MPEP § 707 — MPEP § 707
Current through: 2022-07-01

707-Examiner’s Letter or Action 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0700 

 Section 707 
 

 
 
 
 
 
 707 Examiner’s Letter or Action [R-01.2024]

 
 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) 
 
 (i) Subject matter which would otherwise qualify as prior
 art under 35 U.S.C.
 102(a)(2) and a claimed invention will be
 treated as commonly owned for purposes of 35 U.S.C.
 102(b)(2)(C) if the applicant or patent owner
 provides a statement to the effect that the subject matter and the
 claimed invention, not later than the effective filing date of the
 claimed invention, were owned by the same person or subject to an
 obligation of assignment to the same person.
 

 (ii) Subject matter which would otherwise qualify as prior
 art under 35 U.S.C.
 102(a)(2) and a claimed invention will be
 treated as commonly owned for purposes of 35 U.S.C.
 102(b)(2)(C) on the basis of a joint research
 agreement under 35 U.S.C. 102(c) 
 if: 
 
 (A) The applicant or patent owner provides a
 statement to the effect that the subject matter was developed
 and the claimed invention was made by or on behalf of one or
 more parties to a joint research agreement, within the meaning
 of 35 U.S.C.
 100(h) and § 1.9(e) , that was in effect on or before
 the effective filing date of the claimed invention, and the
 claimed invention was made as a result of activities undertaken
 within the scope of the joint research agreement; and
 

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

 
 

 
 

 (5) 
 
 (i) Subject matter which qualifies as prior art under
 35 U.S.C. 102(e), (f), or (g) in effect prior
 to March 16, 2013, and a claimed invention in an application filed on
 or after November 29, 1999, or any patent issuing thereon, in an
 application filed before November 29, 1999, but pending on December
 10, 2004, or any patent issuing thereon, or in any patent granted on
 or after December 10, 2004, will be treated as commonly owned for
 purposes of 35 U.S.C. 103(c) 
 in effect prior to March 16, 2013, if the applicant or patent owner
 provides a statement to the effect that the subject matter and the
 claimed invention, at the time the claimed invention was made, were
 owned by the same person or subject to an obligation of assignment to
 the same person.
 

 (ii) Subject matter which qualifies as prior art under
 35 U.S.C. 102(e) , (f) , or (g) in effect
 prior to March 16, 2013, and a claimed invention in an application
 pending on or after December 10, 2004, or in any patent granted on or
 after December 10, 2004, will be treated as commonly owned for
 purposes of 35 U.S.C. 103(c) 
 in effect prior to March 16, 2013, on the basis of a joint research
 agreement under 35 U.S.C.
 103(c)(2) in effect prior to March 16, 2013,
 if:
 
 (A) The applicant or patent owner
 provides a statement to the effect that the subject matter and
 the claimed invention were made by or on behalf of the parties
 to a joint research agreement, within the meaning of
 35 U.S.C.
 100(h) and § 1.9(e) , which 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; and
 

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

 
 

 
 

 (6) Patents issued prior to December 10, 2004, from
 applications filed prior to November 29, 1999, are subject to
 35
 U.S.C. 103(c) in effect on November 28, 1999.
 

 
 

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

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

 
 

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

 
 

 For Office actions in ex parte reexamination
 proceedings, see MPEP §§
 2260 , 2262 , 2271 and their indents.
 For Office actions in inter partes reexamination proceedings, see
 MPEP §§
 2660 , 2671 , 2673 , and their
 indents.
 

 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.
 

 The examiner, in the exercise of their professional judgment, is permitted
 to indicate that an interview with applicant’s representative may result in agreements
 whereby the application may be placed in condition for allowance. Any amendment agreed upon
 during an interview may be made either by the applicant’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 on 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 . See MPEP § 713 et seq. for interview practice.
 

 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
 copy of the Office action. Where applicable, a Notice of Informal Patent Application is
 attached to the first Office action.
 

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

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

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

 Information useful in judging the propriety of continuing the prosecution
 may include, for example, the identification and a brief discussion of the particular
 figure(s) of the drawing(s), and/or page(s) or paragraph(s) of the best reference(s) cited
 by the examiner, the applicant, or a foreign office.
 

 In rejecting claims for want of novelty or for obviousness, the pertinence
 of each reference, if not apparent, must be clearly explained and each rejected claim
 specified. See 37 CFR
 1.104(c)(2) . 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.
 

