MPEP § 706 — MPEP § 706
Current through: 2022-07-01

706-Rejection of Claims 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 Skip over navigation 
 
 
 
 
 
 
 
 search for patents | search for trademarks 

 
 
 
 
 
 
 
 
 
 
 
 Search 
 
 
 

 
 

 
 
 
 
 
 PATENTS 
 
 Patent Search 

 
 Patent Process 

 
 Patent Classification 

 
 Patent Forms 

 
 Statistics 

 
 Electronic Business Center 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Resources and Guidance 

 
 Office of Data Management 

 
 Announcements 

 
 Initiatives & Events 

 
 International Protection 

 
 Employee Locator 

 
 Contact Patents 

 

 

 
 TRADEMARKS 
 
 Trademark Search 

 
 Trademarks Process 

 
 News & Notices 

 
 Manuals, Guides, Official Gazette 

 
 Laws & Regulations 

 
 Online Filing 

 
 Contact Trademarks 

 

 

 
 IP LAW & POLICY 
 
 Rulemaking 

 
 IP Policy and Enforcement 

 
 Protecting IP Overseas 

 
 Training and Education 

 
 Training Programs & Conferences 

 
 Office of Governmental Affairs 

 
 Office of Chief Economist 

 
 Boards and Counsel 

 

 

 
 PRODUCTS & SERVICES 
 
 Electronic Data Products 

 
 XML Resources 

 
 XML Resources - Retrospective 

 
 USPTO Contact Center Order Form 

 
 Services 

 
 Locate Libraries 

 
 Training/Events 

 
 Online Services Hub 

 

 

 
 INVENTORS 
 
 Patents for Inventors 

 
 Trademarks for Inventors 

 
 Inventors Assistance 

 
 Education and Information 

 
 Scam Prevention 

 
 Pro Se and Pro Bono 

 
 Current Events 

 
 State Resources 

 
 InventorsEye Newsletter 

 

 

 
 NEWS & NOTICES 
 
 Subscription Center 

 
 Press Releases 

 
 Testimony and Speeches 

 
 Director's Forum 

 
 Systems Status 

 
 Emergency Notices 

 
 USPTO Videos 

 
 Official Gazette 

 
 Federal Register Notices 

 
 Event Calendar 

 

 

 
 FAQs 
 
 Patents FAQs 

 
 Trademarks FAQs 

 
 Assignments 

 
 Security 

 
 Musicians and Artists 

 
 Browser Plugins 

 
 Other Web Resources 

 

 

 
 ABOUT US 
 
 USPTO Leadership 

 
 USPTO Organization 

 
 USPTO Offices 

 
 Careers 

 
 Budget, Performance, and Planning 

 
 Statistics 

 
 Vendor Information 

 
 Public Advisory Committees 

 
 National Medal of Technology and Innovation 

 
 IP in Motion 

 
 Contact Us 

 

 

 
 
 

 

 
 

 
 
 
 
 Home Page 

 
 Patents 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 0700 

 Section 706 
 

 
 
 
 
 
 706 Rejection of Claims [R-07.2015]

 After the application has been read and the claimed invention understood, a
 prior art search for the claimed invention is made. With the results of the prior art
 search, including any references provided by the applicant, the patent application should
 be reviewed and analyzed in conjunction with the state of the prior art to determine
 whether the claims define a useful, novel, nonobvious, and enabled invention that has been
 clearly described in the specification. The goal of examination is to clearly articulate
 any rejection early in the prosecution process so that the applicant has the opportunity to
 provide evidence of patentability and otherwise reply completely at the earliest
 opportunity. The examiner then reviews all the evidence, including arguments and evidence
 responsive to any rejection, before issuing the next Office action. Where the examiner
 determines that information reasonably necessary for the examination should be required
 from the applicant under 37 CFR 1.105 , such a requirement should generally be made either
 prior to or with the first Office action on the merits and should follow the procedures in
 MPEP
 § 704.10 et seq. 

 Although this part of the Manual explains the procedure in rejecting
 claims, the examiner should never overlook the importance of his or her role in allowing
 claims which properly define the invention.
 

 
 37 CFR 1.104 Nature of examination. 

 *****

 
 (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.
 

 
 

 
 

 
 *****

 
 I. UNIFORM APPLICATION OF THE PATENTABILITY STANDARD The standards of patentability applied in the examination of claims must
 be the same throughout the Office. In every art, whether it be considered “complex,”
 “newly developed,” “crowded,” or “competitive,” all of the requirements for
 patentability (e.g., patent eligible, useful, novel, nonobvious, enabled, and clearly
 described as provided in 35 U.S.C. 101 , 102 ,
 103 and 112 ) must be met before a claim is
 allowed. The mere fact that a claim recites in detail all of the features of an
 invention (i.e., is a “picture” claim) is never, in itself, justification for the
 allowance of such a claim. 
 

 An application should not be allowed, unless and until issues pertinent
 to patentability have been raised and resolved in the course of examination and
 prosecution, since otherwise the resultant patent would not justify the statutory
 presumption of validity ( 35 U.S.C. 282 ), nor would it
 “strictly adhere” to the requirements laid down by Congress in the 1952 Act as
 interpreted by the Supreme Court. The standard to be applied in all cases is the
 “preponderance of the evidence” test. In other words, an examiner should reject a claim
 if, in view of the prior art and evidence of record, it is more likely than not that the
 claim is unpatentable.
 

 II. DEFECTS IN FORM OR OMISSION OF A LIMITATION; CLAIMS OTHERWISE ALLOWABLE When an application discloses patentable subject matter and it is
 apparent from the claims and the 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.
 

 III. PATENTABLE SUBJECT MATTER DISCLOSED BUT NOT CLAIMED 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, he or she 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.
 

 IV. RECONSIDERATION OF CLAIMS AFTER REPLY BY APPLICANT 
 37 CFR 1.112 Reconsideration before final
 action. 

 After reply by applicant or patent owner (§ 1.111 or §
 1.945 ) to a non-final action and any comments by an inter
 partes reexamination requester (§ 1.947 ), the application or the
 patent under reexamination will be reconsidered and again examined. The applicant, or
 in the case of a reexamination proceeding the patent owner and any third party
 requester, will be notified if claims are rejected, objections or requirements made,
 or decisions favorable to patentability are made, in the same manner as after the
 first examination (§ 1.104 ). Applicant or patent owner
 may reply to such Office action in the same manner provided in § 1.111 or §
 1.945 , with or without amendment, unless such Office action
 indicates that it is made final (§ 1.113 ) or an appeal (§
 41.31 of this title) has been taken (§ 1.116 ), or in
 an inter partes reexamination, that it is an action closing prosecution (§
 1.949 ) or a right of appeal notice (§ 1.953 ). 
 

 

 37 CFR
 1.112 provides for the reconsideration and continued examination
 of an application after reply by the applicant, and for the reconsideration and
 continued examination of a reexamination proceeding after a response by the patent
 owner. If claims are rejected, or objections or requirements are made, the applicant or
 patent owner will be notified in the same manner as notification was provided after the
 first examination. Applicant or patent owner may reply to such Office action (with or
 without amendment) in the same manner provided in 37 CFR 1.111, or 37 CFR 1.945 for
 an inter partes reexamination, unless such Office action indicates
 that it is made final ( 37 CFR 1.113 ), or an appeal under 37 CFR 41.31 has
 been taken ( 37 CFR
 1.116 ), or such Office action indicates in an inter
 partes reexamination that it is an action closing prosecution
 ( 37 CFR
 1.949 ) or a right of appeal notice ( 37 CFR 1.953 ).
 Once an appeal has been taken in an application or in an ex parte 
 reexamination proceeding, any amendment (filed prior to an appeal brief) is subject to
 the provisions of 37
 CFR 1.116(b) and (c) , even if the appeal is in reply to a
 non-final Office action. See 37 CFR 41.33(b) for amendments filed
 with or after the filing of an appeal brief.
 

 V. REJECTIONS IN STATUTORY INVENTION REGISTRATIONS See MPEP
 Chapter 1100 for rejection of claims in an application for a
 Statutory Invention Registration.
 

 
 706.01 Contrasted With Objections [R-11.2013]

 The refusal to grant claims because the subject matter as claimed is
 considered unpatentable is called a “rejection.” The term “rejected” must be applied to
 such claims in the examiner’s action. If the form of the claim (as distinguished from
 its substance) is improper, an “objection” is made. An example of a matter of form as to
 which objection is made is dependency of a claim on a rejected claim, if the dependent
 claim is otherwise allowable. See MPEP § 608.01(n) . The practical
 difference between a rejection and an objection is that a rejection, involving the
 merits of the claim, is subject to review by the Patent Trial and Appeal Board, while an
 objection, if persisted, may be reviewed only by way of petition to the Director of the
 USPTO. 
 

 Similarly, the Board will not hear or decide issues pertaining to
 objections and formal matters which are not properly before the Board. These formal
 matters should not be combined in appeals to the Board.
 

 

 
 706.02 Rejection on Prior Art [R-10.2019]

 [Editor Note: Information pertaining to
 the choice of best art, reliance on abstracts and foreign language documents, and the
 distinction between 35 U.S.C. 102 and 103 has been moved to MPEP §
 2120 . Information pertaining to determining the effective
 filing date of a claimed invention has been moved to MPEP §
 2139.01 for applications subject to pre-AIA 35 U.S.C.
 102 and MPEP § 2152.01 for applications
 subject to AIA 35 U.S.C. 102 . Information pertaining to the rejection of
 claims corresponding to patent claims has been moved to MPEP §
 706.06 .] 

 By far the most frequent ground of rejection is on the ground of
 unpatentability in view of the prior art, that is, that the claimed subject matter is
 either not novel under 35 U.S.C. 102 , or else it is obvious under 35 U.S.C. 103 . The
 language to be used in rejecting claims should be unequivocal. See MPEP § 707.07(d) .
 

 For general information on rejections based on prior art,
 see MPEP §
 2120 et seq. For information specific to rejections based on
 pre-AIA 35 U.S.C.
 102 , see MPEP §§ 2132 - 2139.03 . For information specific to rejections under
 AIA 35
 U.S.C. 102 , see MPEP §§
 2151 - 2156 .
 

 
 706.02(a) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to rejections under 35 U.S.C. 102(a)(1) or (a)(2) 
 and pre-AIA 35
 U.S.C. 102(a), (b), or (e) based on a printed publication or
 patent has been moved to MPEP §
 2120.01 .] 

 
 706.02(a)(1) [Reserved] [R-10.2019]

 [Editor Note: Information
 pertaining to determining whether to apply 35 U.S.C.
 102(a)(1) or 102(a)(2) has been moved to
 MPEP § 2152.05 .] 

 

 
 706.02(a)(2) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to whether to apply pre-AIA 35 U.S.C.102(a), (b), or
 (e) has been moved to MPEP §
 2139.02 .] 

 

 

 
 706.02(b) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to overcoming a 35 U.S.C. 102 rejection based
 on a printed publication or patent has been moved to MPEP §
 2120.01 .] 

 
 706.02(b)(1) [Reserved] [R-10.2019]

 [Editor Note: Information
 pertaining to overcoming a 35 U.S.C. 102(a)(1) or
 102(a)(2) rejection based on a printed publication or
 patent has been moved to MPEP §
 2152.06 .] 

 

 
 706.02(b)(2) [Reserved] [R-10.2019]

 [Editor Note: Information
 pertaining to overcoming a rejection based on a printed publication or patent
 has been moved to MPEP § 2132.01 for rejections
 under pre-AIA
 35 U.S.C. 102(a) , MPEP §
 2133.02(a) for rejections under pre-AIA 35 U.S.C.
 102(b) , and MPEP §§ 2136.05 -
 2136.05(b) for rejections under pre-AIA 35 U.S.C.
 102(e) .] 

 

 

 
 706.02(c) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to rejections under 35 U.S.C. 102(a)(1) and
 pre-AIA 35
 U.S.C. 102(a) or (b) based on knowledge by others or public
 use or sale has been moved to MPEP §
 2120.02 .] 

 
 706.02(c)(1) [Reserved] [R-10.2019]

 [Editor Note: Information
 pertaining to rejections under 35 U.S.C. 102(a)(1) based
 on public use has been moved to MPEP §
 2152.02(c) , and information pertaining to rejections
 under 35 U.S.C. 102(a)(1) based
 on sales or offers for sale has been moved to MPEP §
 2152.02(d) .] 

 

 
 706.02(c)(2) [Reserved] [R-10.2019]

 [Editor Note: Information
 pertaining to whether to make a rejection under pre-AIA 35 U.S.C.
 102(a) or (b) when the claimed
 invention was known, in public use, or on sale, has been moved to
 MPEP § 2139.02 . For additional information relating
 to such rejections see MPEP § 2132 for a discussion
 of rejections under pre-AIA 35 U.S.C. 102(a) 
 and MPEP §
 2133.03 et seq. for a discussion of case law treating
 the “public use” and “on sale” statutory bars of pre-AIA 35 U.S.C.
 102(b) .] 

 

 

 
 706.02(d) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to rejections under pre-AIA 35 U.S.C. 102(c) has
 been moved to MPEP
 § 2134 .] 

 

 
 706.02(e) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to rejections under pre-AIA 35 U.S.C. 102(d) has
 been moved to MPEP
 § 2135 .] 

 

 
 706.02(f) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining to
 rejections under pre-AIA 35 U.S.C. 102(e) has been moved to
 MPEP §
 2136 .] 

 
 706.02(f)(1) [Reserved] [R-10.2019]

 [Editor Note: Examination
 guidelines for applying references under pre-AIA 35 U.S.C. 102(e) 
 have been moved to MPEP §
 2136 .] 

 

 
 706.02(f)(2) [Reserved] [R-10.2019]

 [Editor Note: Information
 pertaining to provisional rejections based on a copending U.S. application has
 been moved to MPEP § 2154.01(d) for
 rejections under AIA 35 U.S.C. 102(a)(2) and to
 MPEP §
 2136.01 for rejections under pre-AIA 35 U.S.C.
 102(e) .] 

 

 

 
 706.02(g) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to rejections under pre-AIA 35 U.S.C. 102(f) has
 been moved to MPEP
 § 2137 .] 

 

 
 706.02(h) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to rejections under pre-AIA 35 U.S.C. 102(g) has
 been moved to MPEP
 § 2138 .] 

 

 
 706.02(i) [Reserved] [R-10.2019]

 [Editor Note: Form paragraphs for use
 in rejections under AIA 35 U.S.C. 102 have been moved
 to MPEP § 2152.07 , and form paragraphs for use in
 rejections under pre-AIA 35 U.S.C. 102 have been moved to
 MPEP § 2139.03 .] 

 

 
 706.02(j) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to the contents of a 35 U.S.C. 103 rejection has
 been moved to MPEP
 § 2142 .] 

 

 
 706.02(k) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to provisional obviousness rejections using provisional prior art under
 pre-AIA 35
 U.S.C. 102(e) has been moved to MPEP §
 2146.03(a) , and information pertaining to the
 requirements to claim the benefit of a prior filed application under
 35 U.S.C.
 120 has been moved to MPEP §
 2109 , subsection VI.] 

 

 
 706.02(l) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to the applicability of pre-AIA 35 U.S.C. 103(c) to
 obviousness rejections using prior art under only pre-AIA 35 U.S.C. 102(e), (f),
 or (g) has been moved to MPEP §
 2146 .] 

 
 706.02(l)(1) [Reserved] [R-10.2019]

 [Editor Note: Information
 pertaining to prior art disqualification under pre-AIA 35 U.S.C.
 103(c) has been moved to MPEP §
 2146.01 .] 

 

 
 706.02(l)(2) [Reserved] [R-10.2019]

 [Editor Note: Information
 pertaining to establishing common ownership or joint research agreement under
 pre-AIA 35
 U.S.C. 103(c) has been moved to MPEP §
 2146.02 .] 

 

 
 706.02(l)(3) [Reserved] [R-10.2019]

 [Editor Note: Information
 pertaining to examination procedure with respect to pre-AIA 35 U.S.C.
 103(c) has been moved to MPEP §
 2146.03 .] 

