.104.02 . 
 

 
 

 
 704.11(b) When May a Requirement for Information Be Made [R-08.2012]

 A requirement for information under 37 CFR 1.105 is
 discretionary. A requirement may be made at any time once the necessity for it is
 recognized and should be made at the earliest opportunity after the necessity is
 recognized. The optimum time for making a requirement is prior to or with a first
 action on the merits because the examiner has the maximum opportunity to consider and
 apply the response. Ordinarily, a request for information should not be made with or
 after a final rejection.
 

 I. PRIOR TO THE FIRST ACTION ON THE MERITS It may be appropriate to make a requirement for information prior
 to the first action on the merits, such as with a restriction requirement, when
 the examiner’s search and preliminary analysis demonstrates that the claimed
 subject matter cannot be adequately searched by class or keyword among patents or
 in areas of emerging technology where the Office has minimal prior art.
 

 Factors to be considered for the appropriateness of a separate
 requirement for information prior to the first action on the merits include:
 

 
 (A) Whether the claimed subject matter is in a newly established
 art area without a well-developed prior art resource pool;
 

 (B) Whether the applicant submitted an Information Disclosure
 Statement;
 

 (C) Whether the specification’s background description
 adequately describes the background of the disclosed subject matter;
 

 (D) Whether related documents, written by an inventor or an
 employee of the assignee, which were not submitted, are found during the
 search or described in the application file;
 

 (E) Whether non-patent literature is referred to in the
 disclosure, but a copy has not been supplied; and
 

 (F) Whether the specification’s background of the invention
 describes information as being known or conventional, which may be
 considered as an admission of prior art, but such information is unfamiliar
 to examiner and cannot be found within the application file or from the
 examiner’s search, and further details of the information would be relevant
 to the question of patentability.
 

 II. WITH THE FIRST ACTION ON THE MERITS A requirement for information may be combined with a first action
 on the merits that includes at least one rejection, if, for example, either the
 application file or the lack of relevant prior art found in the examiner’s search
 justifies asking the applicant if he or she has information that would be relevant
 to the patentability determination.
 

 It is not appropriate to make a requirement for information based
 on a lack of relevant prior art with a first action on the merits allowance or
 Ex parte Quayle action.
 

 III. AFTER THE FIRST ACTION ON THE MERITS A requirement for information made after the first action on the
 merits may be appropriate when the application file justifies asking the applicant
 if he or she has information that would be relevant to the patentability
 determination. It is rarely appropriate to require information because of a lack
 of relevant prior art after the first action on the merits.
 

 A requirement for information is not proper when no further action
 would be taken by the examiner. The reasonable necessity criteria for a
 requirement for information implies further action by the examiner. This means
 that actions in which requirements for information necessary for examination are
 made should generally be a non-final action because the applicant’s reply must be
 considered and applied as appropriate.
 

 Under limited circumstances, requirements under 37 CFR 1.105 
 may be made in an application that is issued or abandoned. Such a requirement
 would normally be made only during part of some ongoing proceeding involving the
 issued patent or abandoned application. Examples of proceedings when an examiner
 or other Office employee would issue such a request in an abandoned application
 include proceedings to revive the abandoned application. Examples of proceedings
 when an examiner or other Office employee would issue such a request in a patent
 include proceedings to change inventorship and reexamination proceedings. 
 

 

 

 
 704.12 Replies to a Requirement for Information [R-08.2012]

 Replies to requirements for information must be complete and filed
 within the time period set including any extensions. Failure to reply within the time
 period set will result in the abandonment of the application. All replies for a request
 for information should be checked for completeness. Any incomplete reply can be
 completed within the original time period set including any extensions. Supplemental
 replies filed after the expiration of the original period for reply including any
 extensions of time must comply with all other rules for submissions of information.
 

 
 704.12(a) Relationship of Requirement for Information to Duty of
 Disclosure [R-08.2012]
 

 The duty of candor and good faith under 37 CFR 1.56 
 applies to the applicant’s reply to a requirement for information under
 37 CFR
 1.105 , and requires that the applicant reply to a requirement
 under 37 CFR
 1.105 with information reasonably and readily available. 
 

 37 CFR 1.56 requires parties identified in 37 CFR 1.56(c) 
 to disclose to the Office information material to the patentability of the claimed
 subject matter. This threshold is substantially higher than that for requiring
 information under 37 CFR 1.105 , which is reasonable necessity to the examination
 of the application. See, e.g., Star Fruits S.N.C. v. United
 States, 280 F.Supp.2d 512, 515-16 (E.D. Va 2003)(“Beyond that which a
 patent applicant is duty-bound to disclose pursuant to 37 CFR 1.56 , an
 examiner may require the production of ‘such information as may be reasonably
 necessary to properly examine or treat the matter.’”)
 

