How are references cited by the examiner in subsequent actions?
When an examiner relies on a reference that was previously mentioned by the applicant in an amendatory paper, the examiner must cite this reference using the standard procedure. The MPEP states: “Where an applicant in an amendatory paper refers to a reference that is subsequently relied upon by the examiner, such reference shall be cited…
Read MoreWhat should an examiner do if a supplemental reply is not approved for entry?
If a supplemental reply is not approved for entry, the examiner must follow specific procedures as outlined in MPEP 714.03(a): Annotate the reply with ‘DO NOT ENTER’ and initial it. Enter the annotated document into the electronic file wrapper. Notify the applicant in the subsequent Office action that the supplemental reply was not entered. The…
Read MoreWhat is the procedure for examiners to request additional information from applicants?
The procedure for examiners to request additional information from applicants is outlined in 37 CFR 1.105 and MPEP ยง 704.10 et seq. These sections set forth procedures for examiners to require applicants, their attorneys, and agents to submit information reasonably necessary for the Office to examine an application or treat a matter being addressed in…
Read MoreHow does the examiner determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C)?
How does the examiner determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C)? The examiner follows a specific procedure to determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C). According to MPEP 717.02(c): “If the applicant provides a proper statement asserting common ownership…
Read MoreHow should an examiner handle partial entry of amendments under 37 CFR 1.312?
When an examiner decides to enter part of an amendment under 37 CFR 1.312, they should follow these steps: Enter the acceptable claims or amendments in the application Renumber the claims if necessary to maintain consecutive numbering Use the Strike-Out Line tool to cross out any refused claims or amendments Submit a Response to Rule…
Read MoreWhat options does an examiner have if an amendment is approved for entry after a Notice of Allowance?
If an examiner approves an amendment for entry after a Notice of Allowance has been issued, they have two main options according to the MPEP: “If the amendment is approved for entry, the examiner may enter the amendment and provide a supplemental notice of allowance, or withdraw the application from issue and provide an Office…
Read MoreWhat options does an examiner have if an applicant’s reply is incomplete?
When an applicant’s reply is incomplete, MPEP 704.14(b) outlines two main options for the examiner: Act on the application: The examiner may proceed with examination if sufficient information is available or no further information is required. Require completion of the reply: The examiner can request the applicant to complete the reply pursuant to 37 CFR…
Read MoreWhat is the examiner’s obligation after receiving a reply to a requirement for information?
After receiving a reply to a requirement for information under 37 CFR 1.105, the examiner has several obligations: Consider the information submitted in the applicant’s reply Apply the information as deemed appropriate to the examination For search-related information, indicate which areas were used and which were not in performing a search For answers to queries,…
Read MoreWhat is the examiner’s obligation if the applicant’s reply is incomplete?
If the applicant’s reply is incomplete, the examiner has specific obligations as outlined in MPEP 704.14(b): Direct quote: “If the reply is incomplete, the examiner may, at his or her option, either act on the application (if sufficient information is available or no further information is required) or require the applicant to complete the reply…
Read MoreCan an examiner make a new rejection after a common ownership statement disqualifies prior art?
Can an examiner make a new rejection after a common ownership statement disqualifies prior art? Yes, an examiner can make a new rejection even after a common ownership statement disqualifies previously cited prior art. The MPEP 717.02(c) provides guidance on this situation: “If the rejection is obviated and the claims are otherwise allowable, the examiner…
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