 

 

 
 706.02(m) [Reserved] [R-10.2019]

 [Editor Note: Form paragraphs for
 making rejections under pre-AIA 35 U.S.C. 103(a) have
 been moved to MPEP § 2148 and form paragraphs
 for making rejections under AIA 35 U.S.C. 103 have been moved
 to MPEP § 2158.01 . In addition, form paragraph
 7.06.01 has been moved to MPEP §
 2124.01 .] 

 

 
 706.02(n) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to biotechnology process applications and pre-AIA 35 U.S.C. 103(b) has
 been moved to MPEP §
 2147 .] 

 

 

 
 706.03 Rejections Not Based on Prior Art [R-10.2019]

 Under the principles of compact prosecution, each claim should be
 reviewed for compliance with every statutory requirement for patentability in the
 initial review of the application, even if one or more claims are found to be deficient
 with respect to some statutory requirement. Deficiencies should be explained clearly,
 particularly when they serve as a basis for a rejection. Whenever practicable, USPTO
 personnel should indicate how rejections may be overcome and how problems may be
 resolved. Where a rejection not based on prior art is proper (lack of adequate written
 description, enablement, or utility, etc.) such rejection should be stated with a full
 development of the reasons rather than by a mere conclusion.
 

 Rejections based on nonstatutory subject matter are explained in
 MPEP §§
 2105 and 2106 - 2106.07(c) . Rejections based on lack of utility are explained
 in MPEP §§
 2107 - 2107.03 . Rejections based on subject
 matter barred by the Atomic Energy Act are explained in MPEP §
 2104.01 . Rejections based on subject matter that is directed
 to tax strategies are explained in MPEP § 2124.01 , and rejections based on
 subject matter that is directed to a human organism are explained in
 MPEP §
 2105 . Rejections based on duplicate claims are addressed
 in MPEP §
 608.01(m) , and double patenting rejections are addressed in
 MPEP §
 804 . See MPEP §§ 608.04 and
 2163.06 for rejections based on new matter. Foreign
 filing without a license is discussed in MPEP § 140 . Disclaimer and rejections
 after interference are explained in MPEP Chapter 2300 , res
 judicata is discussed in MPEP § 2190 , rejections in reissue
 applications are explained in MPEP Chapter 1400 , and improper Markush
 groupings are explained in MPEP § 2117 . Rejections based on
 35 U.S.C.
 112 are discussed in MPEP §§ 2161 - 2174 and
 2185 . 
 

 
 706.03(a) [Reserved] [R-10.2019]

 [Editor Note: The overview of the
 requirements of 35 U.S.C. 101 has been moved to MPEP §
 2104 . Form paragraphs for use in rejections based on
 lack of subject matter eligibility have been moved to MPEP §
 2106.07(a)(1) , the form paragraph for use in rejecting a
 claim as being directed to a human organism has been moved to
 MPEP §
 2105 , form paragraphs for use in rejections based on
 lack of utility have been moved to MPEP § 2107.02 , subsection IV,
 and form paragraphs for use in rejecting claims based on improper inventorship in
 applications subject to AIA 35 U.S.C. 102 have been moved
 to MPEP § 2157 .] 

 

 
 706.03(b) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to patents barred by the Atomic Energy Act has been moved to MPEP §
 2104.01 .] 

 

 
 706.03(c) [Reserved] [R-10.2019]

 [Editor Note: Form paragraphs for use
 in rejections made under 35 U.S.C. 112(a) or
 pre-AIA 35
 U.S.C. 112 , first paragraph, have been moved to
 MPEP § 2166 .] 

 

 
 706.03(d) [Reserved] [R-10.2019]

 [Editor Note: Form paragraphs for use
 in rejections made under 35 U.S.C. 112(b) or
 pre-AIA 35
 U.S.C. 112 , second paragraph, have been moved to
 MPEP § 2175 .] 

 

 
 706.03(e) [Reserved] [R-10.2019]

 [Editor Note: Form paragraphs for use
 in rejections made under 35 U.S.C. 112(f) or
 pre-AIA 35
 U.S.C. 112 , sixth paragraph, have been moved to
 MPEP
 § 2187 .] 

 

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

 

 

 
 706.03(k) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to duplicate claims has been moved to MPEP §
 608.01(m) .] 

 

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

 

 

 
 706.03(o) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to objection to an amendment that adds new matter to the specification has been
 moved to MPEP §
 608.04(a) .] 

 

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

 

 

 
 706.03(s) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to foreign filing without a foreign filing license has been moved to
 MPEP §
 140 , subsection III.] 

 

 
 706.03(t) [Reserved]

 

 

 
 706.03(u) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to rejections based on disclaimer has been moved to MPEP §
 2304.04(c) .] 

 

 
 706.03(v) [Reserved] [R-10.2019]

 [Editor Note: For rejections
 following an interference, see MPEP Chapter 2300 . Effective
 September 16, 2012, former 37 CFR. 1.292 authorizing petitions seeking institution
 of public use proceedings was removed from title 37. For information regarding
 rejections after the institution of public use proceedings, see MPEP § 706.03(v)
 of the August 2012 revision of the MPEP available from www.uspto.gov/web/offices/pac/mpep/old/
 mpep_E8R9.htm .] 

 

 
 706.03(w) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to rejections based on res judicata has been moved to MPEP § 2190 ,
 subsection II.] 

 

 
 706.03(x) [Reserved] [R-10.2019]

 [Editor Note: The examination of
 reissue applications is covered in MPEP Chapter 1400 . See especially
 MPEP §
 1412.03 for rejection of improperly broadened reissue
 claims, MPEP §
 1444 for rejection of claims as being based on a
 defective reissue oath or declaration, and MPEP § 1442 for the special
 status of reissue applications.] 

 

 
 706.03(y) [Reserved] [R-10.2019]

 [Editor Note: Information pertaining
 to improper Markush groupings has been moved to MPEP §
 2117 .] 

 

 

 
 706.04 Rejection of Previously Allowed Claims [R-01.2024]

 A claim noted as allowable may be rejected only after a primary examiner
 has considered all the facts. An Office action rejecting a previously allowed claim must
 be signed by a primary examiner. See MPEP § 1004 .
 

 Great care should be exercised in making such a rejection.

 PREVIOUS ACTION BY DIFFERENT
 EXAMINER When an examiner is assigned to act on an application which has
 received one or more actions by some other examiner, the examiner should review the
 previous search to ensure it is thorough and complete. See MPEP § 904.02 . In
 general, an examiner should not take an entirely new approach or attempt to reorient
 the point of view of a previous examiner, or make a new search in the mere hope of
 finding something. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 
 126 F. Supp. 2d 69, 139, 57 USPQ2d 1449, 1499-50 (D. Mass.
 2001).
 

 Because it is unusual to reject a previously allowed claim, the
 examiner should point out in the office action that the claim now being rejected was
 previously allowed by using Form Paragraph 7.50 .
 

 ¶ 7.50 Claims Previously Allowed, Now Rejected, New Art

 The indicated allowability of claim [1] is withdrawn in view of the newly discovered reference(s) to [2] . Rejection(s) based on the newly cited reference(s) follow.
 

 Examiner Note:
 
 1. In bracket 2, insert the name(s) of the newly discovered reference.

 2. Any action including this form paragraph requires the signature of a Primary Examiner. MPEP § 1004 .
 
 
 

 

 
 706.05 Rejection After Allowance of Application [R-08.2012]

 See MPEP
 § 1308.01 for a rejection based on a reference after
 allowance. 
 

 

 
 706.06 Rejection of Claims Copied From Patent [R-10.2019]

 When claims corresponding to claims of a patent are
 presented in an application, the examiner must determine whether the presented claims
 are unpatentable on any ground(s), e.g., under 35 U.S.C. 101 , 102 ,
 103 , 112 , double patenting, etc. If any of the claims
 presented in the application are rejectable on any grounds, they should be so rejected.
 The ground of rejection of the claims presented in the application may or may not be one
 which would also be applicable to the corresponding claims in the patent. If the ground
 of rejection is also applicable to the corresponding claims in the patent, any Office
 action including the rejection must have the approval of the Technology Center Director.
 See MPEP §
 1003 . For interferences and derivation proceedings, see
 MPEP Chapter
 2300 and 37 CFR Parts 41 and 42.
 

 

 
 706.07 Final Rejection [R-01.2024]

 
 37 CFR 1.113 Final rejection or action. 

 
 (a) On the second or any subsequent examination or consideration
 by the examiner the rejection or other action may be made final, whereupon
 applicant’s, or for ex parte reexaminations filed under § 1.510 ,
 patent owner’s reply is limited to appeal in the case of rejection of any claim
 (§ 41.31 of this title), or to amendment as specified in §
 1.114 or § 1.116 . Petition may be
 taken to the Director in the case of objections or requirements not involved in
 the rejection of any claim (§ 1.181 ). Reply to a final
 rejection or action must comply with § 1.114 or paragraph (c) of
 this section. For final actions in an inter partes reexamination filed under §
 1.913 , see § 1.953 .
 

 
 
 (b) In making such final rejection, the examiner shall repeat or
 state all grounds of rejection then considered applicable to the claims in the
 application, clearly stating the reasons in support thereof.
 

 (c) Reply to a final rejection or action must include cancellation
 of, or appeal from the rejection of, each rejected claim. If any claim stands
 allowed, the reply to a final rejection or action must comply with any
 requirements or objections as to form.
 

 
 

 Before final rejection is in order a clear issue should be developed
 between the examiner and applicant. To bring the prosecution to as speedy conclusion as
 possible and at the same time to deal justly by both the applicant and the public, the
 invention as disclosed and claimed should be thoroughly searched in the first action and
 the references fully applied; and in reply to this action the applicant should amend
 with a view to avoiding all the grounds of rejection and objection. Switching from one
 subject matter to another in the claims presented by applicant in successive amendments,
 or from one set of references to another by the examiner in rejecting in successive
 actions claims of substantially the same subject matter, will alike tend to defeat
 attaining the goal of reaching a clearly defined issue for an early termination, i.e.,
 either an allowance of the application or a final rejection.
 

 While applicant does not have the right to amend as often as the
 examiner presents new references or reasons for rejection, examiners should not make
 hasty and ill-considered final rejections. The applicant who is seeking to define their
 invention in claims that will give them the patent protection to which they are justly
 entitled should receive the cooperation of the examiner to that end, and not be
 prematurely cut off in the prosecution of their application.
 

 The examiner should never lose sight of the fact that in every case the
 applicant is entitled to a full and fair hearing, and that a clear issue between
 applicant and examiner should be developed, if possible, before appeal. However, it is
 to the interest of the applicants as a class as well as to that of the public that
 prosecution of an application be confined to as few actions as is consistent with a
 thorough consideration of its merits.
 

 STATEMENT OF GROUNDS In making the final rejection, all outstanding grounds of rejection
 of record should be carefully reviewed, and any such grounds relied on in the final
 rejection should be reiterated. They must also be clearly developed to such an extent
 that applicant may readily judge the advisability of an appeal unless a single
 previous Office action contains a complete statement supporting the rejection.
 

 However, where a single previous Office action contains a complete
 statement of a ground of rejection, the final rejection may refer to such a statement
 and also should include a rebuttal of any arguments raised in the applicant’s reply.
 If appeal is taken in such a case, the examiner’s answer should contain a complete
 statement of the examiner’s position. The final rejection letter should conclude with
 Form Paragraph 7.39 .
 

 ¶ 7.39 Action Is Final

 THIS ACTION IS MADE FINAL . Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a) . 
 

 A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action.
 In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is
 not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire
 on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply
 expire later than SIX MONTHS from the mailing date of this final action.
 

 Examiner Note:
 
 1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).
 

 2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
 
 
 

 Form paragraph 7.39.01 must be used when the last
 response was signed only by the applicant (pro se) who is not a practitioner to
 notify applicant of options available after final rejection.
 

 ¶ 7.39.01 Final Rejection, Options for Applicant, Pro Se

 This action is a final rejection and closes the prosecution
 of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to
 an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements
 set forth below, or a request for continued examination (RCE) to reopen prosecution where
 permitted. Please note that the Office also offers initiatives that are available to
 applicants after the close of prosecution. See www.uspto.gov/patents/initiatives/
 uspto-patent-application-initiatives-timeline for more information.
 

 General information on the Patent Trial and Appeal Board is available
 at: www.uspto.gov/patents/ptab . The information at this page includes guidance
 on time limited options that may assist the applicant contemplating appealing an examiner’s
 rejection. It also includes information on pro bono (free) legal services and advice available
 for those who are under-resourced and considering an appeal at: www.uspto.gov/patents/ptab/free-legal-assistance . The page is best
 reviewed promptly after applicant has received a final rejection or the claims have been twice
 rejected because some of the noted assistance must be requested within one month from the date
 of the latest rejection. See MPEP § 1204 for more information on filing a notice of appeal. 
 

 If applicant should desire to appeal any rejection made by the examiner,
 a Notice of Appeal must be filed within the period for reply. The Notice of Appeal must be
 accompanied by the fee required by 37 CFR 41.20(b)(1) . The current fee amount
 is available at: www.uspto.gov/Fees .
 

 If applicant should desire to file an after-final amendment, entry of the
 proposed amendment cannot be made as a matter of right unless it merely cancels claims or
 complies with a formal requirement made in a previous Office action. Amendments touching the
 merits of the application which otherwise might not be proper may be admitted upon a showing
 of good and sufficient reasons why they are necessary and why they were not presented
 earlier.
 

 A reply under 37 CFR 1.113 to a final rejection must
 include cancellation of or appeal from the rejection of, each rejected claim. The filing of an
 amendment after final rejection, whether or not it is entered, does not stop the running of
 the statutory period for reply to the final rejection unless the examiner holds all of the
 claims to be in condition for allowance. 
 

 If applicant should desire to continue prosecution in a utility or
 plant application filed on or after May 29, 2000 and have the finality of this Office action
 withdrawn, an RCE under 37
 CFR 1.114 may be filed within the period for reply. See
 MPEP §
 706.07(h) for more information on the requirements for filing an
 RCE.
 

 The application will become abandoned unless a Notice of Appeal, an
 after final reply that places the application in condition for allowance, or an RCE has been
 filed properly within the period for reply, or any extension of this period obtained under
 either 37 CFR 1.136(a) or
 (b) .
 

 Examiner Note:
 
 1. This form paragraph must be used when the last response was
 signed only by the applicant (pro se) who is not a patent practitioner.
 

 2. This form paragraph must be preceded by any one of form paragraphs
 7.39 ,
 7.40 ,
 7.40.01 ,
 7.40.02.aia , 7.40.02.fti ,
 7.41 ,
 7.42.03.fti , or 7.42.09 .
 
 
 

 The Office Action Summary Form PTOL-326 should be used in all Office
 actions up to and including final rejections.
 

 For amendments filed after final rejection, see MPEP § 714.12 and
 §
 714.13 .
 

 For final rejection practice in reexamination proceedings see
 MPEP §
 2271 .
 

 
 706.07(a) Final Rejection, When Proper on Second Action [R-01.2024]

 Second or any subsequent actions on the merits shall be final, except
 where the examiner introduces a new ground of rejection that is neither necessitated
 by applicant’s amendment of the claims, nor based on information submitted in an
 information disclosure statement filed during the period set forth in
 37 CFR
 1.97(c) with the fee set forth in 37 CFR
 1.17(p) . Where information is submitted in an information
 disclosure statement during the period set forth in 37 CFR 1.97(c) 
 with a fee, the examiner may use the information submitted, e.g., a printed
 publication or evidence of public use, and make the next Office action final whether
 or not the claims have been amended, provided that no other new ground of rejection
 which was not necessitated by amendment to the claims is introduced by the examiner.
 See MPEP §
 609.04(b) . Furthermore, a second or any subsequent action
 on the merits in any application will not be made final if it includes a rejection on
 newly cited art other than information submitted in an information disclosure
 statement filed under 37 CFR 1.97(c) with the fee set
 forth in 37 CFR 1.17(p) , of any claim not
 amended or amended in a way that does not necessitate a new ground of rejection by
 applicant or patent owner in spite of the fact that other claims may have been
 amended to require newly cited art. Where prior art is submitted in a reply to a
 requirement under 37 CFR 1.105 , the examiner may NOT make the next Office action
 relying on that art final unless all instances of the application of such art are
 necessitated by amendment. A dependent claim is treated as amended if the independent
 claim or any claim it references is amended because a dependent claim incorporates
 all the subject matter of the referenced claim(s). See 35 U.S.C.
 112(d) and 37 CFR 1.75 .
 

