MPEP § 1302 — MPEP § 1302
Current through: 2022-07-01

1302-Preparation of an Application for Allowance 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Chapter 1300 

 Section 1302 
 

 
 
 
 
 
 1302 Preparation of an Application for Allowance [R-07.2022]

 
 1302.01 General Review of Disclosure [R-01.2024]

 When an application is apparently ready for allowance, it should be
 reviewed by the examiner to make certain that the whole application meets all formal and
 substantive (i.e., statutory) requirements and that the language of the claims is
 enabled by, and finds adequate descriptive support in, the application disclosure as
 originally filed. Neglect to give due attention to these matters may lead to confusion
 as to the scope of the patent.
 

 There should be clear support or antecedent basis in the specification
 for the terminology used in the claims. Usually, the original claims follow the
 nomenclature of the specification; but sometimes in amending the claims or in adding new
 claims, applicant employs terms that do not appear in the specification. This may result
 in uncertainty as to the interpretation to be given such terms. See
 MPEP §
 608.01(o) . It should be noted, however, that exact terms need
 not be used in haec verba to satisfy the written description
 requirement of 35 U.S.C. 112(a) .
 Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470
 (Fed. Cir. 1995); In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 98
 (CCPA 1976). See also 37 CFR 1.121(e) which merely requires
 substantial correspondence between the language of the claims and
 the language of the specification.
 

 The claims should be renumbered as required by 37 CFR 1.126 , and
 particular attention should be given to claims dependent on previous claims to see that
 the numbering is consistent. See MPEP § 608.01(j) and
 § 608.01(n) .
 

 The abstract should be checked for an adequate and clear statement of
 the disclosed invention. See MPEP § 608.01(b) . The length of the
 abstract should be limited to 150 words. For changes to the abstract by examiner’s
 amendment, see MPEP §
 1302.04 .
 

 The title should also be checked. The title may not exceed 500
 characters in length and must be as short and specific as possible. See
 37 CFR
 1.72 . The title should be descriptive of the invention claimed,
 even though a longer title may result. If a satisfactory title is not supplied by the
 applicant, the examiner may require a change to the title on or after allowance. See
 MPEP
 § 606 and § 606.01 .
 

 All amendments should be reviewed to assure that they were timely
 filed.
 

 

 
 1302.02 Requirement for a Rewritten Specification [R-08.2012]

 Whenever interlineations or cancellations have been made in the
 specification or amendments which would lead to confusion and mistake, the examiner
 should require the entire portion of specification affected to be rewritten before
 passing the application to issue. See 37 CFR 1.125 and
 MPEP §
 608.01(q) .
 

 Form paragraph 13.01 should be used when making such a
 requirement.
 

 ¶ 13.01 Requirement for Rewritten Specification

 The interlineations or cancellations made in the specification or amendments to the claims could lead to confusion and mistake
 during the issue and printing processes. Accordingly, the portion of the specification or claims as identified below is required
 to be rewritten before passing the case to issue. See 37 CFR 1.125 and MPEP § 608.01(q) .
 

 Examiner Note:
 
 1. Specific discussion of the sections of the specification or claims required to be rewritten must be set forth.

 2. See form paragraph 6.28.01 for a substitute specification.
 
 
 

 

 
 1302.03 Notice of Allowability [R-07.2015]

 A Notice of Allowability form PTOL-37 is used whenever an application
 has been placed in condition for allowance. The date of any communication and/or
 interview which resulted in the allowance should be included in the notice.
 

 In all instances, both before and after final
 rejection, in which an application is placed in condition for allowance, applicant
 should be notified promptly of allowability of the claims by a Notice of Allowability
 PTOL-37. Prompt notice to applicant is important because it may avoid an unnecessary
 appeal and act as a safeguard against a holding of abandonment.
 

 

 

 
 1302.04 Examiner’s Amendments and Changes [R-01.2024]

 With the exception of the following no corrections or interlineations
 may be made by the examiner in the body of written portions of the specification or any
 other paper filed in the application for patent, except by examiner’s amendment approved
 by applicant and as described hereinafter (See 37 CFR 1.121 .):
 

 
 (A) Renumber the claims in accordance with
 37 CFR
 1.126 ; 
 

 (B) Correct erroneous citations on an Information
 Disclosure Statement (see MPEP § 707.05(g) );
 

 (C) Correct an amendment filed under 37 CFR 1.312 
 that is non-compliant under 37 CFR 1.121 whose entry would
 otherwise be recommended (see MPEP § 714.16 );
 

 (D) Cancel claims directed to a non-elected invention,
 where the election was made without traverse and the claims are not eligible for
 rejoinder (see MPEP
 § 821.02 );
 

 (E) Amend the title to correspond with the claim where
 the Office has established the title as described in MPEP §
 2920.04(a) ; and 
 

 (F) Amendment and/or cancellation of claims following a
 decision by the Patent Trial and Appeal Board as described in
 MPEP §§
 1214 , 1214.05 , and 1214.06 .
 

 
 The prior practice of informal examiner’s amendments are not permitted
 in image file wrapper applications. Any amendment of an image file wrapper application
 must be by way of an examiner’s amendment, as described below, or be an amendment made
 by the applicant.
 

