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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, 7.41, 7.41.03, and 7.42.09. Form paragraph 7.39 appears in MPEP § 706.07. Form paragraphs 7.40 and 7.40.01 appear in MPEP § 706.07(a). Form paragraphs 7.41, 7.41.03, and 7.42.09 appear in MPEP § 706.07(b).
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.
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(c) is expected in all amendments after final rejection. 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.
Further examination of the application may be obtained by filing a continued prosecution application (CPA) under 37 CFR 1.53(d), if appropriate. See MPEP § 201.06(d). CPA practice does not apply to utility or plant applications if the prior application has a filing date on or after May 29, 2000. See MPEP § 706.07(h), paragraphs I and IV.
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 § 1207 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).
Applicant may submit an amendment under 37 CFR 1.116 by presenting a clean set of all pending claims in one paper. 37 CFR 1.121(c)(3) provides for the optional submission by applicant of a clean version (with no markings) of all of the pending claims in one amendment paper. Applicants may wish to consolidate all previous versions of pending claims from a series of separate amendment papers into a single clean version in a single amendment paper. Providing this consolidation of claims in the file will be beneficial to both the Office and the applicant. When rewriting a claim in the clean set, the parenthetical expression, if any, identifying the version of the previous amendment of the claim to be rewritten, should not be repeated in the clean set. If no changes are being made in the amendment presenting the clean set, the paper should be entered. If, however, the amendment includes claims being amended (and is accompanied by a marked-up version showing the changes), the examiner may choose not to enter the amendment in view of matters relating to the provisions of 37 CFR 1.116.
See also MPEP § 706.07(f).
In the event that the 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. 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 O.G. 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 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. An examiner is expected to turn in a response to an amendment after final rejection within 10 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 PTOL-413>B< 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 § 1207 for appeal and post-appeal procedure. For after final rejection practice relative to affidavits or declarations filed under 37 CFR 1.131 and 1.132, see MPEP § 715.09 and § 716.
Form paragraphs 7.67-7.80 are to be used when issuing advisory actions after a final rejection.
**>The period for reply [1] to run [2] MONTHS from the mailing date of the final rejection. Any extension of time must be obtained by filing a petition under 37 CFR 1.136(a) accompanied by the appropriate fee. The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. A reply within the meaning of 37 CFR 1.113 or a request for continued examination (RCE) in compliance with 37 CFR 1.114 must be timely filed to avoid abandonment of this application.
1. This form paragraph should appear as a heading in all advisory actions prior to appeal. After appeal, use form paragraph 7.68.
2. In bracket 1, insert --continues-- if applicant has not submitted a petition for an extension of time along with the appropriate fee under 37 CFR 1.136. If a proper extension has been requested under 37 CFR 1.136, insert --is extended-- in bracket 1.
3. In bracket 2, insert the full statutory period resulting from any extensions of time which have been granted, e.g., --FOUR-- months.
4. DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION PROCEEDINGS.
5. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable.
The shortened statutory period for reply expires THREE MONTHS from the mailing date of the final rejection or as of the mailing date of this advisory action, whichever is later. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection.
Any extension fee required pursuant to 37 CFR 1.17 will be calculated from the date that the shortened statutory period for reply expires as set forth above.
1. This form paragraph should be used in all advisory actions if:
it was the FIRST reply to the to the final rejection, and
it was filed within two months of the date of the final rejection.
2. If a notice of appeal has been filed, also use form paragraph 7.68.
3. DO NOT USE THIS FORM PARAGRAPH FOR REEXAMINATION PROCEEDINGS.
4. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable.
Since the first reply to the final Office action was filed within TWO MONTHS of the mailing date of that action and the advisory action was not mailed within THREE MONTHS of that date, the THREE-MONTH shortened statutory period for reply set in the final Office action is hereby vacated and reset to expire as of the mailing date of this advisory action. See Notice entitled "Procedure for Handling Amendments Under 37 CFR 1.116," published in the Official Gazette at 1027 O.G. 71, February 8, 1983. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final Office action.
Any extension fee required pursuant to 37 CFR 1.17 will be calculated from the mailing date of the advisory action.
1. This form paragraph should be used in all advisory actions where:
the reply is a first reply to the final action;
the reply was filed within two months of the mailing date of the final; and
the final action failed to inform applicant of a variable SSP beyond the normal three month period, as is set forth in form paragraphs 7.39 to 7.41.
