MPEP § 714 — MPEP § 714
Current through: 2022-07-01

714-Amendments, Applicant’s Action 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 0700 

 Section 714 
 

 
 
 
 
 
 714 Amendments, Applicant’s Action [R-07.2022]

 
 37 CFR 1.121 Manner of making amendments in application. 

 
 (a) Amendments in applications, other than reissue applications.
 Amendments in applications, other than reissue applications, are made by
 filing a paper, in compliance with § 1.52 , directing that specified
 amendments be made.
 

 (b) Specification. Amendments to the specification,
 other than the claims, “Large Tables” (§ 1.58(c) ), a “Computer Program
 Listing Appendix” (§ 1.96(c)(5) and (7) ), a
 “Sequence Listing” (§ 1.825 ), or a “Sequence Listing
 XML” (§ 1.835 ), must be made by
 adding, deleting, or replacing a paragraph; by replacing a section; or by
 providing a substitute specification, in the manner specified in this section.
 
 (1) Amendment to delete, replace, or add a paragraph .
 Amendments to the specification, including amendment to a section heading or
 the title of the invention which are considered for amendment purposes to be
 an amendment of a paragraph, must be made by submitting:
 
 (i) An instruction, which unambiguously identifies the
 location, to delete one or more paragraphs of the specification,
 replace a paragraph with one or more replacement paragraphs, or add
 one or more paragraphs;
 

 (ii) The full text of any replacement paragraph with
 markings to show all the changes relative to the previous version of
 the paragraph. The text of any added subject matter must be shown by
 underlining the added text. The text of any deleted matter must be
 shown by strike-through except that double brackets placed before and
 after the deleted characters may be used to show deletion of five or
 fewer consecutive characters. The text of any deleted subject matter
 must be shown by being placed within double brackets if strike-through
 cannot be easily perceived;
 

 (iii) The full text of any added paragraphs without any
 underlining; and
 

 (iv) The text of a paragraph to be deleted must not be
 presented with strike-through or placed within double brackets. The
 instruction to delete may identify a paragraph by its paragraph number
 or include a few words from the beginning, and end, of the paragraph,
 if needed for paragraph identification purposes. 
 

 
 

 (2) Amendment by replacement section . If the sections of the
 specification contain section headings as provided in § 1.77(b) , § 1.154(b) , or §
 1.163(c) , amendments to the specification, other than
 the claims, may be made by submitting:
 
 (i) A reference to the section heading along with an
 instruction, which unambiguously identifies the location, to delete
 that section of the specification and to replace such deleted section
 with a replacement section; and
 

 (ii) A replacement section with markings to show all
 changes relative to the previous version of the section. The text of
 any added subject matter must be shown by underlining the added text.
 The text of any deleted matter must be shown by strike-through except
 that double brackets placed before and after the deleted characters
 may be used to show deletion of five or fewer consecutive characters.
 The text of any deleted subject matter must be shown by being placed
 within double brackets if strike-through cannot be easily
 perceived.
 

 
 

 (3) Amendment by substitute specification . The specification,
 other than the claims, may also be amended by submitting:
 
 (i) An instruction to replace the specification; and 

 (ii) A substitute specification in compliance with §§
 1.125(b) and (c) .
 

 
 

 (4) Reinstatement of previously deleted paragraph or section .
 A previously deleted paragraph or section may be reinstated only by a
 subsequent amendment adding the previously deleted paragraph or section.
 
 

 (5) Presentation in subsequent amendment document . Once a
 paragraph or section is amended in a first amendment document, the paragraph
 or section shall not be represented in a subsequent amendment document
 unless it is amended again or a substitute specification is provided. 
 

 (6) Amendments to "Large Tables," a
 "Computer Program Listing Appendix," a "Sequence Listing", or a “Sequence
 Listing XML”. Changes to “Large Tables,” a “Computer Program
 Listing Appendix,” a “Sequence Listing,” or a “Sequence Listing XML” must be
 made in accordance with § 1.58(g) for "Large
 Tables," § 1.96(c)(5) for a
 "Computer Program Listing Appendix," § 1.825 for a "Sequence
 Listing," or § 1.835 for a “Sequence
 Listing XML.” 
 

 
 

 (c) Claims . Amendments to a claim must be made by rewriting the
 entire claim with all changes ( e.g., additions and deletions)
 as indicated in this subsection, except when the claim is being canceled. Each
 amendment document that includes a change to an existing claim, cancellation of an
 existing claim or addition of a new claim, must include a complete listing of all
 claims ever presented, including the text of all pending and withdrawn claims, in
 the application. The claim listing, including the text of the claims, in the
 amendment document will serve to replace all prior versions of the claims, in the
 application. In the claim listing, the status of every claim must be indicated
 after its claim number by using one of the following identifiers in a
 parenthetical expression: (Original), (Currently amended), (Canceled),
 (Withdrawn), (Previously presented), (New), and (Not entered). 
 
 (1) Claim listing. All of the claims presented in a claim
 listing shall be presented in ascending numerical order. Consecutive claims
 having the same status of “canceled” or “not entered” may be aggregated into
 one statement ( e.g., Claims 1–5 (canceled)). The claim
 listing shall commence on a separate sheet of the amendment document and the
 sheet(s) that contain the text of any part of the claims shall not contain
 any other part of the amendment. 
 

 (2) When claim text with markings is required. All claims
 being currently amended in an amendment paper shall be presented in the
 claim listing, indicate a status of “currently amended,” and be submitted
 with markings to indicate the changes that have been made relative to the
 immediate prior version of the claims. The text of any added subject matter
 must be shown by underlining the added text. The text of any deleted matter
 must be shown by strike-through except that double brackets placed before
 and after the deleted characters may be used to show deletion of five or
 fewer consecutive characters. The text of any deleted subject matter must be
 shown by being placed within double brackets if strike-through cannot be
 easily perceived. Only claims having the status of “currently amended,” or
 “withdrawn” if also being amended, shall include markings. If a withdrawn
 claim is currently amended, its status in the claim listing may be
 identified as “withdrawn— currently amended.”
 

 (3) When claim text in clean version is required. The text of
 all pending claims not being currently amended shall be presented in the
 claim listing in clean version, i.e., without any
 markings in the presentation of text. The presentation of a clean version of
 any claim having the status of “original,” “withdrawn” or “previously
 presented” will constitute an assertion that it has not been changed
 relative to the immediate prior version, except to omit markings that may
 have been present in the immediate prior version of the claims of the status
 of “withdrawn” or “previously presented.” Any claim added by amendment must
 be indicated with the status of “new” and presented in clean version,
 i.e., without any underlining. 
 

 (4) When claim text shall not be presented; canceling a
 claim. 
 (i) No claim text shall be presented for any claim in the
 claim listing with the status of “canceled” or “not entered.” 
 

 (ii) Cancellation of a claim shall be effected by an
 instruction to cancel a particular claim number. Identifying the
 status of a claim in the claim listing as “canceled” will constitute
 an instruction to cancel the claim.
 

 
 

 (5) Reinstatement of previously canceled claim. A claim which
 was previously canceled may be reinstated only by adding the claim as a
 “new” claim with a new claim number. 
 

 
 

 (d) Drawings : One or more application drawings shall be amended in the following
 manner: Any changes to an application drawing must be in compliance with §
 1.84 , or, for a nonprovisional international design
 application, in compliance with §§ 1.84(c) and 1.1026 , and must be submitted on a replacement sheet of
 drawings which shall be an attachment to the amendment document and, in the top
 margin, labeled “Replacement Sheet”. Any replacement sheet of drawings shall
 include all of the figures appearing on the immediate prior version of the sheet,
 even if only one figure is amended. Any new sheet of drawings containing an
 additional figure must be labeled in the top margin as “New Sheet.” All changes to
 the drawings shall be explained, in detail, in either the drawing amendment or
 remarks section of the amendment paper.
 
 (1) A marked-up copy of any amended drawing figure, including
 annotations indicating the changes made, may be included. The marked-up copy
 must be clearly labeled as “Annotated Sheet” and must be presented in the
 amendment or remarks section that explains the change to the drawings.
 

 (2) A marked-up copy of any amended drawing figure, including
 annotations indicating the changes made, must be provided when required by
 the examiner. 
 

 
 

 (e) Disclosure consistency. The disclosure must be amended, when
 required by the Office, to correct inaccuracies of description and definition, and
 to secure substantial correspondence between the claims, the remainder of the
 specification, and the drawings. 
 

 (f) No new matter. No amendment may introduce new matter into the
 disclosure of an application. 
 

 (g) Exception for examiner’s amendments. Changes to the
 specification, including the claims, of an application made by the Office in an
 examiner’s amendment may be made by specific instructions to insert or delete
 subject matter set forth in the examiner’s amendment by identifying the precise
 point in the specification or the claim(s) where the insertion or deletion is to
 be made. Compliance with paragraphs (b)(1), (b)(2), or (c) of this section is not
 required.
 

 (h) Amendment sections. Each section of an amendment document
 ( e.g., amendment to the claims, amendment to the
 specification, replacement drawings, and remarks) must begin on a separate
 sheet.
 

 (i) Amendments in reissue applications. Any amendment to the
 description and claims in reissue applications must be made in accordance with §
 1.173 .
 

 (j) Amendments in reexamination proceedings. Any proposed amendment
 to the description and claims in patents involved in reexamination proceedings
 must be made in accordance with § 1.530 .
 

 (k) Amendments in provisional applications. Amendments in
 provisional applications are not usually made. If an amendment is made to a
 provisional application, however, it must comply with the provisions of this
 section. Any amendments to a provisional application shall be placed in the
 provisional application file but may not be entered.
 

 
 
 I. WHEN APPLICANT MAY AMEND The applicant may amend:

 
 (A) before or after the first Office action and also after the second
 Office actions as specified in 37 CFR 1.112 ; 
 

 (B) after final rejection, if the amendment meets the criteria of
 37 CFR
 1.116 ; 
 

 (C) after the date of filing a notice of appeal pursuant to
 37 CFR
 41.31(a) , if the amendment meets the criteria of
 37 CFR
 41.33 ; and 
 

 (D) when and as specifically required by the examiner.

 
 Amendments in provisional applications are not normally made. If an
 amendment is made to a provisional application, however, it must comply with the
 provisions of 37 CFR
 1.121 . Any amendments to a provisional application will be placed
 in the provisional application file, but may not be entered.
 

 II. MANNER OF MAKING AMENDMENTS UNDER 37 CFR 1.121 All amendments filed on or after July 30, 2003 must comply with
 37 CFR
 1.121 as revised in the notice of final rule making published in
 the Federal Register on June 30, 2003 at 65 FR 38611. The manner of
 making amendments has been revised to assist in the implementation of beginning-to-end
 electronic image processing of patent applications. Specifically, changes have been made
 to facilitate electronic image data capture and processing and streamline the patent
 application process. If an amendment filed on or after July 30, 2003 does not comply
 with revised 37 CFR
 1.121 , the Office will notify applicants via a Notice of
 Non-Compliant Amendment that the amendment is not accepted. 
 

 The revised amendment practice is summarized as follows.

 A. Amendment Sections Each section of an amendment document (e.g., Specification
 Amendments, Claim Amendments, Drawing Amendments, and Remarks) must begin on a
 separate sheet to facilitate separate indexing and electronic scanning of each
 section of an amendment document for placement in a file wrapper. 
 

 It is recommended that applicants use the following format when
 submitting amendment papers. The amendment papers should include, in the following
 order:
 

 
 (A) a cover sheet, or introductory comments, providing the
 appropriate application information (e.g., application number, applicant,
 filing date) and which serves as a table of contents to the amendment document
 by indicating on what page of the amendment document each of the following
 sections begin;
 

 (B) a section (must begin on a separate sheet) entitled “Amendments
 to the Specification” (if there are any amendments to the specification). This
 section should include all amendments to the specification including amendments
 to the abstract of the disclosure. A more detailed discussion is provided in
 subsection
 II.B below; 
 

 (C) a section (must begin on a separate sheet) entitled “Amendments
 to the Claims” which includes a complete listing of all claims ever presented
 in the application (if there are any amendments to the claims). A more detailed
 discussion is provided in subsection II.C below;
 

 (D) a section (must begin on a separate sheet) entitled “Amendments
 to the Drawings” in which all changes to the drawings are discussed (if there
 are any amendments to the drawings). A more detailed discussion is provided in
 subsection
 II.D below;
 

 (E) a remarks section (must begin on a separate sheet); and 

 (F) any drawings being submitted including any “Replacement Sheet,”
 “New Sheet,” or “Annotated Sheet.”
 

 B. Amendments to the Specification Amendments to the specification, other than the claims, “Large
 Tables” ( 37 CFR
 1.58(c) ), a “Computer Program Listing Appendix”
 ( 37
 CFR 1.96(c)(5) and (7) ), a “Sequence Listing”
 ( 37 CFR
 1.825 ), or a “Sequence Listing XML” ( 37 CFR
 1.835 ) must be made by adding, deleting, or replacing a
 paragraph; by replacing a section; or by providing a substitute specification
 ( 37 CFR
 1.125 ). Changes to "Large Tables,” a “Computer Program Listing
 Appendix,” a “Sequence Listing”, or a “Sequence Listing XML” must be made in
 accordance with 37 CFR 1.58(g) for “Large
 Tables,” 37 CFR 1.96(c)(5) for a “Computer
 Program Listing Appendix,” 37 CFR 1.825 for a “Sequence
 Listing,” or 37 CFR 1.835 for a “Sequence
 Listing XML.” In order to delete, replace or add a paragraph to the specification of
 an application, the amendment must unambiguously identify the paragraph to be
 modified either by paragraph number (see MPEP § 608.01 ), page and line, or
 any other unambiguous method and be accompanied by any replacement or new
 paragraph(s). Replacement paragraphs must include markings to show the changes. A
 separate clean version of any replacement paragraphs is not required. Any new
 paragraphs must be presented in clean form without any markings (i.e.,
 underlining).
 

 Where paragraph numbering has been included in an application as
 provided in 37 CFR
 1.52(b)(6) , applicants can easily refer to a specific paragraph
 by number when presenting an amendment. If a numbered paragraph is to be replaced by
 a single paragraph, the added replacement paragraph should be numbered with the same
 number of the paragraph being replaced. Where more than one paragraph is to replace a
 single original paragraph, the added paragraphs should be numbered using the number
 of the original paragraph for the first replacement paragraph, followed by increasing
 decimal numbers for the second and subsequent added paragraphs, e.g., original
 paragraph [0071] has been replaced with paragraphs [0071], [0071.1], and [0071.2]. If
 a numbered paragraph is deleted, the numbering of the subsequent paragraphs should
 remain unchanged.
 

 37 CFR
 1.121(b)(1)(ii) requires that the full text of any replacement
 paragraph be provided with markings to show all the changes relative to the previous
 version of the paragraph. The text of any added subject matter must be shown by
 underlining the added text. The text of any deleted subject matter must be shown by
 strike-through except that double brackets placed before and after the deleted
 characters may be used to show the deletion of five or fewer consecutive characters
 (e.g., [[eroor]]). The term “brackets” set forth in 37 CFR 1.121 
 means square brackets – [ ], and not parentheses – ( ). The text of any deleted
 subject matter must be shown by being placed within double brackets if strike-through
 cannot be easily perceived (e.g., deletion of the number “4” must be shown as [[4]]).
 As an alternative to using double brackets, however, extra portions of text may be
 included before and after text being deleted, all in strike-through, followed by
 including and underlining the extra text with the desired change (e.g.,
 number 4 as number 14 as ). For added paragraphs, 37 CFR
 1.121(b)(1)(iii) requires that the full text of any added
 paragraph(s) be presented in clean form without any underlining. Similarly, under
 37 CFR
 1.121(b)(1)(iv) , a marked up version does not have to be
 supplied for any deleted paragraph(s). It is sufficient to merely indicate or
 identify any paragraph that has been deleted. The instruction to delete may identify
 a paragraph by its paragraph number, page and line number, or include a few words
 from the beginning, and end, or the paragraph, if needed for paragraph
 identification.
 

 Applicants are also permitted to amend the specification by
 replacement sections (e.g., as provided in 37 CFR 1.77(b) , 1.154(b) , or
 1.163(c) ). As with replacement paragraphs, the amended version
 of a replacement section is required to be provided with markings to show all the
 changes relative to the previous version of the section. The text of any added
 subject matter must be shown by underlining the added text. The text of any deleted
 subject matter must be shown by strike-through except that double brackets placed
 before and after the deleted characters may be used to show the deletion of five or
 fewer consecutive characters. The text of any deleted subject matter must be shown by
 being placed within double brackets if strike-through cannot be easily perceived.
 

 Specifically regarding amendments to the abstract of the
 disclosure, where the amendments to the abstract are minor in nature, the abstract
 should be provided as a marked-up version under 37 CFR 1.121(b)(2)(ii) using
 strike-through and underlining as the methods to show all changes relative to the
 immediate prior version. Where the abstract is being substantially rewritten and the
 amended abstract bears little or no resemblance to the previously filed version of
 the abstract, a new (substitute) abstract may be provided in clean form accompanied
 by an instruction for the cancellation of the previous version of the abstract. The
 text of the new abstract must not be underlined. It would be counterproductive for
 applicant to prepare and provide an abstract so riddled with strike-through and
 underlining that its meaning and language are obscured from view and comprehension.
 Whether supplying a marked-up version of a previous abstract or a clean form new
 abstract, the abstract must comply with 37 CFR 1.72(b) regarding the
 length and placement of the abstract on a separate sheet of paper.
 

 Applicants are also permitted to amend the specification by
 submitting a substitute specification, provided the requirements of 37 CFR 1.125(b) and
 (c) are met. Under 37 CFR 1.125 , a clean version of
 the substitute specification, a separate marked up version showing the changes in the
 specification relative to the previous version, and a statement that the substitute
 specification contains no new matter are required.
 

