MPEP § 719 — MPEP § 719
Current through: 2022-07-01

719-File Wrapper 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0700 

 Section 719 
 

 
 
 
 
 
 719 File Wrapper [R-07.2015]

 The electronic file record in which the U.S. Patent and Trademark Office
 maintains the application papers is referred to as an image file wrapper. The electronic
 file record is the official record of the application.
 

 See MPEP § 202 for appropriate notations to be
 made in the file history with regard to claims for priority to, or the benefit of, earlier
 filed applications under 35 U.S.C. 119 , 120 , 121 ,
 365 , and 386 .
 

 
 719.01 Papers in Image File Wrapper [R-11.2013]

 Papers that do not become a permanent part of the record should not be
 entered as a paper in the image file wrapper. No paper legally entered in the image file
 wrapper should ever be withdrawn or expunged from the application file, especially a
 part of the original disclosure of the application, without special authority of the
 Director. However, 37
 CFR 1.59 provides that certain documents may be expunged if they
 were unintentionally submitted or contain proprietary information which has not been
 made public and is not important to a decision of patentability. See
 MPEP §
 724 . Form paragraph 7.214 may be used to notify applicant
 that papers in an application that has received a filing date ordinarily will not be
 returned.
 

 ¶ 7.214 Papers Not Returned, Pro Se

 Papers in an application that has received a filing date pursuant to
 37
 CFR 1.53 ordinarily will not be returned. If applicant has not preserved
 copies of the papers, the Office will furnish copies at applicant’s expense. See
 37
 CFR 1.19 for a list of the current fees. See MPEP § 724.05 for
 information pertaining to petitions to expunge information.
 

 

 

 
 719.02 Residence of Inventor Changed [R-07.2015]

 The distinction between “residence” and mailing address should not be
 lost sight of. See MPEP § 602.08(a) .
 

 Unless specifically requested by applicant, the residence(s) associated
 with the inventor(s) will not be changed. For example, if a new oath gives a different
 residence from the original, the file will not be changed.
 

 For a patent application publication to be published with residence
 information that differs from that originally filed, the revised information must be
 entered into the Office electronic records at least nine weeks before the publication
 date of the application. For patent applications filed on or after September 16, 2012,
 in order for a patent to issue with the new residence, applicants must file a corrected
 Application Data Sheet ( 37 CFR 1.76(c) ) showing the new
 residence information with underlining for insertions and strike-through or brackets for
 text removed. See MPEP § 601.05(a) . For applications
 filed prior to September 16, 2012, applicants are strongly encouraged to file a
 Supplemental Application Data Sheet showing the new residence information preferably
 with underlining for insertions and strike-through or brackets for text removed. See
 MPEP §
 601.05(b) .
 

 

 
 719.03 Classification During Examination [R-07.2022]

 When a new application is received in a Technology Center, the
 classification of the application and the initials or name of the examiner who will
 examine it or other assigned docket designation are noted in the application file. See
 also MPEP §
 909.01(b) .
 

 

 
 719.04 Index of Claims [R-11.2013]

 The 
 "Index of Claims"
 
 
 found in
 the image file wrapper of an application is frequently referenced. It should be updated
 with each Office action to maintain a reliable index of all claims in the
 application.
 

 The claim numbers appearing on the Index of Claims refer to the claim
 numbers during prosecution while the adjacent columns refer to the status of each of the
 claims and the final column refers to the final numbering of the allowed claims (if
 applicable). 
 

 A space is provided above each adjacent column for completion by the
 examiner to indicate the date of each Office action together with the resulting status
 of each claim. At the time of allowance, the examiner places the final patent claim
 numbers in the column marked 
 "Final."
 
