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¶ 7.01 Use of Unconventional Terminology, Cannot Be Examined

A preliminary examination of this application reveals that it includes terminology which is so different from that which is generally accepted in the art to which this invention pertains that a proper search of the prior art cannot be made. For example: [1]

Applicant is required to provide a clarification of these matters or correlation with art-accepted terminology so that a proper comparison with the prior art can be made. Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).

A shortened statutory period for reply to this action is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter.

Examiner Note:

1. Use this or form paragraph 7.02 when a proper search cannot be made. However, see MPEP § 702.01 which requires a reasonable search.

2. In bracket 1, fill in an appropriate indication of the terminology, properties, units of data, etc. that are the problem as well as the pages of the specification involved.

3. For the procedure to be followed when only the drawing is informal, see MPEP §§ 608.02(a) and 608.02(b).

¶ 7.02 Disclosure Is Incomprehensible

The disclosure is objected to under 37 CFR 1.71, as being so incomprehensible as to preclude a reasonable search of the prior art by the examiner. For example, the following items are not understood: [1]

Applicant is required to submit an amendment which clarifies the disclosure so that the examiner may make a proper comparison of the invention with the prior art.

Applicant should be careful not to introduce any new matter into the disclosure (i.e., matter which is not supported by the disclosure as originally filed).

A shortened statutory period for reply to this action is set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter.

Examiner Note:

1. Use this form paragraph when a search cannot be made.

2. In bracket 1, indicate the page numbers and features which are not understood.

3. See form paragraphs 6.28 and 6.30 for improper idiomatic English.

4. Use form paragraphs 7.31.01 – 7.31.04, as appropriate, for a rejection of claims (when necessary) based on the deficiencies set forth in this form paragraph.

¶ 7.04 Statement of Statutory Basis, 35 U.S.C. 101

35 U.S.C. 101 reads as follows:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Examiner Note:

This paragraph must precede the first use of 35 U.S.C. 101 in all first actions on the merits and final rejections.

¶ 7.04.01 Human Organism

Section 33(a) of the America Invents Act reads as follows:

Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.

Claim [1] rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101 ). [2]

Examiner Note:

1. This paragraph must be preceded by form paragraph 7.04 which quotes 35 U.S.C. 101.

2. In bracket 1, pluralize "Claim" if necessary, insert claim number(s), and insert "is" or "are" as appropriate.

3. In bracket 2, explain why the claim is interpreted to read on a human organism.

¶ 7.05 Rejection, 35 U.S.C. 101, -Heading Only- (Utility, Non-Statutory, Inoperative)

Claim [1] rejected under 35 U.S.C. 101 because

Examiner Note:

1. This form paragraph must be followed by one or more of form paragraphs - 7.05.01, 7.05.011, 7.05.012, 7.05.013, 7.05.02, 7.05.03, or another appropriate reason.

2. Explain the rejection following the recitation of the statute and the use of form paragraph(s) or other reason.

3. See MPEP §§ 706.03(a) and 2105- 2107.03 for other situations.

4. This form paragraph must be preceded by form paragraph 7.04 in first actions and final rejections.

¶ 7.05.01 Rejection, 35 U.S.C. 101, Non-Statutory

the claimed invention is directed to non-statutory subject matter because [1]

Examiner Note:

1. In bracket 1, explain why the claimed invention is not patent eligible subject matter, e.g.,

(a) why the claimed invention does not fall within at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (process, machine, manufacture, or composition of matter), e.g., the claim is directed to a signal per se, a contract between two parties, or a human being; or

(b) why the claimed invention, although nominally falling within at least one of the four eligible categories, is directed to a judicial exception to 35 U.S.C. 101 (i.e., an abstract idea, natural phenomenon, or law of nature); or

(c) why the claimed invention would impermissibly cover every substantial practical application of, and thereby preempt all use of, an abstract idea, natural phenomenon, or law of nature.

2. For a claim that is directed to an abstract idea and is non-statutory, use form paragraph 7.05.011.

¶ 7.05.011 Rejection, 35 U.S.C. 101, Non-Statutory Method (Abstract Idea)

the claimed invention is not directed to patent eligible subject matter. Based upon consideration of all of the relevant factors with respect to the claim as a whole, claim(s) [1] is/are determined to be directed to an abstract idea. The rationale for this determination is explained below: [2]

Examiner Note:

1. This form paragraph should only be used when rejecting method claim(s) directed to an abstract idea.

2. In bracket 2, identify the decisive factors weighing against patent eligibility under 35 U.S.C. 101, and explain the manner in which these factors support a conclusion of patent ineligibility under 35 U.S.C. 101. For instance, that additional limitations are no more than a field of use or merely involve insignificant extrasolution activity; e.g., data gathering. The explanation needs to be sufficient to establish a prima facie case of patent ineligibility under 35 U.S.C. 101.

¶ 7.05.012 Dependent Claim(s) - Rejection, 35 U.S.C. 101, Non-Statutory Method (Abstract Idea)

Dependent claim(s) [1] when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below: [2]

Examiner Note:

1. This form paragraph should only be used when rejecting dependent method claim(s) directed to an abstract idea.

2. In bracket 2, provide an explanation as to why the claim(s) is/are directed to an abstract idea; for instance, that the additional limitations are no more than a field of use or merely involve insignificant extrasolution activity; e.g., data gathering. The explanation needs to be sufficient to establish a prima facie case of patent ineligibility under 35 U.S.C. 101.

¶ 7.05.013 Rejection, 35 U.S.C. 101, Non-Statutory Method (Law of Nature)

the claimed invention is not directed to patent eligible subject matter. Based upon an analysis with respect to the claim as a whole, claim(s) [1] is/are determined to be directed to a law of nature/natural principle. The rationale for this determination is explained below: [2]

Examiner Note:

1. This form paragraph should only be used when rejecting method claim(s) that have a law of nature/natural principle as a claim limitation.

2. In bracket 2, identify the natural principle that is the limiting feature in the claim, and explain why the additional elements or steps in the claim do not integrate the natural principle into the method and/or why the additional elements or steps in the claim are not sufficient to ensure that the claim amounts to significantly more than the natural principle itself. For instance, the additional elements or steps can be shown to be extrasolution activity or mere field of use that impose no meaningful limit on the performance of the method or can be shown to be no more than well-understood, purely conventional, and routinely taken by others in order to apply the natural principle. The explanation needs to be sufficient to establish a prima facie case of patent ineligibility under 35 U.S.C. 101.

¶ 7.05.02 Rejection, 35 U.S.C. 101, Utility Lacking

the claimed invention lacks patentable utility. [1]

Examiner Note:

In bracket 1, provide explanation of lack of utility. See MPEP §§ 706.03(a) and 2105 - 2107.03.

¶ 7.05.03 Rejection, 35 U.S.C. 101, Inoperative

the disclosed invention is inoperative and therefore lacks utility. [1]

Examiner Note:

In bracket 1, explain why invention is inoperative.

¶ 7.05.04 Utility Rejections Under 35 U.S.C. 101 and 35 U.S.C. 112, First Paragraph

Claim [1] rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a [2] asserted utility or a well established utility.

[3]

Claim [4] also rejected under 35 U.S.C. 112, first paragraph. Specifically, since the claimed invention is not supported by either a [5] asserted utility or a well established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.

Examiner Note:

1. Where the specification would not enable one skilled in the art to make the claimed invention, or where alternative reasons support the enablement rejection, a separate rejection under 35 U.S.C. 112, first paragraph, enablement should be made using the factors set forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) and an undue experimentation analysis. See MPEP §§ 2164 - 2164.08(c).

2 Use Format A, B, or C below as appropriate.

Format A:

(a) Insert the same claim numbers in brackets 1 and 4.

(b) Insert --specific and substantial-- in inserts 2 and 5.

(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility or a well established utility.
(d) Format A is to be used when there is no asserted utility and when there is an asserted utility but that utility is not specific and substantial.

Format B:

(a) Insert the same claim numbers in brackets 1 and 4.
(b) Insert --credible-- in inserts 2 and 5.
(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a credible asserted utility or a well established utility.

Format C:

(a) Insert the same claim numbers in brackets 1 and 4.
(b) Insert --specific and substantial asserted utility, a credible-- in inserts 2 and 5.
(c) In bracket 3, insert the explanation as to why the claimed invention is not supported by either a specific and substantial asserted utility, a credible asserted utility or a well established utility. Each utility should be addressed.

¶ 7.05.05 Duplicate Claims, Warning

Applicant is advised that should claim [1] be found allowable, claim [2] will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).

Examiner Note:

1. Use this form paragraph whenever two claims are found to be substantial duplicates, but they are not allowable. This will give the applicant an opportunity to correct the problem and avoid a later objection.

2. If the claims are allowable, use form paragraph 7.05.06.

¶ 7.05.06 Duplicate Claims, Objection

Claim [1] objected under 37 CFR 1.75 as being a substantial duplicate of claim [2]. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k).

Examiner Note:

If the duplicate claims are not allowable, use form paragraph 7.05.05.

¶ 7.06 Claim Limitation Relating to a Tax Strategy Deemed To Be Within the Prior Art under 35 U.S.C. 102 and/or 103

Claim limitation "[1]" has been interpreted as a strategy for reducing, avoiding, or deferring tax liability ("tax strategy") pursuant to Section 14 of the Leahy-Smith America Invents Act. Accordingly, this claim limitation is being treated as being within the prior art and is insufficient to differentiate the invention of claim[2] from the prior art.

Examiner Note:

1. In bracket 1, recite the claim limitation that relates to a tax strategy. For more information see the memorandum Tax Strategies Are Deemed To Be Within the Prior Art issued on September 20, 2011.

2. In bracket 2, insert claim number(s), pluralize "claim" as appropriate.

¶ 7.07 Statement of Statutory Basis, 35 U.S.C. 102

The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:

A person shall be entitled to a patent unless --

Examiner Note:

1. The statute is no longer being re-cited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use form paragraph 7.103.

2. Form paragraphs 7.07 to 7.14 are to be used ONLY ONCE in a given Office action.

¶ 7.08 102(a), Activity by Another Before Invention by Applicant

(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.07.

¶ 7.09 102(b), Activity More Than One Year Prior to Filing

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.

Examiner Note:

This form paragraph must be preceded by paragraph form 7.07, and may be preceded by form paragraph 7.08.

¶ 7.10 102(c), Invention Abandoned

Examiner Note:

This form paragraph must be preceded by form paragraph 7.07, and may be preceded by one or more of form paragraphs 7.08 and 7.09.

¶ 7.100 Name And Number of Examiner To Be Contacted

Any inquiry concerning this communication should be directed to [1] at telephone number [2].

Examiner Note:

1. This form paragraph, form paragraph 7.101, or form paragraph 7.102 should be used at the conclusion of all actions.

2. In bracket 1, insert the name of the examiner designated to be contacted first regarding inquiries about the Office action. This could be either the non-signatory examiner preparing the action or the signatory examiner.

3. In bracket 2, insert the individual area code and phone number of the examiner to be contacted.

¶ 7.101 Telephone Inquiry Contacts- Non 5/4/9 Schedule

Any inquiry concerning this communication or earlier communications from the examiner should be directed to [1] whose telephone number is [2]. The examiner can normally be reached on [3] from [4] to [5].

If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [6], can be reached on [7]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.

Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).

Examiner Note:

1. In bracket 1, insert your name.

2. In bracket 2, insert your individual area code and phone number.

3. In bracket 3, insert the days that you work every week, e.g. "Monday-Thursday" for an examiner off every Friday.

4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM - 5:00 PM."

5. In bracket 6, insert your SPE’s name.

6. In bracket 7, insert your SPE’s area code and phone number.

¶ 7.102 Telephone Inquiry Contacts- 5/4/9 Schedule

If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, [7], can be reached on [8]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.

Examiner Note:

1. In bracket 1, insert your name.

2. In bracket 2, insert your individual area code and phone number.

3. In bracket 3, insert the days that you work every week, e.g. "Monday-Thursday" for an examiner off on alternate Fridays.

4. In brackets 4 and 5, insert your normal duty hours, e.g. "6:30 AM - 4:00 PM."

5. In bracket 6, insert the day in each pay-period that is your compressed day off, e.g. "Fridays" for an examiner on a 5/4/9 work schedule with the first Friday off.

6. In bracket 7, insert your SPE’s name.

7. In bracket 8, insert your SPE’s area code and phone number.

¶ 7.103 Statute Cited in Prior Action

The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.

¶ 7.104 Requirement for Information, Public Use or Sale

An issue of public use or on sale activity has been raised in this application. In order for the examiner to properly consider patentability of the claimed invention under 35 U.S.C. 102(b), additional information regarding this issue is required as follows: [1]

Applicant is reminded that failure to fully reply to this requirement for information will result in a holding of abandonment.

Examiner Note:

1. Information sought should be restricted to that which is reasonably necessary for the examiner to render a decision on patentability. See MPEP § 2133.03.

2. A one or two month time period should be set by the examiner for reply to the requirement unless it is part of an Office action having an SSP, in which case the period for reply will apply also to the requirement.

3. If sufficient evidence already exists to establish a prima facie case of public use or on sale, use form paragraph 7.16 to make a rejection under 35 U.S.C. 102(b). See MPEP § 2133.03.

¶ 7.105 Requirement for Information, Heading

Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.

Examiner Note:

1. This form paragraph should appear at the beginning of any requirement for information under 37 CFR 1.105, and should be followed by an explanation of why the required information is necessary for examination. Form paragraphs 7.106 – 7.121 may be used as appropriate.

2. The requirement for information should conclude with form paragraphs 7.122 – 7.126 as appropriate.

¶ 7.105.01 Stipulations of Facts Known to Applicant

In response to this requirement, please agree or disagree to the stipulation of each of the following assertions of facts:

[1].

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 –7.126 as appropriate.

2. In bracket 1, specify each factual assertion, in the form of a separate, numbered sentence, that the applicant is to either agree or disagree to so stipulate. It is suggested that at the end of each assertion, the parenthetic phrase, "(agree/disagree)" be appended to facilitate a reply by way of applicant marking up a copy of the requested stipulations.

¶ 7.105.02 Interrogatories of Facts Known to Applicant

In response to this requirement, please provide answers to each of the following interrogatories eliciting factual information:

[1].

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 –7.126 as appropriate.

2. In bracket 1, specify each interrogatory question, in the form of a separate, numbered sentence, that the applicant is to answer. The scope of each query must be clearly set forth and the content of the expected reply is to be characterized as factual information.

¶ 7.106 Domain of Search

The information is required to extend the domain of search for prior art. Limited amounts of art related to the claimed subject matter are available within the Office, and are generally found in class [1] and subclasses [2], which describe [3]. A broader range of art to search is necessary to establish the level of knowledge of those of ordinary skill in the claimed subject matter art of [4].

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

2. In bracket 4, insert a description of the art claimed but not found in the classification system.

¶ 7.107 Level of Skill and Knowledge in the Art

The information is required to document the level of skill and knowledge in the art of [1].

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

¶ 7.108 Background Description

The information is required to complete the background description in the disclosure by documenting [1].

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

¶ 7.109 Products and Services Embodying Invention

The information is required to identify products and services embodying the disclosed subject matter of [1] and identify the properties of similar products and services found in the prior art.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

¶ 7.11 102(d), Foreign Patenting

(d) the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.07, and may be preceded by one or more of form paragraphs 7.08 to 7.10.

¶ 7.110 Art Suggested as Relevant

The information is required to enter in the record the art suggested by the applicant as relevant to this examination in [1].

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

2. In bracket 1, describe where in the application file applicant suggests that the art is relevant, e.g., the specification and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page thereof.

¶ 7.111 List of Keywords

In response to this requirement, please provide a list of keywords that are particularly helpful in locating publications related to the disclosed art of [1].

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

¶ 7.112 Citations for Electronically Searchable Databases or Other Indexed Collections

In response to this requirement, please provide a list of citations to electronically searchable databases or other indexed collections containing publications that document the knowledge within the disclosed art of [1].

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

¶ 7.113 Copy of Art Referred to in the Disclosure, But Not Submitted

In response to this requirement, please provide a copy of each of the following items of art referred to in the [1].

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

2. In bracket 1, describe where in the application file applicant refers to art that has not been previously submitted, e.g., the specification and the relevant page thereof, or a paper received in the Office on a specified date and the relevant page thereof.

¶ 7.114 Copies of Publications Authored by Inventor(s)

In response to this requirement, please provide copies of each publication which any of the applicants authored or co-authored and which describe the disclosed subject matter of [1].

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

¶ 7.115 Art Relied Upon for Description of Prior Art

In response to this requirement, please provide the title, citation and copy of each publication that is a source used for the description of the prior art in the disclosure. For each publication, please provide a concise explanation of that publication’s contribution to the description of the prior art.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.