 Any previously deleted paragraph or section can only be reinstated by
 a subsequent amendment presenting the previously deleted subject matter. A direction
 by applicant to remove a previously entered amendment will not be permitted. 
 

 C. Amendments to the Claims Each amendment document that includes a change to an existing claim,
 including the deletion of an existing claim, or submission of a new claim, must
 include a complete listing of all claims ever presented (including previously
 canceled and non-entered claims) in the application. After each claim number, the
 status identifier of the claim must be presented in a parenthetical expression, and
 the text of each claim under examination as well as all withdrawn claims (each with
 markings if any, to show current changes) must be presented. The listing will serve
 to replace all prior versions of the claims in the application.
 

 
 (A) Status Identifiers: The current status of all of the claims in the
 application, including any previously canceled or withdrawn claims, must be
 given. Status is indicated in a parenthetical expression following the claim
 number by one of the following status identifiers: (original), (currently
 amended), (previously presented), (canceled), (withdrawn), (new), or (not
 entered). The status identifier (withdrawn – currently amended) is also
 acceptable for a withdrawn claim that is being currently amended. See paragraph
 (E) below for acceptable alternative status identifiers.
 
 Claims added by a preliminary amendment must have the
 status identifier (new) instead of (original), even when the preliminary
 amendment is present on the filing date of the application and such claim
 is treated as part of the original disclosure. If applicant files a
 subsequent amendment, applicant must use the status identifier
 (previously presented) if the claims are not being amended, or (currently
 amended) if the claims are being amended, in the subsequent amendment.
 Claims that are canceled by a preliminary amendment that is present on
 the filing date of the application are required to be listed and must
 have the status identifier (canceled) in the preliminary amendment and in
 any subsequent amendment.
 

 The status identifier (not entered) is used for claims
 that were previously proposed in an amendment (e.g., after-final) that
 was denied entry.
 

 In an amendment submitted in a U.S. national stage
 application, claims that were present on the international filing date or
 rectified pursuant to PCT Rule 91 must have
 the status identifier (original); claims that were amended or added under
 PCT
 Article 19 or 34 with effect in the
 U.S. national stage application must have the status identifier
 (previously presented); and claims that were canceled pursuant to
 PCT
 Article 19 or 34 with effect in the
 U.S. national stage application must have the status identifier
 (canceled). If the amendment submitted in the U.S. national stage
 application is making a change in a claim, the status identifier
 (currently amended) must be used for that claim.
 

 For any amendment being filed in response to a
 restriction or election of species requirement and any subsequent
 amendment, any claims which are non-elected must have the status
 identifier (withdrawn). Any non-elected claims which are being amended
 must have either the status identifier (withdrawn) or (withdrawn –
 currently amended) and the text of the non-elected claims must be
 presented with markings to indicate the changes. Any non-elected claims
 that are being canceled must have the status identifier (canceled).
 

 
 

 (B) Markings to Show the Changes: All claims being currently amended
 must be presented with markings to indicate the changes that have been made
 relative to the immediate prior version. The changes in any amended claim must
 be shown by strike-through (for deleted matter) or underlining (for added
 matter) with 2 exceptions: (1) for deletion of five or fewer consecutive
 characters, double brackets may be used (e.g., [[eroor]]); (2) if
 strike-through cannot be easily perceived (e.g., deletion of number “4” or
 certain punctuation marks), double brackets must be used (e.g., [[4]]). As an
 alternative to using double brackets, however, extra portions of text may be
 included before and after text being deleted, all in strike-through, followed
 by including and underlining the extra text with the desired change (e.g.,
 number 4 as number 14 as ). An accompanying clean version is not required and should not be
 presented. Only claims of the status “currently amended” or “withdrawn” will
 include markings.
 
 Any claims added by amendment must be indicated as “new”
 and the text of the claim must not be underlined.
 

 
 

 (C) Claim Text: The text of all pending claims under examination and
 withdrawn claims must be submitted each time any claim is amended. The text of
 pending claims not being currently amended, including withdrawn claims, must be
 presented in clean version, i.e., without any markings. Any claim presented in
 clean version will constitute an assertion that it has not been changed
 relative to the immediate prior version except to omit markings that may have
 been present in the immediate prior version of the claims. A claim being
 canceled must be indicated as “canceled;” the text of the claim must not be
 presented. Providing an instruction to cancel is optional. Canceled and not
 entered claims must be listed by only the claim number and status identifier,
 without presenting the text of the claims. When applicant submits the text of
 canceled or not-entered claims in the amendment, the Office may accept such an
 amendment, if the amendment otherwise complies with 37 CFR
 1.121 , instead of sending out a notice of non-compliant
 amendment to reduce the processing time.
 

 (D) Claim Numbering: All of the claims in each amendment paper must be
 presented in ascending numerical order. Consecutive canceled or not entered
 claims may be aggregated into one statement (e.g., Claims 1 – 5
 (canceled)).
 

 
 A canceled claim can be reinstated only by a subsequent amendment
 presenting the claim as a new claim with a new claim number. The original numbering
 of the claims must be preserved throughout the prosecution. When claims are canceled,
 the remaining claims must not be renumbered. For example, when applicant cancels all
 of the claims in the original specification and adds a new set of claims, the claim
 listing must include all of the canceled claims with the status identifier (canceled)
 (the canceled claims may be aggregated into one statement). The new claims must be
 numbered consecutively beginning with the number next following the highest numbered
 claim previously presented (whether entered or not) in compliance with
 37 CFR
 1.126 .
 

 
 
 
 
 Example of listing of claims: 
 

 
 Claims 1-5 (canceled) 
 

 
 Claim 6 (withdrawn): A process for
 molding a bucket. 
 
 

 
 Claim 7 (previously presented): A bucket
 with a handle. 
 
 

 
 Claim 8 (currently amended): A bucket
 with a green blue handle. 
 
 

 
 Claim 9 (withdrawn): The process for
 molding a bucket of claim 6 using molten plastic material. 
 
 

 
 Claim 10 (original): The bucket of claim
 8 with a wooden handle. 
 
 

 
 Claim 11 (canceled) 
 

 
 Claim 12 (previously presented): A bucket
 having a circumferential upper lip. 
 
 

 
 Claim 13 (not entered) 
 

 
 Claim 14 (new): A bucket with plastic
 sides and bottom.
 
 

 
 
 
 (E) Acceptable Alternative Status Identifiers: To prevent delays in
 prosecution, the Office may waive certain provisions of 37 CFR
 1.121 and accept alternative status identifiers not
 specifically set forth in 37 CFR 1.121(c) .
 Accordingly claim listings that include alternative status identifiers as set
 forth below will be accepted if the amendment otherwise complies with
 37 CFR
 1.121 . See Acceptance of Certain Non-Compliant
 Amendments Under 37 CFR 1.121(c), 1296 OG 27 (July 5, 2005).
 

 
 
 
 
 
 Status Identifiers Set Forth in 37 CFR
 1.121(c) 
 Acceptable Alternatives 
 

 
 
 
 1.
 Original
 
 Original Claim; and Originally
 Filed Claim
 
 

 
 2. Currently
 amended
 
 Presently amended; and
 Currently amended claim
 
 

 
 3. Canceled 
 
 Canceled without prejudice; Cancel; Cancelled;
 Canceled herein; Previously cancelled; Canceled claim; Deleted; and
 Previously canceled
 

 
 

 
 4.
 Withdrawn
 
 Withdrawn from consideration;
 Withdrawn – new; Withdrawn claim; and Withdrawn – currently
 amended
 
 

 
 5. Previously
 presented
 
 
 Previously amended; Previously added; Previously
 submitted; and Previously presented claim
 

 
 

 
 6. New 
 
 Newly added; and New claim

 
 

 
 7. Not entered 
 Not entered claim 
 

 
 
 The Office may also accept additional variations of the status
 identifiers provided in 37 CFR 1.121(c) not listed above
 if an Office personnel determines that the status of the claims is accurate and
 clear. When accepting alternative status identifiers, the examiner is not required to
 correct the status identifiers using an examiner’s amendment. Applicant will not be
 notified and will not be required to submit a corrective compliant amendment. The
 examiner does not need to make a statement on the record that the alternative status
 identifiers have been accepted.
 

 D. Amendments to the Drawing Any changes to an application drawing must comply with
 37 CFR
 1.84 and must be submitted on a replacement sheet of drawings,
 even when applicant is only submitting better quality drawings without any
 substantive changes. Any additional new drawings must be submitted on a new sheet of
 drawings. The replacement or new sheet of drawings must be an attachment to the
 amendment document and must be identified in the top margin as “Replacement Sheet.”
 The new drawing sheet must be identified in the top margin as “New Sheet.” The
 replacement drawing sheet must include all of the figures appearing on the immediate
 prior version of the sheet, even if only one figure is amended. The figure or figure
 number of the amended drawing(s) must not be labeled as “amended.” A marked-up copy
 of any amended drawing figure, including annotations indicating the changes made, may
 be included. The marked-up copy must be clearly labeled as “Annotated Sheet” and must
 be presented in the amendment or remarks section that explains the change to the
 drawings. A marked-up copy of any amended drawing figure, including annotations
 indicating the changes made, must be provided when required by the examiner.
 

 An explanation of the changes made must be presented in the
 “Amendments to the Drawings” or the remarks section of the amendment document. If the
 changes to the drawing figure(s) are not approved by the examiner, applicant will be
 notified in the next Office action. Applicant must amend the brief and detailed
 description of drawings sections of the specification if they are not consistent with
 the changes to the drawings. For example, when applicant files a new drawing sheet,
 an amendment to the specification is required to add the brief and detailed
 description of the new drawings.
 

 The proposed drawing correction practice has been eliminated. For any
 changes to the drawings, applicant is required to submit a replacement sheet of
 drawings with the changes made. No proposed changes in red ink should be submitted.
 Any proposed drawing corrections will be treated as non-compliant under
 37 CFR
 1.121(d) . In response to any drawing objections, applicant
 should submit drawing changes by filing a replacement sheet of drawings or a new
 sheet of drawings with the corrections made. A letter to the official draftsman is no
 longer required. 
 

 Drawing submissions without any amendments to the specification and
 claims after allowance should be forwarded to the Office of Data Management. 
 

 E. Examiner’s Amendments 37 CFR
 1.121(g) permits the Office to make amendments to the
 specification, including the claims, by examiner’s amendments without
 paragraph/section/claim replacement in the interest of expediting prosecution and
 reducing cycle time. Additions or deletions of subject matter in the specification,
 including the claims, may be made by instructions to make the change at a precise
 location in the specification or the claims. Examiner’s amendments do not need to
 comply with paragraphs (b)(1) , (b)(2) , or
 (c) of 37 CFR 1.121 . See
 MPEP §
 1302.04 .
 

 If a non-compliant amendment would otherwise place the application in
 condition for allowance, the examiner may enter the non-compliant amendment and
 provide an examiner’s amendment to correct the non-compliance (e.g., an incorrect
 status identifier). Similarly, if an amendment under 37 CFR 1.312 
 after allowance is non-compliant under 37 CFR 1.121 and the entry of the
 amendment would have been otherwise recommended, the examiner may enter the amendment
 and correct the non-compliance (e.g., an incorrect status identifier) using an
 examiner’s amendment. See subsection “F. Non-Compliant Amendments” for more
 information on non-compliant amendments. For example, if some of the status
 identifiers are incorrect in an amendment, the examiner may enter the non-compliant
 amendment and:
 

 
 (A) provide a claim listing presenting all of the claims with the
 proper status identifiers in an examiner’s amendment;
 

 (B) print a copy of the claim listing of the non-compliant
 amendment, cross out the improper status identifiers, write in the correct
 status identifiers and include it as an attachment to an examiner’s amendment;
 or
 

 (C) correct the improper status identifiers by instructions in an
 examiner’s amendment. 
 

 
 The examiner’s amendment should include the reason why the amendment
 is non-compliant and indicate how it was corrected. Authorization from the applicant
 or attorney/agent of record and appropriate extensions of time are not required if
 the changes are not substantive (e.g., corrections of format errors or typographical
 errors). Such an examiner’s amendment may be made after the time period for reply, or
 after the shortened statutory period without any extensions of time, as long as the
 non-compliant amendment was timely filed.
 

 Authorization and appropriate extensions of time are required if the
 changes made in the examiner’s amendment are substantive (e.g., the examiner’s
 amendment would include a cancellation of a claim or change the scope of the claims).
 The authorization must be given within the time period for reply set forth in the
 last Office action. See MPEP § 1302.04 .
 

 F. Non-Compliant Amendments If an amendment submitted on or after July 30, 2003, fails to comply
 with 37 CFR
 1.121 (as revised on June 30, 2003), the Office will notify
 applicant by a Notice of Non-Compliant Amendment, Form PTOL-324, that the amendment
 fails to comply with the requirements of 37 CFR 1.121 and identify: (1)
 which section of the amendment is non-compliant (e.g., the amendments to the claims
 section); (2) items that are required for compliance (e.g., a claim listing in
 compliance with 37
 CFR 1.121(c) ); and (3) the reasons why the section of the
 amendment fails to comply with 37 CFR 1.121 (e.g., the status
 identifiers are missing). The type of amendment will determine whether applicant will
 be given a period of time in which to comply with the rule and whether applicant’s
 reply to a notice should consist of the corrected section of the amendment (e.g., a
 complete claim listing in compliance of 37 CFR 1.121(c) ) instead of the
 entire corrected amendment. If the noncompliant amendment is:
 

 
 (A) A preliminary amendment filed after the filing date of the application , the technical support staff (TSS) will send the notice which sets a
 time period of two months for reply. No extensions of time are permitted.
 Failure to submit a timely reply will result in the application being examined
 without entry of the preliminary amendment. Applicant’s reply is required to
 include the corrected section of the amendment. 
 

 (B) A preliminary amendment that is present on the filing date of the
 application , the Office of Patent Application Processing (OPAP) will send applicant
 a notice (e.g., Notice to File Corrected Application Papers) which sets a time
 period of 2 months for reply. Extensions of time are available under
 37 CFR
 1.136(a) . Failure to reply to the (OPAP) notice will
 result in abandonment of the application. Applicant’s reply is required to
 include either a substitute specification under 37 CFR
 1.125 if the amendment is to the specification, or a
 complete claim listing under 37 CFR 1.121(c) if the
 amendment is to the claims. 
 

 (C) A non-final amendment including an amendment filed as a submission for an RCE, the TSS will
 send the notice which sets a time period of two months for reply. Extensions of
 time are available under 37 CFR 1.136(a) . Failure to
 reply to this notice will result in abandonment of the application. Applicant’s
 reply is required to include the corrected section of the amendment. 
 

 (D) An after-final amendment , the amendment will be forwarded in unentered status to the examiner.
 In addition to providing reasons for non-entry when the amendment is not in
 compliance with 37 CFR 1.116 (e.g., the
 proposed amendment raises new issues that would require further consideration
 and/or search), the examiner should also indicate in the advisory action any
 non-compliance in the after-final amendment. The examiner should attach a
 Notice of Non-Compliant Amendment to the advisory action. The notice provides
 no new time period for correcting the non-compliance. The time period for reply
 continues to run from the mailing of the final Office action. Applicant still
 needs to respond to the final Office action to avoid abandonment of the
 application. If the applicant wishes to file another after-final amendment, the
 entire corrected amendment (not only the corrected section of the amendment)
 must be submitted within the time period set forth in the final Office
 action.
 

 (E) A supplemental amendment filed when there is no suspension of action
 under 37 CFR 1.103(a) or (c) , the amendment will be forwarded
 to the examiner. Such a supplemental amendment is not entered as a matter of
 right. See 37
 CFR 1.111(a)(2)(ii) . The examiner will notify the
 applicant if the amendment is not approved for entry. The examiner may use form
 paragraph 7.147 . See MPEP §
 714.03(a) . 
 

 (F) A supplemental amendment filed within a suspension period under 37 CFR 1.103(a) or (c) (e.g., applicant requested a
 suspension of action at the time of filing an RCE), the TSS will send the
 notice which sets a time period of two months for reply. No extensions of time
 are permitted. Failure to submit a timely reply will result in the application
 being examined without entry of the supplemental amendment. Applicant’s reply
 is required to include the corrected section of the amendment.
 

 (G) An amendment filed in response to a Quayle action , the TSS will send the notice which sets a time period of two months
 for reply. Extensions of time are available under 37 CFR
 1.136(a) . Failure to reply to this notice will result in
 abandonment of the application. Applicant’s reply is required to include the
 corrected section of the amendment. 
 

 (H) An after-allowance amendment under 37 CFR 1.312 , the amendment will be forwarded to the
 examiner. Amendments under 37 CFR 1.312 are not
 entered as matter of right. The examiner will notify the applicant if the
 amendment is not approved for entry. The examiner may attach a Notice of
 Non-Compliant Amendment ( 37 CFR 1.121 ) to the form
 PTO-271, Response to Rule 312 Communication (see MPEP §
 714.16(d) ). The notice provides no new time period.
 If applicant wishes to file another after-allowance amendment under
 37 CFR
 1.312 , the entire corrected amendment must be submitted
 before the payment of the issue fee.
 

 
 Any amendments (including after-final amendments) that add new claims
 in excess of the number of claims previously paid for in an application must be
 accompanied by the payment of the required excess claims fees. Failure to pay the
 excess claims fees will result in non-entry of the amendment. See
 MPEP §
 607 .
 

 G. Entry of Amendments, Directions for, Defective The directions for the entry of an amendment may be defective.
 Examples include inaccuracy in the paragraph number and/or page and line designated,
 or a lack of precision where the paragraph or section to which insertion of the
 amendment is directed occurs. If the correct place of entry is clear from the
 context, the amendatory paper will be properly amended in the Technology Center and
 notation thereof, initialed in ink by the examiner, who will assume full
 responsibility for the change, will be made on the margin of the amendatory paper. In
 the next Office action, the applicant should be informed of this alteration in the
 amendment and the entry of the amendment as thus amended. The applicant will also be
 informed of the nonentry of an amendment where defective directions and context leave
 doubt as to the intent of applicant.
 