 
 
 

 

 
 719.05 Field of Search [R-01.2024]

 In the first action on the merits of an application, the examiner must
 record in the appropriate sections of the Official Correspondence “Search Notes” form
 the areas in which the search for prior art was made. The examiner must also indicate
 the date(s) on which the search was conducted and provide their initials. In subsequent
 actions, where the search is brought up to date and/or where a further search is made,
 the examiner must indicate that the search has been updated and/or identify the
 additional field of search and include the date and the examiner’s initials in the
 appropriate sections of the “Search Notes” form. Any search updates should include the
 appropriate databases and the search queries and classifications employed in the
 original search. See MPEP
 § 904 . Great care should be taken so as to clearly indicate
 the places searched and the date(s) on which the search was conducted and/or
 updated.
 

 In order to provide a complete, accurate, and uniform record of what has
 been searched and considered by the examiner for each application, the U.S. Patent and
 Trademark Office has established procedures for recording search data in the application
 file. Such a record is of importance to anyone evaluating the strength and validity of a
 patent, particularly if the patent is involved in litigation.
 

 Searches are listed in the “SEARCHED” boxes and/or
 
 "SEARCH NOTES"
 
 
 box of the
 
 "Search Notes"
 
 
 form.
 

 For example, in the sample “Search Notes” form reproduced
 below, the “SEARCH NOTES” box indicates how the Search was limited for documents
 classified under CPC symbols D03D 1/0005 and B02C 19/0081. The absence of entries in the
 “SEARCH NOTES” box for the other classification symbols searched indicates that all
 documents having those symbols were reviewed or there is a search history printout in
 the file indicating how the search of those symbols was limited. As provided in
 subsection II.B below, a complete search history in the form of a printout must be
 included in the application file any time a limited electronic search was performed.
 

 
 I. ENTRIES IN “SEARCHED” BOXES The Search Notes form includes three “SEARCHED” boxes for recording
 searches in Cooperative Patent Classification (CPC), CPC Combination Sets and U.S.
 Patent Classification (USPC). When documenting a classification search, as described
 below, the examiner should ensure the proper box(es) is/are used. 
 

 A classification search is defined as a search of the documents in a
 particular classification location, whether classified by CPC or USPC, and may be
 limited by a text query, filters or other means. When a classification search is
 performed, the classification symbol must be recorded in the appropriate “SEARCHED”
 box section of the “Search Notes” form along with the date that the search was
 performed (or updated) and the examiner’s initials. When a classification search is
 limited, the examiner must ensure that how the search was limited is made of record.
 In most situations, how the search was limited would be apparent in a search history
 printout and in these situations, the examiner should include the printout with the
 “Search Notes” form when making the "Search Notes" of record. When the search is
 limited by an approach not apparent in the search history printout, the manner in
 which the classification search was limited should be made of record by annotating
 the “SEARCH NOTES” box. Unless a search of all of the documents for a particular
 classification location was performed, it would be inaccurate to merely record the
 classification symbol in the “SEARCHED” box without including the search history
 printout or indicating how the search was limited in the “SEARCH NOTES” box.
 

 II. ENTRIES IN “SEARCH NOTES” BOX Entries made in the “SEARCH NOTES” box are of equal importance to
 those placed in the “SEARCHED” box. They are intended to complete the application
 file record of areas and/or documents considered by the examiner in their search.
 

 A. Format of Entries in the "SEARCH NOTES" Section The examiner will record the following types of
 information in the "SEARCH NOTES" box and in the manner indicated, with each entry
 dated and initialed.
 

 
 (A) Annotations indicating how a classification search was
 limited, as discussed in subsection I above.
 

 (B) Text search performed in a particular database where no
 classification search was performed. 
 If a text search was performed in a particular
 database and no classification search was performed, the following entry or
 its equivalent must be recorded in the “SEARCH NOTES” box of the “Search
 Notes” form: “See search history printout(s)” along with the date or dates
 that the search was performed (or updated) and the examiner’s initials. A
 search history printout must also be included in the file. See subsection
 II.B below. 
 

 

 (C) Searches made within the International Patent
 Classification System (IPC).
 

 (D) Searches performed by the Scientific and
 Technical Information Center (STIC).
 