¶ 7.116 Art Relied Upon for Development of Invention

In response to this requirement, please provide the title, citation and copy of each publication that any of the applicants relied upon to develop the disclosed subject matter that describes the applicant’s invention, particularly as to developing [1]. For each publication, please provide a concise explanation of the reliance placed on that publication in the development of the disclosed subject matter.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.

3. In bracket 1, insert a description of the most important inventive elements.

¶ 7.117 Art Relied Upon for Drafting Claimed Subject Matter

In response to this requirement, please provide the title, citation and copy of each publication that was relied upon to draft the claimed subject matter. For each publication, please provide a concise explanation of the reliance placed on that publication in distinguishing the claimed subject matter from the prior art.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

2. This requirement is limited in that only those documents actually relied on, rather than documents believed to be relevant, are required.

¶ 7.118 Results of Applicant’s Prior Art Search

In response to this requirement, please state whether any search of prior art was performed. If a search was performed, please state the citation for each prior art collection searched. If any art retrieved from the search was considered material to demonstrating the knowledge of a person having ordinary skill in the art to the disclosed [1] , please provide the citation for each piece of art considered and a copy of the art.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

2. In bracket 1, describe the subject matter for which art is required.

¶ 7.119 Names of Products or Services Incorporating Claimed Invention

In response to this requirement, please provide the names of any products or services that have incorporated the claimed subject matter.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

¶ 7.12 Rejection under 35 U.S.C 102(e), Patent Application Publication or Patent to Another with Earlier Filing Date, in view of the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002

(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.

Examiner Note:

1. This form paragraph should only be used if the reference is one of the following:

(a) a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);

(b) a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application if the international application has an international filing date on or after November 29, 2000.

2. In determining the 35 U.S.C. 102(e) date, consider priority/benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), U.S. nonprovisional applications under 35 U.S.C. 120 or 121, and international applications under 35 U.S.C. 120, 121 or 365(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). Do NOT consider foreign priority claims under 35 U.S.C. 119(a) -(d) and 365(a).

3. In order to rely on an international filing date for prior art purposes under 35 U.S.C. 102(e), the international application must have been filed on or after November 29, 2000, it must have designated the U.S., and the international publication under PCT Article 21(2) by WIPO must have been in English. If any one of the conditions is not met, the international filing date is not a U.S. filing date for prior art purposes under 35 U.S.C. 102(e).

4. If an international application was published by WIPO in a language other than English, or did not designate the U.S., the International Application’s publication by WIPO, the U.S. publication of the national stage application (35 U.S.C. 371 ) of the international application and a U.S. patent issued from the national stage of the international application may not be applied as a reference under 35 U.S.C. 102(e). The reference may be applied under 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08 and 7.09.

5. If an international application was published by WIPO in a language other than English, or did not designate the U.S., the U.S. publication of, or a U.S. patent issued from, a continuing application claiming benefit under 35 U.S.C. 120, 121, or 365(c) to such an international application, has a 35 U.S.C. 102(e) date as of the earliest U.S. filing date after the international filing date.

6. If the reference is a U.S. patent issued directly, or indirectly, from an international application that has an international filing date prior to November 29, 2000, use form paragraph 7.12.01. In that situation, pre-AIPA 35 U.S.C. 102(e) is applicable in the determination of the prior art date of the patent issued from such an international application.

7. If the reference is a publication of an international application (including the U.S. publication of a national stage (35 U.S.C. 371 )) that has an international filing date prior to November 29, 2000, do not use this form paragraph. Such a reference may not be applied as a prior art reference under 35 U.S.C. 102(e). The reference may be applied under 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08 and 7.09.

8. This form paragraph must be preceded by form paragraph 7.07, and may be preceded by one or more of form paragraphs 7.08 to 7.11.

¶ 7.120 Names of Products or Services Incorporating Disclosed Prior Art

In response to this requirement, please provide the names of any products or services that have incorporated the disclosed prior art [1].

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

2. In bracket 1, specify the attributes of the prior art that most closely approximate the claimed subject matter to narrow the focus of the reply.

¶ 7.12.01 Rejection under 35 U.S.C. 102(e), Patent to Another with Earlier Filing Date, Reference is a U.S. Patent Issued Directly or Indirectly From a National Stage of, or a Continuing Application Claiming Benefit under 35 U.S.C. 365(c) to, an International Application Having an International Filing Date Prior to November 29, 2000

(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.

The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).

Examiner Note:

1. This form paragraph should only be used if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 365(c) to an international application having an international filing date prior to November 29, 2000.

2. If the reference is a U.S. patent issued directly from a national stage of such an international application, the reference’s 35 U.S.C. 102(e) date is the date that the requirements of 35 U.S.C. 371(c)(1), (2) and (4 ) were fulfilled. The language of WIPO publication (PCT) is not relevant in this situation. Caution: the international publication of the international application (PCT) by WIPO may have an earlier prior art date under 35 U.S.C. 102(a) or 102(b).

3. If the reference is a U.S. patent issued directly from a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to such an international application (which had not entered the national stage prior to the continuing application’s filing date, otherwise see note 4), the prior art reference’s 35 U.S.C. 102(e) date is the actual U.S. filing date of the continuing application. Caution: the international publication of the international application (PCT) by WIPO may have an earlier prior art date under 35 U.S.C. 102(a) or 102(b).

4. In determining the 35 U.S.C. 102(e) date, consider priority/benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), U.S. nonprovisional applications under 35 U.S.C. 120 or 121, and international applications under 35 U.S.C. 120, 121 or 365(c) only if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any priority/benefit claims to U.S. applications which are filed before an international application. Do NOT consider foreign priority claims under 35 U.S.C. 119(a)-(d) and 365(a).

5. This form paragraph must be preceded by form paragraph 7.07, and may be preceded by one or more of form paragraphs 7.08 to 7.11.

¶ 7.121 Details of Improvement Over the Prior Art

In response to this requirement, please state the specific improvements of the subject matter in claims [1] over the disclosed prior art and indicate the specific elements in the claimed subject matter that provide those improvements. For those claims expressed as means or steps plus function, please provide the specific page and line numbers within the disclosure which describe the claimed structure and acts.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

¶ 7.122 Submission of Only Pertinent Pages Where Document is Large

In responding to those requirements that require copies of documents, where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter indicated in the requirement, or where such subject matter is not indicated, the subject matter found in applicant’s disclosure.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraphs 7.122 – 7.126 as appropriate.

2. Use this form paragraph where the scope of the requirement for information specifically includes copies of publications.

¶ 7.123 Waiver of Fee and Statement Requirements for Certain Information Disclosures

The fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to this requirement. This waiver extends only to those documents within the scope of the requirement under 37 CFR 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97 where appropriate.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraph 7.124 and either form paragraph 7.125 or 7.126 as appropriate.

2. Use this form paragraph where the scope of the requirement for information specifically includes citations to and/or copies of publications.

¶ 7.124 Contents of Good Faith Reply

The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56. Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should be followed by form paragraph 7.125 or 7.126 as appropriate.

2. This form paragraph should appear in the conclusion of any requirement for information.

¶ 7.125 Conclusion of Requirement That Accompanies Office Action

This requirement is an attachment of the enclosed Office action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information that accompanies an Office action. If the requirement for information is mailed without any other Office action, use form paragraph 7.126 instead.

2. Form paragraph 7.127 should appear at the end of any Office action that includes an attached requirement for information.

¶ 7.126 Conclusion Of Requirement Mailed Without Any Other Office Action

This requirement is subject to the provisions of 37 CFR 1.134, 1.135 and 1.136 and has a shortened statutory period of [1] months. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136 (a).

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.105, and should appear at the conclusion of any requirement for information mailed without any other Office action. If the requirement for information is mailed with an Office action, use form paragraph 7.125 instead .

2. The period for reply is ordinarily set for 2 months.

¶ 7.126.AE Conclusion of Requirement Mailed Without Any Other Office Action – Application Under Accelerated Examination

This requirement is subject to the provisions of 37 CFR 1.134, 1.135 and 1.136 and has a shortened statutory period of ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer. Since this application has been granted special status under the accelerated examination program, NO extensions of time under 37 CFR 1.136(a) will be permitted.

The objective of the accelerated examination program is to complete the examination of an application within twelve months from the filing date of the application. Any reply must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the reply is not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.

Examiner Note:

2. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102 (c)(2) or (d).

3. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102 (c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

¶ 7.127 Conclusion of Office Action That Includes Requirement

This Office action has an attached requirement for information under 37 CFR 1.105. A complete reply to this Office action must include a complete reply to the attached requirement for information. The time period for reply to the attached requirement coincides with the time period for reply to this Office action.

Examiner Note:

This form paragraph should appear at the end of any Office action that includes an attached requirement for information.

¶ 7.13 102(f), Applicant Not the Inventor

(f) he did not himself invent the subject matter sought to be patented.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.07, and may be preceded by one or more of form paragraphs 7.08 to 7.12.

¶ 7.14 102(g), Priority of Invention

(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.07, and may be preceded by one or more of form paragraphs 7.08 to 7.13.

¶ 7.147 Supplemental Reply Not Approved for Entry

The supplemental reply filed on [1] was not entered because supplemental replies are not entered as a matter of right except as provided in 37 CFR 1.111 (a)(2)(ii). [2].

Examiner Note:

1. Use this form paragraph to notify applicant that the supplemental reply filed on or after October 21, 2004 is not approved for entry.

2. Do not use this form paragraph if the supplemental reply has been entered. Use the Office Action Summary (PTOL-326) or the Notice of Allowability (PTOL-37), whichever is appropriate, to indicate that the Office action is responsive to the reply filed in compliance with 37 CFR 1.111 (b) and the supplemental reply.

3. Do not use this form paragraph if the supplemental reply was filed within the period during which action is suspended by the Office under 37 CFR 1.103 (a) or (c). Such supplemental reply must be entered. If the supplemental reply filed during the suspended period is not in compliance with 37 CFR 1.121, a notice of non-compliant amendment (PTOL-324) should be mailed to the applicant.

4. In bracket 1, provide the date that the Office received the supplemental reply (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8 ).

5. In bracket 2, insert a reason for non-entry as noted in 37 CFR 1.111 (a)(2)(i). For example, "The supplemental reply is clearly not limited to placement of the application in condition for allowance."

¶ 7.15 Rejection, 35 U.S.C. 102(a), (b) Patent or Publication, and (g)

Claim [1] rejected under 35 U.S.C. 102[2] as being [3] by [4].

Examiner Note:

1. In bracket 2, insert the appropriate paragraph letter or letters of 35 U.S.C. 102 in parentheses. If paragraph (e) of 35 U.S.C. 102 is applicable, use form paragraph 7.15.02 or 7.15.03.

2. In bracket 3, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.

3. In bracket 4, insert the prior art relied upon.

4. This rejection must be preceded either by form paragraph 7.07 and form paragraphs 7.08, 7.09, and 7.14 as appropriate, or by form paragraph 7.103.

5. If 35 U.S.C. 102(e) is also being applied, this form paragraph must be followed by either form paragraph 7.15.02 or 7.15.03.

¶ 7.15.01 Provisional Rejection, 35 U.S.C. 102(e) - Common Assignee or At Least One Common Inventor

Claim [1] provisionally rejected under 35 U.S.C. 102(e) as being anticipated by copending Application No. [2] which has a common [3] with the instant application.

Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(e), if published under 35 U.S.C. 122(b) or patented. This provisional rejection under 35 U.S.C. 102(e) is based upon a presumption of future publication or patenting of the copending application. [4].

This provisional rejection under 35 U.S.C. 102(e) might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention "by another," or by an appropriate showing under 37 CFR 1.131.

This rejection may not be overcome by the filing of a terminal disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991).

Examiner Note:

1. This form paragraph is used to provisionally reject over a copending application with an earlier filing date that discloses the claimed invention which has not been published under 35 U.S.C. 122. The copending application must have either a common assignee or at least one common inventor.

2. Use 35 U.S.C. 102(e) as amended by the American Inventors Protection Act and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12) to determine the copending application reference’s prior art date, unless the copending application reference is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application reference is either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, or 365(c ) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) (form paragraph 7.12.01). See the Examiner Notes for form paragraphs 7.12 and 7.12.01 to assist in the determination of the 35 U.S.C. 102(e) date.

3. If the claims would have been obvious over the invention disclosed in the other copending application, use form paragraph 7.21.01.

4. In bracket 3, insert either --assignee-- or --inventor--.

5. In bracket 4, an appropriate explanation may be provided in support of the examiner’s position on anticipation, if necessary.

6. If the claims of the copending application conflict with the claims of the instant application, a provisional double patenting rejection should also be given using form paragraphs 8.30 and 8.32.

7. If evidence is additionally of record to show that either invention is prior art unto the other under 35 U.S.C. 102(f) or (g), a rejection using form paragraphs 7.13 and/or 7.14 should also be made.

¶ 7.15.02 Rejection, 35 U.S.C. 102(e), Common Assignee or Inventor(s)

Claim [1] rejected under 35 U.S.C. 102(e) as being anticipated by [2].

Examiner Note:

1. This form paragraph is used to reject over a patent or patent application publication with an earlier filing date that discloses but does not claim the same invention. The patent or patent application publication must have either a common assignee or a common inventor.

2. 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 (form paragraph 7.12) must be applied if the reference is one of the following:

a. a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);

b. a U.S. patent issued directly or indirectly from, or a U.S. or WIPO publication of, an international application if the international application has an international filing date on or after November 29, 2000.

See the Examiner Notes for form paragraph 7.12 to assist in the determination of the 35 U.S.C. 102(e) date of the reference.

3. Pre-AIPA 35 U.S.C 102(e) (form paragraph 7.12.01) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01 to assist in the determination of the 35 U.S.C. 102(e) date of the reference.

4. In determining the 35 U.S.C. 102(e) date, consider priority/benefit claims to earlier-filed U.S. provisional applications under 35 U.S.C. 119(e), U.S. nonprovisional applications under 35 U.S.C. 120 or 121, and international applications under 35 U.S.C. 120, 121 or 365(c) if the subject matter used to make the rejection is appropriately supported in the relied upon earlier-filed application’s disclosure (and any intermediate application(s)). A benefit claim to a U.S. patent of an earlier-filed international application, which has an international filing date prior to November 29, 2000, may only result in an effective U.S. filing date as of the date the requirements of 35 U.S.C. 371(c)(1), (2) and (4) were fulfilled. Do NOT consider any priority/benefit claims to U.S. applications which are filed before an international application that has an international filing date prior to November 29, 2000. Do NOT consider foreign priority claims under 35 U.S.C. 119(a)-(d) and 365(a).

5. If the reference is a publication of an international application (including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO publication) that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under 35 U.S.C. 102(e). The reference may be applied under 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08 and 7.09.

6. In bracket 3, insert either --assignee-- or --inventor--.

7. This form paragraph must be preceded by either of form paragraphs 7.12 or 7.12.01.

8. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.

¶ 7.15.03 Rejection, 35 U.S.C. 102(e), No Common Assignee or Inventor(s)

Claim [1] rejected under 35 U.S.C. 102(e) as being [2] by [3].

Examiner Note:

1. This form paragraph is used to reject over a patent or patent application publication with an earlier filing date that discloses but does not claim the same invention. The patent or patent application publication is not required to have a common assignee nor a common inventor.

a. a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);

See the Examiner Notes for form paragraph 7.12 to assist in the determination of the 35 U.S.C. 102(e) date of the reference.

5. If the reference is a publication of an international application (including voluntary U.S. publication under 35 U.S.C. 122 of the national stage or a WIPO publication) that has an international filing date prior to November 29, 2000, did not designate the United States or was not published in English by WIPO, do not use this form paragraph. Such a reference is not a prior art reference under 35 U.S.C. 102(e) . The reference may be applied under 35 U.S.C. 102(a) or (b) as of its publication date. See form paragraphs 7.08 and 7.09.

6. In bracket 2, insert either --clearly anticipated-- or --anticipated-- with an explanation at the end of the paragraph.

7. In bracket 3, insert the prior art relied upon.

8. This form paragraph must be preceded by either of form paragraphs 7.12 or 7.12.01.

9. Patent application publications may only be used if this form paragraph was preceded by form paragraph 7.12.

¶ 7.16 Rejection, 35 U.S.C. 102(b), Public Use or on Sale

Claim [1] rejected under 35 U.S.C. 102(b) based upon a public use or sale of the invention. [2]

Examiner Note:

1. This form paragraph must be preceded either by form paragraphs 7.07 and 7.09 or by form paragraph 7.103.

2. A full explanation of the evidence establishing a public use or sale must be provided in bracket 2.

¶ 7.169 Advisory Action, Proposed Rejection of Claims, Before Appeal Brief

For purposes of appeal, the proposed amendment(s) will be entered and the proposed rejection(s) detailed below will be included in the Examiner’s Answer. To be complete, such rejection(s) must be addressed in any brief on appeal.

