How should patent examiners review responses to utility rejections?
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 reviewing responses to utility rejections, patent examiners are instructed to conduct a comprehensive evaluation. The MPEP provides specific guidance:
“If the applicant responds to the prima facie rejection, the Office personnel should review the original disclosure, any evidence relied upon in establishing the prima facie showing, any claim amendments, and any new reasoning or evidence provided by the applicant in support of an asserted specific and substantial credible utility.”
This approach ensures a thorough and fair examination process. The MPEP further emphasizes:
“It is essential for Office personnel to recognize, fully consider and respond to each substantive element of any response to a rejection based on lack of utility.”
Examiners are expected to carefully consider all aspects of the applicant’s response, including:
- The original disclosure
- Evidence used in the initial rejection
- Any amendments to the claims
- New arguments or evidence supporting utility
Only if the entire record continues to show a lack of specific, substantial, and credible utility should the rejection be maintained. This process ensures that applicants have a fair opportunity to demonstrate the utility of their inventions.