 The Office action may include objections to the disclosure, an explanation
 of references cited but not applied, an indication of allowable subject matter, other
 requirements (including requirements for restriction if applicable), and other pertinent
 comments. Matters unrelated to examination of the application should not be included in the
 Office action. See also MPEP
 § 707.07(d) .
 

 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 Office actions and will identify any allowed claims.
 

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

 ¶ 7.100 Name And Number of Examiner To Be Contacted

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

 Examiner interviews are available via a variety of formats. See
 MPEP §
 713.01 . To schedule an interview, applicant is encouraged to use the
 USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice . 
 

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

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

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

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

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

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

 Information regarding the status of an application may be obtained from
 Patent Center. Status information for published applications may be obtained from Patent
 Center. Status information for unpublished applications is available through Patent Center to
 authorized users only. Should you have questions about access to the USPTO patent electronic
 filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). 
 

 Examiner interviews are available via a variety of formats see
 MPEP §
 713.01 . To schedule an interview, applicant is encouraged to use the
 USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice .
 

 Examiner Note:
 
 1. In bracket 1, insert your name.

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

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

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

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

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

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

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

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

 Information regarding the status of an application may be obtained from
 Patent Center. Status information for published applications may be obtained from Patent
 Center. Status information for unpublished applications is available through Patent Center to
 authorized users only. Should you have questions about access to the USPTO patent electronic
 filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
 

 Examiner interviews are available via a variety of formats.
 See MPEP §
 713.01 . To schedule an interview, applicant is encouraged to use the
 USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice .
 

 Examiner Note:
 
 1. In bracket 1, insert your name.

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

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

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

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

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

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

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

 ¶ 7.103 Statute Cited in Prior Office Action

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

 

 

 
 707.01 Primary Examiner Indicates Action for New Assistant [R-07.2015]

 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 and claims rejected, the primary examiner may indicate how the references are
 to be applied in any prior art rejection and explain the basis for any non-prior art
 grounds of rejection. The primary examiner may authorize allowance if all statutory
 requirements are met and no further field of search is known.
 

 

 
 707.02 Applications Up for Third Action and 5-Year
 Applications [R-07.2015]
 

 The supervisory patent examiners should impress upon their assistants
 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 or more 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.
 

 

 
 707.03‑707.04 [Reserved]

 

 

 
 707.05 Citation of References [R-01.2024]

 
 37 CFR 1.104 Nature of examination. 

 *****

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

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

 
 

 
 *****

 

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

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

 Form paragraph 7.96 may be used as an introductory
 sentence.
 

 ¶ 7.96 Citation of Relevant Prior Art

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

 Examiner Note:

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

 

 Effective June 8, 1995, Public Law 103-465 amended 35 U.S.C. 154 to
 change the term of a patent to 20 years measured from the filing date of the earliest
 U.S. application for which benefit under 35 U.S.C. 120 , 121 or
 365(c) is claimed. The 20-year patent term applies to all utility
 and plant patents issued on applications filed on or after June 8, 1995. Effective March
 16, 2013, Public Law 112-196 amended Title 35 of the U.S. Code to change U.S. practice
 from a first to invent system to a first inventor to file system. In certain
 circumstances, applicants may cancel their benefit/priority claim 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 benefit is
 claimed or foreign application to which priority is claimed. Examiners should cite of
 interest all material disclosures having a prior art date after the filing date of the
 U.S. parent application or the foreign priority 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 indicate “None” on a form PTO-892 and include it
 in the application file wrapper. 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. 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 because
 the form from the parent application is in the same file wrapper and will be used by the
 printer.
 

 In all continuation, divisional, and continuation-in-part applications,
 the parent applications should be reviewed for pertinent prior art. See
 MPEP §
 609.02 .
 

 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; or

 (D) 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 [R-01.2024]

 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 be retained in the file wrapper. 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 Official Correspondence;
 

 (B) Include, in the action folder all of the references cited by
 the examiner which are to be furnished to the applicant.
 

 (C) After any necessary review has taken place, forward the action
 to the TC mailbox for counting. Any application which is submitted 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. 
 