 For guidance in determining what constitutes a new
 ground of rejection, see MPEP § 1207.03(a) .
 

 If rejoinder occurs after a first Office action on the
 merits and if any of the rejoined claims are unpatentable (e.g., a rejection under
 35
 U.S.C. 112(a) is made), the next Office action may be made
 final if the rejection of the rejoined claims was necessitated by applicant’s
 amendment, or based on information submitted in an information disclosure statement
 filed during the period set forth in 37 CFR 1.97(c) with the fee set
 forth in 37 CFR 1.17(p) . See MPEP § 821.04 et seq . for more information on rejoinder.
 

 A second or any subsequent action on the merits in any application or
 patent involved in reexamination proceedings should not be made final if it includes
 a rejection on prior art not of record of any claim amended to include limitations
 which should reasonably have been expected to be claimed. See MPEP § 904 et seq. However, note that an examiner cannot be expected to
 foresee whether or how an applicant will amend a claim to overcome a rejection except
 in very limited circumstances (e.g., where the examiner suggests how applicant can
 overcome a rejection under 35 U.S.C. 112(b) or
 pre-AIA 35
 U.S.C. 112 , second paragraph).
 

 A second or any subsequent action on the merits in any application or
 patent involved in reexamination proceedings may not be made final if it contains a
 new ground of rejection necessitated by the amendments to pre-AIA 35 U.S.C.
 102(e) by the Intellectual Property and High Technology
 Technical Amendments Act of 2002 (Public Law 107-273, 116 Stat. 1758 (2002)), unless
 the new ground of rejection was necessitated by an amendment to the claims or as a
 result of information submitted in an information disclosure statement under
 37 CFR
 1.97(c) with the fee set forth in 37 CFR
 1.17(p) .
 

 When applying any 35 U.S.C. 102(a)(2) or
 pre-AIA 35
 U.S.C. 102(e) / 103 references against the claims
 of an application, the examiner should anticipate that a statement averring
 common ownership may qualify the applicant for the exception under 35 U.S.C.
 102(b)(2)(C) or a statement of common ownership at the time the
 invention was made may disqualify any patent or application applied in a rejection
 under 35 U.S.C.
 103 based on 35 U.S.C. 102(e) . If such a
 statement is filed in reply to the 35 U.S.C. 102(a)(2) or
 pre-AIA
 35 U.S.C. 102(e) / 103 rejection and the claims are
 not amended, the examiner may not make the next Office action final if a new
 rejection is made. See MPEP §§ 2146.03 and
 2154.02(c) . 
 

 When a reference’s subject matter is excepted as prior
 art under the joint research agreement (JRA) provision of 35 U.S.C.
 102(b)(2)(C) and 102(c) or a reference is
 disqualified as prior art under the JRA provision of pre-AIA 35 U.S.C.
 103(c) and a pending rejection is thereby overcome, the
 examiner may need to make a new double patenting rejection based upon the excepted
 subject matter or disqualified reference in the next Office action. The next Office
 action may be made final even if applicant did not amend the claims (provided that
 the examiner introduces no other new ground of rejection that was not necessitated by
 either amendment or an information disclosure statement filed during the time period
 set forth in 37 CFR
 1.97(c) with the fee set forth in 37 CFR
 1.17(p) ). The Office action is properly made final because the
 new double patenting rejection was necessitated by amendment of the application by
 applicant.
 

 Where the only changes in a rejection are based on treating the
 application as subject to current 35 U.S.C. 102 rather than the
 version of 35 U.S.C. 102 in effect on March 15, 2013, (the pre-AIA
 version) or the reverse, and any prior art relied upon in the subsequent action was
 prior art under both versions of 35 U.S.C. 102 , then the action
 may be made final. For example, if a first action relied upon a reference as being
 available under pre-AIA 35 U.S.C. 102(e) and the subsequent action relied only
 on the same reference but under 35 U.S.C. 102(a)(2) , the
 subsequent action may be made final assuming no new requirements or non-prior art
 rejections were made.
 

 If an applicant amends the claims without attempting to show
 patentable novelty, the examiner should not allow the claims. See
 MPEP §
 714.04 . The claims may be finally rejected if, in the
 opinion of the examiner, they are clearly open to rejection on grounds of record.
 

 Form paragraph 7.40 should be used where an action
 is made final including new grounds of rejection necessitated by applicant’s
 amendment.
 

 ¶ 7.40 Action Is Final, Necessitated by Amendment

 Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL . See MPEP § 706.07(a) . Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a) . 
 

 A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action.
 In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is
 not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire
 on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply
 expire later than SIX MONTHS from the mailing date of this final action.
 

 Examiner Note:
 
 1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).
 

 2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
 
 
 

 ¶ 7.40.01 Action Is Final, Necessitated by IDS With Fee

 Applicant’s submission of an
 information disclosure statement under 37 CFR 1.97(c) with the fee set forth in
 37 CFR
 1.17(p) on [1] prompted the new ground(s) of rejection
 presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL . See
 MPEP §
 609.04(b) . Applicant is reminded of the extension of time policy as
 set forth in 37 CFR
 1.136(a) . 
 

 A shortened statutory period for reply
 to this final action is set to expire THREE MONTHS from the mailing date of this action. In
 the event a first reply is filed within TWO MONTHS of the mailing date of this final action
 and the advisory action is not mailed until after the end of the THREE-MONTH shortened
 statutory period, then the shortened statutory period will expire on the date the advisory
 action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from
 the mailing date of the advisory action. In no event, however, will the statutory period for
 reply expire later than SIX MONTHS from the mailing date of this final action.
 

 Examiner Note:
 
 1. This form paragraph should not be used and a final
 rejection is improper where there is another new ground of rejection introduced by the
 examiner that was not necessitated by amendment to the claims.
 

 2. In bracket 1, insert the filing
 date of the information disclosure statement containing the identification of the item
 of information used in the new ground of rejection.
 
 
 

 ¶ 7.40.02.aia Action Is Final, Necessitated by Invoking the Joint Research
 Agreement Prior Art Exception Under 35 U.S.C. 102(b)(2)(C)
 

 Applicant’s submission of the requirements for the joint research
 agreement prior art exception under 35 U.S.C. 102(b)(2)(C) on [1] 
 prompted the new double patenting rejection presented in this Office action. Accordingly,
 THIS ACTION IS MADE FINAL . See MPEP § 2156 .
 Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a) . 
 

 A shortened statutory period for reply to this final action is set to
 expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed
 within TWO MONTHS of the mailing date of this final action and the advisory action is not
 mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened
 statutory period will expire on the date the advisory action is mailed, and any extension fee
 pursuant to 37 CFR
 1.136(a) will be calculated from the mailing date of the advisory
 action. In no event, however, will the statutory period for reply expire later than SIX MONTHS
 from the mailing date of this final action.
 

 Examiner Note:
 
 1. This form paragraph should only be used in an application filed
 on or after March 16, 2013, where the claims are being examined under 35 U.S.C.
 102 / 103 as amended by the Leahy-Smith
 America Invents Act. This form paragraph must be preceded by form paragraph
 7.03.aia .
 

 2. This form paragraph should not be used, and a final rejection is
 improper, where there is another new ground of rejection introduced by the examiner that
 was not necessitated by amendment to the claims nor based on information submitted in an
 information disclosure statement filed during the period set forth in 37 CFR 1.97(c) 
 with the fee set forth in 37 CFR 1.17(p) .
 

 3. In bracket 1, insert the filing date of the submission of the
 requirements for the joint research agreement prior art exception as defined under
 35 U.S.C.
 102(c) .
 
 
 

 ¶ 7.40.02.fti Action Is Final, Necessitated by Invoking the Joint Research
 Agreement Prior Art Disqualification Under Pre-AIA 35 U.S.C. 103(c)
 

 Applicant’s submission of the requirements for the joint research
 agreement prior art disqualification under pre-AIA 35 U.S.C. 103(c) on
 [1] prompted the new double patenting rejection presented in this Office
 action. Accordingly, THIS ACTION IS MADE FINAL . See MPEP § 706.07(a) . Applicant
 is reminded of the extension of time policy as set forth in 37 CFR 1.136(a) . 
 

 A shortened statutory period for reply to this final action is set to
 expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed
 within TWO MONTHS of the mailing date of this final action and the advisory action is not
 mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened
 statutory period will expire on the date the advisory action is mailed, and any extension fee
 pursuant to 37 CFR
 1.136(a) will be calculated from the mailing date of the advisory
 action. In no event, however, will the statutory period for reply expire later than SIX MONTHS
 from the mailing date of this final action.
 

 Examiner Note:
 
 1. This form paragraph should not be used and a final rejection is
 improper where there is another new ground of rejection introduced by the examiner that
 was not necessitated by amendment to the claims nor based on information submitted in an
 information disclosure statement filed during the period set forth in 37 CFR 1.97(c) 
 with the fee set forth in 37 CFR 1.17 .
 

 2. In bracket 1, insert the filing date of the submission of the
 requirements for the joint research agreement prior art disqualification under
 pre-AIA 35 U.S.C.
 103(c) .
 
 
 

 

 
 706.07(b) Final Rejection, When Proper on First Action [R-01.2024]

 In certain situations, the claims of a new application
 may be finally rejected in the first Office action or the claims of an application
 for which a request for continued examination (RCE) has been filed may be finally
 rejected in the action immediately subsequent to the filing of the RCE (with a
 submission and fee under 37 CFR 1.114 ). 
 

 For a new application, claims may be finally rejected in the first
 Office action when (A) the new application is a continuing application of, or a
 substitute for, an earlier application, and (B) all claims of the new application (1)
 are identical to, patentably indistinct from, or have unity of invention with, the
 claims in the earlier application (in other words, restriction (including lack of
 unity) would not have been proper if the new or amended claims had been entered in
 the earlier application), and (2) would have been properly finally rejected on the
 grounds and art of record in the next Office action if they had been entered in the
 earlier application.
 

 For an application in which an RCE has been filed, claims may be
 finally rejected in the first action following the filing of the RCE (with a
 submission and fee under 37 CFR 1.114 ) when all the claims
 in the application after the entry of the submission under 37 CFR 1.114 
 and any entered supplemental amendments (A) are identical to, patentably indistinct
 from, or have unity of invention with the claims in the application prior to the
 entry of the submission under 37 CFR 1.114 (in other words,
 restriction (including lack of unity of invention) would not have been proper if the
 new or amended claims had been entered prior to the filing of the RCE), and (B) would
 have been properly finally rejected on the grounds and art of record in the next
 Office action if they had been entered in the application prior to the filing of the
 RCE under 37 CFR
 1.114 . Note that applicants cannot use an RCE to obtain
 continued examination on the basis of claims that are independent and distinct from,
 or lack unity of invention with, the claims previously claimed and examined as a
 matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145 
 and MPEP §
 706.07(h) , subsection VI. Therefore, condition (A) is
 always met where the RCE is accompanied by a submission that will be entered as a
 matter of right.
 

 It would not be proper to make final a first Office action in a
 continuing or substitute application where that application contains material which
 was presented in the earlier application after final rejection or closing of
 prosecution but was denied entry because (A) new issues were raised that required
 further consideration and/or search, or (B) the issue of new matter was raised.
 Similarly, it would not be proper to make final a first Office action after the
 filing of an RCE where material was presented after final rejection or closing of
 prosecution and prior to the filing of the RCE, but was denied entry because (A) new
 issues were raised that required further consideration and/or search, or (B) the
 issue of new matter was raised.
 

 Further, it would not be proper to make final a first Office action
 in a continuation-in-part application where any claim includes subject matter not
 present in the earlier application.
 

 A request for an interview prior to first action on a continuing or
 substitute application should ordinarily be granted.
 

 A first action final rejection should be made by using Form
 Paragraphs 7.41 or 7.41.03 , as
 appropriate.
 

 ¶ 7.41 Action Is Final, First Action

 This is a [1] of applicant’s earlier Application No.
 [2] . All claims are identical to, patentably indistinct from, or have unity of
 invention with the invention claimed in the earlier application (that is, restriction
 (including lack of unity) would not be proper) and could have been finally rejected on the
 grounds and art of record in the next Office action if they had been entered in the earlier
 application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first
 action in this case. See MPEP §
 706.07(b) . Applicant is reminded of the extension of time policy as
 set forth in 37 CFR
 1.136(a) . 
 

 A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action.
 In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is
 not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire
 on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply
 expire later than SIX MONTHS from the mailing date of this final action.
 

 Examiner Note:
 
 1. In bracket 1, insert either --continuation-- or --substitute--, as appropriate.

 2. If an amendment was refused entry in the parent case on the grounds that it raised new issues or new matter, this form paragraph
 cannot be used. See MPEP § 706.07(b) .
 

 3. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP-1 or 2 months).
 

 4. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.
 
 
 

 ¶ 7.41.03 Action Is Final, First Action Following Submission Under 37 CFR
 1.53(d), Continued Prosecution Application (CPA) in a Design Application
 

 All claims are identical to or patentably indistinct from the invention
 claimed in the parent application prior to the filing of this Continued Prosecution
 Application under 37 CFR
 1.53(d) (that is, restriction would not be proper) and could have been
 finally rejected on the grounds and art of record in the next Office action. Accordingly,
 THIS ACTION IS MADE FINAL even though it is a first action after the filing
 under 37 CFR
 1.53(d) . Applicant is reminded of the extension of time policy as set
 forth in 37 CFR
 1.136(a) .
 

 A shortened statutory period for reply
 to this final action is set to expire THREE MONTHS from the mailing date of this action. In
 the event a first reply is filed within TWO MONTHS of the mailing date of this final action
 and the advisory action is not mailed until after the end of the THREE-MONTH shortened
 statutory period, then the shortened statutory period will expire on the date the advisory
 action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from
 the mailing date of the advisory action. In no event, however, will the statutory period for
 reply expire later than SIX MONTHS from the mailing date of this final action.
 

 Examiner Note:
 
 1. This form paragraph is for a
 first action final rejection in a Continued Prosecution Application filed under
 37 CFR
 1.53(d) (design applications only).
 

 2. This form paragraph must be
 preceded by one of form paragraphs 2.30 or 2.35 , as appropriate.
 
 
 

 ¶ 7.42.09 Action Is Final, First Action Following Request for Continued
 Examination under 37 CFR 1.114
 

 All claims are identical to, patentably indistinct from, or have unity
 of invention with the claims in the application prior to the entry of the submission under
 37 CFR
 1.114 (that is, restriction (including a lack of unity of invention)
 would not be proper) and all claims could have been finally rejected on the grounds and art of
 record in the next Office action if they had been entered in the application prior to entry
 under 37 CFR
 1.114 . Accordingly, THIS ACTION IS MADE FINAL even though
 it is a first action after the filing of a request for continued examination and the
 submission under 37 CFR
 1.114 . See MPEP § 706.07(b). Applicant is reminded of the extension of time
 policy as set forth in 37
 CFR 1.136(a) .
 

 A shortened statutory period for
 reply to this final action is set to expire THREE MONTHS from the mailing date of this action.
 In the event a first reply is filed within TWO MONTHS of the mailing date of this final action
 and the advisory action is not mailed until after the end of the THREE-MONTH shortened
 statutory period, then the shortened statutory period will expire on the date the advisory
 action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from
 the mailing date of the advisory action. In no event, however, will the statutory period for
 reply expire later than SIX MONTHS from the mailing date of this final action.
 

 Examiner Note:

 This form paragraph is for a first
 action final rejection following a Request for Continued Examination filed under
 37 CFR
 1.114 .
 

 

 

 
 706.07(c) Final Rejection, Premature [R-11.2013]

 Any question as to prematureness of a final rejection should be
 raised, if at all, while the application is still pending before the primary
 examiner. This is purely a question of practice, wholly distinct from the tenability
 of the rejection. It may therefore not be advanced as a ground for appeal, or made
 the basis of complaint before the Patent Trial and Appeal Board. It is reviewable by
 petition under 37 CFR 1.181 . See MPEP § 1002.02(c) .
 