 The staff of the STIC provide non-patent
 literature (NPL) and foreign patent searches to examiners on request
 through the Electronic Information Center (EIC) located in each
 Technology Center. STIC staff use commercially available databases to
 provide text, chemical structure, sequence, litigation, inventor, and
 other types of searches. To request a search, the examiner must fill
 out and submit a search request form via the STIC NPL webpage. It is
 important to provide as much relevant information as possible to
 assure that the search meets the examiner’s needs. Examiners are
 encouraged to fill out the request form completely and/or to discuss
 their search needs with the EIC search staff. The full text of any
 citations included in the search results will be provided at the
 examiner’s request. The search conducted by the EIC will include a
 complete search history. The complete search history in the form of a
 printout must be included in the application file. The following entry
 or its equivalent must be recorded in the “SEARCH NOTES” box of the
 “Search Notes” form: “See search history printout(s)” along with the
 date that the search was performed (or updated) and the examiner’s
 initials. EIC search staff can also assist examiners in conducting
 their own search of NPL databases.
 

 
 

 (E) A consultation with other examiners to determine if relevant
 search fields exist in their areas of expertise. If the subclass is not
 searched, record the class and subclass, if any, discussed, followed by
 “(consulted).” This entry may also include the name of the examiner
 consulted and the art unit.
 Examples F16B fasteners (consulted) 

 F16B fasteners (consulted J. Doe A.U. 3501)

 F16B 2/00 (consulted) 

 

 

 (F) Searches performed in electronic journals and electronic
 books available to examiners on their desktop through the STIC NPL website.
 Examiners should contact their EIC if they need assistance using these tools
 and creating a search history printout.
 

 (G) Searches performed in other media collections
 or databases (e.g., CD-ROM databases, specialized databases, etc.), record
 data as necessary to provide unique identification of material searched and
 sufficient information as to the search query or request so that the search
 can be updated. The record should also document the location of the database
 and its form (CD-ROM, etc.).
 
 
 Example: Citing a biotech CD-ROM
 database Entrez: Sequences, National Center for
 Biotechnology Information, Version 7.19.91b (CD-ROM, TC 1600)
 Searched HIV and vaccine; neighbored Galloway article dated 6/5/91
 on April 1, 1990.
 

 

 

 
 Example: Citing a nonbiotech CD-ROM
 database Computer Select, (November, 1991), Ziff Davis
 Communications Co., (CD-ROM, STIC), Searched Unix and emulation on
 December 1, 1991.
 

 

 

 
 

 (H) Searches performed on the Internet.
 
 For Internet search engines, such as
 Google ® ,
 Yahoo ® , and
 Bing ® , print out the first page and any
 of the following pages that include names of any webpages reviewed
 during the search. Use the print icon on the Microsoft Internet
 Explorer ® toolbar or use the file-print
 command. Review the printout to determine if the Internet search
 engine name, the search logic, and the date of the search are present.
 If any of these are missing, write the missing information on the
 printout. Indicate all webpages reviewed.
 

 
 

 (I) Nonelectronic searches of publications in paper form, e.g.,
 searches of the print books or journals in an EIC. Record according to the
 following for each type of literature search:
 
 

 (1) Abstracting publications, such as Chemical
 Abstracts, record name of publications, list terms consulted in index,
 and indicate period covered.
 Examples Chem. Abs, Palladium hydride Jan.-June 1975 
 

 Eng. Index, Data Conversion Analog to Digital
 1975
 

 

 

 (2) Periodicals — list by title, volume, issue, pages
 and date, as appropriate.
 Examples Popular Mechanics, June-Dec. 1974
 

 Lubrication Engineering, vols. 20-24
 

 

 

 (3) Books — list by title, author, edition or date,
 pages, as appropriate.
 Example Introduction to Hydraulic Fluids, Roger E.
 Hatton, 1962 
 

 

 

 (4) Other types of literature not specifically
 mentioned herein (i.e., catalogs, manufacturer’s literature, private
 collections, etc.).
 
 Record data as necessary to provide unique
 identification of material searched.
 

