MPEP § 714.02 — Must Be Fully Responsive (Annotated Rules)

§714.02 Must Be Fully Responsive

USPTO MPEP version: BlueIron's Update: 2026-01-17

This page consolidates and annotates all enforceable requirements under MPEP § 714.02, 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.

Must Be Fully Responsive

This section addresses Must Be Fully Responsive. Primary authority: 37 CFR 1.111, 37 CFR 1.121(c), and 37 CFR 1.111(b). Contains: 2 requirements, 1 prohibition, 1 guidance statement, 1 permission, and 1 other statement.

Key Rules

Topic

Non-Final Office Action

6 rules
StatutoryInformativeAlways
[mpep-714-02-b32a946018ef1a8e628e8172]
Claims Must Distinctively Patentably Distinguish Over References
Note:
The reply must distinctly and specifically point out how the claims patentably distinguish from the references to be considered responsive.

(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, 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 or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.

Jump to MPEP Source · 37 CFR 1.111Non-Final Office ActionNon-Final Action ContentFirst Office Action on Merits
StatutoryRequiredAlways
[mpep-714-02-23d40f8b32402b41df549cec]
Amendments Must Avoid Cited References
Note:
The applicant or patent owner must show how the amendments in response to a rejection address and overcome the cited references or objections.

(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.

Jump to MPEP Source · 37 CFR 1.111Non-Final Office ActionNon-Final Action ContentTypes of Office Actions
StatutoryPermittedAlways
[mpep-714-02-be6b1fb04ab2ac3d47fbab5a]
Claims May Be Amended as Permitted
Note:
The claims can be modified by canceling, adding new ones, or rewriting existing ones in compliance with 37 CFR 1.121(c) and the requirements of 37 CFR 1.111(b).

The claims may be amended by canceling particular claims, by presenting new claims, or by rewriting particular claims as indicated in 37 CFR 1.121(c). The requirements of 37 CFR 1.111(b) must be complied with by pointing out the specific distinctions believed to render the claims patentable over the references in presenting arguments in support of new claims and amendments.

Jump to MPEP Source · 37 CFR 1.121(c)Non-Final Office ActionNon-Final Action ContentTypes of Office Actions
StatutoryInformativeAlways
[mpep-714-02-e3d3bdce9d4b947aa4758ddf]
Replies Must Address Objections and Support Amendments
Note:
Applicants must respond to examiner objections and rejections, and provide support for any claim amendments.

The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06.

Jump to MPEP Source · 37 CFR 1.111Non-Final Office ActionNon-Final Action ContentTypes of Office Actions
StatutoryRecommendedAlways
[mpep-714-02-10acbd6aac2655814e293121]
Support for Amendments Must Be Pointed Out
Note:
Applicants must specifically indicate the support in the disclosure for any amendments made to claims.

The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06.

Jump to MPEP Source · 37 CFR 1.111Non-Final Office ActionNon-Final Action ContentTypes of Office Actions
StatutoryInformativeAlways
[mpep-714-02-0c5e7afc48aa132c4c5cd17c]
Requirement for Restricting Non-Final Action
Note:
The reply to a non-final Office action must address the requirement to restrict claims as per MPEP § 818.

Replies to requirements to restrict are treated under MPEP § 818.

Jump to MPEP Source · 37 CFR 1.111Non-Final Office ActionNon-Final Action ContentTypes of Office Actions
Topic

Types of Office Actions

2 rules
StatutoryRequiredAlways
[mpep-714-02-5c7b99928633a8b01fbc7330]
Requirement for Responding to Examiner's Actions
Note:
The applicant or patent owner must reply in writing, addressing all objections and rejections, to be eligible for reconsideration or further examination.

(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, 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 or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.

Jump to MPEP Source · 37 CFR 1.111Types of Office ActionsExamination in ReexaminationReexamination Order
StatutoryInformativeAlways
[mpep-714-02-954ea5bf3b42f7dc6db196ea]
Amendments Must Be Responsive After Non-Final Action
Note:
Amendments submitted after a non-final action must be responsive even if they increase the number of claims.

An amendment submitted after a second or subsequent non-final action on the merits which is otherwise responsive but which increases the number of claims drawn to the invention previously acted upon is not to be held not fully responsive for that reason alone. (See 37 CFR 1.112, MPEP § 706.)

Jump to MPEP Source · 37 CFR 1.112Types of Office ActionsExaminer's Action (37 CFR 1.104)Office Actions and Responses
Topic

Non-Final Action Content

2 rules
StatutoryRequiredAlways
[mpep-714-02-85f1af88761bc60990d3090a]
Reply Must Address All Objections and Rejections
Note:
The applicant or patent owner must respond in writing, specifically pointing out errors in the examiner’s action and addressing every ground of objection and rejection from the prior Office action.

(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, 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 or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.

Jump to MPEP Source · 37 CFR 1.111Non-Final Action ContentTypes of Office ActionsRejection vs. Objection
StatutoryProhibitedAlways
[mpep-714-02-3805de19c027312fc203e7b1]
Drawing and Specification Corrections Must Be Filed Promptly
Note:
Applicant must promptly file drawing corrections in response to objections, even if they are considered formal matters. The determination of the application's merits may require such corrections before any indication of allowable subject matter.