 

 
 706.07(d) Final Rejection, Withdrawal of, Premature [R-08.2012]

 If, on request by applicant for reconsideration, the primary examiner
 finds the final rejection to have been premature, he or she should withdraw the
 finality of the rejection. The finality of the Office action must be withdrawn while
 the application is still pending. The examiner cannot withdraw the final rejection
 once the application is abandoned.
 

 Once the finality of the Office action has been withdrawn, the next
 Office action may be made final if the conditions set forth in MPEP § 706.07(a) 
 are met.
 

 Form paragraph 7.42 should be used when withdrawing
 the finality of the rejection of the last Office action.
 

 ¶ 7.42 Withdrawal of Finality of Last Office Action 

 Applicant’s request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore,
 the finality of that action is withdrawn.
 

 

 

 
 706.07(e) Withdrawal of Final Rejection, General [R-08.2012]

 See MPEP § 714.12 and § 714.13 for amendments after final
 rejection.
 

 Once a final rejection that is not premature has been entered in an
 application/reexamination proceeding, it should not be withdrawn at the applicant’s
 or patent owner’s request except on a showing under 37 CFR
 1.116(b) . Further amendment or argument will be considered in
 certain instances. An amendment that will place the application either in condition
 for allowance or in better form for appeal may be admitted. Also, amendments
 complying with objections or requirements as to form are to be permitted after final
 action in accordance with 37 CFR 1.116(a) .
 

 The examiner may withdraw the rejection of finally rejected claims.
 If new facts or reasons are presented such as to convince the examiner that the
 previously rejected claims are in fact allowable or patentable in the case of
 reexamination, then the final rejection should be withdrawn. Occasionally, the
 finality of a rejection may be withdrawn in order to apply a new ground of
 rejection.
 

 Although it is permissible to withdraw a final rejection for the
 purpose of entering a new ground of rejection, this practice is to be limited to
 situations where a new reference either fully meets at least one claim or meets it
 except for differences which are shown to be completely obvious. Normally, the
 previous rejection should be withdrawn with respect to the claim or claims involved.
 See MPEP §
 1207.03 for a discussion of what may constitute a new
 ground of rejection.
 

 The practice should not be used for application of subsidiary
 references, or of cumulative references, or of references which are merely considered
 to be better than those of record.
 

 When a final rejection is withdrawn, all amendments filed after the
 final rejection are ordinarily entered.
 

 New grounds of rejection made in an Office action reopening
 prosecution after the filing of an appeal brief require the approval of the
 supervisory patent examiner. See MPEP § 1002.02(d) .
 

 

 
 706.07(f) Time for Reply to Final Rejection [R-10.2019]

 The time for reply to a final rejection is as follows:

 
 (A) All final rejections setting a 3-month shortened statutory
 period (SSP) for reply should contain one of form paragraphs
 7.39 , 7.40 ,
 7.40.01 , 7.40.02.fti , 7.40.02.aia ,
 7.41 , 7.41.03 ,
 7.42.03.fti , 7.42.031.fti , or 7.42.09 
 advising applicant that if the first reply is filed within 2 months of the date
 of the final Office action, the shortened statutory period will expire at 3
 months from the date of the final rejection or on the date the advisory action
 is mailed, whichever is later. Thus, a variable reply period will be
 established. If the last day of “2 months of the date of the final Office
 action” falls on Saturday, Sunday, or a federal holiday within the District of
 Columbia, and a reply is filed on the next succeeding day which is not a
 Saturday, Sunday, or a federal holiday, pursuant to 37 CFR
 1.7(a) , the reply is deemed to have been filed within the
 2 months period and the shortened statutory period will expire at 3 months from
 the date of the final rejection or on the mailing date of the advisory action,
 whichever is later (see MPEP § 710.05 ). In no event
 can the statutory period for reply expire later than 6 months from the mailing
 date of the final rejection.
 

 (B) This procedure of setting a variable reply period in the final
 rejection dependent on when applicant files a first reply to a final Office
 action does not apply to situations where a SSP less than 3 months is set,
 e.g., reissue litigation applications (1-month SSP) or any reexamination
 proceeding.
 

 I. ADVISORY ACTIONS 
 (C) Where the final Office action sets a variable reply period
 as set forth in paragraph (A) above AND applicant files a complete first
 reply to the final Office action within 2 months of the date of the final
 Office action, the examiner must determine if the reply:
 
 (1) places the application in condition for allowance —
 then the application should be processed as an allowance and no
 extension fees are due;
 

 (2) places the application in condition for allowance
 except for matters of form which the examiner can change without
 authorization from applicant, MPEP § 1302.04 — then
 the application should be amended as required and processed as an
 allowance and no extension fees are due; or
 

 (3) does not place the application in condition for
 allowance — then the advisory action should inform applicant that the
 SSP for reply expires 3 months from the date of the final rejection or
 as of the mailing date of the advisory action, whichever is later, by
 checking box 1.b) at the top portion of the Advisory Action form,
 PTOL-303.
 

 
 

 
 
 (D) Where the final Office action sets a variable reply period
 as set forth in paragraph (A) above, and applicant does NOT file a complete
 first reply to the final Office action within 2 months, examiners should
 check box 1.a) at the top portion of the Advisory Action form, PTOL-303.
 

 
 
 (E) When box 1.b) at the top portion of the Advisory Action
 form, PTOL-303 is checked, the time for applicant to take further action
 (including the calculation of extension fees under 37 CFR
 1.136(a) ) begins to run 3 months from the date of the
 final rejection, or from the date of the advisory action, whichever is
 later. Extension fees cannot be prorated for portions of a month. In no
 event can the statutory period for reply expire later than 6 months from the
 date of the final rejection. For example, if applicant initially replies
 within 2 months from the date of mailing of a final rejection and the
 examiner mails an advisory action before the end of 3 months from the date
 of mailing of the final rejection, the shortened statutory period will
 expire at the end of 3 months from the date of mailing of the final
 rejection. In such case, if a petition for extension of time is granted, the
 due date for a reply is computed from the date stamped or printed on the
 Office action with the final rejection. See MPEP
 § 710.01(a) . If the examiner, however, does not
 mail an advisory action until after the end of the 3-month period, the
 shortened statutory period will expire on the date the examiner mails the
 advisory action and any extension of time fee would be calculated from the
 mailing date of the advisory action.
 

 
 
 II. EXAMINER’S AMENDMENTS 
 (F) Where a complete first reply to a final Office action has
 been filed within 2 months of the final Office action, an examiner’s
 amendment to place the application in condition for allowance may be made
 without the payment of extension fees even if the examiner’s amendment is
 made more than 3 months from the date of the final Office action. Note that
 an examiner’s amendment may not be made more than 6 months from the date of
 the final Office action, as the application would be abandoned at that point
 by operation of law.
 

 (G) Where a complete first reply to a final Office action has
 not been filed within 2 months of the final Office action, applicant’s
 authorization to make an amendment to place the application in condition for
 allowance must be made either within the 3 month shortened statutory period
 or within an extended period for reply that has been petitioned and paid for
 by applicant pursuant to 37 CFR 1.136(a) .
 However, an examiner’s amendment correcting only formal matters that are
 identified for the first time after a reply is made to a final Office action
 would not require any extension fee, since the reply to the final Office
 action put the application in condition for allowance except for the
 correction of formal matters, the correction of which had not yet been
 required by the examiner.
 

 (H) An extension of time under 37 CFR
 1.136(a) requires a petition for an extension and the
 appropriate fee provided for in 37 CFR
 1.17 . Where an extension of time is necessary to place
 an application in condition for allowance (e.g., when an examiner’s
 amendment is necessary after the shortened statutory period for reply has
 expired), applicant may file the required petition and fee or give
 authorization to the examiner to make the petition of record and charge a
 specified fee to a deposit account. Office employees may not accept oral
 (telephonic) instructions to complete the Credit Card Payment Form or
 otherwise charge a patent process fee (as opposed to information product or
 service fees) to a credit card. When authorization to make a petition for an
 extension of time of record is given to the examiner, the authorization must
 be given before the extended period expires. The authorization must be made
 of record in an examiner’s amendment by indicating the name of the person
 making the authorization, when the authorization was given, the deposit
 account number to be charged, the length of the extension requested and the
 amount of the fee to be charged to the deposit account. Form Paragraph
 13.02.02 should be used. 
 

 
 ¶ 13.02.02 Extension of Time and Examiner’s Amendment Authorized

 An extension of time under 37 CFR 1.136(a) is required in order to
 make an examiner’s amendment that places this application in condition for allowance. During a
 conversation conducted on [1] , [2] requested an extension of time
 for [3] MONTH(S) and authorized the Director to charge Deposit Account No.
 [4] the required fee of $ [5] for this extension and authorized
 the following examiner’s amendment. Should the changes and/or additions be unacceptable to
 applicant, an amendment may be filed as provided by 37 CFR 1.312 . To ensure consideration of
 such an amendment, it MUST be submitted no later than the payment of the issue fee.
 

 Examiner Note:
 
 1. See MPEP § 706.07(f) which explains when an extension of time is
 needed in order to make amendments to place the application in condition for
 allowance.
 

 2. In no case can any extension carry the date for reply to an
 Office action beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C.
 133 ).
 
 
 
 III. PRACTICE AFTER FINAL 
 (I) Replies after final should be processed and considered
 promptly by all Office personnel.
 

 (J) Replies after final should not be considered by the examiner
 unless they are filed within the SSP or are accompanied by a petition for an
 extension of time and the appropriate fee ( 37 CFR
 1.17 and 37 CFR 1.136(a) ). See
 also MPEP §
 710.02(e) . This requirement also applies to
 supplemental replies filed after the first reply.
 

 (K) Interviews may be conducted after the expiration of the
 shortened statutory period for reply to a final Office action but within the
 6-month statutory period for reply without the payment of
 an extension fee.
 

 (L) Formal matters that are identified for the first time after
 a reply is made to a final Office action and that require action by
 applicant to correct may be required in an Ex parte
 Quayle action if the application is otherwise in condition for
 allowance. No extension fees would be required since the reply puts the
 application in condition for allowance except for the correction of formal
 matters — the correction of which had not yet been required by the
 examiner.
 

 (M) If prosecution is to be reopened after a final Office
 action has been replied to, the finality of the previous Office action
 should be withdrawn to avoid the issue of abandonment and the payment of
 extension fees. For example, if a new reference comes to the attention of
 the examiner which renders unpatentable a claim indicated to be allowable,
 the Office action should begin with a statement to the effect: “The finality
 of the Office action mailed is hereby withdrawn in view of the new ground of
 rejection set forth below.” Form paragraph 7.42 could be
 used in addition to this statement. See MPEP §
 706.07(d) .
 

 
 

 
 706.07(g) Transitional After-Final Practice [R-07.2015]

 
 37 CFR 1.129 Transitional procedures for limited examination after final rejection and
 restriction practice. 

 
 (a) An applicant in an application, other than for reissue or a
 design patent, that has been pending for at least two years as of June 8,
 1995, taking into account any reference made in such application to any
 earlier filed application under 35 U.S.C. 120 ,
 121 and 365(c) , is entitled to
 have a first submission entered and considered on the merits after final
 rejection under the following circumstances: The Office will consider such a
 submission, if the first submission and the fee set forth in §
 1.17(r) are filed prior
 to the filing of an appeal brief and prior to abandonment of the
 application. The finality of the final rejection is automatically withdrawn
 upon the timely filing of the submission and payment of the fee set forth in
 § 1.17(r) . If a subsequent
 final rejection is made in the application, applicant is entitled to have a
 second submission entered and considered on the merits after the subsequent
 final rejection under the following circumstances: The Office will consider
 such a submission, if the second submission and a second fee set forth in §
 1.17(r) are filed prior
 to the filing of an appeal brief and prior to abandonment of the
 application. The finality of the subsequent final rejection is automatically
 withdrawn upon the timely filing of the submission and payment of the second
 fee set forth in § 1.17(r) . Any submission
 filed after a final rejection made in an application subsequent to the fee
 set forth in § 1.17(r) having been
 twice paid will be treated as set forth in § 1.116 .
 A submission as used in this paragraph includes, but is not limited to, an
 information disclosure statement, an amendment to the written description,
 claims or drawings and a new substantive argument or new evidence in support
 of patentability.
 

 
 *****

 
 (c) The provisions of this section shall not be applicable to
 any application filed after June 8, 1995.
 

 
 

 In order to facilitate the completion of prosecution of applications
 pending in the USPTO as of June 8, 1995 and to ease the transition between a 17-year
 patent term and a 20-year patent term, Public Law 103-465 provided for the further
 limited reexamination of an application pending for 2 years or longer as of June 8,
 1995, taking into account any reference made in the application to any earlier filed
 application under 35 U.S.C. 120 , 121 , or
 365(c) . The further limited reexamination permits applicants
 to present for consideration, as a matter of right upon payment of a fee, a
 submission after a final rejection has been issued on an application. An applicant
 will be able to take advantage of this provision on two separate occasions provided
 the submission and fee are presented prior to the filing of the Appeal Brief and
 prior to abandonment of the application. This will have the effect of enabling an
 applicant to essentially remove the finality of the prior Office action in the
 pending application on two separate occasions by paying a fee for each occasion,
 and avoid the impact of refiling the application to obtain consideration of
 additional claims and/or information relative to the claimed subject matter. The
 transitional after-final practice is only available to applications filed on or
 before June 8, 1995 and it is not available for reissue or design applications or
 reexamination proceedings.
 

 The following flowchart illustrates the transitional after-final
 procedures set forth in 37 CFR 1.129(a) .
 

 

 Effective June 8, 1995, in any pending application having an actual
 or effective filing date of June 8, 1993 or earlier, applicant is entitled, under
 37 CFR
 1.129(a) , to have a first submission after final rejection
 entered and considered on the merits, if the submission and the fee set forth in
 37 CFR 1.17(r) are filed prior to the filing of an Appeal
 Brief under 37 CFR
 41.37 and prior to abandonment. For an application entering national
 stage under 35
 U.S.C. 371 or an application filed under 35 U.S.C.
 111(a) claiming benefit under 35 U.S.C.
 120 of a PCT application designating the U.S., the PCT
 international filing date will be used to determine whether the application has been
 pending for at least 2 years as of June 8, 1995.
 

 Form paragraph 7.41.01.fti may be used to notify
 applicant that the application qualifies under 37 CFR 1.129(a) .
 

 ¶ 7.41.01.fti Transitional After Final Practice, First Submission (37 CFR
 1.129(a))
 

 This application is subject to the provisions of Public
 Law 103-465, effective June 8, 1995. Accordingly, since this application has been pending for
 at least two years as of June 8, 1995, taking into account any reference to an earlier-filed
 application under 35 U.S.C. 120 , 121 or 365(c) , applicant, under
 37 CFR
 1.129(a) , is entitled to have a first submission entered and considered
 on the merits if, prior to abandonment, the submission and the fee set forth in
 37
 CFR 1.17(r) are filed prior to the filing of an appeal brief under
 37 CFR
 41.37 . Upon the timely filing of a first submission and the appropriate
 fee of $ [1] for a [2] entity under 37 CFR
 1.17(r) , the finality of the previous Office action will be withdrawn.
 If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were
 filed prior to or with the payment of the fee set forth in 37 CFR
 1.17(r) , the payment of the fee set forth in 37 CFR
 1.17(r) by applicant will be construed as a request to dismiss the
 appeal and to continue prosecution under 37 CFR 1.129(a) . In view of
 35 U.S.C.
 132 , no amendment considered as a result of payment of the fee set forth
 in 37
 CFR 1.17(r) may introduce new matter into the disclosure of the
 application.
 

 If applicant has filed multiple proposed amendments which,
 when entered, would conflict with one another, specific instructions for entry or non-entry of
 each such amendment should be provided upon payment of any fee under 37 CFR
 1.17(r) .
 

 Examiner Note:
 
 1. This form paragraph may follow any of form
 paragraphs 7.39
 - 7.41 in any application filed prior to June 9, 1995,
 which has been pending for at least two years as of June 8, 1995, taking into account
 any reference under 35 U.S.C. 120 , 121 or
 365(c) to a previously filed application
 and no previous fee has been paid under 37 CFR
 1.17(r) . 
 