 For continuing applications filed under 37 CFR 1.53(b) , a
 reference to a parent application in the first sentence(s) of the specification is no
 longer required when the reference appears in an Application Data Sheet. If a reference
 to the parent application has not been included in the first sentence(s) of the
 specification an examiner should not add a reference to the prior application without
 the approval of the applicant and an examiner’s amendment. If applicant has included a
 reference to the parent application, the examiner should review the statement and the
 application data sheet for accuracy. Applicant may decide to delete the benefit claim in
 the application filed under 37 CFR 1.53(b) . Furthermore, a
 petition under 37
 CFR 1.78 to accept an unintentionally delayed benefit claim may be
 required if the application is a utility or plant application filed on or after November
 29, 2000. See MPEP § 211.04 . 
 

 An examiner’s amendment may be used to correct informalities in the
 body of the written portions of the specification as well as all errors and omissions in
 the claims. The examiner’s amendment must be signed by the primary examiner, entered
 into the file and a copy sent to applicant. The examiner should determine if an
 extension of time is required for the entry of an examiner's amendment. See
 MPEP §
 706.07(f) , subsection II. The changes specified in the
 amendment are entered by the technical support staff in the regular way. An examiner’s
 amendment should include form paragraph 13.02 and form paragraph 13.02.01 . Form paragraph
 13.02.02 
 should be used if an extension of time is required.
 

 ¶ 13.02 Examiner’s Amendment

 An examiner’s amendment to the record appears below. 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:

 This form paragraph is NOT to be used in a reexamination proceeding (use form paragraph 22.06 instead).
 

 

 ¶ 13.02.01 Examiner’s Amendment Authorized

 Authorization for this examiner's amendment was given in an interview with
 [1] on [2] .
 

 

 ¶ 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 ).
 
 
 

 Although 37 CFR 1.121 has been amended to
 require amendments to the specification/claims to be made in compliance with
 37 CFR
 1.121(b)(1) , (b)(2) , or (c) , where
 appropriate, 37 CFR
 1.121(g) permits the Office to make amendments to the
 specification, including the claims, by examiner’s amendments without the need to comply
 with the requirements of 37 CFR 1.121(b)(1) ,
 (b)(2) , or (c) in the interest of expediting
 prosecution and reducing cycle time. Examiners may continue to make additions or
 deletions of subject matter in the specification, including the claims, in examiner’s
 amendments by instructions to make the change at a precise location in the specification
 and/or the claims. Examiners may use an examiner’s amendment to correct a non-compliant
 amendment filed by the applicant if the amendment would otherwise place the application
 in condition for allowance (e.g., a reply to a non-final Office action or an after-final
 amendment includes an incorrect status identifier). See MPEP § 714 , subsection
 II.E, Examiner’s Amendments.
 

 As an alternative, an examiner’s amendment utilizing paragraph/claim
 replacement can be created by the examiner with authorization from the applicant. The
 examiner’s amendment can also be created from a facsimile transmission or emailed
 amendment received by the examiner and referenced in the examiner’s amendment and
 attached thereto. Any subject matter, in clean version form (containing no brackets or
 underlining), to be added to the specification/claims should be set forth separately by
 applicant in the email or facsimile submission apart from the remainder of the
 submission. A clean version of a paragraph/claim, or portion of a paragraph/claim,
 submitted by applicant in a fax or email, should be printed and attached to the
 examiner’s amendment and may be relied on as part of the examiner’s amendment. The
 examiner should mark “requested” on the entire attachment to indicate that the fax or
 email was requested by the examiner, so as to not lead to a reduction in patent term
 adjustment ( 37 CFR
 1.704(c)(8) ). As the attachment is made part of the examiner’s
 amendment, it does not get a separate entry code and will not trigger any reduction in
 patent term adjustment. A paper copy of the entire email or facsimile submission should
 be entered in the application file. Examiners are not required to electronically save
 any emails once any emails or attachments thereto are printed and become part of an
 application file record. The email practice that is an exception for examiner’s
 amendments is restricted to emails to the examiner from the
 applicant and should not be generated by the examiner to the
 applicant unless such emails are in compliance with all of the requirements set out in
 MPEP §
 502.03 . 
 

 The amendment or cancellation of claims by examiner’s amendment is
 permitted when passing an application to issue where these changes have been authorized
 by applicant (or applicant's attorney or agent) in an interview. The examiner’s
 amendment should indicate that the changes were authorized, the date and type of
 interview, and with whom the interview was held.
 

 The examiner’s amendment practice may be used to make charges against
 deposit accounts or credit cards under special conditions.
 

 An examiner’s amendment can be used to make a charge against a deposit
 account, provided prior approval is obtained from the applicant, attorney or agent, in
 order to expedite the issuance of a patent on an application otherwise ready for
 allowance. When such an examiner’s amendment is prepared, the prior approval is
 indicated by identification of the name of the authorizing party, the date and type
 (personal or telephone) of authorization, the purpose for which the charge is made
 (additional claims, etc.), and the deposit account number.
 

 Charges can also be made against a credit card in an examiner’s
 amendment. Once the examiner has informed applicant of the required charges, applicant
 must submit by facsimile, a properly completed PTO-2038, authorizing the necessary
 charges. After completion of processing in the Office of Finance, form PTO-2038 will be
 removed from the record. Office employees may not accept oral (telephonic) instructions
 to complete the Credit Card Payment Form or otherwise charge a patent process or
 trademark process fee (as opposed to information product or service fees) to a credit
 card. Further identifying data, if deemed necessary and requested by the applicant,
 should also be included in the examiner’s amendment.
 

 Form paragraph 13.06 may be used to charge an extension of time fee in
 an examiner’s amendment.
 