 In contrast with the applicant’s duty to disclose on his or her own
 initiative information material to patentability under 37 CFR 1.56 ,
 the Office has the authority to require information reasonably necessary to the
 examination or treatment of a matter in an application. Such information may not be
 considered material to patentability by applicant, hence applicant would not be
 required to provide the information under 37 CFR 1.56 . The information is
 instead reasonably necessary to determine the state of the art, the context in which
 the invention is practiced, the directions in which the relevant art are advancing,
 the similarity between the claimed subject matter and other art worked on by the
 applicants and their assignees or to otherwise proceed in the examination and
 treatment of matters in an application.
 

 Similar to 37 CFR 1.56 , applicant is
 required by 37 CFR
 1.105 to submit information already known, but there is no
 requirement to search for information that is unknown. Unlike 37 CFR 1.56 ,
 applicant is required by 37 CFR 1.105 to submit
 information that may not be material to patentability in itself, but that is
 necessary to obtain a complete record from which a determination of patentability may
 be determined.
 

 

 
 704.12(b) What Constitutes a Complete Reply [R-08.2012]

 A complete reply to a 37 CFR 1.105 requirement is a
 reply to each enumerated requirement for information giving either the information
 required or a statement that the information required to be submitted is unknown
 and/or is not readily available to the party or parties from which it was requested.
 There is no requirement for the applicant to show that the required information was
 not, in fact, readily attainable, but applicant is required to make a good faith
 attempt to obtain the information and to make a reasonable inquiry once the
 information is requested.
 

 There is no need for applicants to distinguish between whether the
 required information is unknown or is not readily available. Thus, if information
 remains unknown after a reasonable inquiry is made, applicant may simply reply that
 the requested information is either unknown or is not readily available rather than
 be required to make a categorical position either that the information is unknown to
 the applicant, or that the information is not readily available to the applicant.
 

 A reply stating that the information required to be submitted is
 unknown and/or is not readily available to the party or parties from which it was
 requested will generally be sufficient unless, for example, it is clear the applicant
 did not understand the requirement, or the reply was ambiguous and a more specific
 answer is possible.
 

 Depending on the facts surrounding the requirement and the reply, a
 follow up requirement may be made where both reasonable and warranted.
 

 

 
 704.12(c) Treatment of an Incomplete Reply [R-10.2019]

 An incomplete reply to a 37 CFR 1.105 requirement in a
 pending application or reexamination proceeding is handled in the same manner as an
 amendment not fully responsive to a non-final Office action. See 37 CFR 1.135(c) 
 and MPEP
 § 714.03 . Where the reply is a bona fide 
 reply, form paragraph 7.95 may be used. Note that a 37 CFR 1.105 
 requirement, even absent an action on the merits, is an Office action.
 

 ¶ 7.95 Bona Fide, Non-Responsive Amendments

 The reply filed on [1] is not fully responsive to the prior
 Office action because of the following omission(s) or matter(s): [2] . See
 37 CFR
 1.111 . Since the above-mentioned reply appears to be bona
 fide, applicant is given a shortened statutory period of TWO (2)
 MONTHS from the mailing date of this notice within which to supply the omission or
 correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER
 37 CFR
 1.136(a) but in no case can any extension carry the date for reply to
 this letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).
 

 Examiner Note:

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

 

 

 

 
 704.13 Time Periods for Reply [R-08.2012]

 A reply, or a failure to reply, to a requirement for information under
 37 CFR
 1.105 will be governed by 37 CFR 1.135 and 1.136 . See
 MPEP §
 710 et seq. 

 Requirements for information under 37 CFR 1.105 made
 without an action on the merits should set a shortened
 statutory period of two months for reply. Applicant may extend the time period for reply
 up to six months in accordance with 37 CFR 1.136(a) .
 

 Requirements sent with an Office action on the
 merits, and not as a separate Office action, will be given the same period for reply as
 the action on the merits.
 

 A requirement for information under 37 CFR 1.105 is an Office action
 under 35 U.S.C.
 132 for patent term adjustment purposes. See MPEP § 2730 for
 information pertaining to patent term adjustment.
 

 

 
 704.14 Making a Requirement for Information [R-08.2012]

 A requirement for information under 37 CFR 1.105 should be narrowly
 specified and limited in scope. It is a significant burden on both the applicant and the
 Office since the applicant must collect and submit the required information and the
 examiner must consider all the information that is submitted. A requirement for
 information is only warranted where the benefit from the information exceeds the burden
 in obtaining information.
 

