MPEP 700

Examination of Applications

Brief Summary:

Learn about the many aspects of the examination process including; appropriate replies to a first Office action, second Office action and final rejections. Rejections are commonly made under 35 U.S.C. 101, 102 and 103. These laws are very intricate as are the procedures for overcoming the rejections. Swearing back and making amendments are possibilities for overcoming rejections. Both of these options are discussed in great detail.

Several petitions are available related to the examination process. These include a petition to make special that can be used to speed up the examination process if the application meets specific criteria.

If an applicant needs more time to reply to an Office action there is a petition to file for an extension of time as well as one for reviving an application that was abandoned due to missing a deadline.

In addition, a few miscellaneous topics are touched upon here also, such as requests for suspension of action, requests for continuing examination (RCE), interviews, and amendments.

Key Terms:

AbandonmentAbandonment refers to the intentional relinquishment of a patent application or patent rights, often due to failure to respond to office actions or pay required fees.
AmendmentsAmendments refer to changes made to a patent application or its claims during the examination process to address issues raised by the patent office, such as clarifying language or narrowing the scope of the claims.
InterviewsInterviews are discussions between the patent applicant (or their representative) and the patent examiner to clarify issues, negotiate claim language, and expedite the examination process.
ProsecutionProsecution refers to the process of negotiating with the patent office to obtain a patent, including the preparation, filing, and examination of a patent application.
RejectionsRejections are official notifications from the patent office indicating that a patent application does not meet certain legal requirements, often requiring the applicant to amend claims or provide arguments to overcome the objections.

37 CFR (Code of Federal Regulations):

37 CFR 1.136 – Extensions of time.
37 CFR 1.136 provides guidelines for extending the time period to respond to actions by the United States Patent and Trademark Office, detailing automatic and petition-based extensions.
37 CFR 1.114 – Request for continued examination.
37 CFR 1.114 allows applicants to request continued examination of a patent application after prosecution is closed, enabling further consideration of the application with additional fees.

35 USC (United States Code):

35 USC 101 – Inventions patentable.
35 USC 101 defines the types of inventions eligible for patents, stating that any new and useful process, machine, manufacture, or composition of matter can be patented.
35 USC 132 – Notice of rejection; reexamination.
35 USC 132 requires the United States Patent and Trademark Office to notify applicants of any patent application rejections, providing reasons for the rejection and allowing applicants to amend their applications or request reexamination.

Quick Statistics:

Number of Pages:  310
Sections:  701 – 724

List of Sections:

701Statutory Authority for Examination
702Requisites of the Application
 702.01 Obviously Informal Cases
703[Reserved]
704Search 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
705Patentability 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
706Rejection 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
707Examiner’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
708Order 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
709Suspension of Action
 709.01 Overlapping Applications by Same Applicant or Owned by Same Assignee
710Period 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
711Abandonment 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]
713Interviews
 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
714Amendments, 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
715Swearing 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
716Affidavits 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
717Prior 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)
718Affidavit or Declaration to Disqualify Commonly Owned Patent as Prior Art, 37 CFR 1.131(c)
719File 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
720Public Use Proceedings
721 – 723[Reserved]
724Trade 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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