 ¶ 13.06 Extension of Time by Examiner’s Amendment

 An extension of time under 37 CFR 1.136(a) is required to place this application in condition for allowance. During a telephone 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.
 

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

 2. When an examiner’s amendment is also authorized, use form paragraph 13.02.02 instead.
 
 
 

 At the time of allowance, substantive changes made by the examiner to
 the abstract must be done by an examiner’s amendment after first obtaining approval from
 the applicant. As noted by the court, the abstract may be used to determine the meaning
 of claims. See Pandrol USA, LP v. Airboss Railway Products, Inc., 320
 F.3d 1354, 1363 n.1, 65 USPQ2d 1985, 1996 n.1 (Fed. Cir. 2003), Hill-Rom Co. v.
 Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.1, 54 USPQ2d 1437, 1443 n.1
 (Fed. Cir. 2000). Since the abstract may be relied upon to determine the scope of the
 claimed invention, examiners should review the abstract for compliance with
 37 CFR
 1.72(b) and point out defects noted to the applicant in the first
 Office action, or at the earliest point in the prosecution that the defect is noted, so
 that applicant may make the necessary changes to the abstract.
 

 No examiner’s amendment may make substantive changes to the written
 portions of the specification, including the abstract, without first obtaining
 applicant’s approval.
 

 For applications filed prior to September 16, 2012, a reference to a
 prior filed application, for which benefit is claimed, is required in either the first
 sentence(s) of the specification or in an Application Data Sheet. For applications filed
 after September 16, 2012, a reference to a prior filed application, for which benefit is
 claimed, is required in the Application Data Sheet. If the application data sheet fails
 to include a required reference, applicant should be contacted to supply a Supplemental
 or Corrected Application Data Sheet in compliance with 37 CFR
 1.76(c) . See MPEP § 601.05(a) and
 (b) . To minimize the possibility of the claim for the benefit
 to an earlier filing date under 35 U.S.C. 119(e) , 35 U.S.C. 120 ,
 121 , 365(c) , or 386(c) 
 being overlooked it is recommended that the statement, “This is a division
 (continuation, continuation-in-part) of Application Number -/---, filed ---” appear as
 the first sentence(s) of the specification. For design applications see
 MPEP §
 1504.20 . In the case of an application filed under
 37 CFR
 1.53(b) as a division, continuation or continuation-in-part of a
 CPA, there would be only one reference to the series of applications assigned the same
 application number with the filing date cited being that of the original non-continued
 application. In applications claiming the benefit under 35 U.S.C. 119(e), a statement
 such as “This application claims the benefit of U.S. Provisional Application No. 60/ -
 --, filed - --” should appear as the first sentence(s) of the specification. In
 addition, for an application which is claiming the benefit under 35 U.S.C. 120 of a
 prior application which in turn claims the benefit of a provisional application under 35
 U.S.C. 119(e), a suitable reference would read, “This application is a continuation of
 U.S. Application No. 08/ - --, filed - --, now abandoned, which claims the benefit of
 U.S. Provisional Application No. 60/ - --, filed - --.” Any such statements appearing
 elsewhere in the specification should be relocated.
 

 References cited as being of interest by examiners when passing an
 application to issue will not be supplied to applicant, but foreign patent documents and
 non-patent literature will be scanned and added to the file wrapper for viewing and
 downloading by the applicant, if desired. The references will be cited as usual on form
 PTO-892, a copy of which will be attached to the Notice of Allowability, form
 PTOL-37.
 

 Where an application is ready for issue except for a slight defect in
 the drawing not involving a change in structure, the examiner will prepare a letter
 indicating the change to be made and, if necessary, including a marked-up copy of the
 drawing showing the addition or alteration to be made. See MPEP § 608.02(w) .
 

 No other changes may be made by any person in any record of the U.S.
 Patent and Trademark office without the written approval of the Director of the United
 States Patent and Trademark Office.
 

 In reviewing the application, all errors should be carefully noted. It
 is not necessary that the language be the best; it is, however, essential that it be
 clear in meaning, and free from errors in syntax. Any necessary examiner’s amendment is
 usually made at the time an application is being prepared for issue by the examiner and
 a copy of any examiner’s amendment is sent to the applicant as an attachment to the
 Notice of Allowability, form PTOL-37.
 

 Examiners will not cancel claims on the basis of an amendment which
 argues for certain claims and, alternatively, purports to authorize their cancellation
 by the examiner if other claims are allowed. See generally In re Willingham,
 282 F.2d 353, 356, 127 USPQ 211, 215 (CCPA 1960).
 

 In all instances, both before and after final rejection, in which an
 application is placed in condition for allowance as by an interview or amendment,
 applicant should be notified promptly of this fact by means of a Notice of Allowability,
 form PTOL-37. See MPEP
 § 714.13 and § 1302.03 .
 

 If after reviewing, screening, or surveying an allowed application the
 Office discovers any informality in the application suitable for correction by
 examiner’s amendment or an informality in an examiner’s amendment, the application will
 be returned for correction by the examiner through the use of an examiner’s amendment.
 For applications reviewed under the Quality Assurance program, see MPEP § 1308.03 

 
 1302.04(a) Title of Invention [R-08.2012]

 Where the title of the invention is not specific to the invention as
 claimed, see MPEP §
 606.01 .
 