2. If the final action set a variable SSP, do not use this form paragraph, use form paragraph 7.67.01 instead.
3. If a notice of appeal has been filed, also use form paragraph 7.68.
4. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable.
An appeal under 37 CFR 1.191 was filed in this application on [1]. Appellant"s brief is due on [2] in accordance with 37 CFR 1.192(a).
1. This paragraph must precede paragraph 7.70 if the amendment is entered.
2. This paragraph must precede paragraph 7.71 if the amendment is not entered.
The amendment filed [1] under 37 CFR 1.116 in reply to the final rejection will be entered upon the filing of an appeal, but is not deemed to place the application in condition for allowance. Upon the filing of an appeal and entry of the amendment, the status of the claims would be as follows:
Allowed claim(s): [2]
Rejected claim(s): [3]
Claim(s) objected to: [4]
1. This paragraph must be preceded by paragraph 7.67, 7.67.01 or 7.67.02.
2. In brackets 2-4 indicate the status of all claims.
3. Whenever an amendment is entered for appeal purposes, you must follow the last paragraph above with form paragraph 7.69.01 or other language to indicate how the new or amended claim(s) would be rejected (whether the rejections are exactly the same as in the final Office action or there is a shift to one or more different individual grounds of rejection in the final Office action). This may be done by using form paragraph 7.69.01 for each group of claims subject to the same rejection.
See 37 CFR 1.193(a)(2) which provides for the inclusion of the proposed rejection(s) detailed below in the Examiner's Answer if applicant elects to file an appeal to the Board of Patent Appeals and Interferences in this proceeding. To be complete, such rejection(s) must be addressed in any brief on appeal.
Upon appeal and entry of the amendment:
Claim(s) [1] would be rejected for the reasons set forth in [2] of the final Office action mailed [3].
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. A statement of reasons for allowance, or other appropriate information may be added if necessitated by entry of the amendment.
The amendment filed [1] under 37 CFR 1.116 in reply to the final rejection has been entered, but is not deemed to place the application in condition for allowance. For purposes of appeal, the status of the claims is as follows:
Allowed claim(s): [2]
Rejected claim(s): [3]
Claim(s) objected to: [4]
1. This paragraph must be preceded by paragraph 7.68.
2. In brackets 2-4 indicate the status of all pending claims.
3. Whenever an amendment is entered for appeal purposes, you must follow the last paragraph above with form paragraph 7.70.01 or other language to indicate how the new or amended claim(s) would be rejected (whether the rejections are exactly the same as in the final Office action or there is a shift to one or more different individual grounds of rejection in the final Office action). This may be done by using form paragraph 7.70.01 for each group of claims subject to the same rejection.
4. A statement of reasons for allowance, or other appropriate information may be added if necessitated by entry of the amendment.
See 37 CFR 1.193(a)(2) which provides for the inclusion of the proposed rejection(s) detailed below in the Examiner's Answer if applicant elects to file an appeal to the Board of Patent Appeals and Interferences in this proceeding. To be complete, such rejection(s) must be addressed in any brief on appeal.
Claim(s) [1] would be rejected for the reasons set forth in [2] of the final Office action mailed [3].
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. A statement of reasons for allowance, or other appropriate information may be added if necessitated by entry of the amendment.
The amendment filed [1] under 37 CFR 1.116 in reply to the final rejection has been considered but is not deemed to place the application in condition for allowance and will not be entered because:
1. This paragraph must be preceded by paragraph 7.67, 7.67.01 or 7.67.02 if an appeal has not been taken, or by paragraph 7.68 if an appeal has been taken.
2. If it is not known whether a notice of appeal has been filed and the full six month period has expired, do not use paragraphs 7.67, 7.67.01, 7.67.02 or 7.68; use instead the following: "If an appeal under 37 CFR 1.191 has not been properly filed, this application is abandoned."
3. One or more of the appropriate paragraphs 7.72 to 7.76 must directly follow this paragraph.
The amendment filed [1] under 37 CFR 1.116 will not be entered. Applicant's consolidation of all the claims in the application into a single paper would be entered if not presented with claim [2]. Although 37 CFR 1.121(c)(3) permits applicant to submit a clean copy of all of the claims in the application in a single paper, the inclusion of claim [3] raises new issues under 37 CFR 1.116. Thus, the entire paper is denied entry.