 2. This form paragraph should NOT be used in a design or
 reissue application, or in a reexamination proceeding.
 

 3. In bracket 1, insert the current fee for a large or
 small entity, as appropriate.
 

 4. In bracket 2, insert --small-- or --large--,
 depending on the current status of the application. 
 
 
 

 The submission under 37 CFR 1.129(a) may comprise, but
 is not limited to, an information disclosure statement (IDS), an amendment to the
 written description, claims or drawings, a new substantive argument and/or new
 evidence. No amendment considered as a result of payment of the fee set forth in
 37
 CFR 1.17(r) may introduce new matter into the disclosure of the
 application 35
 U.S.C. 132 . In view of the fee set forth in 37 CFR
 1.17(r) , any (IDS) previously refused consideration in the
 application because of applicant’s failure to comply with 37 CFR 1.97(c) or
 (d) will be treated as though it has been filed within one of
 the time periods set forth in 37 CFR 1.97(b) and will be
 considered without the petition and petition fee required in 37 CFR 1.97(d) ,
 if it complies with the requirements of 37 CFR 1.98 . Any IDS submitted
 under 37 CFR
 1.129(a) on or after June 8, 2005 without a statement specified in
 37 CFR
 1.97(e) will be treated as though it had been filed within the
 time period set forth in 37 CFR 1.97(c) with the fee set
 forth in 37 CFR 1.17(p) . The examiner may
 introduce a new ground of rejection based on the information submitted in the IDS and
 make the next Office action final provided that the examiner introduces no other new
 ground of rejection, which has not been necessitated by amendment to the claims. See
 MPEP §
 706.07(a) .
 

 If the application qualifies under 37 CFR
 1.129(a) , that is, it was filed on or before June 8, 1995 and the
 application has an effective U.S. filing date of June 8, 1993 or earlier, the
 examiner must check to see if the submission and 37 CFR
 1.17(r) fee were filed prior to the filing of the Appeal Brief
 and prior to abandonment of the application. If an
 amendment was timely filed in reply to the final rejection but the fee set forth in
 37
 CFR 1.17(r) did not accompany the amendment, examiners will
 continue to consider these amendments in an expedited manner as set forth in
 MPEP
 § 714.13 and issue an advisory action notifying applicant
 whether the amendment has been entered. If the examiner indicated in an advisory
 action that the amendment has not been entered, applicant may then pay the fee set
 forth in 37 CFR 1.17(r) and any necessary
 fee to avoid abandonment of the application and obtain entry and consideration of the
 amendment as a submission under 37 CFR 1.129(a) . If the
 submission and the fee set forth in 37 CFR 1.17(r) were timely filed
 in reply to the final rejection and no advisory action has been issued prior to the
 payment of the fee set forth in 37 CFR 1.17(r) , no advisory
 action will be necessary. The examiner will notify applicant that the finality of the
 previous office action has been withdrawn pursuant to 37 CFR
 1.129(a) . It is noted that if the submission is accompanied by a
 “conditional” payment of the fee set forth in 37 CFR
 1.17(r) , i.e., an authorization to charge the fee set forth in
 37
 CFR 1.17(r) to a deposit account or to a credit card in the
 event that the submission would not otherwise be entered, the Office will treat the
 conditional payment as an unconditional payment of the 37 CFR
 1.17(r) fee.
 

 The finality of the final rejection is automatically withdrawn upon
 the timely filing of the submission and payment of the fee set forth in
 37
 CFR 1.17(r) . Upon the timely payment of the fee set forth in
 37 CFR 1.17(r) , all previously unentered submissions, and
 submissions filed with the 37 CFR 1.17(r) fee will be
 entered in the order in which they were filed absent specific instructions for entry.
 Any conflicting amendments should be clarified for entry by the applicant upon
 payment of the 37 CFR 1.17(r) fee. Form
 paragraph 7.42.01.fti should be used to notify applicant that
 the finality of the previous Office action has been withdrawn.
 

 ¶ 7.42.01.fti Withdrawal of Finality of Last Office Action - Transitional
 Application Under 37 CFR 1.129(a)
 

 Since this application is eligible for the transitional procedure of
 37 CFR
 1.129(a) , and the fee set forth in 37 CFR
 1.17(r) has been timely paid, the finality of the previous Office action
 has been withdrawn pursuant to 37 CFR 1.129(a) . Applicant’s
 [1] submission after final filed on [2] has been entered.
 

 Examiner Note:
 
 Insert --first-- or --second-- in bracket
 1.
 
 
 

 If a Notice of Appeal and the appeal fee set forth in
 37 CFR
 41.20(b) were filed prior to or with the payment of the fee set
 forth 37 CFR 1.17(r) , the payment of the fee set forth in
 37
 CFR 1.17(r) by applicant is construed as a request to dismiss
 the appeal and to continue prosecution under 37 CFR 1.129(a) .
 

 Upon the timely payment of the fee set forth in 37 CFR
 1.17(r) , if the examiner determines that the submission is not
 fully responsive to the previous Office action, e.g., if the submission only includes
 an information disclosure statement, applicant will be given a new shortened
 statutory period of 2 months to submit a complete reply. Form paragraph
 7.42.02.fti
 should be used.
 

 ¶ 7.42.02.fti Nonresponsive Submission Filed Under 37 CFR
 1.129(a)
 

 The timely submission under 37 CFR 1.129(a) filed on
 [1] is not fully responsive to the prior Office action because
 [2] . Since the submission appears to be a bona fide attempt
 to provide a complete reply to the prior Office action, applicant is given a shortened
 statutory period of TWO MONTHS from the mailing date of this letter to submit a complete
 reply. This shortened statutory period supersedes the time period set in the prior Office
 action. This time period may be extended pursuant to 37 CFR 1.136(a) . If a
 notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or
 with the payment of the fee set forth in 37 CFR
 1.17(r) , the payment of the fee set forth in 37 CFR
 1.17(r) by applicant is construed as a request to dismiss the appeal and
 to continue prosecution under 37 CFR 1.129(a) . The appeal stands
 dismissed.
 

 Examiner Note:

 The reasons why the examiner considers the submission
 not to be fully responsive must be set forth in bracket 2.
 

 
 I. SUBMISSIONS UNDER 37 CFR 1.129(a) FILED PRIOR TO JUNE 8, 2005 After submission and payment of the fee set forth in
 37 CFR 1.17(r) , the next Office action on the merits may be
 made final only under the conditions for making a first action in a continuing
 application final set forth in MPEP § 706.07(b) . 
 

 Form paragraph 7.42.03.fti may be used if it is
 appropriate to make the first action final following a submission under
 37 CFR
 1.129(a) filed prior to June 8, 2005.
 

 ¶ 7.42.03.fti Action Is Final, First Action Following Submission Under 37
 CFR 1.129(a) Filed Prior to June 8, 2005
 

 All claims are drawn to the same invention claimed in the
 application prior to the entry of the submission under 37 CFR 1.129(a) and
 could have been finally rejected on the grounds and art of record in the next Office action if
 they had been entered in the application prior to entry under 37 CFR 1.129(a) .
 Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the
 submission under 37
 CFR 1.129(a) . See MPEP § 706.07(b) . Applicant is reminded of
 the extension of time policy as set forth in 37 CFR 1.136(a) .
 

 A shortened statutory period for reply to this final
 action is set to expire THREE MONTHS from the mailing date of this action. In the event a
 first reply is filed within TWO MONTHS of the mailing date of this final action and the
 advisory action is not mailed until after the end of the THREE-MONTH shortened statutory
 period, then the shortened statutory period will expire on the date the advisory action is
 mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from
 the mailing date of the advisory action. In no event, however, will the statutory period for
 reply expire later than SIX MONTHS from the mailing date of this final action.
 

 Examiner Note:

 Also use form paragraph 7.41.02.fti if this is a final
 rejection following a first submission under 37 CFR
 1.129(a) .
 

 

 If a subsequent final rejection is made in the application,
 applicant would be entitled to have a second submission entered and considered on
 the merits under the same conditions set forth for consideration of the first
 submission. Form paragraph 7.41.02.fti should be used.
 

 ¶ 7.41.02.fti Transitional After Final Practice, Second Submission (37 CFR
 1.129(a))
 

 Since the fee set forth in 37 CFR
 1.17(r) for a first submission subsequent to a final rejection has been
 previously paid, applicant, under 37 CFR 1.129(a) , is entitled to have a
 second submission entered and considered on the merits if, prior to abandonment, the second
 submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the
 filing of an appeal brief under 37 CFR 41.37 . Upon the timely filing of a
 second submission and the appropriate fee of $ [1] for a [2] entity
 under 37 CFR 1.17(r) , the finality of the previous Office action will be
 withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were
 filed prior to or with the payment of the fee set forth in 37 CFR
 1.17(r) , the payment of the fee set forth in 37 CFR
 1.17(r) by applicant will be construed as a request to dismiss the
 appeal and to continue prosecution under 37 CFR 1.129(a) . In view of
 35 U.S.C.
 132 , no amendment considered as a result of payment of the fee set forth
 in 37
 CFR 1.17(r) may introduce new matter into the disclosure of the
 application.
 

 Examiner Note:
 
 1. This form paragraph is to follow any of form
 paragraphs 7.39
 - 7.41 in any application filed prior to June 9, 1995,
 which has been pending for at least two years as of June 8, 1995, taking into account
 any reference under 35 U.S.C. 120 , 121 or
 365(c) to a previously filed application
 and a first submission fee has been previously paid under
 37 CFR 1.17(r) .
 

 2. This form paragraph should NOT be used in a design or
 reissue application or in a reexamination proceeding.
 

 3. In bracket 1, insert the current fee for a large or
 small entity, as appropriate.
 

 4. In bracket 2, insert --small-- or --large--,
 depending on the current status of the application.
 

 5. If the fee set forth in 37 CFR
 1.17(r) has been twice paid, the provisions of 37 CFR
 1.129(a) are no longer available.
 
 
 

 Any submission filed after a final rejection made in the
 application subsequent to the fee set forth in 37 CFR
 1.17(r) having been twice paid will be treated in accordance
 with the current after-final practice set forth in 37 CFR
 1.116 . 
 

 II. SUBMISSIONS UNDER 37 CFR 1.129(a) FILED ON OR AFTER JUNE 8, 2005 For timely submission and payment of the fee set forth in
 37 CFR 1.17(r) on or after June 8, 2005, the next Office
 action on the merits will be equivalent to the next Office action following a
 reply to a non-final Office action. Under existing second Office action final
 practice, such an Office action on the merits will be made final, except where the
 examiner introduces a new ground of rejection that is neither necessitated by
 applicant’s amendment of the claims nor based on information submitted in an IDS
 filed during the period set forth in 37 CFR 1.97(c) with the fee
 set forth in 37 CFR 1.17(p) . See
 MPEP §
 706.07(a) .
 

 Form paragraph 7.42.031.fti may be used to make
 the next Office action final following a submission under 37 CFR
 1.129(a) filed on or after June 8, 2005.
 

 ¶ 7.42.031.fti Action Is Final, Action Following Submission Under 37 CFR
 1.129(a) Filed On or After June 8, 2005
 

 Under the final action practice for Office actions
 following a submission under 37 CFR 1.129(a) filed on or after June 8,
 2005, the next Office action following timely filing of a submission under 37 CFR 1.129(a) 
 will be equivalent to the next Office action following a reply to a non-final Office action.
 Under existing Office second action final practice, such an Office action on the merits will
 be made final, except where the examiner introduces a new ground of rejection that is neither
 necessitated by applicant’s amendment of the claims nor based on information submitted in an
 information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the
 fee set forth in 37 CFR 1.17(p) . See MPEP §
 706.07(a) .
 

 In this Office action, there is no new ground of rejection
 that was not necessitated by applicant’s amendment of the claims or based on information
 submitted in an information disclosure statement filed during the period set forth in
 37 CFR
 1.97(c) with the fee set forth in 37 CFR
 1.17(p) . Accordingly, THIS ACTION IS MADE FINAL . Applicant
 is reminded of the extension of time policy as set forth in 37 CFR
 1.136(a) .
 

 A shortened statutory period for reply to this final
 action is set to expire THREE MONTHS from the mailing date of this action. In the event a
 first reply is filed within TWO MONTHS of the mailing date of this final action and the
 advisory action is not mailed until after the end of the THREE-MONTH shortened statutory
 period, then the shortened statutory period will expire on the date the advisory action is
 mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from
 the mailing date of the advisory action. In no event, however, will the statutory period for
 reply expire later than SIX MONTHS from the mailing date of this final action.
 

 Examiner Note:

 Also use form paragraph 7.41.02.fti if this is a final
 rejection following a first submission under 37 CFR 1.129(a) 

 

 An applicant whose application is eligible for the transitional
 further limited examination procedure set forth in 37 CFR
 1.129(a) is entitled to consideration of two after final
 submissions. Thus, if such an applicant has filed one submission under
 37 CFR
 1.129(a) and the application is again under a final
 rejection, the applicant is entitled to only one additional submission under
 37 CFR
 1.129(a) . If such an applicant has filed two submissions
 under 37 CFR
 1.129(a) and the application is again under a final
 rejection, applicant is not entitled to have any additional submissions considered
 under 37 CFR
 1.129(a) . Applicant may be entitled to consideration of an
 additional submission if the submission meets the conditions set forth in
 37 CFR
 1.116 .
 

 

 
 706.07(h) Request for Continued Examination (RCE) Practice [R-01.2024]

 
 35 U.S.C. 132 
 Notice of rejection; reexamination. 

 *****

 
 (b) The Director shall prescribe regulations to provide for the
 continued examination of applications for patent at the request of the
 applicant. The Director may establish appropriate fees for such continued
 examination and shall provide a 50 percent reduction in such fees for small
 entities that qualify for reduced fees under section 41(h)(1) .
 

 
 

 
 37 CFR 1.114 Request for continued examination. 

 
 (a) If prosecution in an application is closed, an applicant may
 request continued examination of the application by filing a submission and
 the fee set forth in § 1.17(e) prior to the
 earliest of:
 
 (1) Payment of the issue fee, unless a petition under § 
 1.313 is granted;
 

 (2) Abandonment of the application; or

 (3) The filing of a notice of appeal to the U.S. Court of
 Appeals for the Federal Circuit under 35 U.S.C.
 141 , or the commencement of a civil action under
 35 U.S.C. 145 or 146 , unless the appeal or civil action is
 terminated.
 

 
 

 (b) Prosecution in an application is closed as used in this
 section means that the application is under appeal, or that the last Office
 action is a final action (§ 1.113 ), a notice of
 allowance (§ 1.311) , or an action
 that otherwise closes prosecution in the application.
 

 (c) A submission as used in this section includes, but is not
 limited to, an information disclosure statement, an amendment to the written
 description, claims, or drawings, new arguments, or new evidence in support
 of patentability. If reply to an Office action under 35 U.S.C.
 132 is outstanding, the submission must meet the reply
 requirements of § 1.111 .
 

 (d) If an applicant timely files a submission and fee set forth
 in § 1.17(e) , the Office will
 withdraw the finality of any Office action and the submission will be
 entered and considered. If an applicant files a request for continued
 examination under this section after appeal, but prior to a decision on the
 appeal, it will be treated as a request to withdraw the appeal and to reopen
 prosecution of the application before the examiner. An appeal brief (§
 41.37 of this title) or a reply brief (§
 41.41 of this title), or related papers, will not be
 considered a submission under this section.
 

 (e) The provisions of this section do not apply to:
 
 (1) A provisional application;

 (2) An application for a utility or plant patent filed
 under 35 U.S.C. 111(a) 
 before June 8, 1995;
 

 (3) An international application filed under
 35 U.S.C. 363 before June 8, 1995, or an
 international application that does not comply with 35 U.S.C.
 371 ;
 

 (4) An application for a design patent;

 (5) An international design application; or
 
 

 (6) A patent under reexamination.