 

 
 1302.04(b) [Reserved]

 

 

 
 1302.04(c) Cancellation of Claims to Nonelected Invention [R-08.2012]

 See MPEP § 821.01 and § 821.02 .
 

 

 
 1302.04(d) Cancellation of Claim Lost in Interference [R-08.2012]

 See MPEP Chapter 2300 .
 

 

 
 1302.04(e) Cancellation of Rejected Claims Following Appeal [R-10.2019]

 See MPEP § 1214.06 , § 1215.03 , § 1215.04 and
 §
 1216.01 .
 

 

 
 1302.04(f) [Reserved]

 

 

 
 1302.04(g) Identification of Claims [R-07.2015]

 To identify a claim, an examiner’s amendment should refer to it by
 the original number and, if renumbered in the allowed application, also by the new
 number.
 

 

 
 1302.04(h) Rejoinder of Claims [R-08.2012]

 Any previously withdrawn claims that are being rejoined and allowed
 must be listed in the index of claims and on the Notice of Allowability to avoid a
 printer query. The examiner should notify the applicant of the rejoinder. See
 MPEP §
 821.04 .
 

 

 

 
 1302.05 Correction of Drawing [R-10.2019]

 Where an application otherwise ready for issue requires correction of
 the drawing, the application is processed for allowance in the Technology Center and
 then forwarded to the Office of Data Management. Any papers subsequently filed by the
 applicant, including replacement drawings, are matched with the application file. If the
 drawings that are received are still not acceptable for publishing, the Office will mail
 a “Notice to File Corrected Application Papers,” giving the applicant a time period in
 which to file the corrected drawings. See MPEP § 608.02(z) .
 

 

 
 1302.06 Prior Foreign Application [R-07.2015]

 See MPEP § 202 and §
 214 .
 

 

 
 1302.07 [Reserved]

 

 

 
 1302.08 Interference Search [R-01.2024]

 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 classified search, or a combination of text search and classified search
 of the "US-PGPUB" database). 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. If the search results identify any
 potential interfering subject matter, the examiner will review the application(s) with
 the potential interfering subject matter to determine whether interfering subject matter
 exists. If interfering subject matter does exist, the examiner will follow the guidance
 set forth in MPEP Chapter
 2300 . If there is no interfering subject matter then the
 examiner should prepare the application for issuance. The interference search must be
 made of record in the application file. See MPEP § 719.05 , subsection III. The
 search for interfering applications must not be limited to only the classes or subgroups
 in which the application is classified, but must be extended to all classes in which it
 has been necessary to search in the examination of the application.
 

 An interference search of those applications held under Secrecy Order,
 which are reviewed by Licensing and Review, may be required. Inspection of pertinent
 prints, drawings, brief cards, and applications will be done on request by an examiner
 associated with Licensing and Review.
 

 

 
 1302.09 Classification, Print Figure, and Other Notations [R-07.2022]

 The examiner preparing the application for issue completes the Issue
 Classification sheet.
 

 

 

 

 Examiners must review the data regarding prior U.S. applications to
 make sure that the information is correct when preparing the application for issue. If
 any claim to domestic benefit under 35 U.S.C. 119(e) , 120 ,
 121 , 365(c) , or 386(c) 
 is added, deleted, and/or modified during prosecution of the application and such
 addition, deletion, and/or modification has been approved, the examiner must make sure
 that the information in the Patent Data Portal database is current and up to date. If
 the Patent Data Portal has not been updated, the application must be forwarded to the
 Technology Center (TC) Legal Instrument Examiner, with an explanation of the correction
 to be made. Examiners should also review the data regarding prior provisional and
 foreign applications for accuracy.
 

 See MPEP § 202 for notations to be placed
 in the file history as to parent or prior U.S. applications, including provisional
 applications, and foreign patent applications. 
 

 See MPEP
 § 1302.13 for name of examiner.
 

 Examiners, when preparing an application for issue, are to record the
 number of the claim selected for printing in the Official Gazette in
 the box labeled “PRINT CLAIM” on the Issue Classification Sheet.
 

 The claim or claims should be selected in accordance with the following
 instructions:
 

 
 (A) The broadest claim should be selected.

 (B) Examiners should ordinarily designate but one claim on each
 invention, although when a plurality of inventions are claimed in an application,
 additional claims up to a maximum of five may be designated for publication.
 

 (C) A dependent claim should not be selected unless the independent
 claim on which it depends is also printed. In the case where a multiple dependent
 claim is selected, the entire chain of claims for one embodiment should be
 listed.
 

 (D) In reissue applications, the broadest claim with changes or the
 broadest additional reissue claim should be selected for printing.
 

 
 When recording this information in the box provided, the following
 items should be kept in mind:
 

 
 (A) If multiple claims are selected, the claim numbers should be
 separated by commas.
 

 (B) The claim designated must be referred to by using the renumbered
 patent claim number rather than the original application claim number 
 

 
 Examiners, when preparing an application for issue, are to record the
 figure selected for printing in the Official Gazette in the box
 labeled “ Print Fig .” on the Issue Classification sheet.
 

 Ordinarily a single figure is selected for printing. This figure should
 be consistent with the claim to be printed in the Official Gazette. 
 The figure to be printed in the Official Gazette must not be one that
 is labeled “prior art.” If there is no figure illustrative of or helpful in
 understanding the claimed invention, no figure need be selected. “None” may be written
 in the box labeled “ Print Fig .”on the Issue Classification Sheet.
 