Upon entry of the amendment(s) for purposes of appeal:

Claim(s) [1] would be rejected for the reasons set forth in [2] of the final Office action mailed [3].

Examiner Note:

1. In bracket 1, identify all the new or amended claim(s) that would be grouped together in a single rejection.

2. In bracket 2, identify the rejection by referring to either the paragraph number or the statement of the rejection (e.g., the rejection under 35 U.S.C. § 103 based upon A in view of B) in the final Office action under which the claims would be rejected on appeal.

3. Repeat this form paragraph for each group of claims subject to the same rejection(s).

4. Use this form paragraph if item 7 of the Advisory Action form, PTOL-303 (Rev. 9-04 or later) has been checked to indicate that the proposed amendment(s) will be entered upon appeal.

¶ 7.17 Rejection, 35 U.S.C. 102(c), Abandonment of Invention

Claim [1] rejected under 35 U.S.C. 102(c) because the invention has been abandoned. [2]

Examiner Note:

1. This form paragraph must be preceded either by form paragraph 7.07 and 7.10 or by form paragraph 7.103.

2. In bracket 2, insert a full explanation of the evidence establishing abandonment of the invention. See MPEP § 2134.

¶ 7.18 Rejection, 35 U.S.C. 102(d), Foreign Patenting

Claim [1] rejected under 35 U.S.C. 102(d) as being barred by applicants [2].

[3]

Examiner Note:

1. This form paragraph must be preceded either by form paragraphs 7.07 and 7.11 or by form paragraph 7.103.

2. In bracket 3, insert an explanation of this rejection which must include appropriate dates and how they make the foreign patent available under 35 U.S.C. 102(d).

3. Refer to MPEP § 2135 for applicable 35 U.S.C. 102(d) prior art.

¶ 7.19 Rejection, 35 U.S.C. 102(f), Applicant Not the Inventor

Claim [1] rejected under 35 U.S.C. 102(f) because the applicant did not invent the claimed subject matter. [2]

Examiner Note:

1. This paragraph must be preceded either by paragraphs 7.07 and 7.13 or by paragraph 7.103.

2. In bracket 2, insert an explanation of the supporting evidence establishing that applicant was not the inventor. See MPEP § 2137.

¶ 7.20 Statement of Statutory Basis, 35 U.S.C. 103(a)

The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Examiner Note:

1. The statute is not to be cited in all Office actions. It is only required in first actions on the merits employing 35 U.S.C. 103(a) and final rejections. Where the statute is being applied, but is not cited in an action on the merits, use paragraph 7.103.

2. This form paragraph should only be used ONCE in a given Office action.

3. This form paragraph must precede form paragraphs 7.20.01 - 7.22 when this form paragraph is used to cite the statute in first actions and final rejections.

¶ 7.20.01 103(a) Rejection Using Prior Art Under 102(e), (f), or (g) That Is Not Disqualified Under 35 U.S.C. 103(c) Because Reference Is Prior Art Under Another Subsection of 35 U.S.C. 102

Applicant has provided evidence in this file showing that the invention was owned by, or subject to an obligation of assignment to, the same entity as [1] at the time this invention was made, or was subject to a joint research agreement at the time this invention was made. However, reference [2] additionally qualifies as prior art under another subsection of 35 U.S.C. 102, and therefore is not disqualified as prior art under 35 U.S.C. 103(c).

Applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore, not the invention "by another," or by antedating the applied art under 37 CFR 1.131.

Examiner Note:

1. This form paragraph must be included following form paragraph 7.20 in all actions containing rejections under 35 U.S.C. 103(a) using art that is disqualified under 103(c) using 102(e), (f), or (g), but which qualifies under another section of 35 U.S.C. 102.

2. In brackets 1 and 2, identify the reference which is sought to be disqualified.

¶ 7.20.02 Joint Inventors, Common Ownership Presumed

This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).

Examiner Note:

This paragraph must be used in all applications with joint inventors (unless the claims are clearly restricted to only one claimed invention, e.g., only a single claim is presented in the application).

¶ 7.20.04 103(a) Rejection Using Prior Art Under 102(e), (f), or (g) That Is Attempted To Be Disqualified Under 35 U.S.C. 103(c) Using the Common Ownership or Assignment Provision

Applicant has attempted to disqualify reference [1] under 35 U.S.C. 103 (c) by showing that the invention was owned by, or subject to an obligation of assignment to, the same entity as [2] at the time this invention was made. However, applicant has failed to provide a statement that the application and the reference were owned by, or subject to an obligation of assignment to, the same person at the time the invention was made in a conspicuous manner, and therefore, is not disqualified as prior art under 35 U.S.C. 103( a). Applicant must file the required evidence in order to properly disqualify the reference under 35 U.S.C. 103(c). See MPEP § 706.02(l).

In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore not the invention "by another," or by antedating the applied art under 37 CFR 1.131.

Examiner Note:

1. This form paragraph must be included in all actions containing rejections under 35 U.S.C. 103 (a) where an attempt has been made to disqualify the reference under 35 U.S.C. 103 (c), but where the applicant has not provided a proper statement indicating common ownership or assignment at the time the invention was made.

2. In brackets 1 and 2, identify the commonly owned applied art (e.g., patent or co-pending application).

¶ 7.20.05 103(a) Rejection Using Prior Art Under 102(e), (f), or (g) That Is Attempted To Be Disqualified Under 35 U.S.C. 103(c) Using the Joint Research Agreement Provisions

Applicant has attempted to disqualify reference [1] under 35 U.S.C. 103(c) by showing that the invention was subject to a joint research agreement at the time this invention was made. However, applicant has failed to [2]. Applicant must file the missing requirements in order to properly disqualify the reference under 35 U.S.C. 103(c). See 37 CFR 1.71(g) and 1.104(c) and MPEP § 706.02(l).

In addition, applicant may overcome the applied art either by a showing under 37 CFR 1.132 that the invention disclosed therein was derived from the inventor of this application, and is therefore, not the invention "by another," or by antedating the applied art under 37 CFR 1.131.

Examiner Note:

1. This form paragraph must be included in all actions containing rejections under 35 U.S.C. 103(a) where an attempt has been made to disqualify the reference under 35 U.S.C. 103(c) using the joint research agreement provisions but the disqualification attempt is ineffective.
2. In bracket 1, identify the reference which is sought to be disqualified under 35 U.S.C. 103(c).
3. In bracket 2, identify the reason(s) why the disqualification attempt is ineffective. The reason(s) could be noncompliance with the statutory requirements of 35 U.S.C. 103(c) or rule requirements relating to the CREATE Act, such as failure to submit the required statement or failure to amend the specification to include the names of the parties to the joint research agreement. See 37 CFR 1.104(c)(4).

¶ 7.204 Petition Under 37 CFR 1.59(b) To Expunge Information: Decision Held in Abeyance

In re Application of [1] : Appl. No.: [2] : RESPONSE TO PETITION Filed: [3] : UNDER 37 CFR 1.59 For: [4] :

This is a response to the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.

The decision on the petition will be held in abeyance until allowance of the application or mailing of an Ex parte Quayle action or a Notice of Abandonment, at which time the petition will be decided.

Petitioner requests that a document entitled [6], filed [7], be expunged from the record. Petitioner states either: (A) that the information contains trade secret material, proprietary material and/or material that is subject to a protective order which has not been made public; or (B) that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted, and the information has not otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been paid.

The decision on the petition is held in abeyance because prosecution on the merits is not closed. Accordingly, it is not appropriate to make a final determination of whether or not the material requested to be expunged is "material," with "materiality" being defined as any information which the examiner considers as being important to a determination of patentability of the claims. Thus, the decision on the petition to expunge must be held in abeyance at this time.

During prosecution on the merits, the examiner will determine whether or not the identified document is considered to be "material." If the information is not considered by the examiner to be material, the information will be removed from the official file.

Examiner Note:

1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement.

2. The petition should be sent to the Office of Petitions for decision if:

(a) the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment referred to in the oath or declaration) cannot be expunged under 37 CFR 1.59. Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or

(b) the petition is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.59 (e.g., requesting expungement of part of the original disclosure).

3. This decision is printed with the USPTO letterhead.

4. In bracket 6, clearly identify the document which petitioner requests to expunge. For example, refer to the author and title of the document.

5. Mail with PTO-90C cover sheet.

¶ 7.205 Petition Under 37 CFR 1.59(b) To Expunge Information Granted

In re Application of [1] : Appl. No.: [2] : DECISION ON PETITION Filed: [3] : UNDER 37 CFR 1.59 For: [4] :

This is a decision on the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.

The petition is granted.

Petitioner requests that a document entitled [6], filed [7], be expunged from the record. Petitioner states that either (A) that the information contains trade secret material, proprietary material and/or material that is subject to a protective order which has not been made public; or (B) that the information submitted was unintentionally submitted and the failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted, and the information has not otherwise been made public. The petition fee set forth in 37 CFR 1.17(g) has been paid.

The information in question has been determined by the undersigned to not be material to the examination of the instant application.

Applicant is required to retain the expunged material(s) for the life of any patent which issues on the above-identified application.

The expunged material has been removed from the official file.

Enclosure: [8]

Examiner Note:

1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Furthermore, a petition to expunge may not be granted unless the application has been allowed or is abandoned, or an Ex Parte Quayle action has been mailed.

2. The petition should be sent to the Office of Petitions for decision if:

3. This decision is printed with the USPTO letterhead.

4. In brackets 6 and 8, clearly identify the expunged document. For example, refer to the author and title of the document.

5. Mail with PTO-90C cover sheet.

¶ 7.206 Petition Under 37 CFR 1.59(b) To Expunge Information Dismissed

In re Application of [1] : Appl. No.: [2] : DECISION ON PETITION Filed: [3] : UNDER 37 CFR 1.59 For: [4] :

This is a decision on the petition under 37 CFR 1.59(b), filed [5], to expunge information from the above identified application.

The petition is dismissed.

Petitioner requests that a document entitled [6], filed [7], be expunged from the record.

"Materiality" is defined as any information which the examiner considers as being important to a determination of patentability of the claims.

The petition is deficient because: [8]

Examiner Note:

1. A Technology Center Director decides this petition only if the information was submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. However, the petition should not be granted until the application has been allowed or abandoned, or an Ex parte Quayle action has been mailed.

2. The petition should be sent to the Office of Petitions for decision if:

(a) the information was not submitted either pursuant to MPEP § 724.02 or in an information disclosure statement. Information which is part of the original disclosure (specification including any claims, drawings, and any preliminary amendment referred to in the oath or declaration) cannot be expunged under 37 CFR 1.59. Some papers entered into the application file, e.g., arguments made in an amendment, may be expunged under appropriate circumstance, however, the petition should be sent to the Office of Petitions for decision; or

3. This decision is printed with the USPTO letterhead.

4. In bracket 6, clearly identify the document which petitioner requests to expunge. For example, refer to the author and title of the document.

5. This form paragraph must be followed with one or more of form paragraphs 7.207 through 7.213.

¶ 7.207 Petition To Expunge, Conclusion, Lacks Fee

the petition was not accompanied by the required fee under 37 CFR1.17(g).

¶ 7.208 Petition to Expunge, Conclusion, Material to Determination of Patentability

the information that petitioner requests to expunge is considered to be material to the determination of patentability because [1].

Examiner Note:

In bracket 1, provide an explanation of basis for conclusion that information is material to the determination of patentability.

¶ 7.209 Petition To Expunge, Conclusion, Information Made Public

the information has been made public. [1]

Examiner Note:

In bracket 1, provide explanation of basis for conclusion that information has been made public.

¶ 7.21 Rejection, 35 U.S.C. 103(a )

Claim [1] rejected under 35 U.S.C. 103(a) as being unpatentable over [2].

Examiner Note:

1. This paragraph must be preceded by either form paragraph 7.20 or form paragraph 7.103.

2. An explanation of the rejection applying the Graham v. Deere test must follow this form paragraph.

3. If the rejection relies upon prior art under 35 U.S.C. 102(e), use 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12 and 7.12.01 to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

4. If the applicability of this rejection (e.g., the availability of the prior art as a reference under 35 U.S.C. 102 (a) or 35 U.S.C. 102 (b)) prevents the reference from being disqualified under 35 U.S.C. 103 (c), form paragraph 7.20.01 must follow this form paragraph.

5. If this rejection is a provisional 35 U.S.C. 103(a) rejection based upon a copending application that would comprise prior art under 35 U.S.C. 102(e) if patented or published, use form paragraph 7.21.01 instead of this paragraph.

¶ 7.21.01 Provisional Rejection, 35 U.S.C. 103(a), Common Assignee or at Least One Common Inventor

Claim [1] provisionally rejected under 35 U.S.C. 103(a) as being obvious over copending Application No. [2] which has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the copending application, it would constitute prior art under 35 U.S.C. 102(e) if published or patented. This provisional rejection under 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the conflicting application. [4]

This provisional rejection might be overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the copending application was derived from the inventor of this application and is thus not the invention "by another," or by a showing of a date of invention for the instant application prior to the effective U.S. filing date of the copending application under 37 CFR 1.131. This rejection might also be overcome by showing that the copending application is disqualified under 35 U.S.C. 103(c) as prior art in a rejection under 35 U.S.C. 103(a). See MPEP § 706.02(l)(1) and § 706.02(l)(2).

Examiner Note:

1. This paragraph is used to provisionally reject claims not patentably distinct from the disclosure in a copending application having an earlier U.S. filing date and also having either a common assignee or at least one common inventor. This form paragraph should not be used in applications pending on or after December 10, 2004 when the copending application is disqualified under 35 U.S.C. 103 (c) as prior art in a 35 U.S.C. 103 (a) rejection. See MPEP § 706.02(l)(3).

2. Use 35 U.S.C. 102(e ) as amended by the American Inventors Protection Act (AIPA) to determine the copending application reference’s prior art date, unless the copending application reference is based directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. If the copending application reference is either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000, or a continuing application claiming benefit under 35 U.S.C. 120, 121, or 365(c) to an international application having an international filing date prior to November 29, 2000, use pre-AIPA 35 U.S.C. 102(e) to determine the copending application reference’s prior art date. See the Examiner Notes for form paragraphs 7.12 and 7.12.01 to assist in the determination of the 35 U.S.C. 102(e) date.

3. If the claimed invention is fully disclosed in the copending application, use paragraph 7.15.01.

4. In bracket 3, insert either --assignee-- or --inventor--.

5. In bracket 4, insert explanation of obviousness.

6. If the claimed invention is also claimed in the copending application, a provisional obviousness double patenting rejection should additionally be made using paragraph 8.33 and 8.37.

7. If evidence indicates that the copending application is also prior art under 35 U.S.C. 102(f) or (g) and the copending application has not been disqualified as prior art in a 35 U.S.C. 103(a) rejection pursuant to 35 U.S.C. 103 (c), a rejection should additionally be made under 35 U.S.C. 103(a) using paragraph 7.21 (e.g., applicant has named the prior inventor in response to a requirement made using paragraph 8.28).

¶ 7.21.02 Rejection, 35 U.S.C. 103(a), Common Assignee or at Least One Common Inventor

Claim [1] rejected under 35 U.S.C. 103(a) as being obvious over [2].

The applied reference has a common [3] with the instant application. Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art under 35 U.S.C. 102(e). This rejection under 35 U.S.C. 103(a) might be overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not claimed in the reference was derived from the inventor of this application and is thus not an invention "by another"; (2) a showing of a date of invention for the claimed subject matter of the application which corresponds to subject matter disclosed but not claimed in the reference, prior to the effective U.S. filing date of the reference under 37 CFR 1.131; or (3) an oath or declaration under 37 CFR 1.130 stating that the application and reference are currently owned by the same party and that the inventor named in the application is the prior inventor under 35 U.S.C. 104, together with a terminal disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome by showing that the reference is disqualified under 35 U.S.C. 103 (c) as prior art in a rejection under 35 U.S.C. 103 (a). See MPEP § 706.02(l)(1) and § 706.02(l)(2). [4]

Examiner Note:

1. This paragraph is used to reject over a reference (patent or published application) with an earlier filing date that discloses the claimed invention, and that only qualifies as prior art under 35 U.S.C. 102 (e). If the reference qualifies as prior art under 35 U.S.C. 102 (a) or (b), then this form paragraph should not be used (form paragraph 7.21 should be used instead). The reference must have either a common assignee or at least one common inventor. This form paragraph should not be used in applications when the reference is disqualified under 35 U.S.C. 103 (c) as prior art in a 35 U.S.C. 103(a) rejection. See MPEP § 706.02(l)(3).

2. 35 U.S.C. 102(e) as amended by the American Inventors Protection Act of 1999 (AIPA) must be applied if the reference is one of the following:

a. a U.S. patent or a publication of a U.S. application for patent filed under 35 U.S.C. 111(a);

See the Examiner Notes for form paragraph 7.12 to assist in the determination of the 35 U.S.C. 102(e) date of the reference.