 
 

 
 

 35 U.S.C.
 132(b) provides for continued examination of an application at
 the request of the applicant (request for continued examination or RCE) upon payment
 of a fee, without requiring the applicant to file a continuing application under
 37 CFR
 1.53(b) . To implement the RCE practice, 37 CFR 1.114 
 provides a procedure under which an applicant may obtain continued examination of an
 application in which prosecution is closed (e.g., the application is under final
 rejection or a notice of allowance) by filing a submission and paying a specified
 fee. Applicants cannot file an RCE to obtain continued examination on the basis of
 claims that are independent and distinct from the claims previously claimed and
 examined as a matter of right (i.e., applicant cannot switch inventions). See
 37 CFR
 1.145 . Any newly submitted claims that are directed to an
 invention that is independent and distinct from the invention previously claimed will
 be withdrawn from consideration and not entered. See subsection VI. below. An RCE
 is not the filing of a new application. Thus, the Office will not convert an RCE to a
 new application such as an application filed under 37 CFR 1.53(b) 
 or a continued prosecution application (CPA) under 37 CFR
 1.53(d) .
 

 I. CONDITIONS FOR FILING AN RCE The provisions of 37 CFR 1.114 apply to utility
 or plant applications filed under 35 U.S.C. 111(a) on or after
 June 8, 1995, or international applications filed under 35 U.S.C.
 363 on or after June 8, 1995. The RCE provisions of
 37 CFR
 1.114 do not apply to: 
 

 
 (A) a provisional application; 

 (B) an application for a utility or plant patent filed under
 35 U.S.C. 111(a) before June 8, 1995; 
 

 (C) an international application filed under 35 U.S.C.
 363 before June 8, 1995, or an international
 application that does not comply with 35 U.S.C. 371 ;
 

 (D) an application for a design patent;

 (E) an international design application; or

 (F) a patent under reexamination. 

 
 See 37 CFR 1.114(e) .
 

 An applicant may obtain continued examination of an application by
 filing a request for continued examination (see form PTO/SB/30), a submission and
 the fee set forth in 37 CFR 1.17(e) prior to the
 earliest of: 
 

 
 (A) payment of the issue fee (unless a petition under
 37 CFR
 1.313 is granted);
 

 (B) abandonment of the application; or

 (C) the filing of a notice of appeal to the U.S. Court of
 Appeals for the Federal Circuit or the commencement of a civil action
 (unless the appeal or civil action is terminated). 
 

 
 See 37 CFR 1.114(a) . An applicant
 cannot request continued examination of an application until after prosecution in
 the application is closed. See 37 CFR 1.114(a) . Prosecution
 in an application is closed if the application is under appeal, or if the last
 Office action is a final action ( 37 CFR 1.113 ), a notice of
 allowance ( 37
 CFR 1.311 ), or an action that otherwise closes prosecution
 in the application (e.g., an Office action under Ex parte
 Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935)).
 

 For an effective request for continued examination
 (RCE) to be filed in a 35 U.S.C. 371 national stage
 application, all required inventor’s oaths or declarations (or substitute
 statements) must be submitted in the application prior to or with the RCE,
 notwithstanding 37 CFR 1.495(c)(3) permitting
 an inventor’s oath or declaration to be postponed until an application is
 otherwise in condition for allowance. In accordance with 37 CFR
 1.114(e), an RCE cannot be filed in an international
 application that does not comply with 35 U.S.C. 371 ;
 35 U.S.C.
 371(c)(4) requires submission of the oath or declaration by
 the inventor(s) or a substitute statement. 
 

 II. SUBMISSION REQUIREMENT A “submission” as used in 37 CFR 1.114 includes, but is
 not limited to, an information disclosure statement, an amendment to the written
 description, claims, or drawings, new arguments, or new evidence in support of
 patentability. See 37 CFR 1.114(c) . If a reply to
 an Office action under 35 U.S.C. 132 is outstanding,
 the submission must meet the reply requirements of 37 CFR 1.111 . See 37 CFR 1.114(c) . Thus, an
 applicant may file a submission under 37 CFR 1.114 containing only
 an information disclosure statement ( 37 CFR 1.97 and
 1.98 ) in an application subject to a notice of allowance
 under 35 U.S.C.
 151 , but not in an application where the last Office action
 is a final rejection or an Office action under Ex parte Quayle, 
 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or in an application that is under
 appeal. A request for a suspension of action, an appeal brief or a reply brief (or
 related papers) will not be considered a submission under 37 CFR
 1.114 . See 37 CFR 1.103 and
 1.114(d) . The submission, however, may consist of the
 arguments in a previously filed appeal brief or reply brief, or may simply consist
 of a statement that incorporates by reference the arguments in a previously filed
 appeal brief or reply brief. In addition, a previously filed amendment after final
 (whether or not entered) may satisfy this submission requirement.
 

 Arguments submitted after final rejection that were entered by the
 examiner but not found persuasive may satisfy the submission requirement if such
 arguments are responsive within the meaning of 37 CFR 1.111 to the Office
 action. Consideration of whether any submission is responsive within the meaning
 of 37 CFR
 1.111 to the last outstanding Office action is done without
 factoring in the “final” status of such outstanding Office action. Thus, a reply
 that might not be acceptable as a reply under 37 CFR 1.113 when the
 application is under a final rejection may be acceptable as a reply under
 37 CFR
 1.111 . 
 

 
 
 
 
 Status of the Application 
 The Submission: 
 For More Information 
 

 
 After Final 
 Must include a reply under
 37 CFR 1.111 to the final rejection (e.g., an
 amendment filed with the RCE or a previously-filed after final
 amendment).
 
 See subsections V. and VI. 
 

 
 After Ex Parte
 Quayle action
 
 Must include a reply to the
 Ex Parte Quayle action.
 
 See subsection IX. 
 

 
 After allowance 
 Includes, but not limited to, an IDS,
 amendment, new arguments, or new evidence.
 
 See subsection IX. 
 

 
 After appeal 
 Must include a reply under
 37 CFR 1.111 to the final rejection (e.g., a
 statement that incorporates by reference the arguments in a previously
 filed appeal brief or reply brief).
 
 See subsections X., XI., and
 XII.
 
 

 
 III. INITIAL PROCESSING An RCE will be initially processed by the Technology Center (TC)
 assigned the application. Technical support personnel in the TC will verify that: 
 

 
 (A) the application is a utility or plant application (i.e., not
 a design application); 
 

 (B) the application was filed on or after June 8, 1995;

 (C) prosecution in the application is closed (e.g., the last
 Office action is a final rejection, notice of allowance, or an Office action
 under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r
 Pat. 1935), or the application is under appeal); 
 

 (D) the RCE was filed before the payment of the issue fee or, if
 not, a petition under 37 CFR 1.313 to withdraw
 the application from issue was filed and granted;
 

 (E) the application was pending (i.e., not patented or
 abandoned) when the RCE was filed;
 

 (F) the RCE was accompanied by the proper fee(s) including the
 RCE fee under 37 CFR 1.17(e) ;
 

 (G) the RCE included a submission as required by
 37 CFR
 1.114 ; and 
 

 (H) if the application is a national stage application under
 35
 U.S.C. 371 , a compliant inventor’s oath or declaration
 for each inventor was submitted prior to or with the RCE.
 

 
 An RCE will not be processed if the application is
 undergoing court review at the Federal Circuit or in federal district court
 because the application is in the jurisdiction of the court and the RCE procedure
 is not available. See subsection XII below. 
 

 A. Treatment of Improper RCE If one or more conditions for filing an RCE have
 not been satisfied, applicant will be so notified. Generally, a
 “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051,
 will be mailed to applicant. An improper RCE will not operate to
 toll the running of any time period set in the previous Office action for reply
 to avoid abandonment of the application. 
 

 If an examiner discovers that an improper RCE has been
 forwarded to the examiner in error, the application should be immediately
 returned to a head supervisory legal instruments examiner (HSLIE) within the
 TC.
 

 1. Prosecution Is Not Closed If prosecution in the application is not closed, applicant
 will be notified of the improper RCE and any amendment/reply will be
 entered. Thereafter, the application will be forwarded to the examiner for
 consideration of the amendment/reply under 37 CFR
 1.111 . 
 

 2. Application Is Under Appeal If the application is under appeal and the RCE was not
 accompanied by the fee set forth in 37 CFR
 1.17(e) and/or a submission as required by
 37 CFR
 1.114 , the application will be forwarded to the
 examiner for appropriate treatment and applicant will be notified of the
 improper RCE (See subsection X below).
 

 B. Ambiguous Transmittal Paper If an applicant files a transmittal paper that is ambiguous as
 to whether it is a continued prosecution application (CPA) under
 37 CFR
 1.53(d) or a request for continued examination (RCE)
 under 37 CFR
 1.114 (e.g., contains references to both an RCE and a
 CPA), and the application is a plant or utility application filed on or after
 June 8, 1995, the Office will treat the transmittal paper as an RCE under
 37 CFR
 1.114 since, effective July 14, 2003, CPA practice has
 been eliminated as to plant and utility applications. If an applicant files a
 transmittal paper that is ambiguous as to whether it is a CPA or an RCE, and
 the application is a design application, the Office will treat the transmittal
 paper as a request for a CPA under 37 CFR 1.53(d) since RCE
 practice does not apply to design applications. Other papers filed with the
 transmittal paper (e.g., a preliminary amendment or information disclosure
 statement) will not be taken into account in determining whether a transmittal
 paper is a CPA, or an RCE, or ambiguous as to whether it is a CPA or an RCE.
 If, however, applicant files an unambiguous transmittal paper that is an RCE in
 a design application, it will be treated as an improper RCE and a “Notice of
 Improper Request for Continued Examination (RCE),” Form PTO-2051, will be
 mailed to the applicant. An RCE is not a type of new application filing.
 Therefore, the Office cannot convert an RCE (whether proper or improper) to a
 new application such as a CPA under 37 CFR 1.53(d) .
 

 C. Treatment of Conditional RCE If a submission is accompanied by a “conditional” RCE and
 payment of the RCE fee under 37 CFR 1.17(e) (i.e., an
 authorization to charge the 37 CFR 1.17(e) fee to a
 deposit account in the event that the submission would not otherwise be
 entered), the Office will treat the “conditional” RCE and payment as if an RCE
 and payment of the fee set forth in 37 CFR
 1.17(e) had been filed.
 

 D. Treatment of Proper RCE If the conditions for filing an RCE have been satisfied, the
 technical support personnel will process the proper RCE. Any previously filed
 unentered amendments, and amendments filed with the RCE will normally be
 entered. Such amendments will be entered in the order in which they were filed
 in the absence of any specific instructions for entry. For example, if
 applicant files an amendment after final rejection that is denied entry by the
 examiner, and applicant subsequently files an RCE with an amendment, but the
 RCE is silent as to whether or not the previously filed after-final amendment
 should be entered, then the Office will enter both amendments in the order in
 which they were filed. If, however, applicant files an amendment after final
 rejection that is denied entry by the examiner, and applicant subsequently
 files an RCE with an amendment including specific instructions that the
 previously filed after-final amendment is not to be entered, then the Office
 will enter the amendment filed with the RCE but will not enter the after-final
 amendment. If conflicting amendments have been previously filed, applicant
 should clarify which amendments should be entered upon filing the RCE (and
 fee). Applicants are encouraged to file all amendments no later than the filing
 of the RCE to avoid disapproval of entry under 37 CFR
 1.111(b) . See MPEP § 714.03(a) . If
 additional time is needed to prepare and file a supplement (e.g., affidavit or
 declaration containing test data) to the previously filed submission, applicant
 should consider filing a suspension of action by the Office under
 37 CFR
 1.103(c) with the RCE. For more details on suspension of
 action, see MPEP
 § 709 .
 

 After entry of any amendments and processing of the fee(s), the
 application will be forwarded to the examiner. Applicant does not need to pay a
 fee for excess claims previously paid for prior to the filing of the RCE. Of
 course, new claims in excess of the number previously paid for, which are filed
 with the RCE or thereafter, will require payment of the appropriate fees(s)
 under 37 CFR
 1.16 .
 

 IV. IMPROPER CPA TREATED AS RCE 37 CFR
 1.53(d)(1) has been amended to provide that CPA practice
 under 37 CFR
 1.53(d) does not apply to utility and plant
 applications. Effective July 14, 2003, a CPA may only be filed if the prior
 nonprovisional application is a design application. For more details on filing a
 CPA, see MPEP § 201.06(d) .
 

 In the event that an applicant files a request for a CPA on or
 after July 14, 2003 of a utility or plant application that was filed on or after
 June 8, 1995, the Office will automatically treat the improper CPA as an RCE of
 the prior application (identified in the request for CPA) under 37 CFR
 1.114 . If the CPA does not satisfy the requirements of
 37 CFR
 1.114 to be a proper RCE (e.g., lacks a submission under
 37 CFR
 1.114(c) , or is not accompanied by the fee set forth in
 37 CFR 1.17(e) ), the improper CPA will be treated as an
 improper RCE, and the time period set in the last Office action (or notice of
 allowance) will continue to run. If the time period (considering any available
 extension under 37 CFR 1.136(a) ) has expired, the applicant will need to
 file a petition under 37 CFR 1.137 (with the
 submission that is required by 37 CFR 1.114 or fee set forth
 in 37 CFR 1.17(e) ) to revive the abandoned application. 
 

 Effective July 14, 2003, the Office will not convert an improper
 CPA into an application under 37 CFR 1.53(b) simply because
 it is requested by the applicant. The Office will convert an improper CPA into an
 application under 37 CFR 1.53(b) only if the
 applicant shows that there are extenuating circumstances that warrant the
 burdensome process of converting a CPA into an application under 37 CFR
 1.53(b) (e.g., restoring the application to pending status
 and correcting the improper RCE is not possible because the application has issued
 as a patent).
 

 Form paragraph 7.42.15 should be used by the
 examiner to inform applicant that a CPA is being treated as an RCE.
 

 ¶ 7.42.15 Continued Prosecution Application Treated as Continued
 Examination under 37 CFR 1.114
 

 The request for a continued
 prosecution application (CPA) under 37 CFR 1.53(d) filed on [1] 
 is acknowledged. A CPA may only be filed in a design application filed under 35 U.S.C. chapter 16 .
 See 37 CFR
 1.53(d)(1) . Since a CPA of this application is not permitted under
 37 CFR
 1.53(d)(1) , the improper request for a CPA is being treated as a request
 for continued examination of this application under 37 CFR 1.114 . 
 

 Examiner Note:
 
 1. Use this form paragraph to
 advise the applicant that a CPA is being treated as an RCE.
 

 2. Also use form paragraph
 7.42.04 ,
 7.42.05 ,
 7.42.06 ,
 or 7.42.07 as
 applicable, to acknowledge entry of applicant’s submission if the fee set forth in
 37 CFR
 1.17(e) has been timely paid.
 

 3. If the fee set forth in
 37 CFR
 1.17(e) and/or a submission as required by 37 CFR 1.114 
 is/are missing and the application is not under appeal, a Notice of Improper Request for
 Continued Examination should be mailed. If the application is under appeal and the fee
 set forth in 37 CFR
 1.17(e) and/or submission is/are missing, this form paragraph
 should be followed with one of form paragraphs 7.42.10 - 7.42.14 , as
 applicable.
 
 
 
 V. AFTER FINAL REJECTION If an applicant timely files an RCE with the fee set forth in
 37 CFR 1.17(e) and a submission that meets the reply
 requirements of 37 CFR 1.111 , the Office will withdraw the finality of any
 Office action to which a reply is outstanding and the submission will be entered
 and considered. See 37 CFR 1.114(d) . The
 submission meeting the reply requirements of 37 CFR 1.111 must be timely
 received to continue prosecution of an application. In other words, the mere
 request for, and payment of the fee for, continued examination will
 not operate to toll the running of any time period set in the
 previous Office action for reply to avoid abandonment of the application. 
 

 Any submission that is an amendment must comply with the manner of
 making amendments as set forth in 37 CFR 1.121 . See
 MPEP §
 714.03 . The amendment must include markings showing the
 changes relative to the last entered amendment. Even though previously filed
 unentered amendments after final may satisfy the submission requirement under
 37 CFR
 1.114(c) , applicants are encouraged to file an amendment at
 the time of filing the RCE that incorporates all of the desired changes, including
 changes presented in any previously filed unentered after final amendments,
 accompanied by instructions not to enter the unentered after final amendments. See
 subsection VI for treatment of not fully responsive submissions including
 noncompliant amendments.
 

 If the RCE is proper, form paragraph 7.42.04 should
 be used to notify applicant that the finality of the previous Office action has
 been withdrawn.
 