 

 
 1302.10 Issue Classification Notations [R-10.2019]

 See MPEP
 §§ 903.07 and 905 through 907 for
 notations to be applied on the Issue Classification sheet. The Issue Classification
 sheet is automatically populated with the Cooperative Patent Classification symbols
 applied to a family of documents (continuations, divisionals, and/or foreign documents
 in the family). These symbols are based on the inventive concepts in the disclosure,
 rather than solely based on the claimed subject matter. As such, it is possible that an
 issue classification will include classification group/subgroup symbols that were not
 searched by the examiner.
 

 In all reissue applications, the number of the original patent which is
 being reissued should be placed in the box provided therefor below the box for the
 applicant’s name.
 

 

 
 1302.11 [Reserved]

 

 

 
 1302.12 Listing of References [R-01.2024]

 All references which have been cited by the examiner during the
 prosecution, including those appearing in Patent Trial and Appeal Board decisions or
 listed in the reissue oath, must be listed on either a form PTO-892 or on an Information
 Disclosure Statement (PTO/SB/08 ) and initialed. All such reference citations will be
 printed in the patent. References listed by a patent examiner on a “Notice of References
 Cited,” form PTO-892, will be indicated with an asterisk in the “References Cited”
 section of the front page of a patent document. An example of how the “References Cited”
 section of the patent will appear is as follows:
 

 [56] References Cited 

 U.S. PATENT DOCUMENTS 

 2,234,192 * 7/1955 Greene..............................
 75/507
 

 4,991,048 8/1990 Larkin................................206/207

 5,000,186 12/1991 Amis.................................267/340 

 5,000,993 * 12/1991 Thomas et
 al....................75/507
 

 FOREIGN PATENT DOCUMENTS

 9500000 * 6/1995
 Belgium..........................…75/507
 

 200000 * 6/1990 Japan ………………………. 75/507
 

 9400000 9/1994 United Kingdom.

 OTHER PUBLICATIONS

 Hill, “Ferrous Precipitation,” Journal of the American
 Defenestration Association, Jan. 1989, Pages 34– 46. * 
 Clymerhill-Irons, “Ferrous Ascension for the Eighties,” Proceedings of the
 International Ferrous Ascension Society, Jan.– Mar. 1979, Pages 1111–
 1163.
 

 * cited by examiner 
 

 Indication of whether a reference was listed by the examiner will be
 helpful in compiling statistical data related to prior art submissions so that the USPTO
 can better consider whether changes are required to the rules governing prior art
 statements. 
 

 Indication of a reference with an asterisk should not be considered to
 reflect any significance other than that the reference was listed on a “Notice of
 References Cited,” form PTO-892. When an examiner lists references on a form PTO-892,
 the examiner lists references that are relied upon in a prior art rejection or mentioned
 as pertinent. See MPEP §
 707.05(c) . The examiner does not list references which were
 previously cited by the applicant (and initialed by an examiner) on an Information
 Disclosure Statement, for example, on a PTO/SB/08. See MPEP § 609 and
 § 707.05(b) , (c) and (d) . No distinction
 will be made in the “References Cited” section for other sources of references. Thus,
 references cited in a protest, by an attorney or agent not acting in a representative
 capacity but on behalf of a single inventor, and by the applicant will not be
 distinguished. 
 

 At time of allowance, the examiner may cite pertinent art in an
 examiner’s amendment or statement of reasons for allowance. Such pertinent art should be
 listed as usual on form PTO-892, a copy of which is attached to the Notice of
 Allowability form PTOL-37. Such pertinent art is not sent to the applicant, but foreign
 patent documents and non-patent literature will be scanned and added to the file wrapper
 for viewing and downloading by the applicant, if desired. Such citation of art is
 important in the case of continuing applications where significant prior art is often of
 record in the parent case. In the rare instance where no art is cited in a continuation
 application, all the references cited during the prosecution of the parent application
 will be listed at allowance for printing in the patent. See MPEP § 707.05 and
 § 707.05(a) .
 

 When preparing an application for allowance, the technical support
 staff will verify that there is at least one list of references (PTO-892 or PTO/SB/08 )
 in the application. The technical support staff will also verify that each reference on
 the Information Disclosure Statement has either been initialed by the examiner or
 lined-through by the examiner. All lists of references are maintained in the application
 file.
 

 In the first action after termination of an interference or derivation,
 the examiner should make of record in each application all references not already of
 record which were pertinent to any preliminary motions and which were discussed in the
 decision on motion.
 

 In any application, otherwise ready for issue, in which an erroneous
 citation has not been formally corrected in an official paper, the examiner is directed
 to correct the citation by an examiner’s amendment. See MPEP § 707.05(g) .
 

 Any new reference cited when the application is in issue, under the
 practice of MPEP §
 1308.01 , should be added by way of a PTO-892 or PTO/SB/08.
 

 

 
 1302.13 Signing [R-07.2015]

 The primary examiner and the assistant examiner involved in the
 allowance of an application will apply E-Signatures on the Issue Classification sheet. A
 primary examiner who prepares an application for issue signs the file wrapper only in
 the “Primary Examiner” box on the Issue Classification sheet. 
 

 Only the names of the primary examiner and the assistant examiner
 appearing on the Issue Classification Sheet will be listed in the printed patent.
 