 H. Amendment of Amendments When a replacement paragraph or section of the specification is to be
 amended, it should be wholly rewritten and the original insertion canceled. A
 marked-up version of the replacement paragraph or section of the specification should
 be presented using underlining to indicate added subject matter and strike-through to
 indicate deleted subject matter. Matter canceled by amendment can be reinstated only
 by a subsequent amendment presenting the canceled matter as a new insertion. A claim
 cancelled by amendment (deleted in its entirety) may be reinstated only by a
 subsequent amendment presenting the claim as a new claim with a new claim number.
 

 
 III. AMENDMENT IN REEXAMINATION PROCEEDINGS AND REISSUE APPLICATIONS Amendments in reissue applications must be made in accordance with
 37 CFR
 1.173 . Amendments in ex parte and
 inter partes reexamination proceedings must be made in accordance
 with 37 CFR
 1.530 . In patent-owner-filed ex parte 
 reexaminations, the patent owner may amend at the time of the request for ex
 parte reexamination in accordance with 37 CFR 1.510(e) . In any ex
 parte reexamination proceeding, no amendment or response can be filed
 between the date of the request for ex parte reexamination and the
 order for ex parte reexamination. See 37 CFR 1.530(a) .
 Following the order for ex parte reexamination under
 37 CFR
 1.525 and prior to the examination phase of ex
 parte reexamination proceeding, an amendment may be filed only with the
 patent owner’s statement under 37 CFR 1.530(b) . During the
 examination phase of the ex parte reexamination proceeding, an
 amendment may be filed:
 

 
 (A) after the first examination as specified in 37 CFR
 1.112 ; 
 

 (B) after final rejection or an appeal has been taken, if the
 amendment meets the criteria of 37 CFR 1.116 ; and 
 

 (C) when and as specifically required by the examiner.

 
 See also MPEP § 714.12 .
 

 For amendments in ex parte reexamination proceedings
 see MPEP §
 2250 and § 2266 . For amendments by patent owner
 in an inter partes reexamination proceeding, see
 MPEP §
 2666.01 and § 2672 . For amendments in reissue
 applications, see MPEP §
 1453 .
 

 
 714.01 Signatures to Amendments [R-08.2012]

 An amendment must be signed by a person having authority to prosecute
 the application. An unsigned or improperly signed amendment will not be entered. See
 MPEP §
 714.01(a) .
 

 To facilitate any telephone call that may become necessary, it is
 recommended that the complete telephone number with area code and extension be given,
 preferably near the signature.
 

 
 714.01(a) Unsigned or Improperly Signed Amendment [R-10.2019]

 
 37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings,
 and other proceedings. 

 *****

 
 (b) Amendments and other papers . Amendments and other papers, except for written assertions
 pursuant to § 1.27(c)(2)(iii) or
 (c)(2)(iv) , filed in the application must be signed
 by:
 
 (1) A patent practitioner of record;

 (2) A patent practitioner not of record who acts in a
 representative capacity under the provisions of § 1.34; or
 

 (3) The applicant (§ 1.42). Unless otherwise specified,
 all papers submitted on behalf of a juristic entity must be signed by
 a patent practitioner.
 

 
 

 
 *****

 

 
 37 CFR 1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings,
 and other proceedings (applicable to applications filed before September 16,
 2012). 

 *****

 
 (b) Amendments and other papers . Amendments and other papers,
 except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application
 must be signed by: 
 
 (1) A patent practitioner of record
 appointed in compliance with § 1.32(b) ; 
 

 (2) A patent practitioner not of record who
 acts in a representative capacity under the provisions of §
 1.34 ;
 

 (3) An assignee as provided for under §
 3.71(b) of this
 chapter; or
 

 (4) All of the applicants (§
 1.41(b) ) for
 patent, unless there is an assignee of the entire interest and such
 assignee has taken action in the application in accordance with §
 3.71 of this
 chapter.
 

 
 

 
 *****

 

 An unsigned amendment or one not properly signed by a person having
 authority to prosecute the application is not entered. This applies, for instance,
 where the amendment is signed by only one of two joint inventors and the one signing
 has not been given a power of attorney by the other inventor.
 

 When an unsigned or improperly signed amendment is received the
 amendment will be listed in the contents of the application file, but not entered.
 The examiner will notify applicant of the status of the application, advising him or
 her to furnish a duplicate amendment properly signed or to ratify the amendment
 already filed. In an application not under final rejection,
 applicant should be given a two month time period in which to ratify the previously
 filed amendment ( 37
 CFR 1.135(c) ).
 

 Applicants may be advised of unsigned amendments by use of form
 paragraph 7.84.01 .
 

 ¶ 7.84.01 Paper Is Unsigned

 The proposed reply filed on [1] has not been entered because
 it is unsigned. Since the above-mentioned reply appears to be bona fide, 
 applicant is given a shortened statutory period of TWO (2) MONTHS within which to
 supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME
 PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for
 reply to this letter beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).
 

 

 Sometimes problems arising from unsigned or improperly signed
 amendments may be disposed of by calling in the local representative of the attorney
 or agent of record, since he or she may have the authority to sign the amendment. 
 

 An amendment signed by a practitioner who has been suspended or
 excluded from practice under the provisions of 37 CFR Part 11 is not entered. The
 file and unentered amendment are submitted to the Office of Enrollment and Discipline
 for appropriate action.
 

 

 
 714.01(b) [Reserved]

 

 

 
 714.01(c) Signed by Attorney or Agent Not of Record [R-11.2013]

 A registered attorney or agent acting in a representative capacity
 under 37 CFR
 1.34 , may sign amendments even though he or she does not have a
 power of attorney in the application. See
 MPEP §
 402.03 .
 

 

 
 714.01(d) Amendment Signed by Applicant but Not by Attorney or Agent of
 Record [R-07.2022]
 

 If an amendment signed by the applicant, other than a juristic
 entity, is received in an application in which there is a duly appointed attorney or
 agent, the amendment should be entered and acted upon. Attention should be called to
 37 CFR
 1.33 in patent applications. Two copies of the action should be
 prepared, one being sent to the attorney and the other directly to the applicant. The
 notation: "Copy to applicant" should appear on the original and on both copies. An
 amendment submitted on behalf of a juristic entity must be signed by a patent
 practitioner. See 37 CFR 1.33(b)(3) and
 MPEP §
 714.01(a) .
 

 

 
 714.01(e) Amendments Before First Office Action [R-10.2019]

 
 37 CFR 1.115 Preliminary amendments. 

 
 (a) A preliminary amendment is an amendment that is received in
 the Office ( § 1.6 ) on or before the
 mail date of the first Office action under §
 1.104 . The patent application publication may include
 preliminary amendments ( § 1.215(a) ).
 
 (1) A preliminary amendment that is present on the filing
 date of an application is part of the original disclosure of the
 application.
 

 (2) A preliminary amendment filed after the filing date of
 the application is not part of the original disclosure of the
 application.
 

 
 

 
 *****

 

 A preliminary amendment is an amendment that is received in the
 Office on or before the mail date of the first Office action under 37 CFR 1.104 .
 See 37 CFR
 1.115(a) . For applications filed on or after September 21, 2004
 (the effective date of 37 CFR 1.115(a)(1) ), a
 preliminary amendment that is present on the filing date of the application is part
 of the original disclosure of the application. For applications filed before
 September 21, 2004, a preliminary amendment that is present on the filing date of the
 application is part of the original disclosure of the application if the preliminary
 amendment was referred to in the first executed oath or declaration under
 37 CFR
 1.63 filed in the application. See MPEP § 602 . Any
 amendment filed after the filing date of the application is not part of the original
 disclosure of the application. See MPEP § 608.04 et seq. regarding new matter. When the Office publishes the
 application under 35 U.S.C. 122(b) , the Office may include preliminary
 amendments in the patent application publication. See MPEP § 1121 .
 

 If a preliminary amendment is filed in a format that cannot be
 included in the publication, the Office of Patent Application Processing (OPAP) will
 issue a notice to the applicant requiring the applicant to submit the amendment in a
 format usable for publication purposes. See 37 CFR 1.115(a)(1) and
 1.215 . The only format for an amendment to the specification
 (other than the claims) that is usable for publication is a substitute specification
 in compliance with 37 CFR 1.121(b)(3) and 1.125 . As a result, the Office
 has revised its procedures to mail a notice (e.g., 
 "Notice to File
 Corrected Application Papers"
 
 
 ) requiring a substitute
 specification in compliance with 37 CFR 1.121(b)(3) and
 1.125 , if an applicant included a preliminary amendment to the
 specification (other than the claims) on filing. 
 

 For applications filed prior to September 16, 2012,
 where applicant intends to claim the benefit of a prior application under
 35 U.S.C.
 120 or 119(e) and 37 CFR
 1.78 , the specific reference to the benefit application may be
 submitted in an application data sheet (ADS) under 37 CFR 1.76 
 or in a preliminary amendment to the first sentence(s) of the
 specification. See 37 CFR 1.78(h) . If the specific
 reference is submitted in a preliminary amendment, a substitute specification will
 not be required if the preliminary amendment only adds or amends a benefit claim to a
 prior-filed application under 35 U.S.C. 120 , 121 ,
 365(c) , or 119(e) . If an applicant receives
 a notice from OPAP (e.g., 
 "Notice to File Corrected Application
 Papers"
 
 
 ) requiring a substitute specification because a
 preliminary amendment was filed that only adds or amends a benefit claim, applicant
 may reply to the notice explaining that a substitute specification should not have
 been required because the amendment was only to add or amend a benefit claim. In
 order to avoid abandonment, applicant should file a reply with the required
 substitute specification or an explanation that the substitute specification is not
 necessary because the preliminary amendment only adds or amends a benefit claim. If
 the preliminary amendment contains other amendments to the specification (other than
 the claims), a substitute specification will be required, and a reply to a notice
 requiring a substitute specification without the substitute specification will be
 treated as an incomplete reply with no new time period for reply being provided. Note
 that the above does not apply to applications filed on or after September 16, 2012,
 because the reference to a prior application as required by 35 U.S.C.
 120 or 119(e) and 37 CFR
 1.78 , must be submitted in an application data sheet (ADS) under
 37 CFR
 1.76 . 
 

 Requiring a substitute specification (with all preliminary amendments
 made therein) is also important to ensure that applicants do not circumvent the
 limitations upon redacted publications set forth in 35 U.S.C.
 122(b)(2)(B)(v) . As preliminary amendments to the
 specification, excluding the claims, cannot be easily published, the Office must
 require a substitute specification whenever an application is filed with a
 preliminary amendment to the specification, excluding the claims, in order to ensure
 that the application, including any new matter added by way of a preliminary
 amendment included on the filing date of the application, is published.
 

 Because a preliminary amendment to the claims or abstract in
 compliance with 37
 CFR 1.121(c) or 1.121(b)(2) will include a
 complete claim listing or replacement abstract, the Office can publish the amended
 claims or the replacement abstract as submitted in the preliminary amendment without
 a substitute specification being filed. Applicants should note, however, that there
 is no need to file a preliminary amendment to the claims on filing. By making the new
 claim set part of the originally filed specification, applicant may avoid having to
 pay an application size fee, as both the specification (including the claims) and any
 preliminary amendment are used in counting the number of pages for purposes of
 37 CFR
 1.16(s) . The claim set submitted should be the set of claims
 intended to be examined, and when the claims submitted on filing are part of the
 specification (on sequentially numbered pages of the specification (see
 37 CFR
 1.52(b)(5) )), no status identifiers and no markings showing the
 changes need to be used.
 

 A preliminary amendment filed with a submission to enter the national
 stage of an international application under 35 U.S.C. 371 is not part of the
 original disclosure under 37 CFR 1.115(a) because it was
 not present on the international filing date accorded to the application under
 PCT Article
 11 . See MPEP § 1893.03(b) . Accordingly, a
 “Notice to File Corrected Application Papers” requiring a substitute specification
 will not ordinarily be mailed in an international application even if the national
 stage submission includes a preliminary amendment.
 

 Since a request for continued examination (RCE) is not a new
 application, an amendment filed before the first Office action after the filing of
 the RCE is not a preliminary amendment. See MPEP § 706.07(h) . Any amendment
 canceling claims in order to reduce the excess claims fees should be filed before the
 expiration of the time period set forth in a notice that requires excess claims fees.
 Such an amendment would be effective to reduce the number of claims to be considered
 in calculating the excess claims fees. See MPEP § 607 .
 

 I. PRELIMINARY AMENDMENTS MUST COMPLY WITH 37 CFR 1.121 Any preliminary amendment, regardless of when it is filed, must
 comply with 37
 CFR 1.121 , e.g., the preliminary amendment must include a
 complete listing of all of the claims and each section of the amendment must begin
 on a separate sheet of paper. See MPEP § 714 . Preliminary
 amendments made in a transmittal letter of the application will not comply with
 37 CFR
 1.121 . For example, applicants should include the reference
 to a prior filed application in the first sentence(s) of the specification
 following the title (for applications filed prior to September 16, 2012) or in an
 application data sheet in compliance with 37 CFR 1.78 instead of
 submitting the reference in a preliminary amendment in a transmittal letter. See
 MPEP § 211 et seq. If a preliminary amendment filed after the filing date
 of the application fails to comply with 37 CFR 1.121 , applicant will
 be notified by way of a Notice of Non-Compliant Amendment and given a
 non-extendable period of two months to bring the amendment into compliance with
 37 CFR
 1.121 . If the applicant takes no corrective action,
 examination of the application will commence without consideration of the proposed
 changes in the non-compliant preliminary amendment. If a preliminary amendment
 that is present on the filing date of the application fails to comply with
 37 CFR
 1.121 , the Office of Patent Application Processing (OPAP)
 will notify applicant of the non-compliance and give a two-month time period to
 correct the non-compliance to avoid the abandonment of the application. See
 MPEP §
 714 .
 

 Filing a preliminary amendment is not recommended because the
 changes made by the preliminary amendment may not be reflected in the patent
 application publication even if the preliminary amendment is referred to in an
 oath or declaration. If there is insufficient time to have the preliminary
 amendment be entered into the Office file wrapper of the application before
 technical preparations for publication of the application have begun, the
 preliminary amendment will not be reflected in the patent application publication.
 Technical preparations for publication of an application generally begin four
 months prior to the projected date of publication. For more information on
 publication of applications, see MPEP § 1121 . Applicants may avoid
 preliminary amendments by incorporating any desired amendments into the text of
 the specification including a new set of claims, even where the application is a
 continuation or divisional application of a previously filed patent application.
 In such a continuation or divisional application, a clean copy of a specification
 (i.e., reflecting amendments made in the parent application) may be submitted
 together with a copy of the oath or declaration from the previously filed
 application. See 37 CFR 1.63(d)(1) and MPEP §
 201.06(c) .
 

 II. PRELIMINARY AMENDMENTS PRESENT ON THE FILING DATE OF THE APPLICATION Applicants are strongly discouraged from submitting
 any preliminary amendments so as to minimize the burden on the Office in
 processing preliminary amendments and reduce delays in processing the
 application.
 

 For applications filed on or after September 21, 2004 (the
 effective date of 37 CFR 1.115(a)(1) ), a
 preliminary amendment that is present on the filing date of the application is
 part of the original disclosure of the application.
 

 For applications filed before September 21, 2004, a
 preliminary amendment that was present on the filing date of the application is
 part of the original disclosure of the application if the preliminary amendment
 was referred to in the first oath or declaration in compliance with
 37 CFR
 1.63 filed in the application. See MPEP §§ 602 and
 608.04(b) . If the preliminary amendment was not
 referred to in the oath or declaration, applicant should submit a supplemental
 oath or declaration under 37 CFR 1.67 referring to both
 the application and the preliminary amendment filed with the original application.
 A surcharge under 37 CFR 1.16(f) will also be
 required unless it has been previously paid.
 

 III. PRELIMINARY AMENDMENTS MUST BE TIMELY Any preliminary amendments should either accompany the application
 or be filed after the application has received its application number and filing
 date so that the preliminary amendments would include the appropriate
 identifications (e.g., the application number and filing date). See
 MPEP §
 502 . Any amendments filed after the mail date of the
 first Office action is not a preliminary amendment. If the date of receipt
 ( 37 CFR
 1.6 ) of the amendment is later than the mail date of the
 first Office action and is not responsive to the first Office action, the Office
 will not mail a new Office action, but simply advise the
 applicant that the amendment is nonresponsive to the first Office action and that
 a responsive reply must be timely filed to avoid abandonment. See
 MPEP §
 714.03 .
 

 IV. PRELIMINARY AMENDMENTS MAY BE DISAPPROVED 
 37 CFR 1.115 Preliminary amendments. 

 *****

 
 (b) A preliminary amendment in compliance with §
 1.121 will be entered unless disapproved by the
 Director.
 
 (1) A preliminary amendment seeking cancellation of all
 the claims without presenting any new or substitute claims will be
 disapproved.
 

 (2) A preliminary amendment may be disapproved if the
 preliminary amendment unduly interferes with the preparation of a
 first Office action in an application. Factors that will be
 considered in disapproving a preliminary amendment include:
 
 (i) The state of preparation of a first Office
 action as of the date of receipt (§ 1.6 ) of the preliminary amendment by
 the Office; and
 

 (ii) The nature of any changes to the
 specification or claims that would result from entry of the
 preliminary amendment.
 

 
 

 (3) A preliminary amendment will not be disapproved
 under (b)(2) of this section if it is filed no later than:
 
 (i) Three months from the filing date of an
 application under § 1.53(b) ;
 

 (ii) The filing date of a continued prosecution
 application under § 1.53(d) ;
 or
 

 (iii) Three months from the date the national stage
 is entered as set forth in § 1.491 in an international
 application.
 