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

 ¶ 7.82.03 How To Obtain Copies of U.S. Patents and U.S. Patent Application
 Publications
 
Immediately below this section is a
 citation to U.S. patent(s) and/or U.S. patent application
 publication(s).
 The USPTO does not provide copies of U.S. patents or U.S. patent
 application publications with Office actions. Reviewing the U.S. patent(s) and/or U.S. patent
 application publication(s) cited below is important in deciding how to respond to the Office
 action. To obtain copies of the cited U.S. patent(s) and/or U.S. patent application
 publication(s), any of the following options may be used, free of charge: 
 

 
 1) Patent Center (for all users if this application is published;
 for registered users associated with this application if this application has not
 published) — A link to Patent Center is available at www.uspto.gov/PatentCenter .
 To obtain the below cited U.S. patent(s) or U.S. patent application publication(s), open
 Patent Center. Enter the present application number (Application #) in the search box
 and then select the search button (magnifying glass). Once the “Application Data” is
 retrieved, select the “Display References” link on the left side of the screen. With the
 “U.S. Patent Documents” tab selected, select “View” next to the document which cites the
 desired U.S. patent(s) and/or U.S. patent application publication(s). Select the “PDF”
 link next to each desired U.S. patent and/or U.S. patent application publication to
 download the relevant document(s). Information on becoming a registered user can be
 found at www.uspto.gov/patents/apply/applying-online/getting-started-new-users .
 For additional information regarding Patent Center or becoming a registered user,
 contact the Electronic Business Center at 1-866-217-9197 (toll-free), 571-272-4100
 (local), or by email at ebc@uspto.gov;
 

 2) Patent Public Search tool (for all users) — A link to the
 Patent Public Search tool is available at www.uspto.gov/PatentPublicSearch . To find a U.S. patent or U.S.
 patent application publication, open the Basic Search feature of the Patent Public
 Search tool by selecting “ Basic Search”. Type the U.S. patent or U.S. patent
 application publication number in the "Quick Lookup" box without any punctuation,
 letters or symbols (for example, U.S. Patent No. 10,000,000 should be entered as
 10000000). Perform any of the below additional formatting may apply:
 
 i) for U.S. utility patents with a patent number less than
 one million, add any leading zero(s) before the patent number necessary to make 7
 total digits (for example, U.S. Patent No. 123,456 should be entered as 0123456); 
 

 ii) for U.S. utility and plant patent application
 publications, make sure to add any leading zero(s) necessary after the year so
 that the full 11 total digits of the application publication number are provided
 (for example, U.S. Publ. No. 2021/0123456 should be entered as 20210123456); 
 

 iii) for U.S. design patents with a patent number greater than
 or equal to one hundred thousand, type the letter “D” in front of the patent
 number with no space in between (for example, U.S. Design Patent No. 123,456
 should be entered as D123456); and for U.S. design patents with a patent number
 less than one hundred thousand, type the letter “D” followed immediately, without
 a space, by the patent number with any leading zero(s) necessary to make 6 total
 digits (for example, U.S. Design Patent No. 12,345 should be entered as D012345); 
 

 iv) for U.S. reissue patents, type the letters “RE” followed
 immediately, without a space, by the patent number with any leading zeros to make
 5 total digits (for example, U.S. Reissue Patent No. 1,234 should be entered as
 RE01234); and 
 

 v) for U.S. plant patents, type the letters “PP” followed
 immediately, with a space, by the patent number with any leading zeros to make 5
 total digits (for example, U.S. Plant Patent No. 1,234 should be entered as
 PP01234). 
 

 
 Then select the "Search" button in the “Quick lookup” box. The
 U.S. patent or U.S. patent application publication will be listed in the “Search
 results” field at the bottom of the screen. Select the “PDF” link to download the
 relevant document. For questions regarding Patent Public Search, please contact the
 Public Search Facility at 571-272-3275 or psf@uspto.gov.
 

 

 3) Patent and Trademark Resource Center (PTRC) (for all users) —
 PTRCs are libraries located throughout the U.S. that provide specialized resources
 regarding patents and trademarks to the public. Information about PTRCs may be found at
 www.uspto.gov/PTRC ;
 or
 

 4) commercial sources.

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

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

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

 Examiner Note:
 
 1. This form paragraph is recommended for use in Office actions citing
 U.S. patent(s) or U.S. patent application publication(s) when the applicant is not
 represented by a registered patent attorney or a registered patent agent.
 

 2. This form paragraph should be followed by a citation to a U.S.
 patent(s) and/or a U.S. patent application publication(s).
 