 
 704.14(a) Format of the Requirement [R-07.2022]

 The requirement must clearly indicate that a requirement under
 37 CFR
 1.105 is being made, the basis for the requirement, and what
 information is being required. Requirements should specify the particular art area
 involved, and the particular claimed subject matter within such art area, in which
 the information is required in order to avoid overly burdening the applicant and to
 avoid inviting large volumes of information that are not relevant to the need for the
 information. The requirement should also clearly indicate the form the required
 information is expected to take. That is, whether the requirement is for citations
 and copies of individual art references, for the identification of whole collections
 of art, for answers to questions, or for another specified form.
 

 A requirement for information under 37 CFR 1.105 is
 generally prepared as a separate document that may be attached to an Office action on
 the merits or mailed as a stand alone action. The rule permits a requirement to be
 included within an Office action, but creating a separate document is preferable
 because the existence of the requirement is immediately brought to the attention of
 the recipient and it is more readily routed by the applicant to the parties best able
 to respond.
 

 The requirement should state why the requirement has been made and
 how the information is necessary to the examination. 
 

 Interrogatories may be used to ask specific questions seeking
 applicant’s factual knowledge. Such a requirement for information may include an
 inquiry as to the existence of a particular document or other piece of information
 and a requirement that such information be supplied if it is known to exist and is
 readily available. A stipulation may be used as to facts with which applicant may
 agree or disagree in order to clarify the record about uncontroverted matters.
 

 FORM PARAGRAPHS The following form paragraphs should be used when preparing a
 requirement for information:
 

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

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

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

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph
 7.105 , and
 should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the applicant rescinded a statement pursuant to
 37 CFR
 1.55 or 1.78 and clarification on the
 reasoning why pre-AIA law applies is needed.
 

 3. Information sought should be restricted to that which is
 reasonably necessary for the examiner to render a decision on patentability.
 

 4. In bracket 1, insert the information that is sought from the
 applicant.
 

 5. A two month time period should be set by the examiner for reply
 to the requirement unless it is part of an Office action having a shortened statutory
 period (SSP), in which case the period for reply will apply also to the requirement.
 
 
 

 ¶ 7.105 Requirement for Information, Heading

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

 Examiner Note:
 
 1. This form paragraph should appear at the beginning of any
 requirement for information under 37 CFR 1.105 , and should be followed
 by an explanation of why the required information is necessary for examination. Form
 paragraph 7.104.aia , 7.104.fti ,
 7.104.02 
 or 7.106 –
 7.121 may be
 used as appropriate.
 

 2. The requirement for information should conclude with form
 paragraphs 7.122 – 7.126 as appropriate.
 
 
 

 The following form paragraphs should be used as appropriate where
 the information required pertains to stipulations of facts or interrogatories of
 facts known to the applicant:
 

 ¶ 7.105.01 Stipulations of Facts Known to Applicant

 In response to this requirement, please agree or disagree to the stipulation of each of the following assertions of facts:

 [1] .
 

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. In bracket 1, specify each factual assertion, in the form of a
 separate, numbered sentence, that the applicant is to either agree or disagree to so
 stipulate. It is suggested that at the end of each assertion, the parenthetical phrase
 
 "(agree/disagree)"
 
 
 be
 appended to facilitate a reply by way of applicant marking up a copy of the requested
 stipulations.
 
 
 

 ¶ 7.105.02 Interrogatories of Facts Known to Applicant

 In response to this requirement, please provide answers to each of the following interrogatories eliciting factual information:

 [1] .
 

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. In bracket 1, specify each interrogatory question, in the form of a separate, numbered sentence, that the applicant is to
 answer. The scope of each query must be clearly set forth and the content of the expected reply is to be characterized as
 factual information.
 
 
 

 The following form paragraphs should be used as appropriate where
 the information required pertains to a search for prior art, or to citations
 and/or copies of publications:
 

 ¶ 7.106 Domain of Search

 The information is required to extend the domain of search for prior art. Limited amounts of art related to the claimed subject
 matter are available within the Office, and are generally found in class [1] and subclasses [2] , which describe [3] . A broader range of art to search is necessary to establish the level of knowledge of those of ordinary skill in the claimed
 subject matter art of [4] .
 

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. In bracket 4, insert a description of the art claimed but not found in the classification system.
 
 

 ¶ 7.107 Level of Skill and Knowledge in the Art

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

 Examiner Note:

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

 

 ¶ 7.108 Background Description

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

 Examiner Note:

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

 

 ¶ 7.109 Products and Services Embodying Invention

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

 Examiner Note:

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

 

 ¶ 7.110 Art Suggested as Relevant

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

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. In bracket 1, describe where in the application file applicant suggests that the art is relevant, e.g., the specification
 and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page thereof.
 
