How does the USPTO determine if a reply to an Office action is considered insufficient?
How does the USPTO determine if a reply to an Office action is considered insufficient?
The USPTO determines if a reply to an Office action is insufficient based on whether it addresses all the objections, requirements, and rejections set forth in the Office action. According to MPEP 711.02(a):
“A reply to a non-final Office action is not responsive unless it either contests or adopts every ground of rejection or objection made in the Office action, and presents arguments pointing out the specific distinctions believed to render the claims patentable.”
This means that to be considered sufficient, a reply must:
- Address every rejection and objection raised in the Office action
- Either contest the rejections/objections with arguments or adopt the examiner’s suggestions
- Provide specific arguments explaining why the claims are patentable
If a reply fails to meet these criteria, it may be considered insufficient, potentially leading to abandonment of the application.
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