 
 

 (4) The time periods specified in paragraph (b)(3) of
 this section are not extendable.
 

 
 

 
 

 A preliminary amendment filed in compliance with 37 CFR 1.121 
 will be entered unless it is disapproved by the Director. A preliminary amendment
 will be disapproved by the Director if the preliminary amendment cancels all the
 claims in the application without presenting any new or substitute claims. A
 preliminary amendment may also be disapproved by the Director if the preliminary
 amendment unduly interferes with the preparation of an Office action.
 37 CFR
 1.115(b) . 
 

 A. Cancellations of All the Claims If applicant files a preliminary amendment (whether submitted
 prior to, on or after the filing date of the application) seeking cancellation
 of all claims in the application without presenting any new claims, the Office
 will not enter such an amendment. See Exxon
 Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1369
 (Fed. Cir. 2001), 37 CFR 1.115(b)(1) , and
 MPEP §
 601.01(e) . Thus, the application will not be denied a
 filing date merely because such a preliminary amendment was submitted on
 filing. For fee calculation purposes, the Office will treat such an application
 as containing only a single claim. In most cases, an amendment that cancels all
 the claims in the application without presenting any new claims would not meet
 the requirements of 37 CFR 1.121(c) that
 requires a complete claim listing. See MPEP § 714 . The Office will
 send a notice of non-compliant amendment ( 37 CFR 1.121 ) to applicant
 and require an amendment in compliance with 37 CFR 1.121 .
 

 B. Unduly Interferes With the Preparation of an Office
 Action Once the examiner has started to prepare a first Office action,
 entry of a preliminary amendment may be disapproved if the preliminary
 amendment unduly interferes with the preparation of the first Office action.
 Applicants are encouraged to file all preliminary amendments as soon as
 possible. Entry of a preliminary amendment will not be disapproved under
 37 CFR
 1.115(b)(2) if it is filed no later than:
 

 
 (A) 3 months from the filing date of the application under
 37
 CFR 1.53(b) ;
 

 (B) 3 months from the date the national stage is entered as
 set forth in 37 CFR 1.491 in an
 international application;
 

 (C) the filing date of a CPA under 37 CFR
 1.53(d) in a design application; or
 

 (D) the last day of any suspension period requested by
 applicant under 37 CFR 1.103 (see
 MPEP §
 709 ).
 

 
 Even if the examiner has spent a significant amount of time
 preparing the first Office action, entry of a preliminary amendment filed
 within these time periods should not be disapproved under 37 CFR
 1.115(b)(2) . These time periods are not extendable. See
 37 CFR
 1.115(b)(4) .
 

 If a preliminary amendment is filed after these time periods
 and the conditions set forth below are met, entry of the preliminary amendment
 may be denied subject to the approval of the supervisory patent examiner
 ( MPEP §
 1002.02(d) ). 
 

 1. When Disapproval is Appropriate The factors that will be considered for denying entry of
 preliminary amendments under 37 CFR 1.115 
 include:
 

 
 (A) The state of preparation of a first Office action as
 of the date of receipt ( 37 CFR 1.6 ) of the
 preliminary amendment; and 
 

 (B) The nature of any changes to the specification or
 claims that would result from entry of the preliminary amendment. 
 

 
 The entry of a preliminary amendment that would unduly
 interfere with the preparation of an Office action may be denied if the
 following two conditions are met:
 

 
 (A) the examiner has devoted a significant amount of time
 on the preparation of an Office action before the amendment is
 received in the Office (i.e., the 37 CFR 1.6 receipt
 date of the amendment); and 
 

 (B) the entry of the amendment would require significant
 additional time in the preparation of the Office action.
 

 
 For example, if the examiner has spent a significant amount
 of time to conduct a prior art search or draft an Office action before a
 preliminary amendment is received by the Office, the first condition is
 satisfied. Entry of the amendment may be denied if it:
 

 
 (A) amends the claims;

 (B) adds numerous new claims;

 (C) amends the specification to change the scope of the
 claims; 
 

 (D) amends the specification so that a new matter issue
 would be raised;
 

 (E) includes arguments;

 (F) includes an affidavit or declaration under
 37 CFR 1.131 or
 37 CFR 1.132 ; or
 

 (G) includes evidence traversing rejections from a prior
 Office action in the parent application,
 

 
 and would require the examiner to spend significant
 additional time to conduct another prior art search or revise the Office
 action (i.e., the second condition is satisfied). This list is not an
 exhaustive list, and the entry of a preliminary amendment may be denied
 in other situations that satisfy the two conditions set forth above. Once
 these conditions are met, the examiner should obtain the approval of the SPE
 before the entry of the amendment may be denied.
 

 2. When Disapproval is Inappropriate Denying entry of a preliminary amendment under
 37 CFR
 1.115(b)(2) is inappropriate if either: 
 

 
 (A) the examiner has NOT devoted a significant amount of
 time on the preparation of an Office action before the amendment is
 received in the Office (i.e., the 37 CFR 1.6 receipt
 date of the amendment); or 
 

 (B) the entry of the amendment would NOT require
 significant additional time in the preparation of the Office
 action.
 

 
 Thus, the amendment will be entered unless it is denied
 entry for other reasons such as those listed in MPEP §
 714.19 . 
 

 For example, if before the preliminary amendment is received
 in the Office, the examiner has not started working on the Office action or
 has started, but has merely inspected the file for formal requirements, then
 the examiner should enter and consider the preliminary amendment. 
 

 Furthermore, even if the examiner has devoted a significant
 amount of time to prepare an Office action prior to the date the preliminary
 amendment is received in the Office, it is not appropriate to disapprove the
 entry of such an amendment if it:
 

 
 (A) merely cancels some of the pending claims;

 (B) amends the claims to overcome rejections under
 35 U.S.C. 112 , second paragraph; 
 

 (C) amends the claims to place the application in
 condition for allowance; or 
 

 (D) only includes changes that were previously suggested
 by the examiner, and would not require the examiner to spend
 significant additional time to revise the Office action. 
 

 3. Form Paragraph Form paragraph 7.46 should be used to notify applicant
 that the entry of a preliminary amendment is denied because the amendment
 unduly interferes with the preparation of an Office action.
 

 ¶ 7.46 Preliminary Amendment Unduly Interferes with the Preparation of an Office Action

 The preliminary amendment filed on [1] was not entered
 because entry of the amendment would unduly interfere with the preparation of the Office
 action. See 37 CFR
 1.115(b)(2) . The examiner spent a significant amount of time on the
 preparation of an Office action before the preliminary amendment was received. On the date of
 receipt of the amendment, the examiner had completed [2] .
 

 Furthermore, entry of the preliminary amendment would require significant additional time on the preparation of the Office
 action. Specifically, entry of the preliminary amendment would require the examiner to [3] .
 

 A responsive reply (under 37 CFR 1.111 or 37 CFR 1.113 as
 appropriate) to this Office action must be timely filed to avoid abandonment.
 

 If this is not a final Office action, applicant may wish to resubmit the
 amendment along with a responsive reply under 37 CFR 1.111 to ensure proper entry of the
 amendment.
 

 Examiner Note:
 
 1. In bracket 1, provide the date that the Office received the
 preliminary amendment (use the date of receipt under 37 CFR 1.6 , not the certificate of
 mailing date under 37
 CFR 1.8 ).
 

 2. In bracket 2, provide an explanation on the state of preparation of the Office action as of the receipt date of the preliminary
 amendment. For example, where appropriate insert --the claim analysis and the search of prior art of all pending claims--
 or --the drafting of the Office action and was waiting for the supervisory patent examiner’s approval--.
 

 3. In bracket 3, provide a brief explanation of how entry of the preliminary amendment would require the examiner to spend significant
 additional time in the preparation of the Office action. For example, where appropriate insert --conduct prior art search
 in another classification area that was not previously searched and required-- or --revise the Office action extensively to
 address the new issues raised and the new claims added in the preliminary amendment--.
 
 
 

 

 

 
 714.02 Must Be Fully Responsive [R-08.2012]

 
 37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action. 

 
 (a)
 
 (1) If the Office action after the first examination (§
 1.104 ) is adverse in any respect, the applicant or
 patent owner, if he or she persists in his or her application for a
 patent or reexamination proceeding, must reply and request
 reconsideration or further examination, with or without amendment. See §§
 1.135 and 1.136 for time for
 reply to avoid abandonment.
 

 (2) Supplemental replies .
 
 (i) A reply that is supplemental to a reply that is in
 compliance with § 1.111(b) will
 not be entered as a matter of right except as provided in paragraph
 (a)(2)(ii) of this section. The Office may enter a supplemental
 reply if the supplemental reply is clearly limited to:
 
 (A) Cancellation of a claim(s);

 (B) Adoption of the examiner suggestion(s);

 (C) Placement of the application in condition for
 allowance;
 

 (D) Reply to an Office requirement made after the
 first reply was filed;
 

 (E) Correction of informalities
 ( e.g., typographical errors); or
 

 (F) Simplification of issues for appeal.

 
 

 (ii) A supplemental reply will be entered if the
 supplemental reply is filed within the period during which action
 by the Office is suspended under § 1.103(a) or
 (c) .
 

 
 

 
 

 (b) In order to be entitled to reconsideration or further
 examination, the applicant or patent owner must reply to the Office action. The
 reply by the applicant or patent owner must be reduced to a writing which
 distinctly and specifically points out the supposed errors in the examiner’s
 action and must reply to every ground of objection and rejection in the prior
 Office action. The reply must present arguments pointing out the specific
 distinctions believed to render the claims, including any newly presented
 claims, patentable over any applied references. If the reply is with respect to
 an application, a request may be made that objections or requirements as to
 form not necessary to further consideration of the claims be held in abeyance
 until allowable subject matter is indicated. The applicant’s or patent owner’s
 reply must appear throughout to be a bona fide attempt to
 advance the application or the reexamination proceeding to final action. A
 general allegation that the claims define a patentable invention without
 specifically pointing out how the language of the claims patentably
 distinguishes them from the references does not comply with the requirements of
 this section.
 

 (c) In amending in reply to a rejection of claims in an application
 or patent under reexamination, the applicant or patent owner must clearly point
 out the patentable novelty which he or she thinks the claims present in view of
 the state of the art disclosed by the references cited or the objections made.
 The applicant or patent owner must also show how the amendments avoid such
 references or objections.
 

 
 

 In all cases where reply to a requirement is indicated as necessary for
 further consideration of the claims, or where allowable subject matter has been
 indicated in an application, a complete reply must either comply with the formal
 requirements or specifically traverse each one not complied with.
 

 Drawing and specification corrections, presentation of a new oath and
 the like are generally considered as formal matters, although the filing of drawing
 corrections in reply to an objection to the drawings cannot normally be held in
 abeyance. However, the line between formal matter and those touching the merits is not
 sharp, and the determination of the merits of an application may require that such
 corrections, new oath, etc., be insisted upon prior to any indication of allowable
 subject matter.
 

 The claims may be amended by canceling particular claims, by presenting
 new claims, or by rewriting particular claims as indicated in 37 CFR 1.121(c) .
 The requirements of 37
 CFR 1.111(b) must be complied with by pointing out the specific
 distinctions believed to render the claims patentable over the references in presenting
 arguments in support of new claims and amendments.
 

 An amendment submitted after a second or subsequent non-final action on
 the merits which is otherwise responsive but which increases the number of claims drawn
 to the invention previously acted upon is not to be held not fully responsive for that
 reason alone. (See 37
 CFR 1.112 , MPEP § 706 .)
 

 The prompt development of a clear issue requires that the replies of the
 applicant meet the objections to and rejections of the claims. Applicant should also
 specifically point out the support for any amendments made to the disclosure. See
 MPEP §
 2163.06 .
 

 An amendment which does not comply with the provisions of
 37 CFR
 1.121(b) , (c), (d), and (h) may be held not fully responsive. See
 MPEP §
 714 .
 

 Replies to requirements to restrict are treated under
 MPEP §
 818 .
 

 

 
 714.03 Amendments Not Fully Responsive, Action To Be Taken [R-10.2019]

 
 37 CFR 1.135 Abandonment for failure to reply within time period. 

 *****

 
 (c) When reply by the applicant is a bona fide 
 attempt to advance the application to final action, and is substantially a
 complete reply to the non-final Office action, but consideration of some matter
 or compliance with some requirement has been inadvertently omitted, applicant
 may be given a new time period for reply under § 1.134
 to supply the omission.
 

 
 

 An examiner may treat an amendment not fully responsive to a non-final
 Office action by:
 

 
 (A) accepting the amendment as an adequate reply to the non-final
 Office action to avoid abandonment under 35 U.S.C. 133 and
 37 CFR
 1.135 ; 
 

 (B) notifying the applicant that the reply must be completed within
 the remaining period for reply to the non-final Office action (or within any
 extension pursuant to 37 CFR 1.136(a) ) to avoid
 abandonment; or
 

 (C) setting a new time period for applicant to complete the reply
 pursuant to 37
 CFR 1.135(c) .
 

 
 The treatment to be given to the amendment depends upon:

 
 (A) whether the amendment is bona fide ; 
 

 (B) whether there is sufficient time for applicant’s reply to be filed
 within the time period for reply to the non-final Office action; and
 

 (C) the nature of the deficiency.

 
 

 Where an amendment substantially responds to the rejections, objections,
 or requirements in a non-final Office action (and is a bona fide 
 attempt to advance the application to final action) but contains a minor deficiency
 (e.g . , fails to treat every rejection, objection, or requirement),
 the examiner may simply act on the amendment and issue a new (non-final or final) Office
 action. The new Office action may simply reiterate the rejection, objection, or
 requirement not addressed by the amendment (or otherwise indicate that such rejection,
 objection, or requirement is no longer applicable). This course of action would not be
 appropriate in instances in which an amendment contains a serious deficiency
 (e.g . , the amendment is unsigned or does not appear to have been
 filed in reply to the non-final Office action). Where the amendment is bona
 fide but contains a serious omission, the examiner should: A) if there is
 sufficient time remaining for applicant’s reply to be filed within the time period for
 reply to the non-final Office action (or within any extension pursuant to
 37 CFR
 1.136(a) ), notify applicant that the omission must be supplied
 within the time period for reply; or B) if there is insufficient time remaining, issue
 an Office action setting a 2-month time period to complete the reply pursuant to
 37 CFR
 1.135(c) . In either event, the examiner should not further examine
 the application on its merits unless and until the omission is timely supplied.
 

 If a new time period for reply is set pursuant to 37 CFR 1.135(c) ,
 applicant must supply the omission within this new time period for reply (or any
 extensions under 37
 CFR 1.136(a) thereof) in order to avoid abandonment of the
 application. The applicant, however, may file a continuing application during this
 period (in addition or as an alternative to supplying the omission), and may also file
 any further reply as permitted under 37 CFR 1.111 .
 

 Where there is sufficient time remaining in the period for reply
 (including extensions under 37 CFR 1.136(a) ), the applicant may
 simply be notified that the omission must be supplied within the remaining time period
 for reply. This notification should be made, if possible, by telephone, and, when such
 notification is made by telephone, an interview summary record (see
 MPEP §
 713.04 ) must be completed and entered into the file of the
 application to provide a record of such notification. When notification by telephone is
 not possible, the applicant must be notified in an Office communication that the
 omission must be supplied within the remaining time period for reply. For example, when
 an amendment is filed shortly after an Office action has been mailed, and it is apparent
 that the amendment was not filed in reply to such Office action, the examiner need only
 notify the applicant (preferably by telephone) that a reply responsive to the Office
 action must be supplied within the remaining time period for reply to such Office
 action.
 

 The practice set forth in 37 CFR 1.135(c) does not apply where
 there has been a deliberate omission of some necessary part of a complete reply; rather,
 37 CFR
 1.135(c) is applicable only when the missing matter or lack of
 compliance is considered by the examiner as being “inadvertently omitted.” For example,
 if an election of species has been required and applicant does not make an election
 because he or she believes the requirement to be improper, the amendment on its face is
 not a “ bona fide attempt to advance the application to final action”
 ( 37 CFR
 1.135(c) ), and the examiner is without authority to postpone
 decision as to abandonment. 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 there is time
 remaining to reply to the non-final Office action (or within any extension of time
 pursuant to 37 CFR
 1.136(a) ), applicant will be notified to complete the reply within
 the remaining time period to avoid abandonment. Likewise, once an inadvertent omission
 is brought to the attention of the applicant, the question of inadvertence no longer
 exists. Therefore, a second Office action giving another new (2-month) time period to
 supply the omission would not be appropriate under 37 CFR 1.135(c) . 
 

 37 CFR
 1.135(c) authorizes, but does not require, an examiner to give the
 applicant a new time period to supply an omission. Thus, where the examiner concludes
 that the applicant is attempting to abuse the practice under 37 CFR 1.135(c) to
 obtain additional time for filing a reply (or where there is sufficient time for
 applicant’s reply to be filed within the time period for reply to the non-final Office
 action), the examiner need only indicate by telephone or in an Office communication (as
 discussed above) that the reply must be completed within the period for reply to the
 non-final Office action or within any extension pursuant to 37 CFR 1.136(a) to
 avoid abandonment.
 

 The practice under 37 CFR 1.135(c) of giving applicant
 a time period to supply an omission in a bona fide reply does not apply after a final Office action. Amendments after final are approved for entry
 only if they place the application in condition for allowance or in better form for
 appeal. Otherwise, they are not approved for entry. See MPEP § 714.12 and
 §
 714.13 . Thus, an amendment should be denied entry if some
 point necessary for a complete reply under 37 CFR 1.113 (after final) was
 omitted, even if the omission was through an apparent oversight or inadvertence. Where a
 submission after a final Office action (e.g . , an amendment under
 37 CFR
 1.116 ) does not place the application in condition for allowance,
 the period for reply under 37 CFR 1.113 continues to run until
 a reply under 37 CFR
 1.113 (i.e., a notice of appeal or an amendment that places the
 application in condition for allowance) is filed. The nature of the omission
 (e.g . , whether the amendment raises new issues, or would place the
 application in condition for allowance but for it being unsigned or not in compliance
 with 37 CFR
 1.121 ) is immaterial. The examiner cannot give the applicant a
 time period under 37 CFR 1.135(c) to supply the omission; however, applicant may
 obtain additional time under 37 CFR 1.136(a) to file another or
 supplemental amendment in order to supply the omission.
 