 
 

 ¶ 7.111 List of Keywords

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

 Examiner Note:

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

 

 ¶ 7.112 Citations for Electronically Searchable Databases or Other Indexed Collections

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

 Examiner Note:

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

 

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

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

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. In bracket 1, describe where in the application file applicant refers to art that has not been previously submitted, e.g.,
 the specification and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page
 thereof.
 
 
 

 ¶ 7.114 Copies of Publications Authored by Inventor(s)

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

 Examiner Note:

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

 

 ¶ 7.115 Art Relied Upon for Description of Prior Art

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

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant,
 are required.
 
 
 

 ¶ 7.116 Art Relied Upon for Development of Invention

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

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant,
 are required.
 

 3. In bracket 1, insert a description of the most important inventive elements.
 
 

 ¶ 7.117 Art Relied Upon for Drafting Claimed Subject Matter

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

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant,
 are required.
 
 
 

 ¶ 7.118 Results of Prior Art Search

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

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph
 7.105 , and
 should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. In bracket 1, describe the subject matter for which art is
 required.
 
 
 

 ¶ 7.119 Names of Products or Services Incorporating Claimed Invention

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

 Examiner Note:

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

 

 ¶ 7.120 Names of Products or Services Incorporating Disclosed Prior Art

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

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. In bracket 1, specify the attributes of the prior art that most closely approximate the claimed subject matter to narrow the
 focus of the reply.
 
 
 

 ¶ 7.121 Details of Improvement Over the Prior Art

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

 Examiner Note:

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

 

 The following form paragraphs should appear at the end of the
 requirement for information, as appropriate:
 

 ¶ 7.122 Submission of Only Pertinent Pages Where Document is Large

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

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraphs 7.122 – 7.126 as appropriate.
 

 2. Use this form paragraph where the scope of the requirement for information specifically includes copies of publications.
 
 

 ¶ 7.123 Waiver of Fee and Statement Requirements for Certain Information Disclosures

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

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should be followed by form paragraph 7.124 and either form paragraph 7.125 or 7.126 as appropriate.
 

 2. Use this form paragraph where the scope of the requirement for information specifically includes citations to and/or copies
 of publications.
 
 
 

 ¶ 7.124 Contents of Good Faith Reply

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

 Examiner Note:
 
 1. This form paragraph must be
 preceded by form paragraph 7.105 , and should be followed by form paragraph
 7.125 or
 7.126 as
 appropriate.
 

 2. This form paragraph should
 appear in the conclusion of any requirement for information.
 
 
 

 ¶ 7.125 Conclusion of Requirement That Accompanies Office Action

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

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.105 , and should appear at the conclusion of any requirement for information that accompanies an Office action. If the requirement
 for information is mailed without any other Office action, use form paragraph 7.126 instead.
 

 2. Form paragraph 7.127 should appear at the end of any Office action that includes an attached requirement for information.
 
 
 

 ¶ 7.126 Conclusion Of Requirement Mailed Without Any Other Office
 Action
 

 This requirement is subject to the
 provisions of 37 CFR
 1.134 , 1.135 and 1.136 and has a shortened statutory period
 of [1] months. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER
 37 CFR
 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute
 ( 35 U.S.C. 133 ).
 

 Examiner Note:
 
 1. This form paragraph must be
 preceded by form paragraph 7.105 , and should appear at the conclusion of any
 requirement for information mailed without any other Office action. If the requirement
 for information is mailed with an Office action, use form paragraph
 7.125 
 instead.
 

 2. The period for reply is ordinarily set for TWO (2)
 MONTHS .
 
 
 

 ¶ 7.127 Conclusion of Office Action That Includes Requirement

 This Office action has an attached
 requirement for information under 37 CFR 1.105 . A complete reply to this
 Office action must include a complete reply to the attached requirement for information. The
 time period for reply to the attached requirement coincides with the time period for reply to
 this Office action.
 

 Examiner Note:

 This form paragraph should appear
 at the end of any Office action that includes an attached requirement for
 information.
 

 

 

 
 704.14(b) Examiner’s Obligation Following Applicant’s Reply [R-08.2017]

 The examiner must consider the information submitted with the
 applicant’s reply and apply the information as the examiner deems appropriate. This
 obligation arises from the examiner’s assertion that the information is necessary to
 the examination in making the requirement.
 

 Information constituting identification of areas of search must be
 considered and the examiner must indicate which areas were used and which areas were
 not used in performing a search. 
 

 The examiner must record in the appropriate sections of the “Search
 Notes” form the areas in which the search for prior art was made. See
 MPEP §
 719.05 . Information constituting answers to queries posed
 by the examiner or another Office employee must be considered, and the record must
 indicate that the answers were considered. This indication may be made minimally by
 indicating “Considered” with the Stamper tool in Adobe Acrobat and including the
 receipt date on the reply.
 