3. Pre-AIPA 35 U.S.C 102(e) must be applied if the reference is a U.S. patent issued directly, or indirectly, from an international application filed prior to November 29, 2000. See the Examiner Notes for form paragraph 7.12.01 to assist in the determination of the 35 U.S.C. 102(e) date of the reference.

4. In bracket 3, insert either --assignee-- or --inventor--.

5. In bracket 4, insert explanation of obviousness.

¶ 7.211 Petition to Expunge, Conclusion, No Clear Statement That Information is Trade Secret, Proprietary, and/or Subject to Protective Order, or that Submission Was Unintentional

the petition does not contain a clear statement that the information requested to be expunged is either: (1) a trade secret, proprietary, and/or subject to a protective order; or (2) was unintentionally submitted and failure to obtain its return would cause irreparable harm to the party who submitted the information or to the party in interest on whose behalf the information was submitted. [1]

Examiner Note:

In bracket 1, indicate whether any such statement was provided and, if so, explain why such statement is not clear.

¶ 7.212 Petition to Expunge, Conclusion, No Clear Identification of Information to be Expunged

the petition does not clearly identify the information requested to be expunged. [1]

Examiner Note:

In bracket 1, explain why the identification of the information requested to be expunged is not clear.

¶ 7.213 Petition to Expunge, Conclusion, No Statement That Petition Is Submitted By, or on Behalf of, Party in Interest Who Originally Submitted the Information

the petition does not contain a statement that the petition is being submitted by, or on behalf of, the party in interest who originally submitted the information.

¶ 7.214 Papers Not Returned, Pro Se

Papers in an application that has received a filing date pursuant to 37 CFR 1.53 ordinarily will not be returned. If applicant has not preserved copies of the papers, the Office will furnish copies at applicant’s expense. See 37 CFR 1.19 for a list of the current fees. See MPEP § 724.05 for information pertaining to petitions to expunge information.

¶ 7.22 Rejection, 35 U.S.C. 103(a), Further in View Of

Claim [1] rejected under 35 U.S.C. 103(a) as being unpatentable over [2] as applied to claim [3] above, and further in view of [4].

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.21.

2. An explanation of the rejection applying the Graham v. Deere test must follow this form paragraph.

3. If the rejection relies upon prior art under 35 U.S.C. 102(e), use 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12 and 7.12.01 to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

¶ 7.23 Graham v. Deere, Test for Obviousness

The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:

1. Determining the scope and contents of the prior art.

2. Ascertaining the differences between the prior art and the claims at issue.

3. Resolving the level of ordinary skill in the pertinent art.

4. Considering objective evidence present in the application indicating obviousness or nonobviousness.

Examiner Note:

This form paragraph may be used, if appropriate, in response to an argument of the use of Graham v. Deere.

¶ 7.27 Rejection, 35 U.S.C. 102 or 103(a)

Claim [1] rejected under 35 U.S.C. 102 ([2]) as anticipated by or, in the alternative, under 35 U.S.C. 103(a) as obvious over [3].

Examiner Note:

1. This form paragraph is NOT intended to be commonly used as a substitute for a rejection under 35 U.S.C. 102. In other words, a single rejection under either 35 U.S.C. 102 or 35 U.S.C. 103(a) should be made whenever possible using appropriate form paragraphs 7.15 to 7.19, 7.21 and 7.22. Examples of circumstances where this paragraph may be used are as follows:

a. When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under 35 U.S.C. 102 is appropriate and given another interpretation, a rejection under 35 U.S.C. 103(a) is appropriate. See MPEP §§ 2111- 2116.01 for guidelines on claim interpretation.

b. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112- 2112.02.

c. When the reference teaches a small genus which places a claimed species in the possession of the public as in In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102. See MPEP §§ 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus.

d. When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.

e. When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain whether the element disclosed in the reference is an equivalent to the claimed element and therefore anticipatory, or whether the prior art element is an obvious variant of the claimed element. See MPEP §§ 2183- 2184.

f. When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range. See the concurring opinion in Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See MPEP § 2131.03.

2. If the interpretation of the claim(s) renders the claim(s) indefinite, a rejection under 35 U.S.C. 112, 2nd paragraph, may be appropriate.

3. In bracket 2, insert the appropriate paragraph letter(s) in parenthesis.

4. A full explanation should follow this form paragraph.

5. If the rejection relies upon prior art under 35 U.S.C. 102(e), use 35 U.S.C. 102(e) as amended by the American Inventors Protection Act to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. In other words, use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371 ) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121 or 365(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12 and 7.12.01 to assist in the determination of the reference’s 35 U.S.C. 102(e) date.

6. This form paragraph must be preceded by 7.07, one or more of form paragraphs 7.08 to 7.14 as appropriate, and form paragraph 7.20 or form paragraph 7.103.

¶ 7.28 Objection to New Matter Added to Specification

The amendment filed [1] is objected to under 35 U.S.C. 132 (a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: [2].

Applicant is required to cancel the new matter in the reply to this Office action.

Examiner Note:

1. This form paragraph is not to be used in reissue applications; use form paragraph 14.22.01 instead.

2. In bracket 2, identify the new matter by page and the line numbers and/or drawing figures and provide an appropriate explanation of your position. This explanation should address any statement by applicant to support the position that the subject matter is described in the specification as filed. It should further include any unresolved questions which raise a doubt as to the possession of the claimed invention at the time of filing.

3. If new matter is added to the claims, or affects the claims, a rejection under 35 U.S.C. 112, first paragraph, using form paragraph 7.31.01 should also be made. If new matter is added only to a claim, an objection using this paragraph should not be made, but the claim should be rejected using form paragraph 7.31.01. As to any other appropriate prior art or 35 U.S.C. 112 rejection, the new matter must be considered as part of the claimed subject matter and cannot be ignored.

¶ 7.29 Disclosure Objected to, Minor Informalities

The disclosure is objected to because of the following informalities: [1]. Appropriate correction is required.

Examiner Note:

Use this paragraph to point out minor informalities such as spelling errors, inconsistent terminology, numbering of elements, etc., which should be corrected. See form paragraphs 6.28 to 6.32 for specific informalities.

¶ 7.29.01 Claims Objected to, Minor Informalities

Claim[1] objected to because of the following informalities: [2]. Appropriate correction is required.

Examiner Note:

1. Use this form paragraph to point out minor informalities such as spelling errors, inconsistent terminology, etc., which should be corrected.

2. If the informalities render the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112, second paragraph.

¶ 7.29.02 Claims Objected to, Reference Characters Not Enclosed Within Parentheses

The claims are objected to because they include reference characters which are not enclosed within parentheses.

Reference characters corresponding to elements recited in the detailed description of the drawings and used in conjunction with the recitation of the same element or group of elements in the claims should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. See MPEP § 608.01(m).

Examiner Note:

1. Use of this paragraph is optional. You may instead choose to correct the error yourself at time of allowance by informal examiner"s amendment.

2. If the lack of parentheses renders the claim(s) indefinite, use form paragraph 7.34.01 instead to reject the claim(s) under 35 U.S.C. 112, second paragraph.

¶ 7.29.03 Claims Objected to, Spacing of Lines

The claims are objected to because the lines are crowded too closely together, making reading difficult. Substitute claims with lines one and one-half or double spaced on good quality paper are required. See 37 CFR 1.52(b).

¶ 7.29.04 Disclosure Objected To, Embedded Hyperlinks or Other Forms of Browser-Executable Code

The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code. See MPEP § 608.01.

Examiner Note:

1. Examples of a hyperlink or a browser-executable code are a URL placed between these symbols "< >" and "http://" followed by a URL address. Nucleotide and/or amino acid sequence data placed between the symbols "< >" are not considered to be hyperlinks and/or browser-executable code.

2. If the application attempts to incorporate essential or nonessential subject matter into the patent application by reference to the contents of the site to which a hyperlink and/or other form of browser-executable code is directed, use form paragraph 6.19 or 6.19.01 instead. See also MPEP § 608.01(p).

3. The requirement to delete an embedded hyperlink or other form of browser-executable code does not apply to electronic documents listed on forms PTO-892 and PTO/SB/08B where the electronic document is identified by reference to a URL.

4. Examiners should not object to hyperlinks where the hyperlinks and/or browser-executable codes themselves (rather than the contents of the site to which the hyperlinks are directed) are necessary to be included in the patent application in order to meet the requirements of 35 U.S.C. 112, first paragraph, and applicant does not intend to have those hyperlinks be active links.

¶ 7.30.01 Statement of Statutory Basis, 35 U.S.C. 112, First Paragraph

The following is a quotation of the first paragraph of 35 U.S.C. 112:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Examiner Note:

2. Form paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.

¶ 7.30.02 Statement of Statutory Basis, 35 U.S.C. 112, Second Paragraph

The following is a quotation of the second paragraph of 35 U.S.C. 112:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Examiner Note:

2. Paragraphs 7.30.01 and 7.30.02 are to be used ONLY ONCE in a given Office action.

¶ 7.31.01 Rejection, 35 U.S.C. 112, 1st Paragraph, Description Requirement, Including New Matter Situations

Claim [1] rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, identify (by suitable reference to page and line numbers and/or drawing figures) the subject matter not properly described in the application as filed, and provide an explanation of your position. The explanation should include any questions the examiner asked which were not satisfactorily resolved and consequently raise doubt as to possession of the claimed invention at the time of filing.

¶ 7.31.02 Rejection, 35 U.S.C. 112, 1st Paragraph, Enablement

Claim [1] rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. If the problem is one of scope, form paragraph 7.31.03 should be used.

3. In bracket 2, identify the claimed subject matter for which the specification is not enabling. Also explain why the specification is not enabling, applying the factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP § 2164.01(a) and § 2164.04. The explanation should include any questions the examiner may have asked which were not satisfactorily resolved and consequently raise doubt as to enablement.

4. Where an essential component or step of the invention is not recited in the claims, use form paragraph 7.33.01.

¶ 7.31.03 Rejection, 35 U.S.C. 112, 1st Paragraph: Scope of Enablement

Claim [1] rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for [2], does not reasonably provide enablement for [3]. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to [4] the invention commensurate in scope with these claims. [5]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. This form paragraph is to be used when the scope of the claims is not commensurate with the scope of the enabling disclosure.

3. In bracket 2, identify the claimed subject matter for which the specification is enabling. This may be by reference to specific portions of the specification.

4. In bracket 3, identify aspect(s) of the claim(s) for which the specification is not enabling.

5. In bracket 4, fill in only the appropriate portion of the statute, i.e., one of the following: --make--, --use--, or --make and use--.

6. In bracket 5, identify the claimed subject matter for which the specification is not enabling. Also explain why the specification is not enabling, applying the factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998) as appropriate. See also MPEP § 2164.01(a) and § 2164.04. The explanation should include any questions posed by the examiner which were not satisfactorily resolved and consequently raise doubt as to enablement.

¶ 7.31.04 Rejection, 35 U.S.C. 112, 1st Paragraph: Best Mode Requirement

Claim [1] rejected under 35 U.S.C. 112, first paragraph, because the best mode contemplated by the inventor has not been disclosed. Evidence of concealment of the best mode is based upon [2].

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, insert the basis for holding that the best mode has been concealed, e.g., the quality of applicant’s disclosure is so poor as to effectively result in concealment.

3. Use of this form paragraph should be rare. See MPEP §§ 2165- 2165.04.

¶ 7.33.01 Rejection, 35 U.S.C. 112, 1st Paragraph, Essential Subject Matter Missing From Claims (Enablement)

Claim [1] rejected under 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. [2] critical or essential to the practice of the invention, but not included in the claim(s) is not enabled by the disclosure. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). [3]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.01 or 7.103.

2. In bracket 2, recite the subject matter omitted from the claims.

3. In bracket 3, give the rationale for considering the omitted subject matter critical or essential.

4. The examiner shall cite the statement, argument, date, drawing, or other evidence which demonstrates that a particular feature was considered essential by the applicant, is not reflected in the claims which are rejected.

¶ 7.34 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure To Claim Applicant’s Invention

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as failing to set forth the subject matter which applicant(s) regard as their invention. Evidence that claim [2] fail(s) to correspond in scope with that which applicant(s) regard as the invention can be found in the reply filed [3]. In that paper, applicant has stated [4], and this statement indicates that the invention is different from what is defined in the claim(s) because [5].

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. This paragraph is to be used only where applicant has stated, somewhere other than in the application, as filed, that the invention is something different from what is defined in the claim(s).

3. In bracket 3, identify the submission by applicant (which is not the application, as filed, but may be in the remarks by applicant, in the brief, in an affidavit, etc.) by the date the paper was filed in the USPTO.

4. In bracket 4, set forth what applicant has stated in the submission to indicate a different invention.

5. In bracket 5, explain how the statement indicates an invention other than what is being claimed.

¶ 7.34.01 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point out and Distinctly Claim (Indefinite)

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. This form paragraph should be followed by one or more of the following form paragraphs 7.34.02 - 7.34.11, as applicable. If none of these form paragraphs are appropriate, a full explanation of the deficiency of the claims should be supplied. Whenever possible, identify the particular term(s) or limitation(s) which render the claim(s) indefinite and state why such term or limitation renders the claim indefinite. If the scope of the claimed subject matter can be determined by one having ordinary skill in the art, a rejection using this form paragraph would not be appropriate. See MPEP §§ 2171 - 2174 for guidance. See also form paragraph 7.34.15 for pro se applicants.

¶ 7.34.02 Terminology Used Inconsistent with Accepted Meaning

Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term "[1]" in claim [2] is used by the claim to mean "[3]", while the accepted meaning is "[4]." The term is indefinite because the specification does not clearly redefine the term.

Examiner Note:

1. In bracket 3, point out the meaning that is assigned to the term by applicant’s claims, taking into account the entire disclosure.

2. In bracket 4, point out the accepted meaning of the term. Support for the examiner’s stated accepted meaning should be provided through the citation of an appropriate reference source, e.g., textbook or dictionary. See MPEP § 2173.05(a).

3. This paragraph must be preceded by form paragraph 7.34.01.

4. This paragraph should only be used where the specification does not clearly redefine the claim term at issue.

¶ 7.34.03 Relative Term - Term of Degree Rendering Claim Indefinite

The term "[1]" in claim [2] is a relative term which renders the claim indefinite. The term "[1]" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. [3]

Examiner Note:

1. In bracket 3, explain which parameter, quantity, or other limitation in the claim has been rendered indefinite by the use of the term appearing in bracket 1.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.04 Broader Range/Limitation And Narrow Range/Limitation in Same Claim

A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In the present instance, claim [1] recites the broad recitation [2], and the claim also recites [3] which is the narrower statement of the range/limitation.

Examiner Note:

1. In bracket 2, insert the broader range/limitation and where it appears in the claim; in bracket 3, insert the narrow range/limitation and where it appears. This form paragraph may be modified to fit other instances of indefiniteness in the claims.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.05 Lack of Antecedent Basis in the Claims

Claim [1] recites the limitation [2] in [3]. There is insufficient antecedent basis for this limitation in the claim.

Examiner Note:

1. In bracket 2, insert the limitation which lacks antecedent basis, for example --said lever-- or --the lever--.

2. In bracket 3, identify where in the claim(s) the limitation appears, for example, --line 3--, --the 3^rd paragraph of the claim--, --the last 2 lines of the claim--, etc.

3. This form paragraph should ONLY be used in aggravated situations where the lack of antecedent basis makes the scope of the claim indeterminate. It must be preceded by form paragraph 7.34.01.

¶ 7.34.06 Use Claims

Claim [1] provides for the use of [2], but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claim [3] is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).

Examiner Note:

1. In bracket 2, insert what is being used. For example, insert --the monoclonal antibodies of claim 4--, where the claim recites "a method for using monoclonal antibodies of claim 4 to purify interferon."

2. See MPEP § 2173.05(q).

3. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.07 Claims Are a Literal Translation

The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.08 Indefinite Claim Language: "For Example"

Regarding claim [1], the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.09 Indefinite Claim Language: "Or The Like"

Regarding claim [1], the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.10 Indefinite Claim Language: "Such As"

Regarding claim [1], the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.11 Modifier of "Means" Lacks Function

Regarding claim [1], the word "means" is preceded by the word(s) "[2]" in an attempt to use a "means" clause to recite a claim element as a means for performing a specified function. However, since no function is specified by the word(s) preceding "means," it is impossible to determine the equivalents of the element, as required by 35 U.S.C. 112, sixth paragraph. See Ex parte Klumb, 159 USPQ 694 (Bd. App. 1967).

Examiner Note:

1. It is necessary for the words which precede "means" to convey a function to be performed. For example, the phrase "latch means" is definite because the word "latch" conveys the function "latching." In general, if the phrase can be restated as "means for ________," and it still makes sense, it is definite. In the above example, "latch means" can be restated as "means for latching." This is clearly definite. However, if "conduit means" is restated as "means for conduiting," the phrase makes no sense because the word "conduit" has no functional connotation, and the phrase is indefinite.

