How should a patent examiner respond to an applicant’s reply to a written description rejection?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

When an applicant replies to a written description rejection, the patent examiner must follow a specific process as outlined in MPEP 2163.04:

1. Review the entire record, including amendments, arguments, and any evidence submitted by the applicant.
2. If the whole record now demonstrates that the written description requirement is satisfied, do not repeat the rejection in the next Office action.
3. If the record still does not demonstrate adequate written description, repeat the rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1.
4. Fully respond to applicant’s rebuttal arguments and properly treat any further showings submitted by the applicant.
5. When a rejection is maintained, thoroughly analyze and discuss any relevant affidavits in the next Office action.

The MPEP emphasizes: “When a rejection is maintained, any affidavits relevant to the 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, para. 1, written description requirement, must be thoroughly analyzed and discussed in the next Office action.”

This process ensures a fair and thorough examination of the written description requirement.