 
 Example Sears Roebuck catalog, Spring-Summer,
 1973. 
 

 

 

 A cursory or browsing search through a number of
 materials that are not found to be of significant relevance may
 be indicated in a collective manner, e.g., “Browsed STIC shelves
 under QA 76.5” or “Browsed text books in STIC relating
 to......................” More detailed reviews or searches
 through books and periodicals or any search of terms in
 abstracting publications should be specifically recorded,
 however.
 

 
 

 
 

 (J) A review of art cited in a parent application or an
 original patent, as required for all continuation and continuation-in-part
 applications, divisional applications, reissue applications and
 reexamination proceedings, or a review of art cited in related
 applications.
 
 Record the application number of a parent application,
 followed by “refs. checked” or “refs. ck’ed.” If for any reason not
 all of the references have been checked because they are not
 available, such exceptions should be noted.
 

 
 Examples S. N. XX/495,123 refs. checked

 S. N. XX/490,000 refs. checked 

 S. N. XX/480,111 refs. checked except for Greek
 patent to Kam
 

 S. N. XX/410,113 refs. not checked since the file
 was not available 
 

 

 

 Record the patent number of a parent or related
 application that is now patented or of an original patent now being
 reissued with “refs. checked” or “refs. ck’ed.”
 

 
 Examples Pat. 3,900,000 refs. checked

 Pat. 3,911,111 refs. ck’ed 

 

 

 
 

 (K) A review of documents cited in a
 related trial before the Patent Trial and Appeal Board where the claims
 DO NOT have similar scope or similar claim elements. 
 Record the trial number, U.S. Patent on
 trial and date reviewed.
 Examples IPR2012-99999 Reviewed Inter
 Partes Review of U.S. Patent No. 9,999,999 on
 12/31/2019
 

 PGR2015-99999 Reviewed Post Grant
 Review of U.S. Patent No. 9,999,999 on 12/31/2019
 

 CBM2016-99999 Reviewed Covered
 Business Method Patent Review of U.S. Patent No. 9,999,999 on
 12/31/2019
 

 

 

 
 

 (L) A review of documents cited in a
 related trial before the Patent Trial and Appeal Board where the claims
 DO HAVE similar scope or similar claim elements. 
 Record the trial number, document
 reviewed, U.S. Patent on trial and date reviewed.
 Examples IPR2012-99999 Reviewed Petition for
 Inter Partes Review of U.S. Patent No.
 9,999,999 on 12/31/2019
 

 PGR2015-99999 Reviewed Petition for
 Post Grant Review of U.S. Patent No. 9,999,999 on 12/31/2019
 

 CBM2016-99999 Reviewed Decision
 Instituting Covered Business Method Patent Review of U.S. Patent
 No. 9,999,999 on 12/31/2019
 

 

 

 
 

 B. Search History Printouts Any time that a limited electronic search was performed (e.g.,
 limited classified search or text search), a complete search history in the form
 of a printout must be included in the application file. The search history must
 include the following minimum information:
 

 
 (A) all the search logic or chemical structure or sequence(s)
 used as a database query;
 

 (B) all the name(s) of the file(s) searched and the database
 service;
 

 (C) the date the search was made or updated; and 

 (D) an indication of the examiner who performed the search (e.g.
 a user ID or the examiner’s initials). 
 

 
 It would be improper to merely list the tool/database, e.g.,
 “PE2E-SEARCH” or identify the search queries in the “SEARCH NOTES” box of the
 “Search Notes” form. A search history printout should be devoid of result
 printouts to limit the “bulk search printouts.”
 

 Regarding nucleotide and peptide sequence searches, these searches
 must be documented by printout(s). A copy of a printout for each database source
 searched must be included in the application file. Each printout must include all
 the information up to the “ALIGNMENTS” section. 
 

 Most of the database services accessed in application searches
 provide a command to display or print the search history which includes most, if
 not all, of the minimum required information for documenting database searches.
 Table 1 below lists the history command for each database service and the required
 minimum documentation elements included when the history command is entered. Any
 missing elements may be documented by writing them on the printout of the search
 history or by supplying further portions of the search transcript which do include
 the missing elements.
 