2. This form paragraph must be preceded by form paragraph 7.34.01.

¶ 7.34.12 Essential Steps Omitted

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the steps omitted from the claims.

3. Give the rationale for considering the omitted steps critical or essential.

¶ 7.34.13 Essential Elements Omitted

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the elements omitted from the claims.

3. Give the rationale for considering the omitted elements critical or essential.

¶ 7.34.14 Essential Cooperative Relationships Omitted

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: [2]

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. In bracket 2, recite the structural cooperative relationships of elements omitted from the claims.

3. Give the rationale for considering the omitted structural cooperative relationships of elements being critical or essential.

¶ 7.34.15 Rejection Under 35 U.S.C. 112, Pro Se

Claim [1] rejected as failing to define the invention in the manner required by 35 U.S.C. 112, second paragraph.

The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.

¶ 7.34.16 Rejections Under 35 U.S.C. 112, Second Paragraph, Unclear Whether the Recited Structure, Material, or Acts in the Claim Preclude Application of 35 U.S.C. 112, Sixth Paragraph

The claim limitation "[1]" uses the phrase "means for" or "step for" or a non-structural term coupled with functional language, but it is modified by some structure, material, or acts recited in the claim. It is unclear whether the recited structure, material, or acts are sufficient for performing the claimed function because [2].

If applicant wishes to have the claim limitation treated under 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that the phrase "means for" or "step for" or the non-structural term is clearly not modified by sufficient structure, material, or acts for performing the claimed function, or may present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function.

If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112, sixth paragraph.

Examiner Note:

1. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112, second paragraph.

2. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112, sixth paragraph (e.g., why it is unclear whether the limitation recites sufficient structure, material, or acts to preclude the application of 35 U.S.C. 112, sixth paragraph.)

3. This form paragraph may be used when the phrase "means for" (or a non-structural term without any structural modifier) or "step for" coupled with functional language is used in the claim limitation and it is unclear to one of ordinary skill in the art whether the recited structure, material, or acts in the claim are sufficient for performing the claimed function.

4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.17 Rejections Under 35 U.S.C. 112, 2nd Paragraph, Unclear Whether Claim Limitation Is Invoking 35 U.S.C. 112, Sixth Paragraph, the Phrase "Means for" or "Step for" Is Not Used

Applicant asserts that the claim element "[1]" is a limitation that invokes 35 U.S.C. 112, sixth paragraph. However, it is unclear whether the claim element invokes 35 U.S.C. 112, sixth paragraph, because [2]. If applicant wishes to have the claim limitation treated under 35 U.S.C. 112, sixth paragraph, applicant may:

(a) Amend the claim to include the phrase "means for" or "step for". The phrase "means for" or "step for" must be modified by functional language, and the phrase or term must not be modified by sufficient structure, material, or acts for performing the claimed function; or

(b) Present a sufficient showing that the claim limitation is written as a function to be performed and the claim does not recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112, sixth paragraph. For more information, see MPEP § 2181.

Examiner Note:

1. This form paragraph may be used in response to an applicant’s reply in which applicant asserted that a claim limitation is invoking 35 U.S.C. 112, sixth paragraph, even though the phrase "means for" or "step for" is not used in the claim limitation. See MPEP § 706.07(a) for guidance on when the second action may be made final.

2. In bracket 1, recite the claim limitation that causes the claim to be rejected under 35 U.S.C. 112, second paragraph.

3. In bracket 2, explain why it is unclear whether the claim limitation invokes 35 U.S.C. 112, sixth paragraph. For example, it is unclear whether the claim limitation is modified by sufficient structure for performing the claimed function or it is unclear whether the corresponding structure is sufficiently disclosed in the written description of the specification.

4. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.18 Rejections Under 35 U.S.C. 112, 2nd Paragraph, No Disclosure or Insufficient Disclosure of the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112, Sixth Paragraph

Claim element "[1]" is a limitation that invokes 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. [2]

Applicant may:

(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112, sixth paragraph; or

(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a)).

If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:

(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or

(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.

Examiner Note:

1. In bracket 1, recite the limitation that invokes 35 U.S.C. 112, sixth paragraph.

2. In bracket 2, explain why there is insufficient disclosure of the corresponding structure, material, or acts for performing the claimed function.

3. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.19 Rejections Under 35 U.S.C. 112, 2nd Paragraph, Fails To Clearly Link or Associate the Disclosed Structure, Material, or Acts to the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112, Sixth Paragraph

Claim element "[1]" is a limitation that invokes 35 U.S.C. 112, sixth paragraph. However, the written description fails to clearly link or associate the disclosed structure, material, or acts to the claimed function such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function. [2]

Applicant may:

(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112, sixth paragraph; or

(b) Amend the written description of the specification such that it clearly links or associates the corresponding structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or

(c) State on the record where the corresponding structure, material, or acts are set forth in the written description of the specification and linked or associated to the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.

Examiner Note:

1. In bracket 1, recite the limitation that invokes 35 U.S.C. 112, sixth paragraph.

2. In bracket 2, explain why the written description of the specification fails to clearly link or associate the structure, material, or acts to the claimed function.

3. This form paragraph must be preceded by form paragraphs 7.30.02 and 7.34.01.

¶ 7.34.20 The Specification Is Objected To; the Written Description Only Implicitly or Inherently Discloses the Structure, Material, or Acts for Performing the Function Recited in a Claim Limitation Invoking 35 U.S.C. 112, Sixth Paragraph

Claim element "[1]" is a limitation that invokes 35 U.S.C. 112, sixth paragraph. The written description only implicitly or inherently sets forth the corresponding structure, material, or acts that perform the claimed function.

Pursuant to 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181, applicant should:

(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112, sixth paragraph; or

(b) Amend the written description of the specification such that it expressly recites the corresponding structure, material, or acts that perform the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or

(c) State on the record what corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function.

Examiner Note:

In bracket 1, recite the limitation that invokes 35 U.S.C. 112, sixth paragraph.

¶ 7.34.21 Claim Limitation Interpreted under 35 U.S.C. 112, Sixth Paragraph

Claim limitation "[1]" has been interpreted under 35 U.S.C. 112, sixth paragraph, because it uses a non-structural term "[2]" coupled with functional language "[3]" without reciting sufficient structure to achieve the function. Furthermore, the non-structural term is not preceded by a structural modifier. [4].

Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claim [5] interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.

A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112, sixth paragraph limitation: [6].

If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.

For more information, see Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).

Examiner Note:

1. In bracket 1, recite the claim limitation that has been interpreted under 35 U.S.C. 112, sixth paragraph.

2. In bracket 2, recite the non-structural term that is merely a substitute for the term "means for."

3. In bracket 3, recite the functional language.

4. In bracket 4, provide an explanation, if appropriate, why the non-structural term is not recognized as the name of a structure but is merely a substitute for the term "means for."

5. In bracket 5, recite the claim number(s) of the claim(s) that contains/contain the claim limitation.

6. In bracket 6, recite the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters.

¶ 7.35 Rejection, 35 U.S.C. 112, 2nd Paragraph, Failure To Particularly Point Out And Distinctly Claim - Omnibus Claim

Claim [1] rejected under 35 U.S.C. 112, second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. This claim is an omnibus type claim.

Examiner Note:

1. This rejection must be preceded by form paragraph 7.30.02 or 7.103.

2. Use this paragraph to reject an "omnibus" type claim. No further explanation is necessary.

3. See MPEP § 1302.04(b) for cancellation of such a claim by examiner’s amendment upon allowance.

4. An example of an omnibus claim is: "A device substantially as shown and described."

¶ 7.35.01 Trademark or Trade Name as a Limitation in the Claim

Claim [1] contains the trademark/trade name [2]. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe [3] and, accordingly, the identification/description is indefinite.

Examiner Note:

1. In bracket 2, insert the trademark/trade name and where it is used in the claim.

2. In bracket 3, specify the material or product which is identified or described in the claim by the trademark/trade name.

¶ 7.36 Statement of Statutory Basis, 35 U.S.C. 112, Fourth Paragraph

The following is a quotation of the fourth paragraph of 35 U.S.C. 112:

Subject to the [fifth paragraph of 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

Examiner Note:

1. The statute is no longer being recited in all Office actions. It is only required in first actions on the merits and final rejections. Where the statute is not being cited in an action on the merits, use paragraph 7.103.

2. Form paragraph 7.36 is to be used ONLY ONCE in a given Office action.

¶ 7.36.01 Rejection under 35 U.S.C. 112, 4th Paragraph, Improper Dependent Claim

Claim [1] rejected under 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. [2]. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.

Examiner Note:

1. In bracket 2, insert an explanation of what is in the claim and why the claim does not contain a further limitation, or identify which limitation of the claim upon which it depends is missing.

2. The U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of 35 U.S.C. 112, 4th paragraph, are related to matters of form, non-compliance with 35 U.S.C. 112, 4th paragraph, renders the claim unpatentable just as non-compliance with other paragraphs of 35 U.S.C. 112 would. See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92, 79 USPQ2d 1583, 1589-90 (Fed. Cir. 2006) (holding a dependent claim in a patent invalid for failure to comply with 35 U.S.C. 112, 4th paragraph ). Therefore, if a dependent claim does not comply with the requirements of 35 U.S.C. 112, 4th paragraph, the dependent claim should be rejected under 35 U.S.C. 112, 4th paragraph, as unpatentable rather than objecting to the claim. See also MPEP § 608.01(n), subsection III, "Infringement Test" for dependent claims.

3. This form paragraph must be preceded by form paragraph 7.36.

¶ 7.37 Arguments Are Not Persuasive

Applicant’s arguments filed [1] have been fully considered but they are not persuasive. [2]

Examiner Note:

1. The examiner must address all arguments which have not already been responded to in the statement of the rejection.

2. In bracket 2, provide explanation as to non-persuasiveness.

¶ 7.37.01 Unpersuasive Argument: Age of Reference(s)

In response to applicant’s argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.02 Unpersuasive Argument: Bodily Incorporation

In response to applicant’s argument that [1], the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).

Examiner Note:

1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of bodily incorporation.

2. This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.03 Unpersuasive Argument: Hindsight Reasoning

In response to applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.04 Unpersuasive Argument: No Teaching, Suggestion, or Motivation To Combine

In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, [1].

Examiner Note:

1. In bracket 1, explain where the teaching, suggestion, or motivation for the rejection is found, either in the references, or in the knowledge generally available to one of ordinary skill in the art.

2. This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.05 Unpersuasive Argument: Nonanalogous Art

In response to applicant’s argument that [1] is nonanalogous art, it has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, [2].

Examiner Note:

1. In bracket 1, enter the name of the reference which applicant alleges is nonanalogous.

2. In bracket 2, explain why the reference is analogous art.

3. This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.06 Unpersuasive Argument: Number of References

In response to applicant’s argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.07 Unpersuasive Argument: Applicant Obtains Result Not Contemplated by Prior Art

In response to applicant’s argument that [1], the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).

Examiner Note:

1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of results not contemplated by the prior art.

2. This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.08 Unpersuasive Argument: Arguing Limitations Which Are Not Claimed

In response to applicant’s argument that the references fail to show certain features of applicant’s invention, it is noted that the features upon which applicant relies (i.e., [1]) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).

Examiner Note:

1. In bracket 1, recite the features upon which applicant relies, but which are not recited in the claim(s).

2. This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.09 Unpersuasive Argument: Intended Use

In response to applicant’s argument that [1], a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.

Examiner Note:

1. In bracket 1, briefly restate applicant’s arguments with respect to the issue of intended use.

2. This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.10 Unpersuasive Argument: Limitation(s) in Preamble

In response to applicant’s arguments, the recitation [1] has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).

Examiner Note:

1. In bracket 1, briefly restate the recitation about which applicant is arguing.

2. This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.11 Unpersuasive Argument: General Allegation of Patentability

Applicant’s arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.12 Unpersuasive Argument: Novelty Not Clearly Pointed Out

Applicant’s arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

¶ 7.37.13 Unpersuasive Argument: Arguing Against References Individually

In response to applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).

Examiner Note:

This form paragraph must be preceded by form paragraph 7.37.

¶ 7.38 Arguments Are Moot Because of New Ground(s) of Rejection

Applicant’s arguments with respect to claim [1] have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.

Examiner Note:

The examiner must, however, address any arguments presented by the applicant which are still relevant to any references being applied.

¶ 7.38.01 Arguments Persuasive, Previous Rejection/Objection Withdrawn

Applicant’s arguments, see [1], filed [2], with respect to [3] have been fully considered and are persuasive. The [4] of [5] has been withdrawn.

Examiner Note:

1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection/objection.

2. In bracket 3, insert claim number, figure number, the specification, the abstract, etc.

3. In bracket 4, insert rejection or objection.

4. In bracket 5, insert claim number, figure number, the specification, the abstract, etc.

¶ 7.38.02 Arguments Persuasive, New Ground(s) of Rejection

Applicant’s arguments, see [1], filed [2], with respect to the rejection(s) of claim(s) [3] under [4] have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of [5].

Examiner Note:

1. In bracket 1, identify the page(s) and line number(s) from applicant’s remarks which form the basis for withdrawing the previous rejection.

2. In bracket 3, insert the claim number(s).

3. In bracket 4, insert the statutory basis for the previous rejection.

4. In bracket 5, insert the new ground(s) of rejection, e.g., different interpretation of the previously applied reference, newly found prior art reference(s), and provide an explanation of the rejection.

¶ 7.39 Action Is Final

THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).

A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.

Examiner Note:

1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).

2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.

¶ 7.39.01 Final Rejection, Options for Applicant, Pro Se

This action is a final rejection and is intended to close the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited either to an appeal to the Board of Patent Appeals and Interferences or to an amendment complying with the requirements set forth below.

If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply identifying the rejected claim or claims appealed. The Notice of Appeal must be accompanied by the required appeal fee of $[1].

If applicant should desire to file an amendment, entry of a proposed amendment after final rejection cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made earlier. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing a good and sufficient reasons why they are necessary and why they were not presented earlier.

A reply under 37 CFR 1.113 to a final rejection must include the appeal from, or cancellation of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds the claims to be in condition for allowance. Accordingly, if a Notice of Appeal has not been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136 (a) or (b), the application will become abandoned.

Examiner Note:

The form paragraph must be preceded by any one of form paragraphs 7.39, 7.40, 7.40.01, 7.41, 7.42.03, or 7.42.09.

¶ 7.40 Action Is Final, Necessitated by Amendment

Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).

Examiner Note:

1. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP- 1 or 2 months).

2. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.

¶ 7.40.01 Action Is Final, Necessitated by IDS With Fee

Applicant’s submission of an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) on [1] prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).

Examiner Note:

1. This form paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner which was not necessitated by amendment to the claims.

2. In bracket 1, insert the filing date of the information disclosure statement containing the identification of the item of information used in the new ground of rejection.

¶ 7.40.02 Action Is Final, Necessitated by Invoking the Joint Research Agreement Prior Art Exclusion Under 35 U.S.C. 103(c)

Applicant’s submission of the requirements for the joint research agreement prior art exclusion under 35 U.S.C. 103 (c) on [1] prompted the new double patenting rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.02(l)(3). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136 (a).

A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.

Examiner Note:

1. This form paragraph should not be used and a final rejection is improper where there is another new ground of rejection introduced by the examiner which was not necessitated by amendment to the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97 (c) with the fee set forth in 37 CFR 1.17 (p).

2. In bracket 1, insert the filing date of the submission of the requirements for the joint research agreement prior art exclusion under 35 U.S.C. 103 (c).

¶ 7.41 Action Is Final, First Action

This is a [1] of applicant’s earlier Application No. [2]. All claims are drawn to the same invention claimed in the earlier application and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).

Examiner Note:

1. In bracket 1, insert either --continuation-- or --substitute--, as appropriate.

2. If an amendment was refused entry in the parent case on the grounds that it raised new issues or new matter, this form paragraph cannot be used. See MPEP § 706.07(b).

3. This form paragraph should not be used in reissue litigation cases (SSP- 1 month) or in reexamination proceedings (SSP-1 or 2 months).

4. 37 CFR 1.136(a) should not be available in a reissue litigation case and is not available in reexamination proceedings.

¶ 7.41.01 Transitional After Final Practice, First Submission (37 CFR 1.129(a))

This application is subject to the provisions of Public Law 103-465, effective June 8, 1995. Accordingly, since this application has been pending for at least two years as of June 8, 1995, taking into account any reference to an earlier filed application under 35 U.S.C. 120, 121 or 365(c), applicant, under 37 CFR 1.129(a), is entitled to have a first submission entered and considered on the merits if, prior to abandonment, the submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 41.37. Upon the timely filing of a first submission and the appropriate fee of $[1] for a [2] entity under 37 CFR 1.17(r), the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant will be construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). In view of 35 U.S.C. 132, no amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application.