 When a reply to a final Office action substantially places the
 application in condition for allowance, an examiner may request that the applicant (or
 representative) authorize an examiner’s amendment to correct the omission and place the
 application in condition for allowance, in which case the date of the reply is the date
 of such authorization (and not the date the incomplete reply was filed). An examiner
 also has the authority to enter the reply, withdraw the finality of the last Office
 action, and issue a new Office action, which may be a non-final Office action, a final
 Office action (if appropriate), or an action closing prosecution on the merits in an
 otherwise allowable application under Ex parte Quayle , 25 USPQ 74,
 1935 C.D. 11, 435 OG 213 (Comm’r Pat. 1935) (if appropriate). These courses of action,
 however, are solely within the discretion of the examiner. It is the applicant’s
 responsibility to take the necessary action in an application under a final Office
 action to provide a complete reply under 37 CFR 1.113 .
 

 Where there is an informality as to the fee in connection with an
 amendment to a non-final Office action presenting additional claims, the
 applicant is notified by the technical support staff. See MPEP §§ 607 and
 714.10 .
 

 Form paragraph 7.95 , and optionally form paragraph
 7.95.01 , should be used where a bona
 fide reply to a non-final Office action is not fully responsive.
 

 ¶ 7.95 Bona Fide, Non-Responsive Amendments

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

 Examiner Note:

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

 

 ¶ 7.95.01 Lack of Arguments in Response

 Applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions.
 Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish
 from them.
 

 Examiner Note:
 
 1. This form paragraph must be preceded by form paragraph 7.95 .
 

 2. This form paragraph is intended primarily for use in pro se applications.
 
 
 

 
 714.03(a) Supplemental Amendment [R-10.2019]

 
 37 CFR 1.111 Reply by applicant or patent owner to a non-final Office
 action. 

 
 (a)
 
 (1) If the Office action after the first examination (§
 1.104 ) is adverse in any respect, the applicant
 or patent owner, if he or she persists in his or her application for a
 patent or reexamination proceeding, must reply and request
 reconsideration or further examination, with or without amendment. See
 §§ 1.135 and 1.136 for time for
 reply to avoid abandonment.
 

 (2) Supplemental replies .
 
 (i) A reply that is supplemental to a
 reply that is in compliance with § 1.111(b) will not be entered as a matter
 of right except as provided in paragraph (a)(2)(ii) of this
 section. The Office may enter a supplemental reply if the
 supplemental reply is clearly limited to:
 
 (A) Cancellation of a claim(s);

 (B) Adoption of the examiner
 suggestion(s);
 

 (C) Placement of the application in condition
 for allowance;
 

 (D) Reply to an Office requirement made after
 the first reply was filed;
 

 (E) Correction of informalities
 ( e.g., typographical errors); or
 

 (F) Simplification of issues for appeal.

 
 

 (ii) A supplemental reply will be entered if the
 supplemental reply is filed within the period during which
 action by the Office is suspended under § 1.103(a) or
 (c) .
 

 
 

 
 

 
 *****

 

 Applicants are encouraged to include a complete fully responsive
 reply in compliance with 37 CFR 1.111(b) to an outstanding
 Office action in the first reply to prevent the need for supplemental replies.
 Supplemental replies will not be entered as a matter of right, except when a
 supplemental reply is filed within a suspended period under 37 CFR 1.103(a) 
 or (c) (e.g., a suspension of action requested by the applicant when filing an RCE).
 See MPEP §
 709 regarding suspension of action. The Office may enter a
 supplemental reply if the supplemental reply is clearly limited to:
 

 
 (A) cancellation of a claim;

 (B) adoption of the examiner’s suggestions;

 (C) placement of the application in condition of allowance;

 (D) reply to an Office requirement made after the first reply was
 filed;
 

 (E) correction of informalities (e.g., typographical errors);
 or
 

 (F) simplification of issues for appeal.

 
 When a supplemental reply is filed in sufficient time to be entered
 into the application before the examiner considers the prior reply, the examiner may
 approve the entry of the supplemental reply if, after a cursory review, the examiner
 determines that the supplemental reply is limited to one of the situations set forth
 above. This list is not exhaustive. The examiner has the discretion to approve the
 entry of a supplemental reply that is not listed above. If the supplemental reply is
 approved for entry, the examiner must annotate the reply “OK TO ENTER,” with
 initials, and enter the annotated document into the electronic file wrapper. The
 examiner should clearly indicate in the subsequent Office action that the Office
 action is responsive to the applicant’s first reply and the applicant’s supplemental
 reply. If a supplemental reply is a non-compliant amendment under 37 CFR 1.121 
 (see MPEP §
 714 ), the supplemental reply will not be entered. If a
 supplemental reply is not approved for entry, the examiner must annotate the reply
 “DO NOT ENTER,” with initials, and enter the annotated document into the electronic
 file wrapper. The examiner should notify the applicant in the subsequent Office
 action that the supplemental reply was not entered. If applicant wishes to have a
 not-entered supplemental reply considered, applicant should include the changes in a
 reply filed in response to the next Office action. Applicant cannot simply request
 for its entry in the subsequent reply. The submission of a supplemental reply will
 cause a reduction of any accumulated patent term adjustment under 37 CFR
 1.704(c)(8) . 
 

 Examiners may use form paragraph 7.147 to notify applicants that a
 supplemental reply is not approved for entry and to explain the reason(s) for denying
 entry.
 

 ¶ 7.147 Supplemental Reply Not Approved for Entry

 The supplemental reply filed on [1] was not entered because
 supplemental replies are not entered as a matter of right except as provided in
 37 CFR
 1.111(a)(2)(ii) . [2] .
 

 Examiner Note:
 
 1. Use this form paragraph to notify applicant that the supplemental reply filed on or after October 21, 2004 is not approved
 for entry.
 

 2. Do not use this form paragraph if the supplemental reply has been
 entered. Use the Office Action Summary (PTOL-326) or the Notice of Allowability
 (PTOL-37), whichever is appropriate, to indicate that the Office action is responsive to
 the reply filed in compliance with 37 CFR 1.111 (b) and the supplemental
 reply.
 

 3. Do not use this form paragraph if the supplemental reply was filed
 within the period during which action is suspended by the Office under 37 CFR 1.103(a) or
 (c) . Such supplemental reply must be entered. If the supplemental
 reply filed during the suspended period is not in compliance with 37 CFR 1.121 , a
 notice of non-compliant amendment (PTOL-324) should be mailed to the applicant.
 

 4. In bracket 1, provide the date that the Office received the
 supplemental reply (use the date of receipt under 37 CFR 1.6 , not the certificate of
 mailing date under 37
 CFR 1.8 ).
 

 5. In bracket 2, insert a reason for non-entry as noted in
 37 CFR
 1.111(a)(2)(i) . For example, 
 "The supplemental reply is clearly not limited to placement of
 the application in condition for allowance."
 
 
 
 
 
 

 If a supplemental reply is received in the Office after the mail date
 of an Office action, and it is not responsive to that Office action, the Office will
 not mail a new Office action responsive to that supplemental reply. As a courtesy,
 applicant may be notified that the supplemental reply is nonresponsive to the mailed
 Office action and that a responsive reply (under 37 CFR 1.111 or 1.113 as the
 situation may be) to the mailed Office action must be timely filed to avoid
 abandonment. Also see MPEP § 714.03 for replies not fully responsive and
 MPEP §
 714.05 when the Office action crosses in the mail with a
 supplemental reply.
 

 

 

 
 714.04 Claims Presented in Amendment With No Attempt To Point Out
 Patentable Novelty [R-08.2012]
 

 In the consideration of claims in an amended case where no attempt is
 made to point out the patentable novelty, the claims should not be
 allowed. See 37 CFR
 1.111 and MPEP § 714.02 .
 

 An amendment failing to point out the patentable novelty which the
 applicant believes the claims present in view of the state of the art disclosed by the
 references cited or the objections made may be held to be not fully responsive and a
 time period set to furnish a proper reply if the statutory period has expired or almost
 expired ( MPEP §
 714.03 ). However, if the claims as amended are clearly open to
 rejection on grounds of record, a final rejection should generally be made.
 

 

 
 714.05 Examiner Should Immediately Review [R-07.2022]

 Actions by applicant, especially those filed near the end of the period
 for reply, should be reviewed as soon as possible upon becoming available to the
 examiner to determine whether they are completely responsive to the preceding Office
 action so as to prevent abandonment of the application. If found inadequate, and
 sufficient time remains, applicant should be notified of the deficiencies and warned to
 complete the reply within the period. See MPEP § 714.03 .
 

 All amended applications forwarded to the examiner should be reviewed at
 once to determine the following:
 

 
 (A) If the amendment is properly signed ( MPEP
 § 714.01(a) ).
 

 (B) If the amendment has been filed within the statutory period, set
 shortened statutory period, or time limit ( MPEP § 710 -
 §
 710.05 ).
 

 (C) If the amendment is fully responsive ( MPEP § 714.03 
 and §
 714.04 ) and complies with 37 CFR 1.121 
 ( MPEP §
 714 ).
 

 (D) If the changes made by the amendment warrant transfer
 ( MPEP § 909.01(c) ).
 

 (E) If the application is special ( MPEP §
 708.01 ).
 

 (F) If claims suggested to applicant for interference purposes have
 been copied. ( MPEP
 Chapter 2300 ).
 

 (G) If there is a traversal of a requirement for restriction
 MPEP
 § 818.01(a) ).
 

 (H) If applicant has cited references ( MPEP § 707.05(b) 
 and §
 1302.12 ).
 

 (I) If a terminal disclaimer has been filed ( MPEP § 804.02 ,
 §
 804.03 , and § 1490 ).
 

 (J) If any matter involving security has been added
 ( MPEP §
 115 ).
 

 ACTION CROSSES AMENDMENT A supplemental action may be necessary when an amendment is filed on
 or before the mailing date of the regular action but reaches the Technology Center
 later. The supplemental action should be promptly prepared. It need not reiterate all
 portions of the previous action that are still applicable but it should specify which
 portions are to be disregarded, pointing out that the period for reply runs from the
 mailing of the supplemental action. The action should be headed “Responsive to
 amendment of (date) and supplemental to the action mailed (date).”
 

 

 
 714.06 [Reserved]

 

 

 
 714.07 Amendments Not in Permanent Ink [R-11.2013]

 37 CFR
 1.52(a) requires 
 "permanent dark ink or its
 equivalent"
 
 
 to be used on papers which will become part of the
 record. So-called “Easily Erasable” paper having a special coating so that erasures can
 be made more easily may not provide a “permanent” copy. However, because application
 papers are now maintained in an Image File Wrapper, the type of paper is unlikely to be
 an issue so long as the Office is able to scan and reproduce the papers that were
 filed.
 

 See MPEP §
 608.01 for more discussion on acceptable copies.
 

 

 
 714.08-714.09 [Reserved]

 

 

 
 714.10 Claims Added in Excess of Claims Previously Paid For [R-01.2024]

 Applicant is required to pay excess claims fees for each claim that is
 in excess of 3 in independent form or in excess of 20 (whether dependent or
 independent). Fees for a proper multiple dependent claim are calculated based on the
 number of claims to which the multiple dependent claim refers ( 37 CFR 1.75(c) )
 and a separate fee is also required in each application containing a proper multiple
 dependent claim. See MPEP
 § 607 . When applicant adds a new excess claim that is in
 excess of the number of claims that were previously paid for after taking into account
 claims that have been canceled, applicant must pay the required excess claims fees
 before the examiner considers the new claim. For example, in an application that
 contains 6 independent claims and 30 total claims for which the excess claims fees were
 previously paid, when applicant cancels 10 claims, 2 of which are independent, and adds
 11 claims, 3 of which are independent, excess claims fees for a
 7 th independent claim and a
 31 st claim are required.
 

 Nonelected claims that are withdrawn from consideration
 after a requirement for restriction will be included in determining the fees due in
 connection with a subsequent amendment, unless the nonelected claims are canceled. See
 MPEP §
 607 , subsection III.
 

 

 
 714.11 Amendment Filed During Interference Proceedings [R-08.2012]

 See MPEP Chapter 2300 .
 

 

 
 714.12 Amendments and Other Replies After Final Rejection or
 Action [R-07.2022]
 

 
 37 CFR 1.116 Amendments and affidavits or other evidence after final action and prior to
 appeal. 

 
 (a) An amendment after final action must comply with §
 1.114 or this section.
 

 (b) After a final rejection or other final action
 (§ 1.113 ) in an application or in an ex
 parte reexamination filed under § 1.510 , or
 an action closing prosecution (§ 1.949 ) in an inter
 partes reexamination filed under § 1.913 ,
 but before or on the same date of filing an appeal (§ 41.31 or
 § 41.61 of this title):
 
 (1) An amendment may be made canceling claims or complying
 with any requirement of form expressly set forth in a previous Office
 action;
 

 (2) An amendment presenting rejected claims in better form
 for consideration on appeal may be admitted; or
 

 (3) An amendment touching the merits of the application or
 patent under reexamination may be admitted upon a showing of good and
 sufficient reasons why the amendment is necessary and was not earlier
 presented.
 

 
 

 (c) The admission of, or refusal to admit, any amendment after a
 final rejection, a final action, an action closing prosecution, or any related
 proceedings will not operate to relieve the application or reexamination
 proceeding from its condition as subject to appeal or to save the application
 from abandonment under § 1.135 , or the reexamination
 prosecution from termination under § 1.550(d) or §
 1.957(b) or limitation of further prosecution under §
 1.957(c) .
 

 (d) 
 
 (1) Notwithstanding the provisions of paragraph (b) of this
 section, no amendment other than canceling claims, where such
 cancellation does not affect the scope of any other pending claim in the
 proceeding, can be made in an inter partes reexamination proceeding after
 the right of appeal notice under § 1.953 except as
 provided in § 1.981 or as permitted
 by § 41.77(b)(1) of this title.
 
 (2) Notwithstanding the provisions of paragraph (b) of
 this section, an amendment made after a final rejection or other
 final action (§ 1.113 ) in an
 ex parte reexamination filed under §
 1.510 , or an
 action closing prosecution (§ 1.949 ) in an
 inter partes reexamination filed under §
 1.913 may not
 cancel claims where such cancellation affects the scope of any
 other pending claim in the reexamination proceeding except as
 provided in § 1.981 or as
 permitted by § 41.77(b)(1) of
 this title.
 

 
 

 (e) An affidavit or other evidence submitted after a final
 rejection or other final action (§ 1.113 ) in an
 application or in an ex parte reexamination filed under §
 1.510 , or an action closing prosecution (§
 1.949 ) in an inter partes reexamination filed
 under § 1.913 but before or on the same date of filing an
 appeal (§ 41.31 or §
 41.61 of this title), may be admitted upon a
 showing of good and sufficient reasons why the affidavit or other
 evidence is necessary and was not earlier presented.
 

 (f) Notwithstanding the provisions of paragraph (e) of this
 section, no affidavit or other evidence can be made in an inter
 partes reexamination proceeding after the right of appeal
 notice under § 1.953 except as
 provided in § 1.981 or as permitted
 by § 41.77(b)(1) of this title.
 

 (g) After decision on appeal, amendments, affidavits and
 other evidence can only be made as provided in §§ 1.198 and 1.981 , or to carry
 into effect a recommendation under § 41.50(c) of this
 title.
 

 
 

 
 

 Once a final rejection that is not premature has been entered in an
 application, applicant or patent owner no longer has any right to unrestricted further
 prosecution. This does not mean that no further amendment or argument will be
 considered. Any amendment that will place the application either in condition for
 allowance or in better form for appeal may be entered. Also, amendments filed after a
 final rejection, but before or on the date of filing an appeal, complying with
 objections or requirements as to form are to be permitted after final action in
 accordance with 37 CFR
 1.116(b) . Amendments filed after the date of filing an appeal may
 be entered if the amendment complies with 37 CFR 41.33 . See
 MPEP §
 1206 . Ordinarily, amendments filed after the final action are
 not entered unless approved by the examiner. See MPEP § 706.07(f) , § 714.13 and
 §
 1206 .
 

 An affidavit or other evidence filed after a final rejection, but before
 or on the same date of filing an appeal, may be entered upon a showing of good and
 sufficient reasons why the affidavit or other evidence is necessary and was not earlier
 presented in compliance with 37 CFR 1.116(e) . See
 37 CFR
 41.33 and MPEP § 1206 for information on
 affidavit or other evidence filed after appeal.
 

 Applicant's submissions concerning the prior art
 exception under 35 U.S.C. 102(b)(2)(C) or prior art
 disqualification under pre-AIA 35 U.S.C. 103(c) are entitled to being considered even
 after a final rejection has been made. If a final rejection of certain claims is
 obviated by a timely reply based on a proper claim of entitlement to the prior art
 exception or disqualification, then the Office should acknowledge the reply by modifying
 the status of the claims. For example, if the only rejection in the final rejection is
 obviated by a submission demonstrating entitlement to except or exclude prior art in the
 after-final reply, the Office should indicate that the claims are allowable, or
 prosecution should be reopened should the claims be considered unpatentable in view of
 newly applied prior art. Applicants should be aware, however, that the failure to make a
 proper submission of entitlement to except or exclude prior art following the first
 Office action may be considered by the Office as conduct that is considered to be a
 failure to engage in reasonable efforts to conclude prosecution if such prior art is
 thereafter excepted under 35 U.S.C. 102(b)(2)(C) or
 disqualified under pre-AIA 35 U.S.C. 103(c) . See 37 CFR
 1.704(c) and the discussion of comment 19 in Changes To
 Implement Patent Term Adjustment Under Twenty-Year Patent Term; Final Rule ,
 65 FR 56366, 79 (September 18, 2000). 
 

