MPEP § 707.07(i) — Each Claim To Be Mentioned in Each Office Action (Annotated Rules)
§707.07(i) Each Claim To Be Mentioned in Each Office Action
This page consolidates and annotates all enforceable requirements under MPEP § 707.07(i), 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.
Each Claim To Be Mentioned in Each Office Action
This section addresses Each Claim To Be Mentioned in Each Office Action. Primary authority: 37 CFR 1.142), 37 CFR 1.146), and 37 CFR 1.142. Contains: 5 guidance statements and 1 other statement.
Key Rules
Examiner's Action (37 CFR 1.104)
When the application includes multiple dependent claims, treat each version of the multiple dependent claim separately in the Office action. See MPEP § 608.01(n), subsection I.F and Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234, Paper 42 (Feb. 24, 2023).
In every Office action, each pending claim should be mentioned by number, and its treatment or status given. Since a claim retains its original numeral throughout the prosecution of the application, its history through successive actions is thus easily traceable. Each action should include a summary of the status of all claims presented for examination. Form PTO-326 “Office Action Summary” should be used.
In every Office action, each pending claim should be mentioned by number, and its treatment or status given. Since a claim retains its original numeral throughout the prosecution of the application, its history through successive actions is thus easily traceable. Each action should include a summary of the status of all claims presented for examination. Form PTO-326 “Office Action Summary” should be used.
Complete Action Requirement
The Index of Claims should be kept up to date as set forth in MPEP § 719.04.
In every Office action, each pending claim should be mentioned by number, and its treatment or status given. Since a claim retains its original numeral throughout the prosecution of the application, its history through successive actions is thus easily traceable. Each action should include a summary of the status of all claims presented for examination. Form PTO-326 “Office Action Summary” should be used.
In every Office action, each pending claim should be mentioned by number, and its treatment or status given. Since a claim retains its original numeral throughout the prosecution of the application, its history through successive actions is thus easily traceable. Each action should include a summary of the status of all claims presented for examination. Form PTO-326 “Office Action Summary” should be used.
Election of Species
Claims retained after a restriction requirement (37 CFR 1.142) or election of species requirement (37 CFR 1.146) should be treated as set out in MPEP §§ 821 to 821.04(b).
Citations
| Primary topic | Citation |
|---|---|
| Election of Species | 37 CFR § 1.142 |
| Election of Species | 37 CFR § 1.146 |
| Examiner's Action (37 CFR 1.104) | MPEP § 608.01(n) |
| Complete Action Requirement | MPEP § 719.04 |
| Election of Species | MPEP § 821 |
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 § 707.07(i) — Each Claim To Be Mentioned in Each Office Action
Source: USPTO707.07(i) Each Claim To Be Mentioned in Each Office Action [R-01.2024]
In every Office action, each pending claim should be mentioned by number, and its treatment or status given. Since a claim retains its original numeral throughout the prosecution of the application, its history through successive actions is thus easily traceable. Each action should include a summary of the status of all claims presented for examination. Form PTO-326 “Office Action Summary” should be used.
Claims retained after a restriction requirement (37 CFR 1.142) or election of species requirement (37 CFR 1.146) should be treated as set out in MPEP §§ 821 to 821.04(b).
When the application includes multiple dependent claims, treat each version of the multiple dependent claim separately in the Office action. See MPEP § 608.01(n), subsection I.F and Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234, Paper 42 (Feb. 24, 2023).
See MPEP Chapter 2300 for treatment of claims in the application of losing party in interference.
The Index of Claims should be kept up to date as set forth in MPEP § 719.04.