If applicant has filed multiple proposed amendments which, when entered, would conflict with one another, specific instructions for entry or non-entry of each such amendment should be provided upon payment of any fee under 37 CFR 1.17(r).

Examiner Note:

1. This form paragraph may follow any of form paragraphs 7.39 - 7.41 in any application filed prior to June 9, 1995, which has been pending for at least two years as of June 8, 1995, taking into account any reference under 35 U.S.C. 120, 121 or 365(c) to a previously filed application and no previous fee has been paid under 37 CFR 1.17(r).

2. This form paragraph should NOT be used in a design or reissue application, or in a reexamination proceeding.

3. In bracket 1, insert the current fee for a large or small entity, as appropriate.

4. In bracket 2, insert --small-- or --large--, depending on the current status of the application.

¶ 7.41.02 Transitional After Final Practice, Second Submission (37 CFR 1.129(a))

Since the fee set forth in 37 CFR 1.17(r) for a first submission subsequent to a final rejection has been previously paid, applicant, under 37 CFR 1.129(a), is entitled to have a second submission entered and considered on the merits if, prior to abandonment, the second submission and the fee set forth in 37 CFR 1.17(r) are filed prior to the filing of an appeal brief under 37 CFR 41.37. Upon the timely filing of a second submission and the appropriate fee of $[1] for a [2] entity under 37CFR 1.17(r), the finality of the previous Office action will be withdrawn. If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant will be construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). In view of 35 U.S.C. 132, no amendment considered as a result of payment of the fee set forth in 37 CFR 1.17(r) may introduce new matter into the disclosure of the application.

Examiner Note:

1. This form paragraph is to follow any of form paragraphs 7.39-7.41 in any application filed prior to June 9, 1995, which has been pending for at least two years as of June 8, 1995, taking into account any reference under 35 U.S.C. 120, 121 or 365(c) to a previously filed application and a first submission fee has been previously paid under 37 CFR 1.17(r).

2. This form paragraph should NOT be used in a design or reissue application or in a reexamination proceeding.

3. In bracket 1, insert the current fee for a large or small entity, as appropriate.

4. In bracket 2, insert --small-- or --large--, depending on the current status of the application.

5. If the fee set forth in 37 CFR 1.17(r) has been twice paid, the provisions of 37 CFR 1.129(a) are no longer available.

¶ 7.41.03 Action Is Final, First Action Following Submission Under 37 CFR 1.53(d), Continued Prosecution Application (CPA)

All claims are drawn to the same invention claimed in the parent application prior to the filing of this Continued Prosecution Application under 37 CFR 1.53(d) and could have been finally rejected on the grounds and art of record in the next Office action. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing under 37 CFR 1.53(d). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).

Examiner Note:

1. This form paragraph is for a first action final rejection in a Continued Prosecution Application filed under 37 CFR 1.53(d).

2. This form paragraph must be preceded by one of form paragraphs 2.30 or 2.35, as appropriate.

¶ 7.42 Withdrawal of Finality of Last Office Action

Applicant’s request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.

¶ 7.42.01 Withdrawal of Finality of Last Office Action - Transitional Application Under 37 CFR 1.129(a)

Since this application is eligible for the transitional procedure of 37 CFR 1.129(a), and the fee set forth in 37 CFR 1.17(r) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.129(a). Applicant’s [1] submission after final filed on [2] has been entered.

Examiner Note:

Insert --first-- or --second-- in bracket 1.

¶ 7.42.02 Nonresponsive Submission Filed Under 37 CFR 1.129(a)

The timely submission under 37 CFR 1.129(a) filed on [1] is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of ONE MONTH or THIRTY DAYS from the mailing date of this letter, whichever is longer, to submit a complete reply. This shortened statutory period supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a). If a notice of appeal and the appeal fee set forth in 37 CFR 41.20(b) were filed prior to or with the payment of the fee set forth in 37 CFR 1.17(r), the payment of the fee set forth in 37 CFR 1.17(r) by applicant is construed as a request to dismiss the appeal and to continue prosecution under 37 CFR 1.129(a). The appeal stands dismissed.

Examiner Note:

The reasons why the examiner considers the submission not to be fully responsive must be set forth in bracket 2.

¶ 7.42.03 Action Is Final, First Action Following Submission Under 37 CFR 1.129(a) Filed Prior to June 8, 2005

All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.129(a) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.129(a). Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the submission under 37 CFR 1.129(a). See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).

Examiner Note:

Also use form paragraph 7.41.02 if this is a final rejection following a first submission under 37 CFR 1.129(a).

¶ 7.42.031 Action Is Final, Action Following Submission Under 37 CFR 1.129(a) Filed On or After June 8, 2005

Under the final action practice for Office actions following a submission under 37 CFR 1.129 (a) filed on or after June 8, 2005, the next Office action following timely filing of a submission under 37 CFR 1.129 (a) will be equivalent to the next Office action following a reply to a non-final Office action. Under existing Office second action final practice, such an Office action on the merits will be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97 (c) with the fee set forth in 37 CFR 1.17 (p). See MPEP § 706.07(a).

In this Office action, there is no new ground of rejection that was not necessitated by applicant’s amendment of the claims or based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97 (c) with the fee set forth in 37 CFR 1.17 (p). Accordingly, THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136 (a).

A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136 (a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.

Examiner Note:

Also use form paragraph 7.41.02 if this is a final rejection following a first submission under 37 CFR 1.129 (a).

¶ 7.42.04 Continued Examination under 37 CFR 1.114 after Final Rejection

A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.

Examiner Note:

1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a final rejection.

2. In bracket 1, insert the date(s) of receipt of the submission. The submission may be a previously filed amendment(s) after final rejection and/or an amendment accompanying the RCE. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. If a reply to the Office action is outstanding the submission must meet the reply requirements of 37 CFR 1.111. Use instead form paragraph 7.42.08 if the submission does not comply with 37 CFR 1.111. Arguments which were previously submitted in a reply after final rejection, which were entered but not found persuasive, may be considered a submission under 37 CFR 1.114 if the arguments are responsive within the meaning of 37 CFR 1.111 to the outstanding Office action. If the last sentence of this form paragraph does not apply (e.g., the submission consists of previously entered arguments), it may be deleted or modified as necessary.

3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

¶ 7.42.05 Continued Examination Under 37 CFR 1.114 After Allowance or Quayle Action

A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.

Examiner Note:

1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a notice of allowance (or notice of allowability) or Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935).

2. In bracket 1 insert the date(s) of receipt of the submission. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability.

4. If the RCE was filed after the issue fee was paid, a petition under 37 CFR 1.313 to withdraw the application from issue must have been filed and granted.

¶ 7.42.06 Continued Examination Under 37 CFR 1.114 After Appeal But Before A Board Decision

A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Board of Patent Appeals and Interferences, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.

Examiner Note:

1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was filed after a Notice of Appeal or an appeal brief, but there has not been a decision on the appeal. Note that it is not necessary for an appeal brief to have been filed.

2. As set forth in 37 CFR 1.114, a submission may include an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. The submission may consist of arguments in a previously filed appeal brief or reply brief, or an incorporation of such arguments in the transmittal letter or other paper accompanying the RCE.

¶ 7.42.07 Continued Examination under 37 CFR 1.114 after Board Decision but Before Further Appeal or Civil Action

A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Board of Patent Appeals and Interferences, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on [1] has been entered.

Examiner Note:

1. Use this form paragraph if a request for continued examination (RCE), including the fee set forth in 37 CFR 1.17(e) and a submission, was timely filed after a decision by the Board of Patent Appeals and Interferences but before further appeal or civil action. Generally, the time for filing a notice of appeal to the Federal Circuit or for commencing a civil action is within two months of the Board"s decision. See MPEP § 1216 and 37 CFR 1.304.

2. A Board of Patent Appeals and Interferences decision in an application has res judicata effect and is the "law of the case" and is thus controlling in that application and any subsequent, related application. Therefore, a submission containing arguments without either an amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such rejection. See MPEP § 706.03(w) and 1214.01.

¶ 7.42.08 Request For Continued Examination With Submission Filed Under 37 CFR 1.114 Which is Not Fully Responsive

Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of ONE MONTH or THIRTY DAYS from the mailing date of this letter, whichever is longer, to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. This time period may be extended pursuant to 37 CFR 1.136(a).

Examiner Note:

1. Use this form paragraph to acknowledge an RCE filed with the fee and a submission where the submission is not fully responsive to the prior Office action. This form paragraph may be used for any RCE filed with a submission which is not fully responsive, i.e., an RCE filed after final rejection, after allowance, after an Office action under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935), or after appeal.

2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.

¶ 7.42.08.AE Request for Continued Examination With Submission Filed Under 37 CFR 1.114 Which Is Not Fully Responsive - Application Under Accelerated Examination

Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17 (e) and a submission, filed on [1]. The submission, however, is not fully responsive to the prior Office action because [2]. Since the submission appears to be a bona fide attempt to provide a complete reply to the prior Office action, applicant is given a shortened statutory period of ONE (1) MONTH or THIRTY (30) DAYS from the mailing date of this letter, whichever is longer, to submit a complete reply. This shortened statutory period for reply supersedes the time period set in the prior Office action. Since this application has been granted special status under the accelerated examination program, NO extensions of time under 37 CFR 1.136 (a) will be permitted.

Examiner Note:

2. In bracket 2, identify the reasons why the examiner considers the submission not to be fully responsive.

3. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111 (a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

4. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102 (c)(2) or (d).

5. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102 (c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

¶ 7.42.09 Action Is Final, First Action Following Request for Continued Examination under 37 CFR 1.114

All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).

A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.

Examiner Note:

This form paragraph is for a first action final rejection following a Request for Continued Examination filed under 37 CFR 1.114.

¶ 7.42.10 Application On Appeal, Request For Continued Examination Under 37 CFR 1.114 Without Submission/Fee; No Claims Allowed

A request for continued examination under 37 CFR 1.114 was filed in this application on [1] after appeal to the Board of Patent Appeals and Interferences. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114. Since the proceedings as to the rejected claims are considered terminated, and no claim is allowed, the application is abandoned. See MPEP 1215.01.

Examiner Note:

1. If a request for continued examination was filed after a Notice of Appeal or after an appeal brief, but before a decision on the appeal, and the request lacks the fee set forth in 37 CFR 1.17(e) or a submission or both, use this form paragraph to withdraw the appeal and hold the application abandoned if there are no allowed claims.

2. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

¶ 7.42.11 Application On Appeal, Request For Continued Examination Under 37 CFR 1.114 Without Submission; Claim Allowed

A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on [1] after appeal to the Board of Patent Appeals and Interferences. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the submission required by 37 CFR 1.114. Since the proceedings as to the rejected claims are considered terminated, the application will be passed to issue on allowed claim[2] . Claim[3] been canceled. See MPEP § 1215.01.

Examiner Note:

1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or after an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.

2. In bracket 3, insert the claim number(s) of the claim(s) which has/have been canceled followed by either --has-- or --have--. Claims which have been indicated as containing allowable subject matter but are objected to as being dependent upon a rejected claim are to be considered as if they were rejected and therefore are to be canceled along with the rejected claims. See MPEP § 1215.01.

3. This form paragraph should be used with the mailing of a Notice of Allowability.

4. To be eligible for continued examination under 37 CFR 1.114, the application must be a utility or plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. The RCE must be filed on or after May 29, 2000.

¶ 7.42.12 Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Submission; Claim Allowed with Formal Matters Outstanding

A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on [1] after appeal to the Board of Patent Appeals and Interferences. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the submission required by 37 CFR 1.114. The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim [2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01. Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136.

Examiner Note:

1. If a request for continued examination, including the fee, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required submission, use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.

2. In bracket 3, explain the formal matters which must be corrected.

¶ 7.42.13 Application on Appeal, Request for Continued Examination under 37 CFR 1.114 Without Fee; Claim Allowed

Examiner Note:

1. If a request for continued examination, including the submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the required fee, use this form paragraph to withdraw the appeal and pass the application to issue on the allowed claims.

3. This form paragraph should be used with the mailing of a Notice of Allowability.

¶ 7.42.14 Application on Appeal, Request for Continued Examination under 37 CFR 1.11 4 Without Fee; Claim Allowed With Formal Matters Outstanding

A request for continued examination under 37 CFR 1.114, including a submission, was filed in this application on [1] after appeal to the Board of Patent Appeals and Interferences. Therefore, the appeal has been withdrawn pursuant to 37 CFR 1.114. The request, however, lacks the fee required by 37 CFR 1.17(e). Therefore, the submission has not been entered. See 37 CFR 1.116(c). The proceedings as to the rejected claims are considered terminated, and the application will be passed to issue on allowed claim[2] provided the following formal matters are promptly corrected: [3]. Prosecution is otherwise closed. See MPEP § 1215.01.Applicant is required to make the necessary corrections addressing the outstanding formal matters within a shortened statutory period set to expire ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136.

Examiner Note:

1. If a request for continued examination, including a submission, was filed after a Notice of Appeal or an appeal brief but before a decision on the appeal, and the request lacks the fee required by 37 CFR 1.17(e), use this form paragraph to withdraw the appeal if there are allowed claims but outstanding formal matters need to be corrected.

2. In bracket 3, explain the formal matters that must be corrected.

¶ 7.42.15 Continued Prosecution Application Treated as Continued Examination under 37 CFR 1.114

The request for a continued prosecution application (CPA) under 37 CFR 1.53(d) filed on [1] is acknowledged. 37 CFR 1.53(d)(1) was amended to provide that a CPA must be for a design patent and the prior application of the CPA must be a design application that is complete as defined by 37 CFR 1.51 (b). See Elimination of Continued Prosecution Application Practice as to Utility and Plant Patent Applications, final rule, 68 Fed. Reg. 32376 (May 30, 2003), 1271 Off. Gaz. Pat. Office 143 (June 24, 2003). Since a CPA of this application is not permitted under 37 CFR 1.53(d)(1), the improper request for a CPA is being treated as a request for continued examination of this application under 37 CFR 1.114.

Examiner Note:

1. Use this form paragraph to advise the applicant that a CPA is being treated as an RCE.

2. Also use form paragraph 7.42.04, 7.42.05, 7.42.06, or 7.42.07 as applicable, to acknowledge entry of applicant’s submission if the fee set forth in 37 CFR 1.17(e ) has been timely paid.

3. If the fee set forth in 37 CFR 1.17(e) and/or a submission as required by 37 CFR 1.114 is/are missing and the application is not under appeal, a Notice of Improper Request for Continued Examination should be mailed. If the application is under appeal and the fee set forth in 37 CFR 1.17(e) and/or submission is/are missing, this form paragraph should be followed with one of form paragraphs 7.42.10 - 7.42.14, as applicable.

¶ 7.42.16 After Board Decision But Before Further Appeal Or Civil Action, Request for Continued Examination Under 37 CFR 1.114 Without Submission and/or Fee

A request for continued examination (RCE) under 37 CFR 1.114 was filed in this application on [1] after a decision by the Board of Patent Appeals and Interferences, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. The request, however, lacks the fee required by 37 CFR 1.17(e) and/or the submission required by 37 CFR 1.114. Accordingly, the RCE is improper and any time period running was not tolled by the filing of the improper request.

Examiner Note:

1. This form paragraph should be used with the mailing of a Notice of Allowability or a Notice of Abandonment, as appropriate, if the time for seeking court review has passed without such review being sought, or it should be used on a PTOL-90 if time still remains.

2. This form paragraph should not be used if the application is not a utility application or a plant application filed under 35 U.S.C. 111(a) on or after June 8, 1995, or an international application filed under 35 U.S.C. 363 on or after June 8, 1995. In that situation, a "Notice of Improper Request for Continued Examination (RCE)," Form PTO-2051, should be prepared and mailed by the technical support personnel to notify applicant that continued examination does not apply to the application.

3. In general, if a submission was filed with the improper RCE in this situation, it should not be entered. An exception exists for an amendment which obviously places the application in condition for allowance. See MPEP § 1214.07. The examiner should also include a statement as to whether or not any such submission has been entered (e.g., "The submission filed with the improper RCE has not been entered.").

¶ 7.43 Objection to Claims, Allowable Subject Matter

Claim [1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.

¶ 7.43.01 Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112, Second Paragraph, Independent Claim/Dependent Claim

Claim [1] would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, set forth in this Office action.

Examiner Note:

This form paragraph is to be used when (1) the noted independent claim(s) or (2) the noted dependent claim(s), which depend from an allowable claim, have been rejected solely on the basis of 35 U.S.C. 112, second paragraph, and would be allowable if amended to overcome the rejection.

¶ 7.43.02 Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112, Second Paragraph, Dependent Claim

Claim [1] would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.