 If there are several search statements in the history, the
 statement or statements of which the results were reviewed should be
 indicated.
 

 
 
 
 
 TABLE 1 
 

 
 History Commands and Included Elements by Database Service
 (“Yes” below indicates the element is present) 
 

 
 Database Service 
 History Command 
 Name of Database Service 
 Search Logic 
 Name of File(s) Searched 
 Date of Search 
 

 
 ProQuest Dialog 
 Click on Export All Searches 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 STN 
 D his full 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 SciFinder 
 Select History from the Saved Searches
 drop-down menu, Print to PDF or Export to Microsoft Word
 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 Questel-Orbit 
 Click Search History from the My
 session menu
 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 Lexis/Nexis 
 Click History; print page 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 ABSS System 
 None 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 PE2E-SEARCH* 
 Yes 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 IEEE Xplore 
 Option 1: Print out search results
 page Option 2: Sign In (personal account available as part of USPTO
 subscription), click Search History 
 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 Knovel 
 Print out search results page 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 EBSCOHost 
 Click Search History, then Print
 Search History
 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 IP.com 
 Print out search results page 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 ACM Digital Library 
 Print out search results page 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 INSPEC (ProQuest Dialog) 
 Click on Export All Searches 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 SPIE Digital Library 
 Print out search results page 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 Research Disclosure 
 Print out search results page 
 Yes 
 Yes 
 Yes 
 Yes 
 

 
 
 
 *Examiners may acquire user’s manuals for
 PE2E-SEARCH through the Office of Patent Automation website. Assistance for
 other electronic database searches may be acquired from the staff of the
 STIC-Electronic Information Centers (EIC).
 

 

 Explanation of Table Terminology 

 History Command - Generally, a display of what the user has asked
 the search software to do will display the search logic entered by the user. Some
 histories are limited to display of the searches done only in the current file
 while others deliver a complete record of what file or files were accessed and all
 searches done since sign on.
 

 Name of Database Service - This is the name of the database
 service (i.e., PE2E-SEARCH, IEEE Xplore) used to perform the search.
 

 Search Logic - Generally, a display of the search commands
 executed by the search software. For a structure or sequence search, this can be a
 printout of the structure or sequence used to query the system. 
 

 Name of File(s) Searched - The name of the collection(s) of data
 accessed.
 

 Date of Search - Dialog and Questel-Orbit do not display the date
 of search as part of the history command. Dialog and Questel-Orbit supply the date
 of search during log off. 
 

 III. INTERFERENCE SEARCH HISTORY When an application is in condition for allowance, an
 interference search must be made by using the most efficient and effective manner
 based on the claimed subject matter in the broadest claim (e.g., by performing a text
 search, or a classified search, or a combination of text search and classified
 search, of the “US-PGPUB” database in PE2E-SEARCH). Examiners are reminded that some
 applications, such as continuation-in-part applications, may contain claims entitled
 to different effective filing dates (see MPEP §§ 2133.01 and
 2152.01 ), and that each effective filing date should be
 considered when performing the interference search. If the application contains a
 claim directed to a nucleotide or peptide sequence, the examiner must submit a
 request to STIC to perform an interference search of the sequence.
 

 Completion of the interference search should be recorded
 in the “INTERFERENCE SEARCH” section of the “Search Notes” form with an
 identification of the manner in which the interference search was limited (if any) in
 the “Search Notes” by providing an appropriate annotation.
 

 A printout of only the database(s) searched, the
 query(ies) used in the interference search (if any), and the date the interference
 search was performed must be made of record in the application file. The result
 printouts of the interference search must not be placed in the application file.
 