Drawing and specification corrections, presentation of a new oath and the like are generally considered as formal matters, although the filing of drawing corrections in reply to an objection to the drawings cannot normally be held in abeyance. However, the line between formal matter and those touching the merits is not sharp, and the determination of the merits of an application may require that such corrections, new oath, etc., be insisted upon prior to any indication of allowable subject matter.

Jump to MPEP Source · 37 CFR 1.111Non-Final Action ContentStatement of Reasons for AllowanceReasons for Allowance
Topic

Office Actions and Responses

2 rules
StatutoryRequiredAlways
[mpep-714-02-a713ffa0b544091217f25241]
Reply Must Point Out Distinctive Features of Claims
Note:
The reply must distinctly and specifically point out the supposed errors in the examiner’s action and address every ground of objection or rejection, highlighting how claims are patentable over references.

(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, 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 or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.

Jump to MPEP Source · 37 CFR 1.111Office Actions and ResponsesNon-Final Office ActionNon-Final Action Content
StatutoryRequiredAlways
[mpep-714-02-d87a4613fb913156dd263197]
Requirements for Amending Claims Over References
Note:
The rule requires pointing out specific distinctions in new claims and amendments to show they are patentable over the references.

The claims may be amended by canceling particular claims, by presenting new claims, or by rewriting particular claims as indicated in 37 CFR 1.121(c). The requirements of 37 CFR 1.111(b) must be complied with by pointing out the specific distinctions believed to render the claims patentable over the references in presenting arguments in support of new claims and amendments.

Jump to MPEP Source · 37 CFR 1.121(c)Office Actions and ResponsesNon-Final Office ActionNon-Final Action Content
Topic

Final Office Action

2 rules
StatutoryRequiredAlways
[mpep-714-02-ccc3f6d65af5da9b3095263b]
Reply Must Advance Application to Final Action
Note:
The applicant’s reply must clearly address the examiner's objections and distinguish the claims from prior art, showing a genuine attempt to advance the application or reexamination.

(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, 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 or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.

Jump to MPEP Source · 37 CFR 1.111Final Office ActionFinal Rejection in ReexaminationTypes of Office Actions
StatutoryInformativeAlways
[mpep-714-02-78c46b0b20f1d82305ea31fd]
Amendment After Non-Final Action Can Add Claims
Note:
An amendment submitted after a non-final action can add claims as long as it is otherwise responsive.

An amendment submitted after a second or subsequent non-final action on the merits which is otherwise responsive but which increases the number of claims drawn to the invention previously acted upon is not to be held not fully responsive for that reason alone. (See 37 CFR 1.112, MPEP § 706.)

Jump to MPEP Source · 37 CFR 1.112Final Office ActionNon-Final Office ActionFirst Action on Merits
Topic

Statement of Reasons for Allowance

1 rules
StatutoryPermittedAlways
[mpep-714-02-63c6f5afdb90a0bf10845e17]
Objections to Form Can Be Deferred Until Allowable Subject Matter is Indicated
Note:
An applicant may request that objections or form requirements be temporarily set aside until allowable subject matter is identified in the reply to an Office action.

(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, 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 or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.

Jump to MPEP Source · 37 CFR 1.111Statement of Reasons for AllowanceRejection vs. ObjectionReasons for Allowance
Topic

Combining Multiple References

1 rules
StatutoryRequiredAlways
[mpep-714-02-f77d67896b4cb5154f94f00d]
Claim Amendments Must Show Patentable Novelty
Note:
The applicant must clearly demonstrate how the amended claims present patentable novelty in response to rejections, addressing cited references or objections.

(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.

Jump to MPEP Source · 37 CFR 1.111Combining Multiple ReferencesNon-Final Action ContentCitation of References (MPEP 707.05)
Topic

Applicant Response to Reasons

1 rules
StatutoryRequiredAlways
[mpep-714-02-631e4aeb059145783f1a9a4b]
Complete Reply Must Comply or Traverse Non-Compliance
Note:
A complete reply to a requirement must either meet formal requirements or specifically address each non-complied requirement.

In all cases where reply to a requirement is indicated as necessary for further consideration of the claims, or where allowable subject matter has been indicated in an application, a complete reply must either comply with the formal requirements or specifically traverse each one not complied with.

Jump to MPEP Source · 37 CFR 1.111Applicant Response to ReasonsStatement of Reasons for AllowanceReasons for Allowance
Topic

Amendments Adding New Matter

1 rules
StatutoryPermittedAlways
[mpep-714-02-0c1b9fa7f0797a624b484adc]
Amendments Must Comply with Specific Provisions
Note:
An amendment to a patent application must adhere to the requirements outlined in 37 CFR 1.121(b), (c), (d), and (h) to be considered fully responsive.

An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.

Jump to MPEP Source · 37 CFR 1.121(b)Amendments Adding New MatterAmendments to ApplicationNon-Final Office Action

Citations

Primary topicCitation
Non-Final Office Action
Office Actions and Responses
37 CFR § 1.111(b)
Final Office Action
Types of Office Actions
37 CFR § 1.112
Amendments Adding New Matter37 CFR § 1.121(b)
Non-Final Office Action
Office Actions and Responses
37 CFR § 1.121(c)
Non-Final Office ActionMPEP § 2163.06
Final Office Action
Types of Office Actions
MPEP § 706
Amendments Adding New MatterMPEP § 714
Non-Final Office ActionMPEP § 818

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.

BlueIron Last Updated: 2026-01-17