 
 

 

 

 
 707.05(b) Citation of Related Art and Information by Applicants [R-08.2012]
 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 [R-08.2012]

 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 Subsequent Actions [R-08.2012]

 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 [R-10.2019]

 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,
 and the relevant classification 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 the relevant classification,
 if appropriate, must be given. Foreign patents searched in those Technology
 Centers (TCs) using the International Patent Classification (IPC) will be cited
 using the appropriate IPC subclass/group/subgroup. On the application’s
 
 "Search Notes"
 
 
 FWF form and PTO-892, the
 IPC subclass/group/subgroup shall be cited in the spaces provided for
 “Classification.”
 

 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. 
 

 International registrations published by the World
 Intellectual Property Organization (WIPO) under the Hague Agreement Concerning the
 International Registration of Industrial Designs (also known as published
 international design applications) are not assigned a publication number uniquely
 identifying the published international registration. When citing an international
 registration, both the International Registration Number (referenced by INID Code
 11 in the publication) and the publication date should be included. See the third
 item under example 5 of subsection IV below.
 

 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]. If desired, the
 type of publication (e.g., monograph, serial, database, electronic mail,
 computer program, bulletin board) may also be specified in the type of
 medium designator;
 

 (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) reference to the unique Digital Object
 Identifier (DOI) number, or other unique identification number, if
 known.
 

 (E) if considered necessary, the standard
 identifier and number assigned to the item, e.g., ISBN 2-7654-0537-9, ISSN
 1045-1064. It should be noted that these numbers may differ for the same
 title in the printed and electronic versions.
 

 (F) where multiple renderings of the same document
 are published (e.g., PDF and HTML), an indication of the format (e.g.,
 paper, PDF) and the location of the cited document.
 

 (G) use paragraph numbers, sentence numbers and
 line numbers (if available) to describe the specific location of the cited
 material within an electronic document.
 

 (H) claim numbers, figure numbers, chemical
 formula numbers, mathematical formula numbers, table heading numbers, gene
 sequence numbers, and computer program listing numbers if available.
 

 (I) specific headings within the document
 structure such as Best Mode of Performing the Invention or Industrial
 Applicability can be indicated if page, paragraph, and line numbers are not
 available in a cited patent document in electronic format.
 

 (J) specific passages of the text can 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. 
 

 Where an Internet source, such as a social media
 source, does not provide an ability to download the information as an electronic
 document, screen shots should be captured of the information, and an explanation
 provided as to what can be found in the screen shots.
 

 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 [database online]. Derwent Publications, Ltd. [retrieved on 1998-02-24].
 Retrieved from: Questel. DW9016, Accession No. 90-121923.
 

 

 Example 2: DONG, XR. ‘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]: United States National Library of
 Medicine [retrieved on 24 February 1998]. Retrieved from: Dialog . Medline
 Accession no. 94155687, Dialog Accession No. 07736604.
 

 

 Example 3: JENSEN, BP. ‘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, USA. Accession
 No. 76:956632.
 

 

 Example 4: JP 3002404 (Tamura Toru) 1991-03-13 (abstract). [online]
 [retrieved on 1998-09-02]. Retrieved from: EPOQUE PAJ Database.
 

 

 Examples 5-18: Documents retrieved from the Internet 

 Example 5: (Electronic patent document – not page based) 

 WO 2004/091307 A2 (ADVANCED BIONUTRITON CORP)
 2004-10-28, paragraphs [0068], [0069]; examples 2, 6.
 

 GB 2,432,062 A (GE INSPECTION TECHNOLOGY LP)
 2007.05.09, Detailed Description, third paragraph beginning ‘Referring to
 Figure 2’.
 

 Published International Registration Number
 DM/096222 (SAUL PARISIIS), published on June 9, 2017. Retrieved from the Global
 Design Database ( www.wipo.int/ designdb/en/index.jsp ).
 

 

 Example 6: (Electronically registered Intellectual Property – other than patent
 documents) 

 HU D9900111 Industrial Design Application,
 (HADJDUTEJ TEJIPARI RT, DEBRECEN) 2007-07-19, [database online], [retrieved on
 1999-10-26] Retrieved from the Industrial Design Database of the Hungarian
 Patent Office using Internet <URL: http://elajstrom.hpo.hu/?lang=EN>
 

 

 Example 7: (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 2007-07-18]. Retrieved from
 the Internet:< URL: http: // ieeexplore .ieee.org/xpl/
 freeabs_all.jsp?tp=&arnumber= 569645&isnumber=12370>
 <DOI:10.1109/HPCA.1977.569645>. >.
 