 

 
 1302.14 Reasons for Allowance [R-01.2024]

 
 37 CFR 1.104 Nature of examination. 

 *****

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

 
 
 I. REASONS FOR ALLOWANCE One of the primary purposes of 37 CFR 1.104(e) is to improve the
 quality and reliability of issued patents by providing a complete file history which
 should clearly reflect, as much as is reasonably possible, the reasons why the
 application was allowed. Such information facilitates evaluation of the scope and
 strength of a patent by the patentee and the public and may help avoid or simplify
 litigation of a patent.
 

 It should be noted that the setting forth of reasons for allowance
 is not mandatory on the examiner’s part. However, in meeting the need for the
 application file history to speak for itself, it is incumbent upon the examiner in
 exercising their responsibility to the public, to see that the file history is as
 complete as is reasonably possible.
 

 When an application is finally acted upon and allowed, the examiner
 is expected to determine, at the same time, whether the reasons why the application
 is being allowed are evident from the record.
 

 Prior to allowance, the examiner may also specify allowable subject
 matter and provide reasons for indicating such allowable subject matter in an Office
 communication.
 

 In determining whether reasons for allowance should be recorded, the
 primary consideration lies in the first sentence of 37 CFR 1.104(e) 
 which states:
 

 
 If the examiner believes that the record of the prosecution
 as a whole does not make clear his or her reasons for
 allowing a claim or claims, the examiner may set forth such reasoning. (Emphasis
 added).
 

 
 In most cases, the examiner’s actions and the applicant’s replies
 make evident the reasons for allowance, satisfying the “record as a whole” proviso of
 the rule. This is particularly true when applicant fully complies with
 37 CFR
 1.111(b) and (c) and 37 CFR
 1.133(b) . Thus, where the examiner’s actions clearly point out the
 reasons for rejection and the applicant’s reply explicitly presents reasons why
 claims are patentable over the reference, the reasons for allowance are in all
 probability evident from the record and no statement should be
 necessary. Conversely, where the record is not explicit as to reasons, but allowance
 is in order, then a logical extension of 37 CFR 1.111 and
 1.133 would dictate that the examiner should make reasons of
 record and such reasons should be specific.
 

 Where specific reasons are recorded by the examiner, care must be
 taken to ensure that statements of reasons for allowance (or indication of allowable
 subject matter) are accurate, precise, and do not place unwarranted interpretations,
 whether broad or narrow, upon the claims. The examiner should keep in mind the
 possible misinterpretations of their statement that may be made and its possible
 effects. Each statement should include at least (1) the major difference in the
 claims not found in the prior art of record, and (2) the reasons why that difference
 is considered to define patentably over the prior art if either of these reasons for
 allowance is not clear in the record. The statement is not intended to necessarily
 state all the reasons for allowance or all the details why claims are allowed and
 should not be written to specifically or impliedly state that all the reasons for
 allowance are set forth. Where the examiner has a large number of reasons for
 allowing a claim, it may suffice to state only the major or important reasons, being
 careful to so couch the statement. For example, a statement might start: “The primary
 reason for the allowance of the claims is the inclusion of the limitation in all the
 claims which is not found in the prior art references,” with further amplification as
 necessary.
 

 Stock paragraphs with meaningless or uninformative statements of
 the reasons for the allowance should not be used. It is improper to use a statement
 of reasons for allowance to attempt to narrow a claim by providing a special
 definition to a claim limitation which is argued by applicant, but not supported by a
 special definition in the description in cases where the ordinary meaning of the term
 in the prior art demonstrates that the claim remains unpatentable for the reasons of
 record, and where such claim narrowing is only tangential to patentability. Cf.
 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S.
 722, 741, 62 USPQ2d 1705, 1714 (2002). The statement of reasons for allowance by the
 examiner is intended to provide information equivalent to that contained in a file in
 which the examiner’s Office actions and the applicant’s replies make evident the
 examiner’s reasons for allowing claims.
 

 Examiners are urged to carefully carry out their responsibilities
 to see that the application file contains a complete and accurate picture of the
 Office’s consideration of the patentability of the application.
 

 Under 37 CFR 1.104(e) , the examiner
 must make a judgment of the individual record to determine whether or not reasons for
 allowance should be set out in that record. These guidelines, then, are intended to
 aid the examiner in making that judgment. They comprise illustrative examples as to
 applicability and appropriate content. They are not intended to be exhaustive.
 

 II. EXAMPLES OF WHEN IT IS LIKELY THAT A STATEMENT SHOULD BE ADDED TO THE
 RECORD 
 (A) Claims are allowed on the basis of one (or some) of a number
 of arguments and/or affidavits presented, and a statement is necessary to
 identify which of these were persuasive, for example:
 
 (1) When the arguments are presented in an appeal brief.

 (2) When the arguments are presented in an ordinary reply,
 with or without amendment of claims.
 

 (3) When both an affidavit under 37 CFR
 1.131 and arguments concerning rejections under
 35 U.S.C. 102 and/or 103 are presented.
 

 
 

 (B) First action issue:
 
 (1) Of a noncontinuing application, wherein the claims are
 very close to the cited prior art and the differences have not been
 discussed elsewhere.
 

 (2) Of a continuing application, wherein reasons for
 allowance are not apparent from the record in the parent case or clear
 from preliminary filed matters.
 

 
 

 (C) Withdrawal of a rejection for reasons not suggested by
 applicant, for example:
 
 (1) As a result of an appeal or pre-appeal brief
 conference.
 

 (2) When applicant’s arguments have been misdirected or are
 not persuasive alone and the examiner comes to realize that a more cogent
 argument is available.
 

