What should be included in an Examiner’s Letter or 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. According to MPEP 707 , an Examiner’s Letter or Action should include: The Office Action Summary Form PTOL-326 Period set for reply Any attachments A ‘Summary of Action’ on all claims Notice of References Cited (PTO-892) Reasons for rejections or objections Useful information for judging the propriety of continuing prosecution The MPEP states, Information useful in judging the propriety of continuing the prosecution may include, for example, the identification and a brief discussion of the particular figure(s) of the drawing(s), and/or page(s) or paragraph(s) of the best reference(s) cited by the examiner, the applicant, or a foreign office. Additionally, In rejecting claims for want of novelty or for obviousness, the pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse First Office Action Summary Required MPEP 707 Permitted Examiner Must Clearly Explain Reference Relevance MPEP 707 Required References Cited on Separate Form PTO-892 MPEP 707 Examiner Must Provide Reasons for Allowing Claims MPEP 707 How References Are Modified for Obviousness Rejections Must Be Clearly Explained MPEP 707 Recommended First Office Action Requires Informal Patent Application Notice MPEP 707 Reasons for Allowance Must Be Incorporated or Communicated Separately MPEP 707 Required First Office Action Must Identify Allowed Claims MPEP 707 Office Action Includes Disclosures and Allowable Subject Matter MPEP 707 Permitted Claims Not Considered Patentable Will Be Rejected MPEP 707 Required Other Related FAQs 5 FAQs Collapse What is the significance of 35 U.S.C. 301 in citing prior art? Ho...