 

 Example 8: (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 2007-07-19]. Retrieved from the Internet:< URL:
 http://books.nap.edu/openbook.php ?record_id=9791&page=24> Chapter 3,
 page 24, table 3-1, ISBN-10: 0-309-06934-3.
 

 

 Example 9: (Electronic Serial – articles or other contributions) 

 AJTAI, Miklos,. Generating Hard Instances of Lattice Problems.
 Electronic Colloquium on Computational Complexity, Report TR96-007
 [serialonline], [retrieved on 1996-01-30]. Retrieved from the Internet <URL:
 http ://eccc. hpi-web.de/pub/eccc/reports/1996/TR96-007/index.html>
 

 

 Example 10: OWEN, RW et al. Olive-oil consumption and health:
 the possible role of antioxidants. Lancet Oncology, Vol 1, No. 2, 1 October
 2000, pp. 107-112 [online], [retrieved on 2007-07-18]. Retrieved from the
 Internet <URL: http://www.ingentaconnect.com/
 content/els/14702045/2000/00000001/00000002/art0001> <DOI:
 10.1016/S1470-2045(00)00015-2>
 

 

 Example 11: (Electronic bulletin boards, message systems, discussion lists, and
 forums – Entire System) 

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

 

 Example 12: (Electronic bulletin boards, message systems, discussion lists, and
 forums – Contributions) 

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

 

 Example 13: (Electronic mail) 

 ‘Plumb design of a visual thesaurus’. The Scout Report
 [online]. 1998, vol. 5 no. 3 [retrieved on 1998-05-18]. Retrieved from Internet
 electronic mail: <listserv@cs.wisc.edu>, subscribe message: info
 scout-report. Retrieved from the Internet: <URL:
 http://scout.wisc.edu/Reports/ScoutReport/1998/scout-980515.html#13> ISSN:
 1092-3861\cf15.
 

 

 Example 14: (Product Manual/Catalogue or other information obtained from a
 website) 

 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>.
 

 

 Examples 15 and 16: Documents retrieved from CD-ROM products 

 Example 15: JP 0800085 A (TORAY IND INC), (abstract), 1996-05-31. In:
 Patent Abstracts of Japan [CD-ROM].
 

 

 Example 16: HAYASHIDA, O et al.: Specific molecular recognition by chiral
 cage-type cyclophanes having leucine, valine, and alanine residues. :
 Tetrahedron 1955, Vol. 51 (31), p. 8423-36. In: Chemical Abstracts [CD-ROM].
 CAS Abstract
 

 

 Examples 17 and 18: Social Media 

 Example 17: (Twitter) 

 Twitter post entitled "There’s more than one way
 to enjoy waffles." 1 page, posted Aug. 24, 2017 by user "@uspto". Retrieved
 from Internet: <https://twitter.com/uspto/status/900721931477032964>.
 

 

 Example 18: (YouTube) 

 Screen captures from YouTube video clip entitled
 "Widget Video Demonstration," 6 pages, uploaded on March 17, 2014 by user
 "jdoe1". Retrieved from Internet: <http://www.youtube.com/widgetdemo>.
 

 

 

 
 707.05(f) Non-Patent Documents Having a Lengthy Citation [R-07.2022]

 In some instances, a citation may be too lengthy to fit
 within the box provided on the PTO-892, “NON-PATENT DOCUMENTS” section. This scenario
 occurs commonly with URLs. When entering lengthy citations, the examiner should
 confirm that the entire citation appears on the PTO-892 form after completing the OC
 reference entry. When the citation does not fit within the box provided, the examiner
 should continue the citation into the next box and should clearly indicate that the
 citation is being continued into the next box. Such citation will be captured as one
 citation, and any explanatory wording (such as “[item U continued]” in the mockup
 below) will not be captured.
 

 

 

 
 707.05(g) Incorrect Citation of References [R-11.2013]

 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. See MPEP § 710.06 . 
 

 One or more of form paragraphs 7.81 ,
 7.82 ,
 7.82.01 , and 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 OG 109
 (May 18, 2004). Therefore, this form paragraph should only be used for foreign patent
 documents, non-patent literature, pending applications that are not stored in the image
 file wrapper (IFW) system, and other information not previously
 supplied.
 

 2. The reference copies being
 supplied must be listed following this form paragraph.
 

 3. This form paragraph must be
 preceded by form paragraph 7.81 and may also be used with form paragraphs
 7.82 or
 7.83. 
 