 Art that is submitted in response to a 37 CFR 1.105 
 requirement must be considered, at least to the extent that art submitted with an
 Information Disclosure Statement under 37 CFR 1.97 and 1.98 is
 considered. See MPEP §
 609 . If the applicant provides a written list of citations
 for the art submitted with a reply to a 37 CFR 1.105 requirement, an
 examiner must indicate on that list which art has been considered and which art has
 not been considered, in the same manner as with an Information Disclosure Statement
 under 37 CFR 1.97 and 1.98 . The examiner may annotate
 the list by using Adobe Acrobat to stamp the document with 
 "All
 References Considered"
 
 
 while also providing the receipt date,
 application number and art unit. If the applicant provides no such list, there is no
 requirement for the examiner to prepare such a list or otherwise make the submitted
 art of record unless the examiner relies on such art in a rejection.
 

 It is never appropriate to deny considering information that is
 submitted in reply to, and is within the scope of, a requirement under
 37 CFR
 1.105 . However, information that is beyond the scope of a
 37 CFR
 1.105 requirement, submitted along with information responding
 to a requirement under 37 CFR 1.105 , need not be
 considered unless the submission of such art conforms to the provisions of
 37 CFR
 1.97 and 1.98 , and MPEP § 609 . The
 criteria for measuring the scope of a 37 CFR 1.105 requirement is the
 plain meaning of the text of the requirement. For this reason, it is essential that
 the scope of information required be carefully specified. If art which is beyond the
 scope of a 37 CFR
 1.105 requirement is submitted in accordance with the
 provisions of 37
 CFR 1.97 and 1.98 , and MPEP § 609 , such
 art must be considered according to the provisions of 37 CFR 1.97 and
 37 CFR
 1.98 .
 

 

 
 704.14(c) Petitions to Requirements Under 37 CFR 1.105 [R-08.2012]

 Applicants who seek to have a requirement under 37 CFR 1.105 
 withdrawn or modified, or who seek to have information submitted under
 37 CFR
 1.105 considered, may submit a petition under 37 CFR 1.181 to
 the Director of the Technology Center in which the requirement was issued. However, a
 petition is not a reply to a 37 CFR 1.105 requirement. The
 time period for the applicant to reply to the 37 CFR 1.105 requirement
 continues to run, even where a petition has been submitted.
 

 

 
 704.14(d) Relationship to Information Disclosure Statements [R-08.2012]

 The initial reply, if responsive to the requirement for information
 under 37 CFR
 1.105 and submitted within the original time period for reply
 including any extensions of time, does not have to satisfy the fee and/or
 certification requirements of 37 CFR 1.97 and 1.98 . Applicant
 should list the references on a copy of Form PTO/SB/08 to have the citations entered
 in the record. Any replies made subsequent to the initial reply must meet the
 provisions of 37
 CFR 1.97 and 1.98 as appropriate.
 

 Any submission of art beyond the scope of a requirement for
 information under 37 CFR 1.105 is a submission of art under 37 CFR 1.97 and
 1.98 and MPEP § 609 , and must meet the
 provisions of 37
 CFR 1.97 and 1.98 for the art to be
 considered.
 

 Where information is submitted in a reply to a requirement under
 37 CFR 1.105 , the examiner may NOT make the next Office action
 relying on that art final unless all instances of the application of such art are
 necessitated by amendment. This section explicitly distinguishes the practice
 following a reply under 37 CFR 1.105 from the practice in
 MPEP §
 609.04(b) and MPEP § 706.07(a) following a
 submission of an Information Disclosure Statement under 37 CFR 1.97 and
 1.98 .
 

 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 701-Statutory Authority for Examination 

 702-Requisites of the Application 
 702.01-Obviously Informal Cases 

 
 

 703-[Reserved] 

 704-Search and Requirements for Information 
 704.01-Search 

 704.02-704.09-[Reserved] 

 704.10-Requirements for Information 

 704.11-What Information May Be Required 
 704.11(a)-Examples of Information Reasonably Required 

 704.11(b)-When May a Requirement for Information Be Made 

 
 

 704.12-Replies to a Requirement for Information 
 704.12(a)-Relationship of Requirement for Information to Duty of Disclosure 

 704.12(b)-What Constitutes a Complete Reply 

 704.12(c)-Treatment of an Incomplete Reply 

 
 

 704.13-Time Periods for Reply 

 704.14-Making a Requirement for Information 
 704.14(a)-Format of the Requirement 

 704.14(b)-Examiner’s Obligation Following Applicant’s Reply 

 704.14(c)-Petitions to Requirements Under 37 CFR 1.105 

 704.14(d)-Relationship to Information Disclosure Statements 

 
 

 
 

