MPEP § 706.04 — Rejection of Previously Allowed Claims (Annotated Rules)
§706.04 Rejection of Previously Allowed Claims
This page consolidates and annotates all enforceable requirements under MPEP § 706.04, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Rejection of Previously Allowed Claims
This section addresses Rejection of Previously Allowed Claims. Contains: 1 requirement, 1 guidance statement, and 1 permission.
Key Rules
Examiner Signature Authority
A claim noted as allowable may be rejected only after a primary examiner has considered all the facts. An Office action rejecting a previously allowed claim must be signed by a primary examiner. See MPEP § 1004.
A claim noted as allowable may be rejected only after a primary examiner has considered all the facts. An Office action rejecting a previously allowed claim must be signed by a primary examiner. See MPEP § 1004.
Signature Requirements
2. Any action including this form paragraph requires the signature of a Primary Examiner. MPEP § 1004.
2. Any action including this form paragraph requires the signature of a Primary Examiner. MPEP § 1004.
Form Paragraph Usage
Because it is unusual to reject a previously allowed claim, the examiner should point out in the office action that the claim now being rejected was previously allowed by using Form Paragraph 7.50.
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
The indicated allowability of claim [1] is withdrawn in view of the newly discovered reference(s) to [2] . Rejection(s) based on the newly cited reference(s) follow.
Citations
| Primary topic | Citation |
|---|---|
| Examiner Signature Authority Signature Requirements | MPEP § 1004 |
| – | MPEP § 904.02 |
| Form Paragraph Usage | Form Paragraph § 7.50 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 706.04 — Rejection of Previously Allowed Claims
Source: USPTO706.04 Rejection of Previously Allowed Claims [R-01.2024]
A claim noted as allowable may be rejected only after a primary examiner has considered all the facts. An Office action rejecting a previously allowed claim must be signed by a primary examiner. See MPEP § 1004.
Great care should be exercised in making such a rejection.
PREVIOUS ACTION BY DIFFERENT EXAMINERWhen an examiner is assigned to act on an application which has received one or more actions by some other examiner, the examiner should review the previous search to ensure it is thorough and complete. See MPEP § 904.02. In general, an examiner should not take an entirely new approach or attempt to reorient the point of view of a previous examiner, or make a new search in the mere hope of finding something. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 126 F. Supp. 2d 69, 139, 57 USPQ2d 1449, 1499-50 (D. Mass. 2001).
Because it is unusual to reject a previously allowed claim, the examiner should point out in the office action that the claim now being rejected was previously allowed by using Form Paragraph 7.50.
¶ 7.50 Claims Previously Allowed, Now Rejected, New Art
The indicated allowability of claim [1] is withdrawn in view of the newly discovered reference(s) to [2]. Rejection(s) based on the newly cited reference(s) follow.
Examiner Note:
- 1. In bracket 2, insert the name(s) of the newly discovered reference.
- 2. Any action including this form paragraph requires the signature of a Primary Examiner. MPEP § 1004.