 IV. INFORMATION NOT RECORDED IN THE APPLICATION FILE For an indication of consideration or nonconsideration of prior art
 citations submitted by applicant in Information Disclosure Statements
 ( 37 CFR
 1.97 and 1.98 ), see MPEP § 609 et seq. 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 701-Statutory Authority for Examination 

 702-Requisites of the Application 
 702.01-Obviously Informal Cases 

 
 

 703-[Reserved] 

 704-Search and Requirements for Information 
 704.01-Search 

 704.02-704.09-[Reserved] 

 704.10-Requirements for Information 

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

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

 
 

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

 704.12(b)-What Constitutes a Complete Reply 

 704.12(c)-Treatment of an Incomplete Reply 

 
 

 704.13-Time Periods for Reply 

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

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

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

 704.14(d)-Relationship to Information Disclosure Statements 

 
 

 
 

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

 705.01(b)-Sequence of Examination 

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

 705.01(d)-[Reserved] 

 705.01(e)-Limitation as to Use 

 705.01(f)-Interviews With Applicants 

 
 

 
 

 706-Rejection of Claims 
 706.01-Contrasted With Objections 

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

 706.02(a)(2)-[Reserved] 

 
 

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

 706.02(b)(2)-[Reserved] 

 
 

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

 706.02(c)(2)-[Reserved] 

 
 

 706.02(d)-[Reserved] 

 706.02(e)-[Reserved] 

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

 706.02(f)(2)-[Reserved] 

 
 

 706.02(g)-[Reserved] 

 706.02(h)-[Reserved] 

 706.02(i)-[Reserved] 

 706.02(j)-[Reserved] 

 706.02(k)-[Reserved] 

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

 706.02(l)(2)-[Reserved] 

 706.02(l)(3)-[Reserved] 

 
 

 706.02(m)-[Reserved] 

 706.02(n)-[Reserved] 

 
 

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

 706.03(b)-[Reserved] 

 706.03(c)-[Reserved] 

 706.03(d)-[Reserved] 

 706.03(e)-[Reserved] 

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

 706.03(k)-[Reserved] 

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

 706.03(o)-[Reserved] 

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

 706.03(s)-[Reserved] 

 706.03(t)-[Reserved] 

 706.03(u)-[Reserved] 

 706.03(v)-[Reserved] 

 706.03(w)-[Reserved] 

 706.03(x)-[Reserved] 

 706.03(y)-[Reserved] 

 
 

 706.04-Rejection of Previously Allowed Claims 

 706.05-Rejection After Allowance of Application 

 706.06-Rejection of Claims Copied From Patent 

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

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

 706.07(c)-Final Rejection, Premature 

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

 706.07(e)-Withdrawal of Final Rejection, General 

 706.07(f)-Time for Reply to Final Rejection 

 706.07(g)-Transitional After-Final Practice 

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

 
 

 
 

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

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

 707.03‑707.04-[Reserved] 

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

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

 707.05(c)-Order of Listing 

 707.05(d)-Reference Cited in Subsequent Actions 

 707.05(e)-Data Used in Citing References 

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

 707.05(g)-Incorrect Citation of References 

 
 

 707.06-Citation of Decisions, Orders Memorandums, and Notices 

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

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

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

 707.07(e)-Note All Outstanding Requirements 

 707.07(f)-Answer All Material Traversed 

 707.07(g)-Piecemeal Examination 

 707.07(h)-Notify of Inaccuracies in Amendment 

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

 707.07(j)-State When Claims Are Allowable 

 707.07(k)-Numbering Paragraphs 

 707.07(l)-Comment on Examples 

 
 

 707.08-Reviewing and Initialing by Assistant Examiner 

 707.09-Signing by Primary or Other Authorized Examiner 

 707.10-Entry 

 707.11-Date 

 707.12-Mailing 

 707.13-Returned Office Action 

 
 

 708-Order of Examination 
 708.01-List of Special Cases 

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

 708.02(b)-Prioritized Examination 

 708.02(c)-Patent Prosecution Highway Program 

 
 

 708.03-Examiner Tenders Resignation 

 
 

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

 
 

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

 
 

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

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

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

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

 710.02(e)-Extension of Time 

 
 

 710.03-[Reserved] 

