Examination of Applications & Proceedings in the Patent & Trademark Office
Applications, 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 are filed.
Office Action
The 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's Reply
The 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.
Final Rejection
On 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.
Restrictions
If 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 the examiner.