Examiner Note:

This form paragraph is to be used only when the noted dependent claim(s), which depend from a claim that is rejected based on prior art, have been rejected solely on the basis of 35 U.S.C. 112, second paragraph, and would be allowable if amended as indicated.

¶ 7.43.03 Allowable Subject Matter, Formal Requirements Outstanding

As allowable subject matter has been indicated, applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).

Examiner Note:

This form paragraph would be appropriate when changes (for example, drawing corrections or corrections to the specification) must be made prior to allowance.

¶ 7.43.04 Suggestion of Allowable Drafted Claim(s), Pro Se

The following claim [1] drafted by the examiner and considered to distinguish patentably over the art of record in this application, [2] presented to applicant for consideration:

[3].

Examiner Note:

1. If the suggested claim is not considered to be embraced by the original oath or declaration, a supplemental oath or declaration should be required under 37 CFR 1.67.

2. In bracket 2, insert --is-- or --are--.

3. In bracket 3, insert complete text of suggested claim(s).

¶ 7.44 Claimed Subject Matter Not in Specification

The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d) (1) and MPEP § 608.01(o). Correction of the following is required: [1]

¶ 7.45 Improper Multiple Dependent Claims

Claim [1] objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim [2]. See MPEP § 608.01(n). Accordingly, the claim [3] not been further treated on the merits.

Examiner Note:

1. In bracket 2, insert --should refer to other claims in the alternative only--, and/or, --cannot depend from any other multiple dependent claim--.

2. Use this paragraph rather than 35 U.S.C. 112, fifth paragraph.

3. In bracket 3, insert --has-- or --s have--.

¶ 7.46 Preliminary Amendment Unduly Interferes with the Preparation of an Office Action

The preliminary amendment filed on [1] was not entered because entry of the amendment would unduly interfere with the preparation of the Office action. See 37 CFR 1.115 (b)(2). The examiner spent a significant amount of time on the preparation of an Office action before the preliminary amendment was received. On the date of receipt of the amendment, the examiner had completed [2].

Furthermore, entry of the preliminary amendment would require significant additional time on the preparation of the Office action. Specifically, entry of the preliminary amendment would require the examiner to [3].

A responsive reply (under 37 CFR 1.111 or 37 CFR 1.113 as appropriate) to this Office action must be timely filed to avoid abandonment.

If this is not a final Office action, applicant may wish to resubmit the amendment along with a responsive reply under 37 CFR 1.111 to ensure proper entry of the amendment.

Examiner Note:

1. In bracket 1, provide the date that the Office received the preliminary amendment (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8 ).

2. In bracket 2, provide an explanation on the state of preparation of the Office action as of the receipt date of the preliminary amendment. For example, where appropriate insert --the claim analysis and the search of prior art of all pending claims-- or --the drafting of the Office action and was waiting for the supervisory patent examiner’s approval--.

3. In bracket 3, provide a brief explanation of how entry of the preliminary amendment would require the examiner to spend significant additional time in the preparation of the Office action. For example, where appropriate insert --conduct prior art search in another classification area that was not previously searched and required-- or --revise the Office action extensively to address the new issues raised and the new claims added in the preliminary amendment--.

¶ 7.48 Failure To Present Claims for Interference

Claim [1] rejected under 35 U.S.C. [2] based upon claim [3] of Patent No. [4].

Failure to present claims and/or take necessary steps for interference purposes after notification that interfering subject matter is claimed constitutes a disclaimer of the subject matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).

Examiner Note:

1. This form paragraph should be used only after applicant has been notified that interference proceedings must be instituted before the claims can be allowed and applicant has refused to copy the claims.

2. In bracket 2, insert --102(g)-- or --102(g)/103(a)--.

3. In bracket 4, insert the patent number, and --in view of _____-- if another reference is also relied upon. When the rejection is under 35 U.S.C. 103(a), the examiner’s basis for a finding of obviousness should be included. Note that interferences may include obvious variants, see MPEP Chapter 2300.

¶ 7.49 Rejection, Disclaimer, Failure To Appeal

An adverse judgment against claim [1] has been entered by the Board. Claim [2] stand(s) finally disposed of for failure to reply to or appeal from the examiner’s rejection of such claim(s) presented for interference within the time for appeal or civil action specified in 37 CFR 1.304. Adverse judgment against a claim is a final action of the Office requiring no further action by the Office to dispose of the claim permanently. See 37 CFR 41.127(a)(2).

¶ 7.50 Claims Previously Allowed, Now Rejected, New Art

The indicated allowability of claim [1] is withdrawn in view of the newly discovered reference(s) to [2]. Rejection(s) based on the newly cited reference(s) follow.

Examiner Note:

1. In bracket 2, insert the name(s) of the newly discovered reference.

2. Any action including this form paragraph requires the signature of a Primary Examiner. MPEP § 1004.

¶ 7.51 Quayle Action

This application is in condition for allowance except for the following formal matters: [1].

Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935).

A shortened statutory period for reply to this action is set to expire TWO MONTHS from the mailing date of this letter.

Examiner Note:

Explain the formal matters which must be corrected in bracket 1.

¶ 7.51.AE Quayle Action - Application Under Accelerated Examination

This application is in condition for allowance except for the following formal matters: [1].

Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle , 25 USPQ 74, 453 O.G. 213 (Comm’r Pat. 1935).

Since this application has been granted special status under the accelerated examination program, a shortened statutory period for reply to this action is set to expire ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer, from the mailing date of this letter. NO extensions of time under 37 CFR 1.136 (a) will be permitted.

Examiner Note:

1. Explain the formal matters which must be corrected in bracket 1.

¶ 7.52 Suspension of Action, Awaiting New Reference

A reference relevant to the examination of this application may soon become available. Ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application.

Examiner Note:

1. Maximum period for suspension is six months.

2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003.

3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.

¶ 7.53 Suspension of Action, Possible Interference

All claims are allowable. However, due to a potential interference, ex parte prosecution is SUSPENDED FOR A PERIOD OF [1] MONTHS from the mailing date of this letter. Upon expiration of the period of suspension, applicant should make an inquiry as to the status of the application.

Examiner Note:

1. Maximum period for suspension is six months.

2. The TC Director must approve all second or subsequent suspensions, see MPEP § 1003.

3. The TC Director’s signature must appear on the letter granting any second or subsequent suspension.

¶ 7.54 Suspension of Action, Applicant’s Request

Pursuant to applicant’s request filed on [1], action by the Office is suspended on this application under 37 CFR 1.103(a) for a period of [2] months. At the end of this period, applicant is required to notify the examiner and request continuance of prosecution or a further suspension. See MPEP § 709.

Examiner Note:

1. Maximum period for suspension is 6 months.

2. Only the Technology Center Director can grant second or subsequent suspensions. See MPEP § 1003. Such approval must appear on the Office letter.

¶ 7.54.01 Request for Deferral of Examination under 37 CFR 1.103(d), Granted

Applicant’s request filed on [1], for deferral of examination under 37 CFR 1.103(d) in the application has been approved. The examination of the application will be deferred for a period of [2] months.

Examiner Note:

1. In bracket 1, insert the filing date of the request for deferral of examination.

2. In bracket 2, insert the number of months for the deferral.

¶ 7.54.02 Request for Termination of a Suspension of Action, Granted

Applicant’s request filed on [1], for termination of a suspension of action under 37 CFR 1.103, has been approved. The suspension of action has been terminated on the date of mailing this notice.

Examiner Note:

In bracket 1, insert the filing date of the request for termination of the suspension of action.

¶ 7.56 Request for Suspension, Denied, Outstanding Office Action

Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(a), is denied as being improper. Action cannot be suspended in an application awaiting a reply by the applicant. See MPEP § 709.

¶ 7.56.01 Request for Suspension of Action under 37 CFR 1.103, Denied

Applicant’s request filed [1], for suspension of action in this application under 37 CFR 1.103(b) or (c) is denied as being improper. The request was (1) not filed at the time of filing a CPA or RCE, and/or (2) not accompanied by the requisite fee as set forth in 37 CFR 1.17(i). See MPEP § 709.

Examiner Note:

In bracket 1, insert the filing date of the request for suspension of action.

¶ 7.56.02 Request for Deferral of Examination under 37 CFR 1.103(d), Denied

Applicant’s request filed on [1], for deferral of examination under 37 CFR 1.103(d) in the application is denied as being improper. [2]

See MPEP § 709.

Examiner Note:

1. In bracket 1, insert the filing date of the request for deferral of examination.

2. In bracket 2, insert the reason(s) for denying the request. For example, if appropriate insert --The applicant has not filed a request under 37 CFR 1.213(b) to rescind the previously filed nonpublication request--; --A first Office action has been issued in the application--; or --Applicant has not submitted a request for voluntary publication under 37 CFR 1.221 --.

¶ 7.57 Affidavit or Declaration Under 37 CFR 1.131: Ineffective- Heading

The [1] filed on [2] under 37 CFR 1.131 has been considered but is ineffective to overcome the [3] reference.

Examiner Note:

1. In bracket 1, insert either --affidavit-- or --declaration--.

2. This form paragraph must be followed by one or more of form paragraphs 7.58 to 7.63 or a paragraph setting forth proper basis for the insufficiency, such as failure to establish acts performed in this country, or that the scope of the declaration or affidavit is not commensurate with the scope of the claim(s).

¶ 7.58 Affidavit or Declaration Under 37 CFR 1.131: Ineffective, Claiming Same Invention

The [1] reference is a U.S. patent or U.S. patent application publication of a pending or patented application that claims the rejected invention. An affidavit or declaration is inappropriate under 37 CFR 1.131 (a) when the reference is claiming the same patentable invention, see MPEP Chapter 2300. If the reference and this application are not commonly owned, the reference can only be overcome by establishing priority of invention through interference proceedings. See MPEP Chapter 2300 for information on initiating interference proceedings. If the reference and this application are commonly owned, the reference may be disqualified as prior art by an affidavit or declaration under 37 CFR 1.130. See MPEP § 718.

Examiner Note:

1. If used to respond to the submission of an affidavit under 37 CFR 1.131, this paragraph must be preceded by paragraph 7.57.

2. This form paragraph may be used without form paragraph 7.57 when an affidavit has not yet been filed, and the examiner desires to notify applicant that the submission of an affidavit under 37 CFR 1.131 would be inappropriate.

¶ 7.59 Affidavit or Declaration Under 37 CFR 1.131: Ineffective, Insufficient Evidence of Reduction to Practice Before Reference Date

The evidence submitted is insufficient to establish a reduction to practice of the invention in this country or a NAFTA or WTO member country prior to the effective date of the [1] reference. [2]

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.57.

2. An explanation of the lack of showing of the alleged reduction to practice must be provided in bracket 2.

¶ 7.60 Affidavit or Declaration Under 37 CFR 1.131: Ineffective, Reference Is a Statutory Bar

The [1] reference is a statutory bar under 35 U.S.C. 102(b) and thus cannot be overcome by an affidavit or declaration under 37 CFR 1.131.

Examiner Note:

This form paragraph must be preceded by form paragraph 7.57.

¶ 7.61 Affidavit or Declaration Under 37 CFR 1.131: Ineffective, Insufficient Evidence of Conception

The evidence submitted is insufficient to establish a conception of the invention prior to the effective date of the [1] reference. While conception is the mental part of the inventive act, it must be capable of proof, such as by demonstrative evidence or by a complete disclosure to another. Conception is more than a vague idea of how to solve a problem. The requisite means themselves and their interaction must also be comprehended. See Mergenthaler v. Scudder, 1897 C.D. 724, 81 O.G. 1417 (D.C. Cir. 1897). [2]

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.57.

2. An explanation of the deficiency in the showing of conception must be presented in bracket 2.

3. If the affidavit additionally fails to establish either diligence or a subsequent reduction to practice, this form paragraph should be followed by form paragraph 7.62 and/or 7.63. If either diligence or a reduction to practice is established, a statement to that effect should follow this paragraph.

¶ 7.62 Affidavit or Declaration Under 37 CFR 1.131: Ineffective, Diligence Lacking

The evidence submitted is insufficient to establish diligence from a date prior to the date of reduction to practice of the [1] reference to either a constructive reduction to practice or an actual reduction to practice. [2]

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.57.

2. If the affidavit additionally fails to establish conception, this paragraph must also be preceded by form paragraph 7.61. If the affidavit establishes conception, a statement to that effect should be added to this paragraph.

3. If the affidavit additionally fails to establish an alleged reduction to practice prior to the application filing date, this paragraph must be followed by form paragraph 7.63. If such an alleged reduction to practice is established, a statement to that effect should be added to this paragraph.

4. An explanation of the reasons for a holding of non-diligence must be provided in bracket 2.

5. See MPEP § 715.07(a), Ex parte Merz, 75 USPQ 296 (Bd. App. 1947), which indicates that diligence is not required after reduction to practice.

¶ 7.63 Affidavit or Declaration Under 37 CFR 1.131: Ineffective, Insufficient Evidence of Actual Reduction to Practice

The evidence submitted is insufficient to establish applicant’s alleged actual reduction to practice of the invention in this country or a NAFTA or WTO member country after the effective date of the [1] reference. [2].

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.57.

2. If the alleged reduction to practice is prior to the effective date of the reference, do not use this paragraph. See form paragraph 7.59.

3. If the affidavit additionally fails to establish either conception or diligence, form paragraphs 7.61 and/or 7.62 should precede this paragraph. If either conception or diligence is established, a statement to that effect should be included after this paragraph.

4. An explanation of the lack of showing of the alleged reduction to practice must be given in bracket 2.

¶ 7.64 Affidavit or Declaration Under 37 CFR 1.131: Effective To Overcome Reference

The [1] filed on [2] under 37 CFR 1.131 is sufficient to overcome the [3] reference.

Examiner Note:

1. In bracket 1, insert either --affidavit-- or --declaration--.

2. In bracket 2, insert the filing date of the affidavit or declaration.

3. In bracket 3, insert the name of the reference.

¶ 7.65 Affidavit or Declaration Under 37 CFR 1.132: Effective To Withdraw Rejection

The [1] under 37 CFR 1.132 filed [2] is sufficient to overcome the rejection of claim [3] based upon [4].

Examiner Note:

1. In bracket 1, insert either --affidavit-- or --declaration--.

2. In bracket 2, insert the filing date of the affidavit or declaration.

3. In bracket 3, insert the affected claim or claims.

4. In bracket 4, indicate the rejection that has been overcome, including the statutory grounds, e.g.: insufficiency of disclosure under 35 U.S.C. 112, first paragraph; lack of utility under 35 U.S.C. 101; inoperativeness under 35 U.S.C. 101; a specific reference applied under 35 U.S.C. 103; etc. See MPEP § 716.

¶ 7.66 Affidavit or Declaration Under 37 CFR 1.132: Insufficient

The [1] under 37 CFR 1.132 filed [2] is insufficient to overcome the rejection of claim [3] based upon [4] as set forth in the last Office action because:

Examiner Note:

1. In bracket 1, insert either --affidavit-- or --declaration--.

2. In bracket 2, insert the filing date of the affidavit or declaration.

3. In bracket 3, insert the claim or claims affected.

4. In bracket 4, indicate the rejection that has not been overcome, including the statutory grounds, i.e.: insufficiency of disclosure under 35 U.S.C. 112, first paragraph; lack of utility and/or inoperativeness under 35 U.S.C. 101; a specific reference applied under 35 U.S.C. 103; etc. See MPEP § 716.

5. Following this form paragraph, set forth the reasons for the insufficiency; e.g., categories include: --untimely--; --fails to set forth facts--; --facts presented are not germane to the rejection at issue--;--showing is not commensurate in scope with the claims--; etc. See MPEP § 716. Also include a detailed explanation of the reasons why the affidavit or declaration is insufficient. Any of form paragraphs 7.66.01 - 7.66.05 may be used, as appropriate.

¶ 7.66.01 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Affiant Has Never Seen Invention Before

It includes statements which amount to an affirmation that the affiant has never seen the claimed subject matter before. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.66.

2. A full explanation must be provided, if appropriate.

¶ 7.66.02 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Invention Works as Intended

It includes statements which amount to an affirmation that the claimed subject matter functions as it was intended to function. This is not relevant to the issue of nonobviousness of the claimed subject matter and provides no objective evidence thereof. See MPEP § 716.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.66.

2. A full explanation must be provided, if appropriate.

¶ 7.66.03 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Refers Only to Invention, Not to Claims

It refers only to the system described in the above referenced application and not to the individual claims of the application. As such the declaration does not show that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.66.

2. A full explanation must be provided, if appropriate.

¶ 7.66.04 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: No Evidence of Long-Felt Need

It states that the claimed subject matter solved a problem that was long standing in the art. However, there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem. See MPEP § 716.04.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.66.

2. A full explanation must be provided, if appropriate.

¶ 7.66.05 Reason Why Affidavit or Declaration Under 37 CFR 1.132 Is Insufficient: Conclusion

In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.

