of applications & proceedings in the patent & trademark office
other than provisional applications, filed in the Patent and Trademark
Office and accepted as complete applications are assigned for examination
to the respective examining groups having charge of the areas of technology
related to the invention. In the examining group, applications are taken
up for examination by the examiner to whom they have been assigned in
the order in which they have been filed or in accordance with examining
procedures established by the Commissioner.
Applications will not be advanced out of turn for examination or for
further action except as provided by the rules, or upon order of the
Commissioner to expedite the business of the Office, or upon a showing
which, in the opinion of the Commissioner, will justify advancing them.
The examination of the application consists of a study of the application
for compliance with the legal requirements and a search through United
States patents, foreign patent documents, and available literature,
to see if the claimed invention is new, useful and nonobvious and if
the application meets the requirements of the patent statute and rules
of practice. A decision is reached by the examiner in the light of the
study and the result of the search.
As a result of the examination by the Office, patents are granted in
the case of about two out of every three applications for patents which
applicant is notified in writing of the examiner's decision by an "action"
which is normally mailed to the attorney
or agent of record. The reasons for any adverse action or any objection
or requirement are stated in the action and such information or references
are given as may be useful in aiding the applicant to judge the propriety
of continuing the prosecution of his/her application.
If the claimed invention is not directed to patentable subject matter,
the claims will be rejected. If the examiner finds that the claimed
invention lacks novelty or differs only in an obvious manner from what
is found in the prior art, the claims may also be rejected. It is not
uncommon for some or all of the claims to be rejected on the first office
action by the examiner, relatively few applications are allowed as filed.
applicant must request reconsideration in writing, and must distinctly
and specifically point out the supposed errors in the examiner's action.
The applicant must reply to every ground of objection and rejection
in the prior Office action (except that 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 reply must appear throughout to be a bona fide attempt
to advance the case to final action. The mere allegation that the examiner
has erred will not be received as a proper reason for such reconsideration.
In amending an application in reply to a rejection, the applicant must
clearly point out why he/she thinks the amended claims are patentable
in view of the state of the art disclosed by the prior references cited
or the objections made. He/she must also show how the claims as amended
avoid such references or objections. After reply by the applicant, the
application will be reconsidered, and the applicant will be notified
as to the status of the claims, that is, whether the claims are rejected,
or objected to, or whether the claims are allowed, in the same manner
as after the first examination. The second Office action usually will
be made final.
the second or later consideration, the rejection or other action may
be made final. The applicant's reply is then limited to appeal in the
case of rejection of any claim and further amendment is restricted.
Petition may be taken to the Commissioner in the case of objections
or requirements not involved in the rejection of any claim. Reply to
a final rejection or action must include cancellation of, or appeal
from the rejection of, each claim so rejected and, if any claim stands
allowed, compliance with any requirement or objection as to form. In
making such final rejection, the examiner repeats or states all grounds
of rejection then considered applicable to the claims in the application.
Interviews with examiners may be arranged, but an interview does not
remove the necessity for reply to Office actions within the required
time, and the action of the Office is based solely on the written record.
two or more inventions are claimed in a single application, and are
regarded by the Office to be of such a nature that a single patent should
not be issued for both of them, the applicant will be required to limit
the application to one of the inventions. The other invention may be
made the subject of a separate application which, if filed while the
first application is still pending, will be entitled to the benefit
of the filing date of the first application. A requirement to restrict
the application to one invention may be made before further action by