 (3) When claims are amended to avoid a rejection under
 35
 U.S.C. 102 , but arguments (if any) fail to address
 the question of obviousness.
 

 
 

 (D) Allowance after remand from the Patent Trial and Appeal
 Board.
 

 (E) Allowance coincident with the citation of newly found
 references that are very close to the claims, but claims are considered
 patentable thereover:
 
 (1) When reference is found and cited (but not argued) by
 applicant.
 

 (2) When reference is found and cited by examiner.

 
 

 (F) Where the reasons for allowance are of
 record but, in the examiner’s judgment, are unclear (e.g., spread throughout
 the file history) so that an unreasonable effort would be required to collect
 them.
 

 (G) Allowance based on a claim interpretation which might not be
 readily apparent, for example:
 
 (1) Article claims in which method limitations impart
 patentability.
 

 (2) Method claims in which article limitations impart
 patentability.
 

 (3) Claim is so drafted that “nonanalogous” art is not
 applicable.
 

 (4) Preamble or functional language “breathes life” into
 claim. 
 

 
 

 (H) Allowance following decision by the United States Court of
 Appeals for the Federal Circuit or District Court of the District of Columbia.
 The reasons for allowance should refer to and incorporate the briefs and the
 court decision.
 

 
 
 (I) Where the claims are considered patentable over the X and/or Y
 references cited in a search report of a corresponding PCT application and the
 reasons for allowance are not apparent from the record.
 

 III. EXAMPLES OF STATEMENTS OF SUITABLE CONTENT 
 (A) The primary reason for allowance of the claims is the
 inclusion of .03 to .05 percent nickel in all of the claims. Applicant’s second
 affidavit in example 5 shows unexpected results from this restricted range.
 

 (B) During two telephonic interviews with applicant’s attorney,
 Mr............. on 5/6 and 5/09/2014, the examiner stated that applicant’s
 remarks about the placement of the primary teaching’s grid member were
 persuasive, but he pointed out that applicant did not claim the member as being
 within the reactor. Thus, an amendment doing such was agreed to.
 

 (C) The claims in the application are deemed to be directed to an
 nonobvious improvement over the invention patented in Pat. No. 3,953,224. The
 claims comprise baffle means 12 whose effective length in the extraction tower
 may be varied so as to optimize and to control the extraction process.
 

 (D) Upon reconsideration, the claims of this application are
 entitled to the effective filing date of application number -/---. Thus the
 rejection under pre-AIA 35 U.S.C. 102(d) 
 and 103 over Belgium Patent No. 757,246 is withdrawn.
 

 (E) The specific limitation as to the pressure used during
 compression was agreed to during the telephone interview with applicants’
 attorney. During said interview, it was noted that applicants contended in
 their amendment that a process of the combined applied teachings could not
 result in a successful article within a particular pressure range (see page 3,
 bottom, of applicant’s amendment). The examiner agreed and allowed the
 application after incorporating the pressure range into the claim. 
 

 (F) In the examiner’s opinion, it would not have been obvious to a
 person of ordinary skill in the art first to eliminate one of top members 4,
 second to eliminate plate 3, third to attach remaining member 4 directly to
 tube 2 and finally to substitute this modified handle for the handle 20 of
 Nania (see Fig. 1) especially in view of applicant’s use of term
 “consisting.”
 

 (G) The application is allowable for the reasons set forth on page
 -- of the decision of the Court of Appeals for the Federal Circuit, which is
 hereby incorporated by reference. As noted therein, and as argued on page -- of
 Appellant’s brief, the claimed invention requires a one piece tubular member
 whereas the closest prior art requires a multiple piece assembly which does not
 teach or suggest the claimed invention.
 

 IV. EXAMPLES OF STATEMENTS THAT ARE NOT SUITABLE AS TO CONTENT 
 (A) The 3-roll press couple has an upper roll 36 which is
 swingably adjustable to vary the pressure selectively against either of the two
 lower rolls. (NOTE: The significance of this statement may not be clear if no
 further explanation is given.)
 

 (B) The main reasons for allowance of these claims are applicant’s
 remarks in the appeal brief and an agreement reached in the appeal
 conference.
 

 (C) The instant composition is a precursor in the manufacture of
 melamine resins. A thorough search of the prior art did not bring forth any
 composition which corresponds to the instant composition. The examiner in the
 art also did not know of any art which could be used against the instant
 composition.
 

 (D) Claims 1-6 have been allowed because they are believed to be
 both novel and nonobvious.
 

 (E) The examiner should not include in his or
 her statement any matter which does not relate directly to the reasons for
 allowance. For example:
 
 (1) Claims 1 and 2 are allowed because they are patentable
 over the prior art. If applicants are aware of better art than that which
 has been cited, they are required to call such to the attention of the
 examiner.
 

 (2) The reference Jones discloses and claims an invention
 similar to applicant’s. However, a comparison of the claims, as set forth
 below, demonstrates the conclusion that the inventions are
 noninterfering.
 

 
 

 
 Most instances when the examiner finds a need to place in the file a
 statement of the reasons for allowing a claim or claims will come at the time of
 allowance. In such cases, the examiner should (a) check the appropriate box on the
 form PTOL-37 and (b) attach thereto a paper containing the examiner's statement of
 reasons for allowance. The paper should identify the application number and be
 clearly labeled “Statement of Reasons for Allowance.” It should also specify that
 comments may be filed by the applicant on the statement and should preferably be
 submitted with the payment of the issue fee so as not to delay processing of the
 application and in any event must be filed no later than payment of the issue
 fee.
 

