What are the limitations on content in a 37 CFR 1.501 submission?

A 37 CFR 1.501 submission has specific limitations on its content, as outlined in MPEP 2205. The submission is restricted to:

• Patents
• Printed publications
• Patent owner written claim scope statements
• Additional information and explanations of pertinency and applicability

The MPEP states: “The submission cannot include any issue which is not directed to patents, printed publications or written claim scope statements and additional information.“

Specifically, a submission cannot include:

• Statements about claims violating 35 U.S.C. 112
• Statements about public use of the claimed invention
• Statements about the conduct of the patent owner
• Arguments or discussions of references previously treated in the prosecution of the application or in a reexamination proceeding

If a submission contains any issues not directed to the allowed content, it should not be entered into the patent file and may be returned, discarded, or closed as described in MPEP § 2206.

To learn more:

• 37 CFR 1.501
• submission limitations
• prior art
• written statements