 705-Patentability Reports 
 705.01-Instructions re Patentability Reports 
 705.01(a)-Nature of P.R., Its Use and Disposal 

 705.01(b)-Sequence of Examination 

 705.01(c)-Counting and Recording P.R.s 

 705.01(d)-[Reserved] 

 705.01(e)-Limitation as to Use 

 705.01(f)-Interviews With Applicants 

 
 

 
 

 706-Rejection of Claims 
 706.01-Contrasted With Objections 

 706.02-Rejection on Prior Art 
 706.02(a)-[Reserved] 
 706.02(a)(1)-[Reserved] 

 706.02(a)(2)-[Reserved] 

 
 

 706.02(b)-[Reserved] 
 706.02(b)(1)-[Reserved] 

 706.02(b)(2)-[Reserved] 

 
 

 706.02(c)-[Reserved] 
 706.02(c)(1) -[Reserved] 

 706.02(c)(2)-[Reserved] 

 
 

 706.02(d)-[Reserved] 

 706.02(e)-[Reserved] 

 706.02(f)-[Reserved] 
 706.02(f)(1)-[Reserved] 

 706.02(f)(2)-[Reserved] 

 
 

 706.02(g)-[Reserved] 

 706.02(h)-[Reserved] 

 706.02(i)-[Reserved] 

 706.02(j)-[Reserved] 

 706.02(k)-[Reserved] 

 706.02(l)-[Reserved] 
 706.02(l)(1)-[Reserved] 

 706.02(l)(2)-[Reserved] 

 706.02(l)(3)-[Reserved] 

 
 

 706.02(m)-[Reserved] 

 706.02(n)-[Reserved] 

 
 

 706.03-Rejections Not Based on Prior Art 
 706.03(a)-[Reserved] 

 706.03(b)-[Reserved] 

 706.03(c)-[Reserved] 

 706.03(d)-[Reserved] 

 706.03(e)-[Reserved] 

 706.03(f) - 706.03(j)-[Reserved] 

 706.03(k)-[Reserved] 

 706.03(l) - 706.03(n)-[Reserved] 

 706.03(o)-[Reserved] 

 706.03(p) - 706.03(r)-[Reserved] 

 706.03(s)-[Reserved] 

 706.03(t)-[Reserved] 

 706.03(u)-[Reserved] 

 706.03(v)-[Reserved] 

 706.03(w)-[Reserved] 

 706.03(x)-[Reserved] 

 706.03(y)-[Reserved] 

 
 

 706.04-Rejection of Previously Allowed Claims 

 706.05-Rejection After Allowance of Application 

 706.06-Rejection of Claims Copied From Patent 

 706.07-Final Rejection 
 706.07(a)-Final Rejection, When Proper on Second Action 

 706.07(b)-Final Rejection, When Proper on First Action 

 706.07(c)-Final Rejection, Premature 

 706.07(d)-Final Rejection, Withdrawal of, Premature 

 706.07(e)-Withdrawal of Final Rejection, General 

 706.07(f)-Time for Reply to Final Rejection 

 706.07(g)-Transitional After-Final Practice 

 706.07(h)-Request for Continued Examination (RCE) Practice 

 
 

 
 

 707-Examiner’s Letter or Action 
 707.01-Primary Examiner Indicates Action for New Assistant 

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

 707.03‑707.04-[Reserved] 

 707.05-Citation of References 
 707.05(a)-Copies of Cited References 

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

 707.05(c)-Order of Listing 

 707.05(d)-Reference Cited in Subsequent Actions 

 707.05(e)-Data Used in Citing References 

 707.05(f)-Non-Patent Documents Having a Lengthy Citation 

 707.05(g)-Incorrect Citation of References 

 
 

 707.06-Citation of Decisions, Orders Memorandums, and Notices 

 707.07-Completeness and Clarity of Examiner’s Action 
 707.07(a)-Complete Action on Formal Matters 

 707.07(b) - 707.07(c)-[Reserved] 

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

 707.07(e)-Note All Outstanding Requirements 

 707.07(f)-Answer All Material Traversed 

 707.07(g)-Piecemeal Examination 

 707.07(h)-Notify of Inaccuracies in Amendment 

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

 707.07(j)-State When Claims Are Allowable 

 707.07(k)-Numbering Paragraphs 

 707.07(l)-Comment on Examples 

 
 

 707.08-Reviewing and Initialing by Assistant Examiner 

 707.09-Signing by Primary or Other Authorized Examiner 

 707.10-Entry 

 707.11-Date 

 707.12-Mailing 

 707.13-Returned Office Action 

 
 

 708-Order of Examination 
 708.01-List of Special Cases 

 708.02-Petition To Make Special 
 708.02(a)-Accelerated Examination 

 708.02(b)-Prioritized Examination 

 708.02(c)-Patent Prosecution Highway Program 

 
 