 Form paragraph 13.03 may be used for this
 purpose.
 

 ¶ 13.03 Reasons for Allowance

 The following is an examiner’s statement of reasons for allowance: [1] 

 Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid
 processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement
 of Reasons for Allowance.”
 

 Examiner Note:
 
 1. Do not use this form paragraph in reexamination proceedings, see form paragraph 22.16 .
 

 2. In bracket 1, provide a detailed statement of the reason(s) certain claim(s) have been indicated as being allowable or as
 containing allowable subject matter.
 
 
 

 A statement may be sent to applicant with other communications,
 where appropriate, but should be clearly labeled as a “Statement of Reasons for
 Allowance” and contain the data indicated above.
 

 Form paragraph 13.03.01 may be used to specify the reasons for
 indicating allowable subject matter in a communication prior to allowance.
 

 ¶ 13.03.01 Reasons for Indication of Allowable Subject Matter

 The following is a statement of reasons for the indication of allowable subject matter: [1] 

 Examiner Note:
 
 1. This form paragraph is for use in an Office action prior to allowance of the application. Use form paragraph 13.03 in the Notice of Allowability.
 

 2. In bracket 1, provide a detailed statement of the reason(s) certain claim(s) have been indicated as being allowable or as
 containing allowable subject matter.
 
 
 
 V. APPLICANT’S COMMENTS ON THE REASONS FOR ALLOWANCE The examiner’s statement of reasons for allowance is an important
 source of prosecution file history. See Zenith Labs., Inc. v. Bristol-Myers
 Squibb Co., 19 F.3d 1418, 30 USPQ2d 1285 (Fed. Cir. 1996). The
 examiner’s statement of reasons for allowance is the personal opinion of the examiner
 as to why the claims are allowable. The examiner’s statement should not create an
 estoppel. Only applicant’s statements should create an
 estoppel. The failure of applicant to comment on the examiner’s
 statement of reasons for allowance should not be treated as acquiescence to the
 examiner’s statement. See Salazar v. Procter & Gamble Co., 414
 F.3d 1342, 1347, 75 USPQ2d 1369, 1373 (Fed. Cir. 2005). Any inferences or presumption
 are to be determined on a case-by-case basis by a court reviewing the patent, the
 USPTO examining the patent in a reissue application or a reexamination proceeding,
 the Patent Trial and Appeal Board reviewing the patent in an interference or
 derivation proceeding, etc. Applicant may set forth his or her position if he or she
 disagrees with the examiner’s reasons for allowance.
 

 Comments filed by the applicant on the examiner’s statement of
 reasons for allowance, should preferably be submitted no later than the payment of
 the issue fee, to avoid processing delays. Such submissions should be clearly labeled
 “Comments on Statement of Reasons for Allowance.” Comments will be entered in the
 application file by the Office of Data Management with an appropriate document code
 in the file wrapper. 
 

 The application file generally will not be returned to the examiner
 after the entry of such comments made by applicant on the examiner’s statement of
 reasons for allowance. Therefore, the absence of an examiner’s response to
 applicant's comments does not mean that the examiner agrees with or acquiesces in the
 reasoning of such comments. See 37 CFR 1.104(e) . While the
 examiner may review and comment upon such a submission, the examiner has no
 obligation to do so.
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1301-Substantially Allowable Application, Special 

 1302-Preparation of an Application for Allowance 
 1302.01-General Review of Disclosure 

 1302.02-Requirement for a Rewritten Specification 

 1302.03-Notice of Allowability 

 1302.04-Examiner’s Amendments and Changes 
 1302.04(a)-Title of Invention 

 1302.04(b)-[Reserved] 

 1302.04(c)-Cancellation of Claims to Nonelected Invention 

 1302.04(d)-Cancellation of Claim Lost in Interference 

 1302.04(e)-Cancellation of Rejected Claims Following Appeal 

 1302.04(f)-[Reserved] 

 1302.04(g)-Identification of Claims 

 1302.04(h)-Rejoinder of Claims 

 
 

 1302.05-Correction of Drawing 

 1302.06-Prior Foreign Application 

 1302.07-[Reserved] 

 1302.08-Interference Search 

 1302.09-Classification, Print Figure, and Other Notations 

 1302.10-Issue Classification Notations 

 1302.11-[Reserved] 

 1302.12-Listing of References 

 1302.13-Signing 

 1302.14-Reasons for Allowance 

 
 

 1303-Notice of Allowance 
 1303.01-Amendment Received After Allowance 

 1303.02-Undelivered 

 1303.03-Not Withheld Due to Death of Inventor 

 
 

 1304-Amendments After D-10 Notice 
 1304.01-Withholding From Issue of “Secrecy Order” Applications 

 
 

 1305-Jurisdiction 

 1306-Issue Fee 
 1306.01-Deferring Issuance of a Patent 

 1306.02-Simultaneous Issuance of Patents 

 1306.03-Practice After Payment of Issue Fee; Receipt of Issue Notification 

 
 

 1307-[Reserved] 

 1308-Withdrawal From Issue 
 1308.01-Rejection After Allowance 

 1308.02-For Interference or Derivation Purposes 

 1308.03-Quality Review for Examined Patent Applications 

 
 

 1309-Issue of Patent 
 1309.01-[Reserved] 

 1309.02-“Printer Rush” Cases 

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:50:33