1. This paragraph must be preceded by either paragraph 7.67, 7.67.01, 7.67.02 or 7.68.
2. In bracket 1, insert date of receipt of amendment.
3. In brackets 2 and 3, insert number of any claim which raises new issues. An explanation should follow bracket 2.
There is no convincing showing under 37 CFR 1.116(b) why the proposed amendment is necessary and was not earlier presented.
1. Paragraph 7.71 must precede this paragraph.
2. Do not use this paragraph as the sole reason for refusing entry of the amendment unless the situation is aggravated, in which case a full explanation is necessary.
3. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable and only if not used in previous action.
The proposed amendment raises new issues that would require further consideration and/or search.
1. This paragraph must be preceded by paragraph 7.71.
2. The new issues including questions of new matter must be clearly identified following this form paragraph. (Examples are sufficient if the new issues are extensive.)
3. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable and only if not used in previous action.
The proposed amendment is not deemed to place the application in better form for appeal by materially simplifying the issues for appeal.
1. This paragraph must be preceded by paragraph 7.71.
2. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable and only if not used in a previous action.
The proposed amendment presents additional claims without canceling a corresponding number of finally rejected claims.
1. This paragraph must be preceded by paragraph 7.71.
2. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable and only if not used in a previous action.
Claim [1] as proposed would be allowable if submitted in a separately filed amendment canceling all non-allowed claims.
1. This paragraph must be preceded by paragraph 7.71.
2. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable and only if not used in a previous action.
The [1] has been entered and considered but does not overcome the rejection because [2].
1. This paragraph must be preceded by either paragraph 7.67, 7.67.01, 7.67.02 or 7.68.
2. In bracket 1, insert --affidavit--,--declaration--, --exhibit--, or --request for reconsideration--.
3. An explanation should be provided in bracket 2.
4. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable and only if not used in a previous action.
The [1] will not be considered because good and sufficient reasons why it was not earlier presented have not been shown. [2]
1. This paragraph must be preceded by either paragraph 7.67, 7.67.01, 7.67.02 or 7.68.
2. In bracket 1, insert --affidavit--, --declaration--, --exhibit--, or --request for reconsideration--.
3. An explanation should follow in bracket 2.
4. Follow with form paragraph 7.41.01 if transitional provisions of 37 CFR 1.129(a) are applicable and only if not used in a previous action.
Any paper which relates to a pending application may be personally delivered to a Technology Center (TC). However, the TC will accept the paper only if: (1) the paper is accompanied by some form of receipt which can be handed back to the person delivering the paper; and (2) the examining group being asked to receive the paper is responsible for acting on the paper.
The receipt may take the form of a card identifying the paper. The identifying data on the card should be so complete as to leave no uncertainty as to the paper filed. For example, the card should contain the applicant's name(s), application number, filing date, and a description of the paper being filed. If more than one paper is being filed for the same application, the card should contain a description of each paper or item.
Under this procedure, the paper and receipt will be date stamped with the TC date stamp. The receipt will be handed back to the person hand delivering the paper. The paper will be correlated with the application and made an official paper in the file, thereby avoiding the necessity of processing and forwarding the paper to the TC via the Mail Center.
The TC will accept and date stamp a paper even though the paper is accompanied by a check or the paper contains an authorization to charge a Deposit Account or a credit card. See MPEP § 509. However, in such an instance, the paper will be hand carried by TC personnel to the Office of Finance for processing and then made an official paper in the file.
All such papers, together with the cash, checks, or money orders, shall be hand-carried to the Customer Service window, Crystal Plaza Building 2, Room 1B01.
The papers shall be processed by the accounting clerk, Office of Finance, for pickup at the Customer Service window by 3:00 p.m. the following work day. Upon return to the TC, the papers will be entered in the application file wrappers.
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. In order for an applicant to take advantage of the expedited procedure the amendment or other reply under 37 CFR 1.116 will have to 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 marked "Box AF" in the lower left hand corner. The markings preferably should be written in a bright color with a felt point marker. If the reply is mailed to the Office, the envelope should contain only replies under 37 CFR 1.116 and should be mailed to "Box AF, Assistant Commissioner for Patents, Washington, D.C. 20231." Instead of mailing the envelope to "Box AF" as noted above, the reply may be hand-carried to the particular TC or other area of the Office in which the application is pending and marked on the outside envelope "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 "Box AF," the envelope will be specially processed by the Mail Center and forwarded promptly to the examining TC, via the Office of Finance if any fees have to be charged or otherwise processed. 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 his or her consideration of the reply, the examiner's action will be promptly typed and mailed by technical support staff 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.
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