What constitutes a fully responsive reply to a non-final Office action?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-10 10 Rules 5 Related FAQs 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. A fully responsive reply to a non-final Office action must address all objections and rejections raised by the examiner. According to MPEP 714.02 : ‘The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.’ This means that applicants should: Respond to each rejection and objection Provide specific arguments for patentability Address all applied references Explain how any claim amendments overcome the rejections Failure to do so may result in the reply being considered non-responsive. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Reply Must Address All Objections and Rejections MPEP 714.02 Required Replies Must Address Objections and Support Amendments MPEP 714.02 Response to Final Office Action Required to Avoid Abandonment MPEP 714 Reply Must Point Out Distinctive Features of Claims MPEP 714.02 Required Claim Amendments Must Show Patentable Novelty MPEP 714.02 Required Reply Must Advance Application to Final Action MPEP 714.02 Required Authorization Required Within Last Office Action Time Period MPEP 714 Required Claim Amendments Must Show Deleted Text If Strike-Through Not Perceivable MPEP 714 Prohibited Complete Reply Must Comply or Traverse Non-Compliance MPEP 714.02 Required Amendments Must Avoid Cited References MPEP 714.02 Required Other Related FAQs 5 FAQs Collapse Can a reply be considered responsive if it only addresses some of the rejections? What happens if an applicant submits a non-responsive reply to an Office action? No more FAQs available What happens if an amendment under 37 CFR 1.312 adds claims exceeding the previously...