 

 ¶ 7.83 Copy of Office Action Supplied

 [1] of the last Office action is enclosed.
 

 Examiner Note:
 
 1. In bracket 1, explain what is enclosed. For example: 
 “A corrected copy”

 “A complete copy”

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

 “A Notice of References Cited, Form PTO-892”
 
 

 2. This form paragraph should follow form paragraph 7.81 and may follow form paragraphs 7.82 and 7.82.01 .
 
 
 

 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 [R-11.2013]
 

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

 The citation of 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 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 Patent Trial and Appeal Board 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 Patent Trial and Appeal
 Board, 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
 Official Gazette may also be given.
 

 

 
 707.07 Completeness and Clarity of Examiner’s Action [R-08.2012]

 
 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 [R-08.1012]

 Any form that lists informalities 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) - 707.07(c) [Reserved]

 

 

 
 707.07(d) Language To Be Used in Rejecting Claims [R-10.2019]

 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. Claims should not be grouped together in a common rejection unless that
 rejection is equally applicable to all claims in the group.
 

 The burden is on the Office to establish any prima facie
 case of unpatentability (see, e.g., MPEP §
 2103 ), thus the reasoning behind any rejection must be
 clearly articulated. For example, if the claim is rejected as broader than the
 enabling disclosure, the reason for so holding should be explained; 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.
 

 Most of the form paragraphs for use in rejecting claims are now in
 MPEP Chapter 2100. See especially MPEP §§ 2106.07(a)(1) , 2107.02 , 2117 , 2139.03 , 2148 , 2152.07 , 2157 ,
 2158.01 , 2166 , 2175 , and 2187 
 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 impression that any part of an Office action fails to reflect the
 professional judgment of the examiner or other employee authorizing the action should
 not be created by the action.
 

 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.
 

 

 
 707.07(e) Note All Outstanding Requirements [R-08.2012]

 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 [R-07.2022]

 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 their action on the
 amendment.
 

 Where the applicant traverses any rejection, the examiner should, if
 they repeat 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, they should
 state the reasons for their 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 Patent Trial and Appeal Board 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, 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 of Rejection

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

 Examiner Note:
 
 1. In bracket 1, insert the claim number(s).

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

 ¶ 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 Teaching, Suggestion, or Motivation To Combine

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

 Examiner Note:
 
 1. In bracket 1, explain where the teaching, suggestion,
 or motivation for the rejection is found, either in the references, or in the knowledge
 generally available to one of ordinary skill in the art.
 

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

 ¶ 7.37.05 Unpersuasive Argument: Nonanalogous Art

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

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

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

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

 ¶ 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: The Invention Obtains Result Not
 Contemplated by Prior Art
 

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

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

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

 ¶ 7.37.08 Unpersuasive Argument: Arguing Limitations Which Are Not Claimed

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

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

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

 ¶ 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

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

 Examiner Note:
 
 1. In bracket 1, identify the claim(s) the applicant’s unpersuasive
 argument addresses. 
 

 2. In bracket 2, briefly restate the recitation about which
 applicant is arguing.
 

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

 ¶ 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 [R-07.2015]

 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 .)
 Rejections on grounds such as lack of proper disclosure, lack of enablement,
 indefiniteness and res judicata should be applied where
 appropriate even though there may be a seemingly sufficient rejection on the basis of
 prior art. Where a non-prior art ground of rejection is proper, it should be stated
 with a full development of reasons rather than by a mere conclusion coupled with a
 boiler plate expression.
 

 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 manner of reciting the claimed
 invention.
 

 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 , and 812.01 ;
 

 (D) Where disclosure is directed to perpetual motion. See
 Ex parte Payne , 1904 C.D. 42, 108 OG 1049 (Comm’r Pat.
 1903). However, in such cases, the best prior art readily available should be
 cited and its pertinence 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 in Amendment [R-08.2012]

 See MPEP § 714 , subsection II. G.
 

 

 
 707.07(i) Each Claim To Be Mentioned in Each Office Action [R-01.2024]

 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 after a restriction requirement ( 37 CFR 1.142 )
 or election of species requirement ( 37 CFR 1.146 ) should be treated
 as set out in MPEP §§
 821 to 821.04(b) .
 