 708.03-Examiner Tenders Resignation 

 
 

 709-Suspension of Action 
 709.01-Overlapping Applications by Same Applicant or Owned by Same Assignee 

 
 

 710-Period for Reply 
 710.01-Statutory Period 
 710.01(a)-Statutory Period, How Computed 

 
 

 710.02-Shortened Statutory Period and Time Limit Actions Computed 
 710.02(a)-[Reserved] 

 710.02(b)-Shortened Statutory Period: Situations in Which Used 

 710.02(c)-Specified Time Limits: Situations in Which Used 

 710.02(d)-Difference Between Shortened Statutory Periods for Reply and Specified Time Limits 

 710.02(e)-Extension of Time 

 
 

 710.03-[Reserved] 

 710.04-Two Periods Running 
 710.04(a)-Copying Patent Claims 

 
 

 710.05-Period Ending on Saturday, Sunday, or a Federal Holiday 

 710.06-Situations When Reply Period Is Reset or Restarted 

 
 

 711-Abandonment of Patent Application 
 711.01-Express or Formal Abandonment 

 711.02-Failure To Take Required Action During Statutory Period 
 711.02(a)-Insufficiency of Reply 

 711.02(b)-Special Situations Involving Abandonment 

 711.02(c)-Termination of Proceedings 

 
 

 711.03-Reconsideration of Holding of Abandonment; Revival 
 711.03(a)-Holding Based on Insufficiency of Reply 

 711.03(b)-Holding Based on Failure To Reply Within Period 

 711.03(c)-Petitions Relating to Abandonment 

 711.03(d)-Examiner’s Statement on Petition To Set Aside Examiner’s Holding 

 
 

 711.04-Public Access to Abandoned Applications 
 711.04(a)-Date of Abandonment 

 711.04(b)-Ordering of Patented and Abandoned Files 

 711.04(c)-Notifying Applicants of Abandonment 

 
 

 711.05-Letter of Abandonment Received After Application Is Allowed 

 711.06-Abstracts, Abbreviatures, and Defensive Publications 
 711.06(a)-Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References 

 
 

 
 

 712-[Reserved] 

 713-Interviews 
 713.01-General Policy, How Conducted 

 713.02-Interviews Prior to First Official Action 

 713.03-Interview for “Sounding Out” Examiner Not Permitted 

 713.04-Substance of Interview Must Be Made of Record 

 713.05-Interviews Prohibited or Granted, Special Situations 

 713.06-No Inter Partes Questions Discussed Ex Parte 

 713.07-Exposure of Other Cases 

 713.08-Demonstration, Exhibits, Models 

 713.09-Interviews Between Final Rejection and Notice of Appeal 

 713.10-Interview Preceding Filing Amendment Under 37 CFR 1.312 

 
 

 714-Amendments, Applicant’s Action 
 714.01-Signatures to Amendments 
 714.01(a)-Unsigned or Improperly Signed Amendment 

 714.01(b)-[Reserved] 

 714.01(c)-Signed by Attorney or Agent Not of Record 

 714.01(d)-Amendment Signed by Applicant but Not by Attorney or Agent of Record 

 714.01(e)-Amendments Before First Office Action 

 
 

 714.02-Must Be Fully Responsive 

 714.03-Amendments Not Fully Responsive, Action To Be Taken 
 714.03(a)-Supplemental Amendment 

 
 

 714.04-Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty 

 714.05-Examiner Should Immediately Review 

 714.06-[Reserved] 

 714.07-Amendments Not in Permanent Ink 

 714.08-714.09-[Reserved] 

 714.10-Claims Added in Excess of Claims Previously Paid For 

 714.11-Amendment Filed During Interference Proceedings 

 714.12-Amendments and Other Replies After Final Rejection or Action 

 714.13-Amendments and Other Replies After Final Rejection or Action, Procedure Followed 

 714.14-Amendments After Allowance of All Claims 

 714.15-Amendment Received in Technology Center After Mailing of Notice of Allowance 

 714.16-Amendment After Notice of Allowance, 37 CFR 1.312 
 714.16(a)-Amendments Under 37 CFR 1.312, Copied Patent Claims 

 714.16(b)-Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 

 714.16(c)-Amendments Under 37 CFR 1.312, Additional Claims 

 714.16(d)-Amendments Under 37 CFR 1.312, Handling 

 714.16(e)-Amendments Under 37 CFR 1.312, Entry in Part 

 
 

 714.17-Amendment Filed After the Period for Reply Has Expired 

 714.18-Entry of Amendments 

 714.19-List of Amendments, Entry Denied 

 714.20-List of Amendments Entered in Part 

 714.21-Amendments Inadvertently Entered, No Legal Effect 

 714.22-714.24-[Reserved] 