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

 
 

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

 710.06-Situations When Reply Period Is Reset or Restarted 

 
 

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

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

 711.02(b)-Special Situations Involving Abandonment 

 711.02(c)-Termination of Proceedings 

 
 

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

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

 711.03(c)-Petitions Relating to Abandonment 

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

 
 

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

 711.04(b)-Ordering of Patented and Abandoned Files 

 711.04(c)-Notifying Applicants of Abandonment 

 
 

 711.05-Letter of Abandonment Received After Application Is Allowed 

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

 
 

 
 

 712-[Reserved] 

 713-Interviews 
 713.01-General Policy, How Conducted 

 713.02-Interviews Prior to First Official Action 

 713.03-Interview for “Sounding Out” Examiner Not Permitted 

 713.04-Substance of Interview Must Be Made of Record 

 713.05-Interviews Prohibited or Granted, Special Situations 

 713.06-No Inter Partes Questions Discussed Ex Parte 

 713.07-Exposure of Other Cases 

 713.08-Demonstration, Exhibits, Models 

 713.09-Interviews Between Final Rejection and Notice of Appeal 

 713.10-Interview Preceding Filing Amendment Under 37 CFR 1.312 

 
 

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

 714.01(b)-[Reserved] 

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

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

 714.01(e)-Amendments Before First Office Action 

 
 

 714.02-Must Be Fully Responsive 

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

 
 

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

 714.05-Examiner Should Immediately Review 

 714.06-[Reserved] 

 714.07-Amendments Not in Permanent Ink 

 714.08-714.09-[Reserved] 

 714.10-Claims Added in Excess of Claims Previously Paid For 

 714.11-Amendment Filed During Interference Proceedings 

 714.12-Amendments and Other Replies After Final Rejection or Action 

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

 714.14-Amendments After Allowance of All Claims 

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

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

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

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

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

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

 
 

 714.17-Amendment Filed After the Period for Reply Has Expired 

 714.18-Entry of Amendments 

 714.19-List of Amendments, Entry Denied 

 714.20-List of Amendments Entered in Part 

 714.21-Amendments Inadvertently Entered, No Legal Effect 

 714.22-714.24-[Reserved] 

 714.25-Discourtesy of Applicant or Attorney 

 
 

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

 715.01(b)-Reference and Application Have Common Assignee 

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

 715.01(d)-Activities Applied Against the Claims 

 
 

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

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

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

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

 715.06-[Reserved] 

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

 715.07(b)-Interference Testimony Sometimes Used 

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

 715.07(d)-Disposition of Exhibits 

 
 

 715.08-Decided by Primary Examiner 

 715.09-Timely Presentation 

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

 
 

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

 716.01(b)-Nexus Requirement and Evidence of Nonobviousness 

 716.01(c)-Probative Value of Objective Evidence 

 716.01(d)-Weighing Objective Evidence 

 
 

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

 716.02(b)-Burden on Applicant 

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

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

 716.02(e)-Comparison With Closest Prior Art 

 716.02(f)-Advantages Disclosed or Inherent 

 716.02(g)-[Reserved] 

 
 

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

 716.03(b)-Commercial Success Derived From Claimed Invention 

 
 

 716.04-Long-Felt Need and Failure of Others 

 716.05-Skepticism of Experts 

 716.06-Copying 

 716.07-Inoperability of References 

 716.08-Utility and Operability of Applicant’s Disclosure 

 716.09-Sufficiency of Disclosure 

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

 
 

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

 
 

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

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

 
 

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

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

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

 717.01(f) -Seasonable (or Timely) Presentation 

 
 

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

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

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

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

 
 

 
 

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

 719-File Wrapper 
 719.01-Papers in Image File Wrapper 

 719.02-Residence of Inventor Changed 

 719.03-Classification During Examination 

 719.04-Index of Claims 

 719.05-Field of Search 

 
 

 720-Public Use Proceedings 

 721‑723-[Reserved] 

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

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

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

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

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

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

 
 

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

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

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:50:53