 The prosecution of an application before the examiner should ordinarily be
 concluded with the final action. However, one personal interview by applicant may be
 entertained after such final action if circumstances warrant. Thus, only
 one request by applicant for a personal interview after final should be granted, but in
 exceptional circumstances, a second personal interview may be initiated by the
 examiner if in their judgment this would materially assist in
 placing the application in condition for allowance .
 

 Many of the difficulties encountered in the prosecution of patent
 applications after final rejection may be alleviated if each applicant includes, at the
 time of filing or no later than the first reply, claims varying from the broadest to
 which they believe they are entitled to the most detailed that they are willing to
 accept.
 

 

 
 714.13 Amendments and Other Replies After Final Rejection or Action,
 Procedure Followed [R-01.2024]
 
 I. FINAL REJECTION — TIME FOR REPLY If an applicant initially replies within 2 months from the date of
 mailing of any final rejection setting a 3-month shortened statutory period for reply
 and the Office does not mail an advisory action until after the end of the 3-month
 shortened statutory period, the period for reply for purposes of determining the
 amount of any extension fee will be the date on which the Office mails the advisory
 action advising applicant of the status of the application, but in no event can the
 period extend beyond 6 months from the date of the final rejection. This procedure
 applies only to a first reply to a final rejection. The following language must be
 included by the examiner in each final rejection:
 

 
 A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET
 TO EXPIRE THREE MONTHS FROM THE 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 WILL THE STATUTORY PERIOD FOR REPLY EXPIRE LATER THAN
 SIX MONTHS FROM THE DATE OF THIS FINAL ACTION.
 

 
 This wording is part of form paragraphs 7.39 ,
 7.40 , 7.40.01 , 7.40.02.fti ,
 7.40.02.aia , 7.41 ,
 7.41.03.fti , 7.42.03.fti ,
 and 7.42.09 . Form paragraph 7.39 appears in
 MPEP
 § 706.07 . Form paragraphs 7.40 ,
 
 7.40.01 , 7.40.02.fti , and
 7.40.02.aia appear in MPEP § 706.07(a) .
 Form paragraphs 7.41 , 7.41.03.fti , and
 7.42.09 appear in MPEP § 706.07(b) .
 Form paragraph 7.42.03.fti appears in MPEP §
 706.07(g) .
 

 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 a case, any extension fee would then be calculated from the
 end of the 3-month period. If the examiner, however, does not mail an advisory action
 until after the end of 3 months, the shortened statutory period will expire on the
 date the examiner mails the advisory action and any extension fee may be calculated
 from that date. In the event that a first reply is not filed within 2 months of the
 mailing date of the final rejection, any extension fee pursuant to 37 CFR 1.136(a) 
 will be calculated from the end of the reply period set in the final rejection.
 

 Failure to file a reply during the shortened statutory period results
 in abandonment of the application unless the time is extended under the provisions of
 37 CFR
 1.136 .
 

 II. ENTRY NOT A MATTER OF RIGHT It should be kept in mind that applicant cannot, as a matter of
 right, amend any finally rejected claims, add new claims after a final rejection (see
 37 CFR
 1.116 ) or reinstate previously canceled claims.
 

 Except where an amendment merely cancels claims, adopts examiner
 suggestions, removes issues for appeal, or in some other way requires only a cursory
 review by the examiner, compliance with the requirement of a showing under
 37 CFR
 1.116(b)(3) is expected in all amendments after final
 rejection. An affidavit or other evidence filed after a final rejection, but before
 or on the same date of filing an appeal, may be entered upon a showing of good and
 sufficient reasons why the affidavit or other evidence is necessary and was not
 earlier presented in compliance with 37 CFR 1.116(e) . See
 37 CFR
 41.33 and MPEP § 1206 for information on
 affidavit or other evidence filed after appeal. Failure to properly reply under
 37 CFR
 1.113 to the final rejection results in abandonment. A reply
 under 37 CFR
 1.113 is limited to: 
 

 
 (A) an amendment complying with 37 CFR 1.116 ; 
 

 (B) a Notice of Appeal (and appeal fee); or 

 (C) a request for continued examination (RCE) filed under
 37 CFR
 1.114 with a submission (i.e., an amendment that meets
 the reply requirement of 37 CFR 1.111 ) and the fee
 set forth in 37 CFR 1.17(e) . RCE
 practice under 37 CFR 1.114 does not apply
 to utility or plant patent applications filed before June 8, 1995 and design
 applications.
 

 
 Applicant's submissions concerning the prior art
 exception under 35 U.S.C. 102(b)(2)(C) or prior
 art disqualification under pre-AIA 35 U.S.C. 103(c) are
 entitled to being considered even after a final rejection has been made. If a final
 rejection of certain claims is obviated by a timely reply based on a proper claim of
 entitlement to the prior art exception or disqualification, then the Office should
 acknowledge the reply by modifying the status of the claims. For example, if the only
 rejection in the final rejection is obviated by a submission demonstrating
 entitlement to except or exclude prior art in the after-final reply, the Office
 should indicate that the claims are allowable, or prosecution should be reopened
 should the claims be considered unpatentable in view of newly applied prior art.
 

 Further examination of the application may be obtained by filing a
 continued prosecution application (CPA) under 37 CFR 1.53(d) , if the
 application is a design application. See MPEP §
 201.06(d) . Effective July 14, 2003, CPA practice does not
 apply to utility and plant applications.
 

 An amendment filed at any time after final rejection, but before an
 appeal brief is filed, may be entered upon or after filing of an appeal brief
 provided the total effect of the amendment is to (A) remove issues for appeal, and/or
 (B) adopt examiner suggestions.
 

 See also MPEP § 1206 and
 §
 1211 .
 

 The U.S. Patent and Trademark Office does not recognize “conditional”
 authorizations to charge an appeal fee if an amendment submitted after a final Office
 action is not entered. Any “conditional” authorization to charge an appeal fee set
 forth in 37 CFR 1.17(b) will be treated as
 an unconditional payment of the fee set forth in 37 CFR
 1.17(b) .
 

 III. ACTION BY EXAMINER If, on request by applicant for reconsideration, the primary examiner
 finds the final rejection to have been premature, the examiner should withdraw the
 finality of the rejection. The finality of the Office action must be withdrawn while
 the application is still pending. See also MPEP §§ 706.07(d) to
 706.07(f) .
 

 In the event that a proposed amendment does not place the case in
 better form for appeal, nor in condition for allowance, applicant should be promptly
 informed of this fact, whenever possible, within the statutory period. The refusal to
 enter the proposed amendment should not be arbitrary. The proposed amendment should
 be given sufficient consideration to determine whether the claims are in condition
 for allowance and/or whether the issues on appeal are simplified. Ordinarily, the
 specific deficiencies of the amendment need not be discussed. However, if the
 proposed amendment raises the issue of new matter, the examiner should identify the
 subject matter that would constitute new matter. If the proposed amendment presents
 new issues requiring further consideration and/or search, the examiner should provide
 an explanation as to the reasons why the proposed amendment raises new issues that
 would require further consideration and/or search. The reasons for nonentry should be
 concisely expressed. For example:
 

 
 (A) The claims, if amended as proposed, would not avoid any of the
 rejections set forth in the last Office action, and thus the amendment would
 not place the case in condition for allowance or in better condition for
 appeal.
 

 (B) The claims, if amended as proposed, would raise the issue of
 new matter.
 

 (C) The claims as amended present new issues requiring further
 consideration or search.
 

 (D) Since the amendment presents additional claims without
 canceling any finally rejected claims it is not considered as placing the
 application in better condition for appeal. Ex parte Wirt , 1905 C.D. 247, 117 OG 599 (Comm’r Pat. 1905).
 

 
 Examiners should indicate the status of each claim of record or
 proposed in the amendment, and which proposed claims would be entered on the filing
 of an appeal if filed in a separate paper. Whenever such an amendment is entered for
 appeal purposes, the examiner must indicate on the advisory action which individual
 rejection(s) set forth in the action from which the appeal was taken (e.g., the final
 rejection) would be used to reject the new or amended claim(s).
 

 Applicant should be notified, if certain portions of the amendment
 would be acceptable as placing some of the claims in better form for appeal or
 complying with objections or requirements as to form, if a separate paper were filed
 containing only such amendments. Similarly, if the proposed amendment to some of the
 claims would render them allowable, applicant should be so informed. This is helpful
 in assuring the filing of a brief consistent with the claims as amended. A statement
 that the final rejection stands and that the statutory period runs from the date of
 the final rejection is also in order.
 

 Advisory Action Before the Filing of an Appeal Brief form PTOL-303
 should be used to acknowledge receipt of a reply from applicant after final rejection
 where such reply is prior to filing of an appeal brief and does not place the
 application in condition for allowance. This form has been devised to advise
 applicant of the disposition of the proposed amendments to the claims and of the
 effect of any argument or affidavit not placing the application in condition for
 allowance or which could not be made allowable by a telephone call to clear up minor
 matters.
 

 Any amendment timely filed after a final rejection should be
 immediately considered to determine whether it places the application in condition
 for allowance or in better form for appeal. If the amendment is approved for entry,
 the examiner must annotate the reply “OK TO ENTER,” with initials, and enter the
 annotated document into the file wrapper. If the amendment is not approved for entry,
 the examiner must annotate the reply “DO NOT ENTER,” with initials, and enter the
 annotated document into the file wrapper. An examiner is expected to turn in a
 response to an amendment after final rejection within an average of 11 calendar days
 from the time the amendment is received by the examiner. A reply to an amendment
 after final rejection should be mailed within 30 days of the date the amendment is
 received by the Office. 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 the allowability of the claims by a Notice
 of Allowability form PTOL-37. If delays in processing the Notice of Allowability are
 expected, e.g., because an extensive examiner’s amendment must be entered, and the
 end of a statutory period for reply is near, the examiner should notify applicant by
 way of an interview that the application has been placed in condition for allowance,
 and an Examiner Initiated Interview Summary form should be mailed. Prompt notice to
 applicant is important because it may avoid an unnecessary appeal and act as a
 safeguard against a holding of abandonment. Every effort should be made to mail the
 letter before the period for reply expires.
 

 If no appeal has been filed within the period for reply and no
 amendment has been submitted to make the application allowable or which can be
 entered in part (see MPEP § 714.20 ), the application stands abandoned.
 

 It should be noted that under 37 CFR 1.181(f) , the filing of a
 37 CFR
 1.181 petition will not stay the period for reply to an
 examiner’s action which may be running against an application. See
 MPEP §
 1206 for appeal and post-appeal procedure. For after final
 rejection practice relative to affidavits or declarations filed under
 37 CFR
 1.131(a) and 1.132 , see MPEP § 715.09 and
 §
 716 .
 

 Form paragraph 7.169 may be used to notify applicant in the Advisory
 Action that the proposed amendment(s) will be entered upon appeal and how the new or
 amended claim(s) would be rejected.
 

 ¶ 7.169 Advisory Action, Proposed Rejection of Claims, Before Appeal
 Brief
 

 For purposes of appeal, the proposed
 amendment(s) will be entered and the proposed rejection(s) detailed below will be included in
 the Examiner’s Answer. To be complete, such rejection(s) must be addressed in any brief on
 appeal.
 

 Upon entry of the amendment(s) for
 purposes of appeal:
 

 Claim(s) [1] would be
 rejected for the reasons set forth in [2] of the final Office action mailed
 [3] .
 

 Examiner Note:
 
 1. In bracket 1, identify all the
 new or amended claim(s) that would be grouped together in a single
 rejection.
 

 2. In bracket 2, identify the
 rejection by referring to either the paragraph number or the statement of the rejection
 (e.g., the rejection under 35 U.S.C. 103 based upon A in view
 of B) in the final Office action under which the claims would be rejected on
 appeal.
 

 3. Repeat this form paragraph for
 each group of claims subject to the same rejection(s).
 

 4. Use this form paragraph if item
 7 of the Advisory Action form, PTOL-303 (Rev. 9-04 or later) has been checked to
 indicate that the proposed amendment(s) will be entered upon appeal.
 
 
 
 IV. HAND-DELIVERY OF PAPERS Hand-carried papers for the Technology Centers (TCs) may only be
 delivered to the Customer Service Window. See MPEP § 501 , subsection III for
 information regarding hand-delivery of papers.
 

 Effective December 1, 2003, all official patent application related
 correspondence for organizations reporting to the Commissioner of Patents (e.g., TCs,
 the Office of Data Management, and the Office of Petitions) that is hand-carried (or
 delivered by other delivery services, e.g., FedEx, UPS, etc.) must be delivered to
 the Customer Service Window, with a few limited exceptions. See MPEP § 502 .
 Hand-carried amendments and other replies after final rejection ( 37 CFR 1.116 )
 will no longer be accepted in the TCs. Any courier who attempts delivery of such
 after final correspondence at a TC (or where it is no longer permitted) will be
 re-directed to the Customer Service Window. Patent application related read-only
 optical discs and other non-paper submissions that are hand-carried must be delivered
 to the Customer Service Window.
 

 V. EXPEDITED PROCEDURE FOR PROCESSING AMENDMENTS AND OTHER REPLIES AFTER FINAL
 REJECTION (37 CFR 1.116) In an effort to improve the timeliness of the processing of
 amendments and other replies under 37 CFR 1.116 , and thereby provide
 better service to the public, an expedited processing procedure has been established
 which the public may utilize in filing amendments and other replies after final
 rejection under 37
 CFR 1.116 . 
 

 Amendments and other replies under 37 CFR 1.116 
 filed via the USPTO patent electronic filing system are processed promptly provided
 the submitter describes the document as an amendment after final rejection. Based on
 the document description selected by the user, a document code is assigned and a
 message regarding the document submitted to the USPTO will be forwarded to the
 appropriate organization for processing, and to the appropriate official for
 consideration. Accurate document indexing is important to facilitate efficient
 processing and proper consideration of the document by the USPTO.
 

 In order for an applicant to take advantage of the
 expedited procedure, an amendment or other reply under 37 CFR 1.116 
 filed in paper format must be marked as a “Reply under 37 CFR 1.116 —
 Expedited Procedure - Technology Center (Insert Technology Center Number)” on the
 upper right portion of the amendment or other reply and the envelope must be clearly
 marked “Mail Stop AF” in the lower left hand corner. If the reply is mailed to the
 Office, the envelope should contain only replies under 37 CFR 1.116 
 and should be mailed to “Mail Stop AF, Commissioner for Patents, P.O. Box 1450,
 Alexandria, Virginia, 22313-1450.” Instead of mailing the envelope to “Mail Stop AF”
 as noted above, the reply may be hand-carried to the Customer Service Window. See
 MPEP §
 501 , subsection III for information regarding hand-delivery
 of papers. The outside of the envelope should be marked “Reply Under
 37 CFR
 1.116 - Expedited Procedure - Technology Center (Insert
 Technology Center Number).”
 

 Upon receipt by the U.S. Patent and Trademark Office from the U.S.
 Postal Service of an envelope appropriately marked “Mail Stop AF,” the envelope will
 be specially processed by the Mail Center and forwarded to the Technology Center
 after being uploaded as a scanned image into the file wrapper. Upon receipt of the
 reply in the TC it will be promptly processed by a designated technical support staff
 member and forwarded to the examiner, via the supervisory patent examiner (SPE), for
 action. The SPE is responsible for ensuring that prompt action on the reply is taken
 by the examiner. If the examiner to which the application is assigned is not
 available and will not be available for an extended period, the SPE will ensure that
 action on the application is promptly taken to assure meeting the USPTO goal
 described below. Once the examiner has completed their consideration of the reply,
 the examiner’s action will be promptly typed and printed, and mailed by technical
 support staff or other Office personnel designated to expedite the processing of
 replies filed under this procedure. The TC supervisory personnel, e.g., the
 supervisory patent examiner, supervisory applications examiner, and TC Director are
 responsible for ensuring that actions on replies filed under this procedure are
 promptly processed and mailed. The U.S. Patent and Trademark Office goal is to mail
 the examiner’s action on the reply within 1 month from the date on which the
 amendment or reply is received by the U.S. Patent and Trademark Office.
 

 Applicants are encouraged to utilize this expedited procedure in
 order to facilitate U.S. Patent and Trademark Office processing of replies under
 37 CFR
 1.116 . If applicants do not utilize the procedure by
 appropriately marking the envelope and enclosed papers, the benefits expected to be
 achieved therefrom will not be attained. The procedure cannot be expected to result
 in achievement of the goal in applications in which the delay results from actions by
 the applicant, e.g., delayed interviews, applicant’s desire to file a further reply,
 or a petition by applicant which requires a decision and delays action on the reply.
 In any application in which a reply under this procedure has been filed and no action
 by the examiner has been received within the time referred to herein, plus normal
 mailing time, a telephone call to the SPE of the relevant TC art unit would be
 appropriate in order to permit the SPE to determine the cause for any delay. If the
 SPE is unavailable or if no satisfactory reply is received, the TC Director should be
 contacted.
 

 

 
 714.14 Amendments After Allowance of All Claims [R-10.2019]

 Under the decision in Ex parte Quayle , 25 USPQ 74, 1935 C.D. 11; 453 OG 213 (Comm’r Pat. 1935),
 after all claims in an application have been allowed the prosecution of the application
 on the merits is closed even though there may be outstanding formal objections which
 preclude fully closing the prosecution.
 

 Amendments touching the merits are treated in a manner similar to
 amendments after final rejection, though the prosecution may be continued as to the
 formal matters. See MPEP §
 714.12 and § 714.13 .
 

 See MPEP §
 714.20 for amendments entered in part.
 

