MPEP § 714.04 — Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty (Annotated Rules)
§714.04 Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty
This page consolidates and annotates all enforceable requirements under MPEP § 714.04, 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.
Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty
This section addresses Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty. Primary authority: 37 CFR 1.111. Contains: 2 guidance statements.
Key Rules
35 U.S.C. 102 – Novelty / Prior Art
In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the claims should not be allowed. See 37 CFR 1.111 and MPEP § 714.02.
Intervening Rights After Reinstatement
An amendment failing to point out the patentable novelty which the applicant believes the claims present in view of the state of the art disclosed by the references cited or the objections made may be held to be not fully responsive and a time period set to furnish a proper reply if the statutory period has expired or almost expired (MPEP § 714.03). However, if the claims as amended are clearly open to rejection on grounds of record, a final rejection should generally be made.
Citations
| Primary topic | Citation |
|---|---|
| 35 U.S.C. 102 – Novelty / Prior Art | 37 CFR § 1.111 |
| 35 U.S.C. 102 – Novelty / Prior Art | MPEP § 714.02 |
| Intervening Rights After Reinstatement | MPEP § 714.03 |
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 § 714.04 — Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty
Source: USPTO714.04 Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty [R-08.2012]
In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the claims should not be allowed. See 37 CFR 1.111 and MPEP § 714.02.
An amendment failing to point out the patentable novelty which the applicant believes the claims present in view of the state of the art disclosed by the references cited or the objections made may be held to be not fully responsive and a time period set to furnish a proper reply if the statutory period has expired or almost expired (MPEP § 714.03). However, if the claims as amended are clearly open to rejection on grounds of record, a final rejection should generally be made.