 ¶ 7.42.04 Continued Examination under 37 CFR 1.114 after Final
 Rejection
 

 A request for continued examination
 under 37 CFR
 1.114 , including the fee set forth in 37 CFR 1.17(e) , was
 filed in this application after final rejection. Since this application is eligible for
 continued examination under 37 CFR 1.114 , and the fee set forth in 37 CFR 1.17(e) has been
 timely paid, the finality of the previous Office action has been withdrawn pursuant to
 37 CFR
 1.114 . Applicant’s submission filed on [1] has been
 entered.
 

 Examiner Note:
 
 1. Use this form paragraph if a
 request for continued examination (RCE), including the fee set forth in
 37 CFR
 1.17(e) and a submission, was filed after a final rejection.
 
 

 2. In bracket 1, insert the date(s)
 of receipt of the submission. The submission may be a previously filed amendment(s)
 after final rejection and/or an amendment accompanying the RCE. As set forth in
 37 CFR
 1.114 , a submission may include an information disclosure
 statement, an amendment to the written description, claims, or drawings, new arguments,
 or new evidence in support of patentability. If a reply to the Office action is
 outstanding the submission must meet the reply requirements of 37 CFR 1.111 . Use
 instead form paragraph 7.42.08 if the submission does not comply with
 37 CFR
 1.111 . Arguments which were previously submitted in a reply after
 final rejection, which were entered but not found persuasive, may be considered a
 submission under 37
 CFR 1.114 if the arguments are responsive within the meaning of
 37 CFR
 1.111 to the outstanding Office action. If the last sentence of
 this form paragraph does not apply (e.g., the submission consists of previously entered
 arguments), it may be deleted or modified as necessary.
 

 3. To be eligible for continued
 examination under 37
 CFR 1.114 , the application must be a utility or plant application
 filed under 35 U.S.C.
 111(a) on or after June 8, 1995, or an international application
 filed under 35 U.S.C.
 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The
 RCE must be filed on or after May 29, 2000.
 
 
 
 VI. NOT FULLY RESPONSIVE SUBMISSION If reply to a final Office action is outstanding and the
 submission is not fully responsive to the final Office action, then it must be a
 bona fide attempt to provide a complete reply to the final
 Office action in order for the RCE to toll the period for reply. 
 

 If the submission is not a bona fide attempt to
 provide a complete reply, the RCE should be treated as an improper RCE. Thus, a
 “Notice of Improper Request for Continued Examination (RCE),” Form PTO-2051,
 should be prepared by the technical support personnel and mailed to the applicant
 indicating that the request was not accompanied by a submission complying with the
 requirements of 37 CFR 1.111 (see 37 CFR 1.114(c) ). The RCE will
 not toll the period for reply and the application will
 be abandoned after the expiration of the statutory period for reply if no
 submission complying with 37 CFR 1.111 is filed. For
 example, if a reply to a final Office action is outstanding and the submission
 only includes an information disclosure statement (IDS), the submission will not
 be considered a bona fide attempt to provide a complete reply
 to the final Office action and the period for reply will
 not be tolled. Similarly, an amendment that would cancel
 all of the claims in an application and does not present any new or substitute
 claims is not a bona fide attempt to advance the application to
 final action. The Office will not enter such an amendment. See Exxon
 Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed.
 Cir. 2001).
 

 If the submission is a bona fide attempt to
 provide a complete reply, applicant should be informed that the submission is not
 fully responsive to the final Office action, along with the reasons why, and given
 a new shortened statutory period of two months to complete the reply. See
 37 CFR
 1.135(c) . Form paragraph 7.42.08 set
 forth below should be used.
 

 Situations where a submission is not a fully responsive
 submission, but is a bona fide attempt to provide a complete
 reply are:
 

 
 (A) Non-compliant amendment - An RCE filed with a submission
 that is an amendment that is not in compliance with 37 CFR
 1.121 but that is a bona fide 
 attempt to provide a complete reply to the last Office action should be
 treated as a proper RCE and a Notice of Noncompliant Amendment should be
 mailed to the applicant. Applicant is given a time period of two months from
 the mailing date of the notice to provide an amendment complying with
 37 CFR
 1.121 . See MPEP § 714.03 for
 information on the amendment practice under 37 CFR
 1.121 .
 

 (B) Presentation of claims for different invention - Applicants
 cannot file an RCE to obtain continued examination on the basis of claims
 that are independent and distinct from, or lack unity of invention with, the
 claims previously elected and examined as a matter of right (i.e., applicant
 cannot switch inventions). See 37 CFR 1.145 . If an RCE
 is filed with an amendment canceling all claims drawn to the elected
 invention and presenting only claims drawn to a nonelected invention, the
 RCE should be treated as a proper RCE but the amendment should not be
 entered. The amendment is not fully responsive and applicant should be given
 a time period of two months to submit a complete reply. See
 MPEP
 § 821.03 . Form paragraphs
 8.04 or 8.26 should
 be used as appropriate.
 

 
 ¶ 7.42.08 Request For Continued Examination With Submission Filed Under 37
 CFR 1.114 Which is Not Fully Responsive
 

 Receipt is acknowledged of a request for continued examination under
 37 CFR
 1.114 , including the fee set forth in 37 CFR
 1.17(e) and a submission, filed on [1] . The submission,
 however, is not fully responsive to the prior Office action because [2] . Since
 the submission appears to be a bona fide attempt to provide a complete
 reply to the prior Office action, applicant is given a shortened statutory period of TWO
 (2) MONTHS from the mailing date of this letter to submit a complete reply. This
 shortened statutory period for reply supersedes the time period set in the prior Office
 action. This time period may be extended pursuant to 37 CFR 1.136(a) . In no case can any
 extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set
 by statute ( 35 U.S.C.
 133 ).
 

 Examiner Note:
 
 1. Use this form paragraph to
 acknowledge an RCE filed with the fee and a submission where the submission is not fully
 responsive to the prior Office action. This form paragraph may be used for any RCE filed
 with a submission which is not fully responsive, i.e., an RCE filed after final
 rejection, after allowance, after an Office action under Ex parte
 Quayle , 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935), or after appeal.
 
 

 2. In bracket 2, identify the
 reasons why the examiner considers the submission not to be fully
 responsive.
 

 3. To be eligible for continued
 examination under 37
 CFR 1.114 , the application must be a utility or plant application
 filed under 35 U.S.C.
 111(a) on or after June 8, 1995, or an international application
 filed under 35 U.S.C.
 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The
 RCE must be filed on or after May 29, 2000.
 
 
 
 VII. NEW MATTER 35 U.S.C.
 132(a) provides that “[n]o amendment shall introduce new
 matter into the disclosure of the invention.” Any amendment entered pursuant to
 37 CFR
 1.114 that is determined to contain new matter should be
 treated in the same manner that a reply under 37 CFR 1.111 determined to
 contain new matter is currently treated. See MPEP §§ 608.04 -
 608.04(c) . In those instances in which an applicant
 seeks to add new matter to the disclosure of an application, the procedure in
 37 CFR
 1.114 is not available, and the applicant must file a
 continuation-in-part application under 37 CFR 1.53(b) containing such
 new matter. 
 

 VIII. FIRST ACTION FINAL AFTER FILING AN RCE The action immediately subsequent to the filing of an RCE with a
 submission and fee under 37 CFR 1.114 may be made final
 only if the conditions set forth in MPEP § 706.07(b) are met.
 

 It would not be proper to make final a first Office action
 immediately after the filing of an RCE if the first Office action includes a new
 ground of rejection. See MPEP § 1207.03 for a discussion
 of what may constitute a new ground of rejection.
 

 Form paragraph 7.42.09 should be used if it is
 appropriate to make the first action after the filing of the RCE final.
 

 ¶ 7.42.09 Action Is Final, First Action Following Request for Continued
 Examination under 37 CFR 1.114
 

 All claims are identical to, patentably indistinct from, or have unity
 of invention with the claims in the application prior to the entry of the submission under
 37 CFR
 1.114 (that is, restriction (including a lack of unity of invention)
 would not be proper) and all claims could have been finally rejected on the grounds and art of
 record in the next Office action if they had been entered in the application prior to entry
 under 37 CFR
 1.114 . Accordingly, THIS ACTION IS MADE FINAL even though
 it is a first action after the filing of a request for continued examination and the
 submission under 37 CFR
 1.114 . See MPEP § 706.07(b). Applicant is reminded of the extension of time
 policy as set forth in 37
 CFR 1.136(a) .
 

 A shortened statutory period for
 reply to this final action is set to expire THREE MONTHS from the mailing date of this action.
 In the event a first reply is filed within TWO MONTHS of the mailing date of this final action
 and the advisory action is not mailed until after the end of the THREE-MONTH shortened
 statutory period, then the shortened statutory period will expire on the date the advisory
 action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from
 the mailing date of the advisory action. In no event, however, will the statutory period for
 reply expire later than SIX MONTHS from the mailing date of this final action.
 

 Examiner Note:

 This form paragraph is for a first
 action final rejection following a Request for Continued Examination filed under
 37 CFR
 1.114 .
 

 
 IX. AFTER ALLOWANCE OR QUAYLE ACTION The phrase “withdraw the finality of any Office action” in
 37 CFR
 1.114(d) includes the withdrawal of the finality of a final
 rejection, as well as the closing of prosecution by an Office action under
 Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935),
 or notice of allowance under 35 U.S.C. 151 (or notice of
 allowability). Therefore, if an applicant files an RCE with the fee set forth in
 37 CFR 1.17(e) and a submission in an application that has
 been allowed, prosecution will be reopened. If the issue fee has been paid,
 however, payment of the fee for an RCE and a submission without a petition under
 37 CFR
 1.313 to withdraw the application from issue will not
 avoid issuance of the application as a patent. If an RCE (with the fee and a
 submission) is filed in an allowed application prior to payment of the issue fee,
 a petition under 37 CFR 1.313 to withdraw the application from issue is not
 required.
 

 If an RCE complying with the requirements of 37 CFR 1.114 
 is filed in an allowed application after the issue fee has been paid and a
 petition under 37 CFR 1.313 is also filed and granted, prosecution will be
 reopened. Applicant may not obtain a refund of the issue fee. If,
 however, the application is subsequently allowed, the Notice of Allowance will
 reflect an issue fee amount that is due that is the difference between the current
 issue fee amount and the issue fee that was previously paid.
 

 Form paragraph 7.42.05 should be used to notify
 applicant that prosecution has been reopened.
 

 ¶ 7.42.05 Continued Examination Under 37 CFR 1.114 After Allowance or
 Quayle Action
 

 A request for continued examination
 under 37 CFR
 1.114 , including the fee set forth in 37 CFR 1.17(e) , was
 filed in this application after allowance or after an Office action under Ex Parte
 Quayle , 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935). Since this application is
 eligible for continued examination under 37 CFR 1.114 , and the fee set forth in
 37 CFR
 1.17(e) has been timely paid, prosecution in this application has been
 reopened pursuant to 37 CFR
 1.114 . Applicant’s submission filed on [1] has been
 entered.
 

 Examiner Note:
 
 1. Use this form paragraph if a
 request for continued examination (RCE), including the fee set forth in
 37 CFR
 1.17(e) and a submission, was filed after a notice of allowance
 (or notice of allowability) or Office action under Ex parte Quayle ,
 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935). 
 

 2. In bracket 1 insert the date(s)
 of receipt of the submission. As set forth in 37 CFR 1.114 , a submission may
 include an information disclosure statement, an amendment to the written description,
 claims, or drawings, new arguments, or new evidence in support of patentability.
 
 

 3. To be eligible for continued
 examination under 37
 CFR 1.114 , the application must be a utility or plant application
 filed under 35 U.S.C.
 111(a) on or after June 8, 1995, or an international application
 filed under 35 U.S.C.
 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The
 RCE must be filed on or after May 29, 2000.
 

 4. If the RCE was filed after the
 issue fee was paid, a petition under 37 CFR 1.313 to withdraw the
 application from issue must have been filed and
 granted .
 
 
 
 X. AFTER APPEAL BUT BEFORE DECISION BY THE BOARD If an applicant files an RCE under 37 CFR 1.114 
 after the filing of a Notice of Appeal to the Patent Trial and Appeal Board
 (Board), but prior to a decision on the appeal, it will be treated as a request to
 withdraw the appeal and to reopen prosecution of the application before the
 examiner, regardless of whether the RCE is proper or improper. See
 37 CFR
 1.114(d) . The Office will withdraw the appeal upon the
 filing of an RCE. Applicants should advise the Board when an RCE under
 37 CFR
 1.114 is filed in an application containing an appeal
 awaiting decision. Otherwise, the Board may refuse to vacate a decision rendered
 after the filing (but before the recognition by the Office) of an RCE under
 37 CFR
 1.114 .
 

 A. Proper RCE If the RCE is accompanied by a fee ( 37 CFR
 1.17(e) ) and a submission that includes a reply which is
 responsive within the meaning of 37 CFR 1.111 to the last
 outstanding Office action, the Office will withdraw the finality of the last
 Office action and the submission will be entered and considered. If the
 submission is not fully responsive to the last outstanding Office action but is
 considered to be a bona fide attempt to provide a complete
 reply, applicant will be notified that the submission is not fully responsive,
 along with the reasons why, and will be given a new time period to complete the
 reply (using form paragraph 7.42.08 ). See 37 CFR
 1.135(c) and subsection VI.
 

 If the RCE is proper, form paragraph
 7.42.06
 should be used to notify applicant that the appeal
 has been withdrawn and prosecution has been reopened.
 

 ¶ 7.42.06 Continued Examination Under 37 CFR 1.114 After Appeal But Before
 A Board Decision
 

 A request for continued examination
 under 37 CFR
 1.114 was filed in this application after appeal to the Patent Trial and
 Appeal Board, but prior to a decision on the appeal. Since this application is eligible for
 continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been
 timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this
 application has been reopened pursuant to 37 CFR 1.114 . Applicant’s submission filed
 on [1] has been entered.
 

 Examiner Note:
 
 1. Use this form paragraph if a
 request for continued examination (RCE), including the fee set forth in
 37 CFR
 1.17(e) and a submission, was filed after a Notice of Appeal or an
 appeal brief, but there has not been a decision on the appeal. Note that it is not
 necessary for an appeal brief to have been filed.
 

 2. As set forth in
 37 CFR
 1.114 , a submission may include an information disclosure
 statement, an amendment to the written description, claims, or drawings, new arguments,
 or new evidence in support of patentability. The submission may consist of arguments in
 a previously filed appeal brief or reply brief, or an incorporation of such arguments in
 the transmittal letter or other paper accompanying the RCE.
 

 3. To be eligible for continued examination under 37 CFR 1.114 , the
 application must be a utility or plant application filed under 35 U.S.C. 111(a) 
 on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on
 or after June 8, 1995 that complies with 35 U.S.C. 371 . The RCE must be filed
 on or after May 29, 2000.
 
 
 
 B. Improper RCE The appeal will be withdrawn even if the RCE is improper. If an
 RCE is filed in an application after appeal to the Board but the request does
 not include the fee required by 37 CFR
 1.17(e) , or the submission required by 37 CFR
 1.114 , or both, the examiner should treat the request as
 an improper RCE and withdraw the appeal pursuant to 37 CFR
 1.114(d) . If the submission is not considered to be a
 bona fide attempt to provide a complete reply to the last
 outstanding Office action (e.g., an IDS only), the submission will be treated
 as an improper submission or no submission at all under 37 CFR
 1.114(c) (thus the request is an improper RCE). See
 subsection VI.
 

 Upon withdrawal of the appeal, the application will be treated
 in accordance with MPEP § 1215.01 based on
 whether there are any allowed claims or not. The proceedings as to the rejected
 claims are considered terminated. Therefore, if no claim is allowed, the
 application is abandoned. Claims that are allowable except for their dependency
 from rejected claims will be treated as if they were rejected. See
 MPEP §
 1215.01 . If there is at least one allowed claim, the
 application should be passed to issue on the allowed claim(s). If there is at
 least one allowed claim but formal matters are outstanding, applicant should be
 given a shortened statutory period of two months in which to correct the formal
 matters. Form paragraphs 7.42.10 -
 7.42.14 should be used as appropriate.
 