 When the application includes multiple dependent
 claims, treat each version of the multiple dependent claim separately in the Office
 action. See MPEP §
 608.01(n) , subsection I.F and Nested Bean, Inc. v.
 Big Beings Pty Ltd. , IPR2020-01234, Paper 42 (Feb. 24, 2023).
 

 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 . 
 

 

 
 707.07(j) State When Claims Are Allowable [R-11.2013]
 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 is especially useful in all cases where it is
 apparent that the applicant is unfamiliar with the proper preparation and
 prosecution of patent applications.
 

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

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

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

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

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

 ¶ 7.43 Objection to Claims, Allowable Subject Matter

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

 

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

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

 Examiner Note:

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

 

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

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

 Examiner Note:

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

 

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

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

 [3] . 
 

 Examiner Note:
 
 1. In bracket 2, insert --is-- or
 --are--.
 

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

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

 ¶ 7.97 Claims Allowed

 Claim [1] allowed. 
 

 

 

 
 707.07(k) Numbering Paragraphs [R-08.2012]

 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 [R-10.2019]

 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(a) or pre-AIA 35 U.S.C. 112 .
 In re Borkowski, 422 F.2d 904, 164 USPQ 642 (CCPA 1970). See
 MPEP §§
 2161 - 2164.08(c) for a discussion of the
 written description and enablement requirements of 35 U.S.C 112 .
 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 §
 2107 et seq. 

 

 

 
 707.08 Reviewing and Initialing by Assistant Examiner [R-01.2024]

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

 ¶ 7.100 Name And Number of Examiner To Be Contacted

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

 Examiner interviews are available via a variety of formats. See
 MPEP §
 713.01 . To schedule an interview, applicant is encouraged to use the
 USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice . 
 

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

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

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

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

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

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

 Information regarding the status of an application may be obtained from
 Patent Center. Status information for published applications may be obtained from Patent
 Center. Status information for unpublished applications is available through Patent Center to
 authorized users only. Should you have questions about access to the USPTO patent electronic
 filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). 
 

 Examiner interviews are available via a variety of formats see
 MPEP §
 713.01 . To schedule an interview, applicant is encouraged to use the
 USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice .
 

 Examiner Note:
 
 1. In bracket 1, insert your name.

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

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

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

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

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

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

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

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

 Information regarding the status of an application may be obtained from
 Patent Center. Status information for published applications may be obtained from Patent
 Center. Status information for unpublished applications is available through Patent Center to
 authorized users only. Should you have questions about access to the USPTO patent electronic
 filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
 

 Examiner interviews are available via a variety of formats.
 See MPEP §
 713.01 . To schedule an interview, applicant is encouraged to use the
 USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice .
 

 Examiner Note:
 
 1. In bracket 1, insert your name.

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

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

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

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

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

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

 The surname or initials of the examiner who prepared the action and the
 date on which the action was prepared should appear at the end of the action. If this
 examiner does not have the authority to sign the action, they should initial as
 appropriate, and forward the action to the authorized signatory examiner for
 signing.
 

 

 
 707.09 Signing by Primary or Other Authorized Examiner [R-11.2013]

 The electronic signature of the Supervisory Patent Examiner, Primary or
 other authorized examiner is inserted to sign Office actions. All Office actions and
 other correspondence should be signed promptly.
 

 

 
 707.10 Entry [R-11.2013]

 The action, signed by the authorized examiner, is soft scanned into the
 IFW and a copy is given electronically or mailed to applicant.
 

 

 
 707.11 Date [R-08.2012]

 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 [R-11.2013]

 Access to the examiner’s action is given electronically or copies are
 mailed after the original, initialed by the assistant examiner, if any, and signed by
 the authorized signatory examiner, has been soft scanned into the image file
 wrapper.
 

 

 
 707.13 Returned Office Action [R-07.2022]

 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, a letter along with a copy of the Office action may be
 sent to the applicant, or the first named inventor if more than one inventor is the
 applicant, informing the applicant of the returned action. If the original
 correspondence address was the same address as the first named inventor, the Office
 action may be sent to the second named inventor where one exists. The time period for
 reply to the Office action may be restarted, if appropriate, to run from the mailing
 date of the letter informing applicant of the returned action. For discussion of when it
 is appropriate to reset or restart a reply period, see MPEP § 710.06 .
 

 A copy of the letter and a copy of the envelope should be added to the
 electronic file. If the period dating from the remailing elapses with no communication
 from applicant, the application is abandoned.
 

 

 [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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