 See MPEP §
 607 for additional fee requirements.
 

 See MPEP §
 714 for non-compliant amendments.
 

 Use form paragraph 7.51 to issue an Ex
 parte Quayle action.
 

 ¶ 7.51 Quayle Action

 This application is in condition for
 allowance except for the following formal matters: [1] .
 

 Prosecution on the merits is closed in
 accordance with the practice under Ex parte Quayle , 25 USPQ 74, 453 OG 213
 (Comm’r Pat. 1935).
 

 A shortened statutory period for reply to this action is 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
 Office action beyond the maximum period of SIX MONTHS set by statute ( 35 U.S.C. 133 ).
 

 Examiner Note:

 Explain the formal matters which
 must be corrected in bracket 1.
 

 

 

 
 714.15 Amendment Received in Technology Center After Mailing of Notice
 of Allowance [R-08.2012]
 

 Where an amendment, even though prepared by applicant prior to
 allowance, does not reach the Office until after the notice of allowance has been
 mailed, such amendment has the status of one filed under 37 CFR 1.312 . Its
 entry is a matter of grace. For discussion of amendments filed under 37 CFR 1.312 , see
 MPEP §
 714.16 to § 714.16(e) .
 

 If the amendment is filed in the Office prior to the mailing of the
 notice of allowance, but is received by the examiner after the mailing of the notice of
 allowance, it may also not be approved for entry. If the amendment is a supplemental
 reply filed when action is not suspended, such an amendment will not be approved for
 entry because supplemental replies are not entered as matter of right. See
 37 CFR
 1.111(a)(2) and MPEP § 714.03(a) . If the amendment is a
 preliminary amendment, such an amendment may be disapproved under 37 CFR 1.115(b) .
 See MPEP §
 714.01(e) . If the amendment is approved for entry, the
 examiner may enter the amendment and provide a supplemental notice of allowance, or
 withdraw the application from issue and provide an Office action.
 

 The application will not be withdrawn from issue for the entry of an
 amendment that would reopen the prosecution if the Office action next preceding the
 notice of allowance closed the application to further amendment, i.e., by indicating the
 patentability of all of the claims, or by allowing some and finally rejecting the
 remainder.
 

 After an applicant has been notified that the claims are all allowable,
 further prosecution of the merits of the application is a matter of grace and not of
 right. Ex parte Quayle , 25 USPQ 74, 1935 C.D. 11, 453 OG 213 (Comm’r
 Pat. 1935).
 

 

 
 714.16 Amendment After Notice of Allowance, 37 CFR 1.312 [R-10.2019]

 
 37 CFR 1.312 Amendments after allowance. 

 No amendment may be made as a matter of right in an application
 after the mailing of the notice of allowance. Any amendment filed pursuant to this
 section must be filed before or with the payment of the issue fee, and may be entered
 on the recommendation of the primary examiner, approved by the Director, without
 withdrawing the application from issue.
 

 

 The amendment of an application by applicant after allowance falls
 within the guidelines of 37 CFR 1.312 . Further, the amendment
 of an application broadly encompasses any change in the file record of the application.
 Accordingly, the following are examples of “amendments” by applicant after allowance
 which must comply with 37 CFR 1.312 :
 

 
 (A) an amendment to the specification, 

 (B) a change in the drawings, 

 (C) an amendment to the claims, 

 (D) a change in the inventorship, 

 (E) the submission of prior art, 

 (F) a request to correct the spelling of an inventor’s name
 ( 37 CFR
 1.48(f) ), 
 

 (G) a request to change the order of the names of the inventors
 ( 37 CFR
 1.48(f) ), etc.
 

 
 The above “amendments” must also comply with the other
 applicable requirements. For example, an amendment to the specification, drawings, or
 claims must comply with the requirements of 37 CFR 1.121 in addition to the
 requirements of 37 CFR
 1.312 and a submission of prior art must comply with the
 requirements of 37 CFR
 1.97 and 1.98 in addition to the requirements
 of 37 CFR
 1.312 .
 

 Finally, it is pointed out that an amendment under 37 CFR 1.312 must
 be filed on or before the date the issue fee is paid, except where the amendment is
 required by the Office of Data Management, see MPEP § 714.16(d) , subsection III. An
 amendment under 37 CFR
 1.312 must comply with the provisions of 37 CFR 1.121 . If
 the amendment is non-compliant under 37 CFR 1.121 and the entry of the
 amendment would have been otherwise recommended, the examiner may enter the amendment
 and correct the non-compliance (e.g., an incorrect status identifier) using an
 examiner’s amendment. See MPEP § 714 .
 

 The Director has delegated the approval of recommendations under
 37 CFR
 1.312 to the supervisory patent examiners.
 

 With the exception of a supplemental oath or declaration submitted in a
 reissue, a supplemental oath or declaration is not treated as an amendment under
 37 CFR
 1.312 . See MPEP § 603.01 . A supplemental reissue
 oath or declaration is treated as an amendment under 37 CFR 1.312 because the correction
 of the patent which it provides is an amendment of the patent, even though no amendment
 is physically entered into the specification or claim(s). Thus, for a reissue oath or
 declaration submitted after allowance to be entered, the reissue applicant must comply
 with 37 CFR
 1.312 in the manner set forth in this section.
 

 After the Notice of Allowance has been mailed, the application is
 technically no longer under the jurisdiction of the primary examiner. He or she can,
 however, make examiner’s amendments (see MPEP § 1302.04 ) and has authority to
 enter amendments submitted after Notice of Allowance of an application which embody
 merely the correction of formal matters in the specification or drawing, or formal
 matters in a claim without changing the scope thereof, or the cancellation of claims
 from the application, without forwarding to the supervisory patent examiner for
 approval.
 

 Amendments other than those which merely embody the correction of formal
 matters without changing the scope of the claims require approval by the supervisory
 patent examiner. The Technology Center (TC) Director establishes TC policy with respect
 to the treatment of amendments directed to trivial informalities which seldom affect
 significantly the vital formal requirements of any patent, namely, (A) that its
 disclosure be adequately clear, and (B) that any invention present be defined with
 sufficient clarity to form an adequate basis for an enforceable contract.
 

 Consideration of an amendment under 37 CFR 1.312 cannot be demanded as a
 matter of right. Prosecution of an application should be conducted before, and thus be
 complete including editorial revision of the specification and claims 
 at the time of the Notice of Allowance. However, where amendments of the type noted are
 shown (A) to be needed for proper disclosure or protection of the invention, and (B) to
 require no substantial amount of additional work on the part of the Office, they may be
 considered and, if proper, entry may be recommended by the primary examiner.
 

 The requirements of 37 CFR 1.111(c) 
 ( MPEP
 § 714.02 ) with respect to pointing out the patentable novelty
 of any claim sought to be added or amended, apply in the case of an amendment under
 37 CFR
 1.312 , as in ordinary amendments. See MPEP §§ 713.04 and
 713.10 regarding interviews. As to amendments affecting the
 disclosure, the scope of any claim, or that add a claim, the remarks accompanying the
 amendment must fully and clearly state the reasons on which reliance is placed to
 show:
 

 
 (A) why the amendment is needed; 

 (B) why the proposed amended or new claims require no additional
 search or examination; 
 

 (C) why the claims are patentable; and

 (D) why they were not presented earlier.

 I. NOT TO BE USED FOR CONTINUED PROSECUTION 37 CFR
 1.312 was never intended to provide a way for the continued
 prosecution of an application after it has been passed for issue. When the
 recommendation is against entry, a detailed statement of reasons is not necessary in
 support of such recommendation. The simple statement that the proposed claim is not
 obviously allowable and briefly the reason why is usually adequate. Where
 appropriate, any one of the following reasons is considered sufficient:
 

 
 (A) an additional search is required;

 (B) more than a cursory review of the record is necessary; or 

 (C) the amendment would involve materially added work on the part
 of the Office, e.g., checking excessive editorial changes in the specification
 or claims.
 

 
 Where claims added by amendment under 37 CFR 1.312 
 are all of the form of dependent claims, some of the usual reasons for nonentry are
 less likely to apply although questions of new matter, sufficiency of disclosure, or
 undue multiplicity of claims could arise.
 

 See MPEP §§ 607 and 714.16(c) for additional fee
 requirements.
 

 II. AMENDMENTS FILED AFTER PAYMENT OF ISSUE FEE Except where the Office of Data Management has required an amendment,
 no amendments should be filed after the date the issue fee has been paid. See
 MPEP §
 714.16(d) , subsection III for processing an amendment
 required by the Office of Data Management.
 

 ¶ 13.10 Amendment Filed After the Payment of Issue Fee, Not
 Entered
 

 Applicant’s amendment filed on [1] will not be entered
 because the amendment was filed after the issue fee was paid. 37 CFR 1.312 no longer
 permits filing an amendment after the date the issue fee has been paid.
 

 Examiner Note:
 
 1. Use this paragraph with form PTOL-90 or PTO-90C.

 2. In bracket 1, insert the date of the amendment.
 
 

 
 714.16(a) Amendments Under 37 CFR 1.312, Copied Patent
 Claims [R-08.2012]
 

 See MPEP Chapter 2300 for the procedure to be followed when an
 amendment is received after notice of allowance which includes one or more claims
 copied or substantially copied from a patent.
 

 The entry of the copied patent claims is not a matter of right. See
 MPEP §
 714.19 .
 

 See MPEP § 607 and § 714.16(c) for additional fee
 requirements.
 

 

 
 714.16(b) Amendments Under 37 CFR 1.312 Filed With a Motion
 Under 37 CFR
 41.208 [R-08.2012]
 

 Where an amendment filed with a motion under 37 CFR
 41.208(c)(2) applies to an application in issue, the amendment
 is not entered unless and until the motion has been granted.
 

 

 
 714.16(c) Amendments Under 37 CFR 1.312, Additional Claims [R-08.2012]

 If the amendment under 37 CFR 1.312 adds claims (total
 and independent) in excess of the number previously paid for, additional fees are
 required. The amendment is not considered by the examiner unless
 accompanied by the full fee required. See MPEP § 607 and 35 U.S.C.
 41 .
 

 

 
 714.16(d) Amendments Under 37 CFR 1.312, Handling [R-01.2024]

 Amendments under 37 CFR 1.312 are sent to the
 Office of Patent Application Processing (OPAP) to be scanned and uploaded into the
 IFW. Thereafter OPAP messages the Office of Data Management, which reviews the
 message and forwards the message to the Technology Center (TC) which allowed the
 application. Once the TC completes the action, the TC will message the Office of Data
 Management that issue processing can resume. If an amendment under 37 CFR 1.312 
 has been filed directly with the TC, the paper will be forwarded to OPAP for
 scanning. 
 

 Hand-delivered amendments under 37 CFR 1.312 are no longer
 accepted in the TC. Hand-delivered amendments (including if specifically required by
 the Office of Data Management, see subsection III. below) may only be delivered to
 the Customer Service Window located at the address listed in MPEP § 501 ,
 subsection III.
 

 In the event that the class and subclass in which the application is
 classified has been transferred to another TC after the application was allowed, the
 proposed amendment, file and drawing (if any) are transmitted directly to said other
 TC and the Publishing Division notified. If the examiner who allowed the application
 is still employed in the U.S. Patent and Trademark Office but not in said other TC,
 they may be consulted about the propriety of the proposed amendment and given credit
 for any time spent in giving it consideration.
 

 I. AMENDMENTS AFFECTING THE DISCLOSURE OF THE SPECIFICATION, ADDING CLAIMS, OR
 CHANGING THE SCOPE OF ANY CLAIM The amendment is PROMPTLY considered by the examiner who indicates
 whether or not its entry is recommended by annotating the amendment with “OK to
 Enter” if the entire amendment is recommended for entry, with “Enter In Part” if
 only part of the amendment is recommended for entry, and with “Do Not Enter” if
 none of the amendment is recommended for entry. 
 

 In addition, the amendment must comply with the provisions of
 37 CFR
 1.121 . See MPEP § 714 .
 

 Whenever an amendment under 37 CFR 1.312 affects the
 disclosure of the specification, adds claims, or changes the scope of any claim,
 the recommendation of the examiner must be forwarded to the supervisory patent
 examiner for consideration and approval. If the amendment is favorably considered,
 it is entered and a Response to Rule 312 Communication (PTO-271) is prepared. The
 primary examiner indicates their recommendation by stamping and signing their name
 on the PTO-271, which will be forwarded to the supervisory patent examiner for
 consideration and approval. Form paragraph 7.85 may also be
 used to indicate entry.
 

 ¶ 7.85 Amendment Under 37 CFR 1.312 Entered

 The amendment filed on [1] under 37 CFR 1.312 has been entered.
 

 Examiner Note:

 Use this form paragraph both for amendments under 37 CFR 1.312 that do
 not affect the scope of the claims (may be signed and approved by the primary examiner
 without forwarding to the supervisory patent examiner for approval) and for amendments
 being entered under 37
 CFR 1.312 which do affect the scope of the claims (requires signature
 of the supervisory patent examiner). See MPEP § 714.16 .
 

 

 If the examiner’s recommendation is completely adverse, a Response
 to Rule 312 Communication form PTO-271 is prepared and signed by the primary
 examiner for consideration and approval by the supervisory patent examiner.
 

 Form paragraph 7.87 may also be used to indicate
 nonentry.
 

 ¶ 7.87 Amendment Under 37 CFR 1.312 Not Entered

 The proposed amendment filed on [1] under
 37 CFR
 1.312 has not been entered. [2] 

 Examiner Note:
 
 1. Use this form paragraph to indicate that an amendment
 under 37 CFR
 1.312 will not be entered. The signature of the supervisory patent
 examiner is required. 
 

 2. The reasons for non-entry should be specified in bracket 2, for
 example:
 

 --The amendment changes the scope of the
 claims.--
 
 
 

 In either case, whether the amendment is entered or not entered,
 the file, drawing, and unmailed notices are forwarded to the supervisory patent
 examiner for consideration, approval, and mailing.
 

 For entry-in-part, see MPEP § 714.16(e) .
 

 The filling out of the appropriate form by the technical support
 staff does not signify that the amendment will be entered; although the amendment
 paper is placed in the application file, it is not officially entered unless and
 until approved by the supervisory patent examiner.
 

 See MPEP §§ 607 and 714.16(c) for additional fee
 requirements.
 

 II. AMENDMENTS WHICH EMBODY MERELY THE CORRECTION OF FORMAL MATTERS IN THE
 SPECIFICATION, FORMAL CHANGES IN A CLAIM WITHOUT CHANGING THE SCOPE THEREOF, OR
 THE CANCELLATION OF CLAIMS The examiner indicates approval of amendments concerning merely
 formal matters by writing “Enter” thereon with the stamper tool in Adobe Acrobat.
 Such amendments do not require submission to the supervisory patent examiner prior
 to entry. See MPEP §
 714.16 . The Response to Rule 312 Communication form
 PTO-271 is date stamped and mailed by the TC. Whereas the examiner may approve the
 entry of amendments concerning merely formal matters without the signature of a
 supervisory patent examiner, if such amendments are disapproved either in whole or
 in part, they require the signature of the supervisory patent examiner.
 

 Form paragraphs 7.85 and
 7.87 
 (reproduced in subsection I) may also be used to indicate entry or nonentry,
 respectively.
 

 III. AMENDMENTS REQUIRED BY THE OFFICE OF DATA MANAGEMENT In preparation of a patent for issuance as a patent grant, if the
 Office of Data Management discovers an error in the text, or drawings of a patent
 application, including any missing text, or an inconsistency between the drawings
 and the application papers, the Office of Data Management may require an
 appropriate amendment to the specification or drawings. 37 CFR
 1.312 , however, does not permit an amendment after the payment
 of the issue fee without withdrawal of the application from issue. In order to be
 able to accept such an amendment as may be required without having to withdraw an
 application from issue, the Office of Data Management has been delegated the
 authority to waive the requirement of 37 CFR 1.312 and accept an
 amendment filed after the payment of the issue fee. If amendments required by the
 Office of Data Management are going to be hand-delivered, they may only be
 delivered to the Customer Service Window located at the address listed in
 MPEP §
 501 , subsection III.
 

 

 
 714.16(e) Amendments Under 37 CFR 1.312, Entry in Part [R-07.2022]

 The general rule that an amendment cannot be entered in part and
 refused in part should not be relaxed, but when, under 37 CFR 1.312 ,
 an amendment, for example, is proposed containing a plurality of claims or amendments
 to claims, some of which may be entered and some not, the acceptable claims or
 amendments should be entered in the application. If necessary, the claims should be
 renumbered to run consecutively with the claims already in the case. The examiner
 should annotate the amendments by using the Strike-Out Line tool to cross out any
 refused claims or amendments.
 

 The examiner should then submit a Response to Rule 312 Communication
 form PTO-271 recommending the entry of the acceptable portion of the amendment and
 the nonentry of the remaining portion together with their reasons therefor. The form
 PTO-271 must then be forwarded to the supervisory patent examiner for consideration,
 approval, and mailing. The claims entered should be indicated by number in this
 response. Applicant may also be notified by using form paragraph
 7.86 .
 

 ¶ 7.86 Amendment Under 37 CFR 1. 312 Entered in Part

 The amendment filed on [1] under 37 CFR 1.312 has been entered-in-part. [2] 

 Examiner Note:

 When an amendment under 37 CFR 1.312 is proposed containing
 plural changes, some of which may be acceptable and some not, the acceptable changes should
 be entered. An indication of which changes have and have not been entered with appropriate
 explanation should follow in bracket 2. The signature of the supervisory patent examiner is
 required.
 

 

 Handling is similar to complete entry of a 37 CFR 1.312 
 amendment.
 

 Entry in part is not recommended unless the full additional fee
 required, if any, accompanies the amendment. See MPEP § 607 and
 §
 714.16(c) .
 