 ¶ 7.42.10 Application On Appeal, Request For Continued Examination Under 37
 CFR 1.114 Without Submission/Fee; No Claims Allowed
 

 A request for continued examination
 under 37 CFR
 1.114 was filed in this application on [1] after appeal to
 the Patent Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to
 37 CFR
 1.114 . The request, however, lacks the fee required by 37 CFR 1.17(e) and/or
 the submission required by 37 CFR 1.114 . Since the proceedings as to the rejected claims are
 considered terminated, and no claim is allowed, the application is abandoned.
 See MPEP §
 1215.01 . 
 

 Examiner Note:
 
 1. If a request for continued
 examination was filed after a Notice of Appeal or after an appeal brief, but before a
 decision on the appeal, and the request lacks the fee set forth in 37 CFR 1.17(e) or
 a submission or both, use this form paragraph to withdraw the appeal and hold the
 application abandoned if there are no allowed claims.
 

 2. To be eligible for continued
 examination under 37
 CFR 1.114 , the application must be a utility or plant application
 filed under 35 U.S.C.
 111(a) on or after June 8, 1995, or an international application
 filed under 35 U.S.C.
 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The
 RCE must be filed on or after May 29, 2000.
 
 
 

 ¶ 7.42.11 Application On Appeal, Request For Continued Examination Under 37
 CFR 1.114 Without Submission; Claim Allowed
 

 A request for continued examination under 37 CFR 1.114 , including
 the fee set forth in 37 CFR 1.17(e) , was filed in this
 application on [1] after appeal to the Patent Trial and Appeal Board. Therefore,
 the appeal has been withdrawn pursuant to 37 CFR 1.114 . The request, however, lacks
 the submission required by 37 CFR 1.114 . Since the proceedings as to the rejected claims are
 considered terminated, the application will be passed to issue on allowed
 claim [2] . Claim [3] been canceled. See MPEP § 1215.01 . 
 

 Examiner Note:
 
 1. If a request for continued
 examination, including the fee, was filed after a Notice of Appeal or after an appeal
 brief but before a decision on the appeal, and the request lacks the required
 submission, use this form paragraph to withdraw the appeal and pass the application to
 issue on the allowed claims.
 

 2. In bracket 3, insert the claim number(s) of the claim(s) which
 has/have been canceled followed by either --has-- or --have--. Claims that have been
 indicated as containing allowable subject matter but are objected to as being dependent
 upon a rejected claim are to be considered as if they were rejected and therefore are to
 be canceled along with the rejected claims. See MPEP § 1215.01 .
 

 3. This form paragraph should be
 used with the mailing of a Notice of Allowability.
 

 4. To be eligible for continued
 examination under 37
 CFR 1.114 , the application must be a utility or plant application
 filed under 35 U.S.C.
 111(a) on or after June 8, 1995, or an international application
 filed under 35 U.S.C.
 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The
 RCE must be filed on or after May 29, 2000.
 
 
 

 ¶ 7.42.12 Application on Appeal, Request for Continued Examination under 37
 CFR 1.114 Without Submission; Claim Allowed with Formal Matters Outstanding
 

 A request for continued examination under 37 CFR 1.114 , including
 the fee set forth in 37 CFR 1.17(e) , was filed in this
 application on [1] after appeal to the Patent Trial and Appeal Board. Therefore,
 the appeal has been withdrawn pursuant to 37 CFR 1.114 . The request, however, lacks
 the submission required by 37 CFR 1.114 . The proceedings as to the rejected claims are considered
 terminated, and the application will be passed to issue on allowed claim [2] 
 provided the following formal matters are promptly corrected: [3] . Prosecution is
 otherwise closed. See MPEP §
 1215.01 . Applicant is required to make the necessary corrections
 addressing the outstanding formal matters within a shortened statutory period set to expire
 TWO (2) MONTHS from the mailing date of this letter. Extensions of time may be
 granted under 37 CFR
 1.136 , but in no case can any extension carry the date for reply to this
 letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ). 
 

 Examiner Note:
 
 1. If a request for continued
 examination, including the fee, was filed after a Notice of Appeal or an appeal brief
 but before a decision on the appeal, and the request lacks the required submission, use
 this form paragraph to withdraw the appeal if there are allowed claims but outstanding
 formal matters need to be corrected.
 

 2. In bracket 3, explain the formal matters that must be
 corrected.
 

 3. To be eligible for continued
 examination under 37
 CFR 1.114 , the application must be a utility or plant application
 filed under 35
 U.S.C. 111(a) on or after June 8, 1995, or an international
 application filed under 35 U.S.C. 363 on or after June 8,
 1995 that complies with 35 U.S.C. 371 . The RCE must be filed
 on or after May 29, 2000.
 
 
 

 ¶ 7.42.13 Application on Appeal, Request for Continued Examination under 37
 CFR 1.114 Without Fee; Claim Allowed
 

 A request for continued examination under 37 CFR 1.114 , including
 a submission, was filed in this application on [1] after appeal to the Patent
 Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114 . The
 request, however, lacks the fee required by 37 CFR 1.17(e) . Therefore, the submission
 has not been entered. See 37
 CFR 1.116(c) . Since the proceedings as to the rejected claims are
 considered terminated, the application will be passed to issue on allowed
 claim [2] . Claim [3] been canceled. See MPEP § 1215.01 . 
 

 Examiner Note:
 
 1. If a request for continued
 examination, including the submission, was filed after a Notice of Appeal or an appeal
 brief but before a decision on the appeal, and the request lacks the required fee, use
 this form paragraph to withdraw the appeal and pass the application to issue on the
 allowed claims.
 

 2. In bracket 3, insert the claim
 number(s) of the claim(s) which has/have been canceled followed by either --has-- or
 --have--. Claims which have been indicated as containing allowable subject matter but
 are objected to as being dependent upon a rejected claim are to be considered as if they
 were rejected and therefore are to be canceled along with the rejected claims. See
 MPEP §
 1215.01 .
 

 3. This form paragraph should be
 used with the mailing of a Notice of Allowability.
 

 4. To be eligible for continued examination under 37 CFR 1.114 , the
 application must be a utility or plant application filed under 35 U.S.C.
 111(a) on or after June 8, 1995, or an international application
 filed under 35 U.S.C.
 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The
 RCE must be filed on or after May 29, 2000.
 
 
 

 ¶ 7.42.14 Application on Appeal, Request for Continued Examination under 37
 CFR 1.114 Without Fee; Claim Allowed With Formal Matters Outstanding
 

 A request for continued examination under 37 CFR 1.114 , including
 a submission, was filed in this application on [1] after appeal to the Patent
 Trial and Appeal Board. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114 . The
 request, however, lacks the fee required by 37 CFR 1.17(e) . Therefore, the submission
 has not been entered. See 37
 CFR 1.116(c) . The proceedings as to the rejected claims are considered
 terminated, and the application will be passed to issue on allowed claim [2] 
 provided the following formal matters are promptly corrected: [3] . Prosecution is
 otherwise closed. See MPEP §
 1215.01 . Applicant is required to make the necessary corrections
 addressing the outstanding formal matters within a shortened statutory period set to expire
 TWO (2) MONTHS from the mailing date of this letter. Extensions of time may be
 granted under 37 CFR
 1.136 but in no case can any extension carry the date for reply to this
 letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ). 
 

 Examiner Note:
 
 1. If a request for continued
 examination, including a submission, was filed after a Notice of Appeal or an appeal
 brief but before a decision on the appeal, and the request lacks the fee required by
 37 CFR
 1.17(e) , use this form paragraph to withdraw the appeal if there
 are allowed claims but outstanding formal matters need to be corrected. 
 

 2. In bracket 3, explain the
 formal matters that must be corrected.
 

 3. To be eligible for continued
 examination under 37
 CFR 1.114 , the application must be a utility or plant application
 filed under 35
 U.S.C. 111(a) on or after June 8, 1995, or an international
 application filed under 35 U.S.C. 363 on or after June 8,
 1995 that complies with 35 U.S.C. 371 . The RCE must be filed
 on or after May 29, 2000.
 
 
 
 XI. AFTER DECISION BY THE BOARD 

 A. Proper RCE After Board Decision The filing of an RCE (accompanied by the fee and a submission)
 after a decision by the Patent Trial and Appeal Board (Board), but before the
 filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit
 (Federal Circuit) or the commencement of a civil action in federal district
 court, will also result in the finality of the rejection or action being
 withdrawn and the submission being considered. The time period for filing a
 notice of appeal to the Federal Circuit or for commencing a civil action ends
 sixty-three (63) days after the date of the final Board decision. See
 37 CFR 90.3 and MPEP § 1216 . Thus, an RCE
 filed within this sixty-three day time period and before the filing of a notice
 of appeal to the Federal Circuit or the commencement of a civil action would be
 timely filed. An RCE may also be timely filed during the time period set in
 37 CFR
 41.50(b) where a new ground of rejection was made by the
 Board or during the time period after a request for rehearing under
 37 CFR
 41.52 has been filed and before decision on the request.
 In addition to the res judicata effect of a Board decision
 in an application (see MPEP § 2190 , subsection II), a
 Board decision in an application is the “law of the case,” and is thus
 controlling in that application and any subsequent, related application. See
 MPEP
 § 1214.01 (where a new ground of rejection is entered
 by the Board pursuant to 37 CFR 41.50(b) , argument
 without either amendment of the claims so rejected or the submission of a
 showing of facts can result only in a final rejection of the claims, since the
 examiner is without authority to allow the claims unless amended or unless the
 rejection is overcome by a showing of facts not before the Board). As such, a
 submission containing arguments without either amendment of the rejected claims
 or the submission of a showing of facts will not be effective to remove such
 new grounds of rejection or any other rejection affirmed in such decision.
 

 Form paragraph 7.42.07 should be used to
 notify applicant that the appeal has been withdrawn and prosecution has been
 reopened.
 

 ¶ 7.42.07 Continued Examination under 37 CFR 1.114 after Board Decision but
 Before Further Appeal or Civil Action
 

 A request for continued examination
 under 37 CFR
 1.114 was filed in this application after a decision by the Patent Trial
 and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the
 Federal Circuit or the commencement of a civil action. Since this application is eligible for
 continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been
 timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this
 application has been reopened pursuant to 37 CFR 1.114 . Applicant’s submission filed
 on [1] has been entered. 
 

 Examiner Note:
 
 1. Use this form paragraph if a request for continued examination
 (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was
 timely filed after a decision by the Patent Trial and Appeal Board but before further
 appeal or civil action. Generally, the deadline for filing a notice of appeal to the
 Federal Circuit or for commencing a civil action is sixty-three (63) days after the date
 of the final Board decision. See 37 CFR 90.3 and
 MPEP §
 1216 .
 

 2. A Patent Trial and Appeal Board decision in an application has
 res judicata effect and is the “law of the case” and is thus
 controlling in that application and any subsequent, related application. Therefore, a
 submission containing arguments without either an amendment of the rejected claims or
 the submission of a showing of facts will not be effective to remove such rejection. See
 MPEP §
 2190 , subsection II. 
 

 3. To be eligible for continued
 examination under 37
 CFR 1.114 , the application must be a utility or plant application
 filed under 35 U.S.C.
 111(a) on or after June 8, 1995, or an international application
 filed under 35 U.S.C.
 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . The
 RCE must be filed on or after May 29, 2000.
 
 
 
 B. Improper RCE After Board Decision If an RCE is filed after a decision by the Patent Trial and
 Appeal Board, but before the filing of a Notice of Appeal to the Federal
 Circuit or the commencement of a civil action in federal district court, and
 the RCE was not accompanied by the fee and/or the submission, the
 examiner should notify the applicant that the RCE is improper by using form
 paragraph 7.42.16 set forth below. If the time for
 seeking court review has passed without such review being sought, the examiner
 should include the form paragraph with the mailing of a Notice of Allowability
 or a Notice of Abandonment depending on the status of the claims. See
 MPEP §
 1214.06 . If the time for seeking court review
 remains, the examiner should include the form paragraph on a PTOL-90. No time
 period should be set. If a submission is filed with the RCE, but the fee is
 missing, the examiner should also include a statement as to whether or not the
 submission has been entered. In general, such a submission should not be
 entered. If, however, the submission is an amendment that obviously places the
 application in condition for allowance, it should be entered with the approval
 of the supervisory patent examiner. See MPEP § 1214.07 . Form paragraph
 7.42.16 should not be used if the application
 is not a utility or plant application filed under 35 U.S.C.
 111(a) on or after June 8, 1995, or an international
 application filed under 35 U.S.C. 363 on or after
 June 8, 1995. In that situation, a “Notice of Improper Request for Continued
 Examination (RCE),” Form PTO-2051, should be prepared and mailed by the
 technical support personnel to notify applicant that continued examination
 does not apply to the application. When the time for seeking court review has
 passed without such review being sought, the examiner must take up the
 application for consideration. See MPEP § 1214.06 for guidance on
 the action to be taken.
 

 ¶ 7.42.16 After Board Decision But Before Further Appeal Or Civil Action,
 Request for Continued Examination Under 37 CFR 1.114 Without Submission and/or Fee
 

 A request for continued examination
 (RCE) under 37 CFR
 1.114 was filed in this application on [1] after a decision
 by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court
 of Appeals for the Federal Circuit or the commencement of a civil action. The request,
 however, lacks the fee required by 37 CFR 1.17(e) and/or the submission
 required by 37 CFR
 1.114 . Accordingly, the RCE is improper and any time period running was
 not tolled by the filing of the improper request.
 

 Examiner Note:
 
 1. This form paragraph should be
 used with the mailing of a Notice of Allowability or a Notice of Abandonment, as
 appropriate, if the time for seeking court review has passed without such review being
 sought, or it should be used on a PTOL-90 if time still remains.
 

 2. This form paragraph should not
 be used if the application is not a utility application or a plant application filed
 under 35 U.S.C.
 111(a) on or after June 8, 1995, or an international application
 filed under 35 U.S.C.
 363 on or after June 8, 1995 that complies with 35 U.S.C. 371 . In
 that situation, a “Notice of Improper Request for Continued Examination (RCE),” Form
 PTO-2051, should be prepared and mailed by the technical support personnel to notify
 applicant that continued examination does not apply to the application. 
 

 3. In general, if a submission was filed with the improper RCE in this
 situation, it should not be entered. An exception exists for an amendment that obviously
 places the application in condition for allowance. See MPEP § 1214.07 . The
 examiner should also include a statement as to whether or not any such submission has
 been entered (e.g., “The submission filed with the improper RCE has not been
 entered.”).
 
 
 
 XII. AFTER APPEAL TO THE FEDERAL CIRCUIT OR CIVIL ACTION The procedure set forth in 37 CFR 1.114 is
 not available in an application after the filing of a Notice of
 Appeal to the Federal Circuit or the commencement of a civil action in federal
 district court, unless the appeal or civil action is terminated and the
 application is still pending. If an RCE is filed in an application that has
 undergone court review, the examiner should bring the application to the attention
 of the supervisory patent examiner or a quality assurance specialist in the TC to
 determine whether the RCE is proper. Unless an application contains allowed claims
 (or the court’s mandate clearly indicates that further action is to be taken by
 the Office), the termination of an unsuccessful appeal or civil action results in
 abandonment of the application. See MPEP § 1216.01 .
 

 XIII. FORMS Form PTO/SB/30, “Request for Continued Examination (RCE)
 Transmittal,” may be used by applicant for filing an RCE under 37 CFR
 1.114 . The form used by the Technology Centers to notify
 applicant of an improper RCE, “Notice of Improper Request for Continued
 Examination (RCE),” form PTO-2051, is shown below following form PTO/SB/30.
 

 

 

 

 

 

 

 [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 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
 Accessibility 

 Privacy Policy 

 Terms of Use 

 Security 

 Emergencies/Security Alerts 

 Information Quality Guidelines 

 
 

 
 
 Federal Activities Inventory Reform (FAIR) Act 

 Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act 

 Budget & Performance 

 Freedom of Information Act (FOIA) 

 
 

 
 
 Department of Commerce NoFEAR Act Report 

 Regulations.gov 

 STOP!Fakes.gov 

 Department of Commerce 

 USA.gov 

 
 

 
 
 Strategy Targeting Organized Piracy (STOP!) 

 Careers 

 Site Index 

 Contact Us 

 Submit Feedback 

 
 

 
 This page is owned by Patents.

 Last Modified: 
 
 03/09/2026 20:50:53