 714.25-Discourtesy of Applicant or Attorney 

 
 

 715-Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) 
 715.01-37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits 
 715.01(a)-Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor 

 715.01(b)-Reference and Application Have Common Assignee 

 715.01(c)-Reference Is Publication of Inventor’s Own Invention 

 715.01(d)-Activities Applied Against the Claims 

 
 

 715.02-How Much of the Claimed Invention Must Be Shown, Including the General Rule as to Generic Claims 

 715.03-Genus-Species, Practice Relative to Cases Where Predictability Is in Question 

 715.04-Who May Make Affidavit or Declaration Under 37 CFR 1.131(a); Formal Requirements of Affidavits and Declarations 

 715.05-U.S. Patent or Application Publication Claiming Same Invention 

 715.06-[Reserved] 

 715.07-Facts and Documentary Evidence 
 715.07(a)-Diligence 

 715.07(b)-Interference Testimony Sometimes Used 

 715.07(c)-Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country 

 715.07(d)-Disposition of Exhibits 

 
 

 715.08-Decided by Primary Examiner 

 715.09-Timely Presentation 

 715.10-Review of Affidavit or Declaration for Evidence of Prior Public Use or Sale or Failure to Disclose Best Mode 

 
 

 716-Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections 
 716.01-Generally Applicable Criteria 
 716.01(a)-Objective Evidence of Nonobviousness 

 716.01(b)-Nexus Requirement and Evidence of Nonobviousness 

 716.01(c)-Probative Value of Objective Evidence 

 716.01(d)-Weighing Objective Evidence 

 
 

 716.02-Allegations of Unexpected Results 
 716.02(a)-Evidence Must Show Unexpected Results 

 716.02(b)-Burden on Applicant 

 716.02(c)-Weighing Evidence of Expected and Unexpected Results 

 716.02(d)-Unexpected Results Commensurate in Scope With Claimed Invention 

 716.02(e)-Comparison With Closest Prior Art 

 716.02(f)-Advantages Disclosed or Inherent 

 716.02(g)-[Reserved] 

 
 

 716.03-Commercial Success 
 716.03(a)-Commercial Success Commensurate in Scope With Claimed Invention 

 716.03(b)-Commercial Success Derived From Claimed Invention 

 
 

 716.04-Long-Felt Need and Failure of Others 

 716.05-Skepticism of Experts 

 716.06-Copying 

 716.07-Inoperability of References 

 716.08-Utility and Operability of Applicant’s Disclosure 

 716.09-Sufficiency of Disclosure 

 716.10-Attribution Affidavit or Declaration to Overcome Rejection Under Pre-AIA 35 U.S.C. 102 or 103 

 
 

 717-Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) 
 717.01-Affidavit or Declaration Under 37 CFR 1.130 
 717.01(a) -Declarations or Affidavits under 37 CFR 1.130(a) – Attribution 
 717.01(a)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(a) 

 
 

 717.01(b) -Declarations or Affidavits under 37 CFR 1.130(b) – Prior Public Disclosure 
 717.01(b)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(b) 

 717.01(b)(2) -Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated
 Prior Public Disclosure 

 
 

 717.01(c) -Who May Make Affidavit or Declaration; Formal Requirements of Affidavits and Declarations 

 717.01(d)-U.S. Patent or Application Publication Claiming Same Invention 

 717.01(e) -Passed Upon (or Decided by) by Primary Examiner 

 717.01(f) -Seasonable (or Timely) Presentation 

 
 

 717.02 -Prior Art Exception for Commonly Owned or Joint Research Agreement Subject Matter under AIA 35 U.S.C. 102(b)(2)(C) 
 717.02(a) -Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C) 

 717.02(b) -Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked 

 717.02(c) -Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 717.02(d) -Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) 

 
 

 
 

 718-Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c) 

 719-File Wrapper 
 719.01-Papers in Image File Wrapper 

 719.02-Residence of Inventor Changed 

 719.03-Classification During Examination 

 719.04-Index of Claims 

 719.05-Field of Search 

 
 

 720-Public Use Proceedings 

 721‑723-[Reserved] 

 724-Trade Secret, Proprietary, and Protective Order Materials 
 724.01-Completeness of the Patent File Wrapper 

 724.02-Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials 

 724.03-Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02 

 724.04-Office Treatment and Handling of Materials Submitted Under MPEP § 724.02 
 724.04(a)-Materials Submitted in an Application Covered by 35 U.S.C. 122 

 724.04(b)-Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b) 

 724.04(c)-Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d) 

 
 

 724.05-Petition To Expunge Information or Copy of Papers in Application File 

 724.06-Handling of Petitions To Expunge Information or Copy of Papers in Application File 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:43