 

 

 
 714.17 Amendment Filed After the Period for Reply Has
 Expired [R-08.2012]
 

 When an application is not prosecuted within the period set for reply
 and thereafter an amendment is filed without a petition for extension of time and fee
 pursuant to 37 CFR
 1.136(a) , such amendment shall be placed in the file of the
 application, but not formally entered. The technical support staff shall immediately
 notify the applicant, by telephone and letter, that the amendment was not filed within
 the time period and therefore cannot be entered and that the application is abandoned
 unless a petition for extension of time and the appropriate fee are timely filed. See
 MPEP §
 711.02 .
 

 See MPEP §
 710.02(e) for a discussion of the requirements of
 37 CFR
 1.136(a) .
 

 

 
 714.18 Entry of Amendments [R-11.2013]

 All amendments received in the technical support staff sections are
 processed and distributed to the examiners.
 

 Every mail delivery should be carefully screened so that all amendments
 replying to a final action in which a time period is running against the applicant are
 promptly processed (e.g., within the next 24 hours).
 

 The purpose of this procedure is to ensure uniform and prompt treatment
 by the examiners of all applications where the applicant is awaiting a reply to a
 proposed amendment after final action. In cases of this type, the applicant should
 receive an Office communication in sufficient time to adequately consider his or her
 next action if the application is not allowed. Consequently, technical support staff
 handling will continue to be special when these applications are returned by the
 examiners to the technical support staff.
 

 Evaluation of the amendment after final rejection for compliance with
 37 CFR
 1.121 should be left to the examiner, and not treated by the
 technical support staff before forwarding the amendment to the examiner. If the examiner
 determines that the proposed amendment is not in compliance with 37 CFR 1.121 , the
 examiner should notify applicant of this fact and attach a Notice of Non-Compliant
 Amendment to the advisory action. See MPEP § 714 .
 

 Amendments are entered as papers into the IFW. When several
 amendments are made in an application on the same day no particular order as to the hour
 of the receipt or the mailing of the amendments can be assumed, but consideration of the
 application must be given as far as possible as though all the papers filed were a
 composite single paper.
 

 After entry of the amendment the application is “up for action.” It is
 forwarded to the examiner, and he or she is responsible for its proper disposal. The
 examiner should immediately inspect the amendment as set forth in MPEP § 714.05 . After
 inspection, if no immediate or special action is required, the application awaits
 examination in regular order.
 

 See MPEP §
 714 for the treatment of amendments that are not in compliance
 with 37 CFR
 1.121 . 
 

 

 
 714.19 List of Amendments, Entry Denied [R-07.2022]

 The following types of amendments are ordinarily denied entry:

 
 (A) An amendment presenting an unpatentable claim, or a claim
 requiring a new search or otherwise raising a new issue in an application whose
 prosecution before the primary examiner has been closed, as where
 
 (1) All claims have been allowed,

 (2) All claims have been finally rejected (for exceptions see
 MPEP §
 714.12 , § 714.13 , and
 § 714.20 , item (D)),
 

 (3) Some claims have been allowed and the remainder finally
 rejected. See MPEP § 714.12 to § 714.14 .
 

 
 

 (B) Substitute specification that does not comply with
 37 CFR
 1.125 . See MPEP § 608.01(q) and
 § 714.20 .
 

 (C) A patent claim suggested by the examiner and not presented within
 the time limit set or an extension thereof, unless entry is authorized by the
 Director. See MPEP
 Chapter 2300 .
 

 (D) While copied patent claims are generally admitted even though the
 application is under final rejection or on appeal, under certain conditions, the
 claims may be refused entry. See MPEP Chapter 2300.
 

 (E) An unsigned or improperly signed amendment or one signed by a
 suspended or excluded attorney or agent.
 

 (F) An amendment filed in the U.S. Patent and Trademark Office after
 the expiration of the statutory period or set time period for reply and any
 extension thereof. See MPEP § 714.17 .
 

 (G) An amendment so worded that it cannot be entered with certain
 accuracy. See MPEP §
 714 , subsection II.G.
 

 (H) An amendment canceling all of the claims and presenting no
 substitute claim or claims. See 37 CFR 1.115(b)(1) ,
 MPEP §
 711.01 and § 714.01(e) .
 

 (I) An amendment after a notice of allowance has been mailed in an
 application, with certain limited exceptions. See MPEP §
 714.16 .
 

 (J) Amendments to the drawing held by the examiner to contain new
 matter are not entered until the question of new matter is settled. This practice
 of nonentry because of alleged new matter, however, does not apply in the case of
 amendments to the specification and claims. See MPEP § 608.04 et seq. 

 (K) An amendatory paper containing objectionable remarks that, in the
 opinion of the examiner, brings it within the condemnation of 37 CFR 1.3 ,
 will be submitted to the Deputy Commissioner for Patents who oversees the Office
 of Petitions. See MPEP § 714.25 and MPEP §
 1002.02(b) . If the Deputy Commissioner determines that
 the remarks are in violation of 37 CFR 1.3 , they will notify
 the applicant of the non-entry of the paper.
 

 (L) Amendments that cannot be scanned or clearly reproduced. See
 MPEP §
 714.07 .
 

 (M) An amendment presenting claims (total and independent) in excess
 of the number previously paid for and not accompanied by the full fee for the
 claims or an authorization to charge the fee to a deposit account or credit card.
 See MPEP §
 509 and § 607 . 
 

 (N) An amendment canceling all claims drawn to the elected invention
 and presenting only claims drawn to the nonelected invention should not be
 entered. Such an amendment is nonresponsive. Applicant should be notified as
 directed in MPEP
 § 714.03 and § 714.05 . See
 MPEP
 § 821.03 .
 

 (O) An amendment including changes to the specification/claims which
 is not in compliance with 37 CFR 1.121 , e.g., one which
 does not include replacement paragraphs or claim listings. See
 MPEP §
 714 .
 

 (P) A preliminary amendment that unduly interferes with the
 preparation of a first Office action. Factors to be considered in denying entry of
 the preliminary amendment are set forth in 37 CFR 1.115(b) . See
 MPEP §
 714.01(e) . 
 

 (Q) A supplemental reply is not entered as a matter of right unless it
 is filed during a suspension period under 37 CFR 1.103(a) or (c) . See
 37 CFR
 1.111(a)(2) and MPEP § 714.03(a) .
 

 
 While amendments falling within any of the foregoing categories should
 not be entered by the examiner at the time of filing, a subsequent showing by applicant
 may lead to entry of the amendment.
 

 

 
 714.20 List of Amendments Entered in Part [R-11.2013]

 To avoid confusion of the record the general rule prevails that an
 amendment should not be entered in part. At times, the strict observance of its letter
 may sometimes work more harm than would result from its infraction, especially if the
 amendment in question is received at or near the end of the period for reply. Thus:
 

 
 (A) An “amendment” presenting an unacceptable substitute specification
 along with amendatory matter, as amendments to claims or new claims, should be
 entered in part, rather than refused entry in toto . The
 substitute specification should be denied entry and so marked, while the rest of
 the paper should be entered. The application as thus amended is acted on when
 reached in its turn, the applicant being advised that the substitute specification
 has not been entered. 
 
 See 37 CFR 1.125 and
 MPEP §
 608.01(q) for information regarding the submission
 of a substitute specification.
 

 Under current practice, substitute specifications may be
 voluntarily filed by the applicant if he or she desires. A proper substitute
 specification will normally be accepted by the Office even if it has not
 been required by the examiner. However, entry of a substitute specification
 filed after the notice of allowance has been mailed ( 37 CFR
 1.312 ) is not a matter of right.
 

 
 

 (B) An amendment under 37 CFR 1.312 , which in part is
 approved and in other part disapproved, is entered only as to the approved part.
 See MPEP
 § 714.16(e) .
 

 (C) In an application in which prosecution on the merits is closed,
 i.e., after the issuance of an Ex Parte Quayle action, where an
 amendment is presented curing the noted formal defect and adding one or more
 claims some or all of which are in the opinion of the examiner not patentable, or
 will require a further search, the amendment in such a case will be entered only
 as to the formal matter. Applicant has no right to have new claims considered or
 entered at this point in the prosecution.
 

 (D) In an amendment accompanying a motion granted only in part, the
 amendment is entered only to the extent that the motion was granted.
 

 
 NOTE . The examiner writes “Enter” with the Stamper tool in Adobe Acrobat in
 the left margin opposite the enterable portions.
 

 

 
 714.21 Amendments Inadvertently Entered, No Legal Effect [R-11.2013]

 If the technical support staff inadvertently enters an amendment when it
 should not have been entered, such entry is of no legal effect, and the same action is
 taken as if the changes had not been actually made, inasmuch as they have not been
 legally made. Unless such unauthorized entry is deleted, suitable notation should be
 made on the margin of the amendatory paper, as “Not Officially Entered” with the
 typewriter tool in Adobe Acrobat. 
 

 If an amendatory paper is to be retained in the file, even though not
 entered, it should be given a paper number and listed on the file wrapper with the
 notation “Not Entered.” See 37 CFR 1.3 and MPEP § 714.25 for an
 example of a paper which may be denied entry.
 

 

 
 714.22-714.24 [Reserved]

 

 

 
 714.25 Discourtesy of Applicant or Attorney [R-07.2022]

 
 37 CFR 1.3 Business to be conducted with decorum and courtesy. 

 Applicants and their attorneys or agents are required to conduct
 their business with the United States Patent and Trademark Office with decorum and
 courtesy. Papers presented in violation of this requirement will be submitted to the
 Director and will not be entered. A notice of the non-entry of the paper will be
 provided. Complaints against examiners and other employees must be made in
 correspondence separate from other papers.
 

 

 All papers received in the U.S. Patent and Trademark Office should be
 briefly reviewed to determine whether any discourteous remarks appear therein.
 

 If the attorney or agent is discourteous in the remarks or arguments in
 their amendment or other paper submitted for entry in an application file, either the
 discourtesy should be entirely ignored or the paper should be submitted to the Deputy
 Commissioner for Patents who oversees the Office of Petitions for review. See
 MPEP §
 1002.02(b) . If the Deputy Commissioner determines that the
 remarks are in violation of 37 CFR 1.3 , the Deputy Commissioner
 will send a notice of non-entry of the paper to the applicant. At its discretion, the
 Office may also close the non-entered paper in the IFW of the application or remove the
 paper from the IFW. 
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 701-Statutory Authority for Examination 

 702-Requisites of the Application 
 702.01-Obviously Informal Cases 

 
 

 703-[Reserved] 

 704-Search and Requirements for Information 
 704.01-Search 

 704.02-704.09-[Reserved] 

 704.10-Requirements for Information 

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

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

 
 

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

 704.12(b)-What Constitutes a Complete Reply 

 704.12(c)-Treatment of an Incomplete Reply 

 
 

 704.13-Time Periods for Reply 

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

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

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

 704.14(d)-Relationship to Information Disclosure Statements 

 
 

 
 

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

 705.01(b)-Sequence of Examination 

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

 705.01(d)-[Reserved] 

 705.01(e)-Limitation as to Use 

 705.01(f)-Interviews With Applicants 

 
 

 
 

 706-Rejection of Claims 
 706.01-Contrasted With Objections 

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

 706.02(a)(2)-[Reserved] 

 
 

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

 706.02(b)(2)-[Reserved] 

 
 

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

 706.02(c)(2)-[Reserved] 

 
 

 706.02(d)-[Reserved] 

 706.02(e)-[Reserved] 

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

 706.02(f)(2)-[Reserved] 

 
 

 706.02(g)-[Reserved] 

 706.02(h)-[Reserved] 

 706.02(i)-[Reserved] 

 706.02(j)-[Reserved] 

 706.02(k)-[Reserved] 

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

 706.02(l)(2)-[Reserved] 

 706.02(l)(3)-[Reserved] 

 
 

 706.02(m)-[Reserved] 

 706.02(n)-[Reserved] 

 
 

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

 706.03(b)-[Reserved] 

 706.03(c)-[Reserved] 

 706.03(d)-[Reserved] 

 706.03(e)-[Reserved] 

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

 706.03(k)-[Reserved] 

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

 706.03(o)-[Reserved] 

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

 706.03(s)-[Reserved] 

 706.03(t)-[Reserved] 

 706.03(u)-[Reserved] 

 706.03(v)-[Reserved] 

 706.03(w)-[Reserved] 

 706.03(x)-[Reserved] 

 706.03(y)-[Reserved] 

 
 

 706.04-Rejection of Previously Allowed Claims 

 706.05-Rejection After Allowance of Application 

 706.06-Rejection of Claims Copied From Patent 

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

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

 706.07(c)-Final Rejection, Premature 

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

 706.07(e)-Withdrawal of Final Rejection, General 

 706.07(f)-Time for Reply to Final Rejection 

 706.07(g)-Transitional After-Final Practice 

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

 
 

 
 

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

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

 707.03‑707.04-[Reserved] 

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

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

 707.05(c)-Order of Listing 

 707.05(d)-Reference Cited in Subsequent Actions 

 707.05(e)-Data Used in Citing References 

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

 707.05(g)-Incorrect Citation of References 

 
 

 707.06-Citation of Decisions, Orders Memorandums, and Notices 

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

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

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

 707.07(e)-Note All Outstanding Requirements 

 707.07(f)-Answer All Material Traversed 

 707.07(g)-Piecemeal Examination 

 707.07(h)-Notify of Inaccuracies in Amendment 

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

 707.07(j)-State When Claims Are Allowable 

 707.07(k)-Numbering Paragraphs 

 707.07(l)-Comment on Examples 

 
 

 707.08-Reviewing and Initialing by Assistant Examiner 

 707.09-Signing by Primary or Other Authorized Examiner 

 707.10-Entry 

 707.11-Date 

 707.12-Mailing 

 707.13-Returned Office Action 

 
 

 708-Order of Examination 
 708.01-List of Special Cases 

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

 708.02(b)-Prioritized Examination 

 708.02(c)-Patent Prosecution Highway Program 

 
 

 708.03-Examiner Tenders Resignation 

 
 

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

 
 

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

 
 

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

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

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

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

 710.02(e)-Extension of Time 

 
 

 710.03-[Reserved] 

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

 
 

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

 710.06-Situations When Reply Period Is Reset or Restarted 

 
 

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

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

 711.02(b)-Special Situations Involving Abandonment 

 711.02(c)-Termination of Proceedings 

 
 

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

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

 711.03(c)-Petitions Relating to Abandonment 

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

 
 

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

 711.04(b)-Ordering of Patented and Abandoned Files 

 711.04(c)-Notifying Applicants of Abandonment 

 
 

 711.05-Letter of Abandonment Received After Application Is Allowed 

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

 
 

 
 

 712-[Reserved] 

 713-Interviews 
 713.01-General Policy, How Conducted 

 713.02-Interviews Prior to First Official Action 

 713.03-Interview for “Sounding Out” Examiner Not Permitted 

 713.04-Substance of Interview Must Be Made of Record 

 713.05-Interviews Prohibited or Granted, Special Situations 

 713.06-No Inter Partes Questions Discussed Ex Parte 

 713.07-Exposure of Other Cases 

 713.08-Demonstration, Exhibits, Models 

 713.09-Interviews Between Final Rejection and Notice of Appeal 

 713.10-Interview Preceding Filing Amendment Under 37 CFR 1.312 

 
 

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

 714.01(b)-[Reserved] 

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

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

 714.01(e)-Amendments Before First Office Action 

 
 

 714.02-Must Be Fully Responsive 

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

 
 

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

 714.05-Examiner Should Immediately Review 

 714.06-[Reserved] 

 714.07-Amendments Not in Permanent Ink 

 714.08-714.09-[Reserved] 

 714.10-Claims Added in Excess of Claims Previously Paid For 

 714.11-Amendment Filed During Interference Proceedings 

 714.12-Amendments and Other Replies After Final Rejection or Action 

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

 714.14-Amendments After Allowance of All Claims 

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

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

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

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

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

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

 
 

 714.17-Amendment Filed After the Period for Reply Has Expired 

 714.18-Entry of Amendments 

 714.19-List of Amendments, Entry Denied 

 714.20-List of Amendments Entered in Part 

 714.21-Amendments Inadvertently Entered, No Legal Effect 

 714.22-714.24-[Reserved] 

 714.25-Discourtesy of Applicant or Attorney 

 
 

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

 715.01(b)-Reference and Application Have Common Assignee 

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

 715.01(d)-Activities Applied Against the Claims 

 
 

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

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

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

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

 715.06-[Reserved] 

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

 715.07(b)-Interference Testimony Sometimes Used 

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

 715.07(d)-Disposition of Exhibits 

 
 

 715.08-Decided by Primary Examiner 

 715.09-Timely Presentation 

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

 
 

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

 716.01(b)-Nexus Requirement and Evidence of Nonobviousness 

 716.01(c)-Probative Value of Objective Evidence 

 716.01(d)-Weighing Objective Evidence 

 
 

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

 716.02(b)-Burden on Applicant 

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

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

 716.02(e)-Comparison With Closest Prior Art 

 716.02(f)-Advantages Disclosed or Inherent 

 716.02(g)-[Reserved] 

 
 

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

 716.03(b)-Commercial Success Derived From Claimed Invention 

 
 

 716.04-Long-Felt Need and Failure of Others 

 716.05-Skepticism of Experts 

 716.06-Copying 

 716.07-Inoperability of References 

 716.08-Utility and Operability of Applicant’s Disclosure 

 716.09-Sufficiency of Disclosure 

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

 
 

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

 
 

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

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

 
 

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

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

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

 717.01(f) -Seasonable (or Timely) Presentation 

 
 

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

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

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

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

 
 

 
 

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

 719-File Wrapper 
 719.01-Papers in Image File Wrapper 

 719.02-Residence of Inventor Changed 

 719.03-Classification During Examination 

 719.04-Index of Claims 

 719.05-Field of Search 

 
 

 720-Public Use Proceedings 

 721‑723-[Reserved] 

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

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

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

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

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

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

 
 

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

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

 
 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:44