Examiner Note:

This form paragraph should be presented as a conclusion to your explanation of why the affidavit or declaration under 37 CFR 1.132 is insufficient, and it must be preceded by form paragraph 7.66.

¶ 7.70.AE Updated Accelerated Examination Support Document Required for Claim Amendments Not Encompassed by Previous Accelerated Examination Support Document(s) – Application Under Accelerated Examination

Applicant is reminded that for any amendments to the claims (including any new claim) that is not encompassed by the preexamination search and accelerated examination support documents previously filed, applicant is required to provide updated preexamination search and accelerated examination support documents that encompass the amended or new claims at the time of filing the amendment. Failure to provide such updated preexamination search and accelerated examination support documents at the time of filing the amendment will cause the amendment to be treated as not fully responsive and not to be entered. See MPEP § 708.02(a) subsection VIII.D. for more information.

If the reply is not fully responsive, the final disposition of the application may occur later than twelve months from the filing of the application.

Examiner Note:

1. This form paragraph and form paragraph 7.71.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d).

2. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102(c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway Program (pilot and permanent).

¶ 7.71.AE Use Of Proper Document and Fee Codes When Filing A Reply Electronically Via EFS-Web – Application Under Accelerated Examination

Any reply or other papers must be filed electronically via EFS-Web so that the papers will be expeditiously processed and considered. If the papers are not filed electronically via EFS-Web, the final disposition of the application may occur later than twelve months from the filing of the application.

Any reply to this communication filed via EFS-Web must include a document that is filed using the document description of "Accelerated Exam - Transmittal amendment/reply." Applicant is reminded to use proper indexing for documents to avoid any delay in processing of follow on papers. Currently document indexing is not automated in EFS-Web and applicant must select a particular document description for each attached file. An incorrect document description for a particular file may potentially delay processing of the application. A complete listing of all document codes currently supported in EFS-Web is available athttp://www.uspto.gov/ebc/portal/efs/efsweb_document_descriptions.xls.

Any payment of fees via EFS-Web must be accompanied by selection of a proper fee code. An improper fee code may potentially delay processing of the application. Instructions on payment of fees via EFS-Web are available at http://www.uspto.gov/ebc/portal/efs/quick-start.pdf.

Examiner Note:

1. This form paragraph and form paragraph 7.70.AE must be included in every Office action, other than a notice of allowance, in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d).

¶ 7.81 Correction Letter Re Last Office Action

In response to applicant’s [1] regarding the last Office action, the following corrective action is taken.

The period for reply of [2] MONTHS set in said Office action is restarted to begin with the mailing date of this letter.

Examiner Note:

1. In bracket 1, insert --telephone inquiry of _____-- or --communication dated ______--.

2. In bracket 2, insert new period for reply.

3. This form paragraph must be followed by one or more of form paragraphs 7.82, 7.82.01 or 7.83.

4. Before restarting the period, the SPE should be consulted.

¶ 7.82 Correction of Reference Citation

The reference [1] was not correctly cited in the last Office action. The correct citation is shown on the attached PTO-892.

Examiner Note:

1. Every correction MUST be reflected on a corrected or new PTO-892.

2. This form paragraph must follow form paragraph 7.81.

3. If a copy of the PTO-892 is being provided without correction, use form paragraph 7.83 instead of this form paragraph.

4. Also use form paragraph 7.82.01 if reference copies are being supplied.

¶ 7.82.01 Copy of Reference(s) Furnished

Copies of the following references not previously supplied are enclosed:

Examiner Note:

1. The USPTO ceased mailing paper copies of U.S. patents and U.S. application publications cited in Office Actions in nonprovisional applications beginning in June 2004. See the phase-in schedule of the E-Patent Reference program provided in "USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies," 1282 O.G. 109 (May 18, 2004). Therefore, this form paragraph should only be used for foreign patent documents, non-patent literature, pending applications that are not stored in the image file wrapper (IFW) system, and other information not previously supplied.

2. The reference copies being supplied must be listed following this form paragraph.

3. This form paragraph must be preceded by form paragraph 7.81 and may also be used with form paragraphs 7.82 or 7.83.

¶ 7.82.03 How To Obtain Copies of U.S. Patents and U.S. Patent Application Publications

In June 2004, the USPTO ceased mailing paper copies of cited U.S. patents and U.S. patent application publications with all Office actions. See "USPTO to Provide Electronic Access to Cited U.S. Patent References with Office Actions and Cease Supplying Paper Copies," 1282 O.G. 109 (May 18, 2004). Foreign patent documents and non-patent literature will continue to be provided to the applicant on paper.

All U.S. patents and U.S. patent application publications are available free of charge from the USPTO web site (www.uspto.gov/patft/index.html), for a fee from the Office of Public Records (http://ebiz1.uspto.gov/oems25p/index.html), and from commercial sources. Copies are also available at the Patent and Trademark Resource Centers (PTRCs). A list of the PTRCs may be found on the USPTO web site (www.uspto.gov/products/library/ptdl/locations/index.jsp). Additionally, a simple new feature in the Office’s Private Patent Application Information Retrieval system (PAIR), E-Patent Reference, is available for downloading and printing of U.S. patents and U.S. patent application publications cited in U.S. Office Actions.

STEPS TO USE THE E-PATENT REFERENCE FEATURE

Access to Private PAIR is required to utilize E-Patent Reference. If you do not already have access to Private PAIR, the Office urges practitioners and applicants not represented by a practitioner to: (1) obtain a no-cost USPTO Public Key Infrastructure (PKI) digital certificate; (2) obtain a USPTO customer number; (3) associate all of their pending and new application filings with their customer number; (4) install free software (supplied by the Office) required to access Private PAIR and the E-Patent Reference; and (5) make appropriate arrangements for Internet access.

Instructions for performing the 5 steps:

Step 1: Full instructions for obtaining a PKI digital certificate are available at the Office’s Electronic Business Center (EBC) web page (www.uspto.gov/ebc/downloads.html). Note that a notarized signature will be required to obtain a digital certificate.

Step 2: To get a Customer Number, download and complete the Customer Number Request form, PTO-SB/125, from the USPTO web site (www.uspto.gov/web/forms/sb0125.pdf). The completed form can be transmitted by facsimile to the Patent Electronic Business Center at (571) 273-0177, or mailed to the address on the form. If you are a registered attorney or agent, your registration number must be associated with your customer number. This association is accomplished by adding your registration number to the Customer Number Request form.

Step 3: A description of associating a customer number with the correspondence address of an application is described at the EBC Web page (www.uspto.gov/ebc/registration_pair.html).

Step 4: The software for electronic filing is available for downloading at www.uspto.gov/ebc. Users can also contact the EFS Help Desk at (571) 272-4100 and request a copy of the software on compact disc. Users will also need Adobe Acrobat Reader, which is available through a link from the USPTO web site.

Step 5: Internet access will be required which applicants may obtain through a supplier of their own choice. As images of large documents must be downloaded, high-speed Internet access is recommended.

The E-Patent Reference feature is accessed using a button on the Private PAIR screen. Ordinarily all of the cited U.S. patent and U.S. patent application publication references will be available over the Internet using the Office’s new E-Patent Reference feature. The size of the references to be downloaded will be displayed by E-Patent Reference so the download time can be estimated. Applicants and registered practitioners can select to download all of the references or any combination of cited references. Selected references will be downloaded as complete documents in Portable Document Format (PDF). The downloaded documents can be viewed and printed using commercially available software, such as ADOBE® READER®. ADOBE® READER® is available free of charge from Adobe Systems Incorporated (www.adobe.com/products/acrobat/readermain.html).

Examiner Note:

This form paragraph is recommended for use in Office actions citing U.S. patents or U.S. patent application publications when the applicant is not represented by a registered patent attorney or a registered patent agent.

¶ 7.83 Copy of Office Action Supplied

[1] of the last Office action is enclosed.

Examiner Note:

1. In bracket 1, explain what is enclosed. For example:

a. "A corrected copy"

b. "A complete copy"

c. A specific page or pages, e.g., "Pages 3-5"

d. "A Notice of References Cited, Form PTO-892"

2. This form paragraph should follow form paragraph 7.81 and may follow form paragraphs 7.82 and 7.82.01.

¶ 7.84 Amendment Is Non-Responsive to Interview

The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from the mailing date of this notice, whichever is longer, within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).

Examiner Note:

1. In bracket 2, insert the date of the interview.

2. In bracket 3, explain the deficiencies.

¶ 7.84.01 Paper Is Unsigned

The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from the mailing date of this notice, whichever is longer, within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).

¶ 7.84.01.AE Paper Is Unsigned – Application Under Accelerated Examination

The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from the mailing date of this notice, whichever is longer, within which to supply the omission or correction in order to avoid abandonment. Since this application has been granted special status under the accelerated examination program, NO extensions of this time period under 37 CFR 1.136 (a) will be permitted.

Examiner Note:

1. Examiner should first try to contact applicant by telephone and ask for a properly signed reply or ratification of the reply. If attempts to contact applicant are unsuccessful, examiner may use this form paragraph in a letter requiring a properly signed reply or ratification if the reply is to a non-final Office action.

¶ 7.84.AE Amendment Is Non-Responsive to Interview – Application Under Accelerated Examination

The reply filed on [1] is not fully responsive to the prior Office action because it fails to include a complete or accurate record of the substance of the [2] interview. [3] Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from the mailing date of this notice, whichever is longer, within which to supply the omission or correction in order to avoid abandonment. Since this application has been granted special status under the accelerated examination program, NO extensions of this time period under 37 CFR 1.136 (a) will be permitted.

Examiner Note:

1. In bracket 2, insert the date of the interview.

2. In bracket 3, explain the deficiencies.

3. This form paragraph may only be used in an application filed on or after August 25, 2006, that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102 (c)(2) or (d).

4. This form paragraph should not be used for an application that has been granted special status under 37 CFR 1.102 (c)(1) on the basis of applicant’s health or age, or the Patent Prosecution Highway pilot program.

¶ 7.85 Amendment Under 37 CFR 1.312 Entered

The amendment filed on [1] under 37 CFR 1.312 has been entered.

Examiner Note:

Use this form paragraph both for amendments under 37 CFR 1.312 that do not affect the scope of the claims (may be signed by primary examiner) and for amendments being entered under 37 CFR 1.312 which do affect the scope of the claims (requires signature of supervisory patent examiner). See MPEP § 714.16.

¶ 7.86 Amendment Under 37 CFR 1. 312 Entered in Part

The amendment filed on [1] under 37 CFR 1.312 has been entered-in-part. [2]

Examiner Note:

When an amendment under 37 CFR 1.312 is proposed containing plural changes, some of which may be acceptable and some not, the acceptable changes should be entered. An indication of which changes have and have not been entered with appropriate explanation should follow in bracket 2.

¶ 7.87 Amendment Under 37 CFR 1.312 Not Entered

The proposed amendment filed on [1] under 37 CFR 1.312 has not been entered. [2]

Examiner Note:

The reasons for non-entry should be specified in bracket 2:

--The amendment changes the scope of the claims.--; or

--The amendment was filed in a reissue application and was not accompanied by a supplemental reissue oath or declaration, 37 CFR 1.175(b). --

¶ 7.90 Abandonment, Failure to Reply

This application is abandoned in view of applicant’s failure to submit a proper reply to the Office action mailed on [1] within the required period for reply.

Examiner Note:

1. A letter of abandonment should not be mailed until after the period for requesting an extension of time under 37 CFR 1.136(a) has expired.

2. In pro se cases see form paragraph 7.98.02.

¶ 7.91 Reply Is Not Fully Responsive, Extension of Time Suggested

The reply filed on [1] is not fully responsive to the prior Office action because: [2]. Since the period for reply set forth in the prior Office action has expired, this application will become abandoned unless applicant corrects the deficiency and obtains an extension of time under 37 CFR 1.136(a).

The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. In no case may an applicant reply outside the SIX (6) MONTH statutory period or obtain an extension for more than FIVE (5) MONTHS beyond the date for reply set forth in an Office action. A fully responsive reply must be timely filed to avoid abandonment of this application.

Examiner Note:

1. In bracket 2, set forth why the examiner considers there to be a failure to take "complete and proper action" within the statutory period.

2. If the reply appears to be a bona fide attempt to respond with an inadvertent omission, do not use this form paragraph; instead use form paragraph 7.95.

¶ 7.95 Bona Fide, Non-Responsive Amendments

The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from the mailing date of this notice, whichever is longer, within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a).

Examiner Note:

This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.

¶ 7.95.01 Lack of Arguments in Response

Applicant should submit an argument under the heading "Remarks" pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.

Examiner Note:

1. This form paragraph must be preceded by form paragraph 7.95.

2. This form paragraph is intended primarily for use in pro se applications.

¶ 7.95.AE Bona Fide, Non-Responsive Amendments – Application Under Accelerated Examination

The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS from the mailing date of this notice, whichever is longer, within which to supply the omission or correction in order to avoid abandonment. Since this application has been granted special status under the accelerated examination program, NO extensions of time under 37 CFR 1.136(a) will be permitted.

Examiner Note:

1. This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.

¶ 7.96 Citation of Relevant Prior Art

The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. [1]

Examiner Note:

When such prior art is cited, its relevance should be explained in bracket 1 in accordance with MPEP § 707.05.

¶ 7.97 Claims Allowed

Claim [1] allowed.

¶ 7.98 Reply Is Late, Extension of Time Suggested

Applicant’s reply was received in the Office on [1], which is after the expiration of the period for reply set in the last Office action mailed on [2]. This application will become abandoned unless applicant obtains an extension of time to reply to the last Office action under 37 CFR 1.136(a).

Examiner Note:

Since the provisions of 37 CFR 1.136(a) do not apply to reexamination proceedings or to litigation related reissue applications, do not use this form paragraph in these cases.

¶ 7.98.01 Reply Is Late, Extension of Time Suggested, Pro Se

Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the above noted Office action. The application will become abandoned unless applicant obtains an extension of the period for reply set in the above noted Office action. An extension of the reply period may be obtained by filing a petition under 37 CFR 1.136(a). The petition must be accompanied by the appropriate fee as set forth in 37 CFR 1.17 (a) (copy of current fee schedule attached). The date on which the reply, the petition, and the fee have been filed is the date of the reply and also the date for purposes of determining the period of extension and the corresponding amount of the fee due. The expiration of the time period is determined by the amount of the fee paid. Applicant is advised that in no case can any extension carry the date for reply to an Office action beyond the maximum period of SIX MONTHS set by statute. Additionally, extensions may not be granted under 37 CFR 1.136(a) for more than FIVE MONTHS beyond the time period set in an Office action.

Examiner Note:

Enclose a photocopy of current fee schedule with action so that applicant can determine the required fee.

¶ 7.98.02 Reply Is Late, Petition To Revive Suggested, Pro Se

Applicant’s reply to the Office Action of [1] was received in the Patent and Trademark Office on [2], which is after the expiration of the period for reply set in the last Office Action. Since no time remains for applicant to obtain an extension of the period for reply by filing a petition under 37 CFR 1.136(a), this application is abandoned. Applicant is advised that the abandonment of this application may only be overcome by filing a petition to revive under 37 CFR 1.137. A petition to revive may be appropriate if applicant’s failure to reply was either unavoidable or unintentional, as set forth below.

A. Failure to reply was unavoidable.

A petition to revive an abandoned application on the grounds that the failure to reply was unavoidable (37 CFR 1.137(a)) must be accompanied by: (1) the required reply (which has been filed); (2) a showing to the satisfaction of the Director that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(a) was unavoidable; (3) any terminal disclaimer required pursuant to 37 CFR 1.137(d); and (4) the $[3] petition fee as set forth in 37 CFR 1.17(l). No consideration to the substance of a petition will be given until this fee is received.

The showing requirement can be met by submission of statements of fact establishing that the delay in filing the reply was unavoidable, as well as inadvertent. This must include: (1) a satisfactory showing that the cause of the delay resulting in failure to reply in timely fashion to the Office action was unavoidable; and (2) a satisfactory showing that the cause of any delay during the time period between abandonment and filing of the petition to revive was also unavoidable.

A terminal disclaimer and the $[4] terminal disclaimer fee is required under 37 CFR 1.137(d) if the application is: (1) a design application, (2) a utility application filed before June 8, 1995, or (3) a plant application filed before June 8, 1995. The terminal disclaimer must dedicate to the public a terminal part of the term of any patent granted the application equivalent to the period of abandonment of the application, and must also apply to any patent granted on any application containing a specific reference under 35 U.S.C. 120, 121 or 365(c) to the application for which revival is sought.

B. Failure to reply was unintentional.

A petition to revive an abandoned application on the grounds that the failure to reply was unintentional (37 CFR 1.137(b)) must be accompanied by: (1) the required reply (which has been filed); (2) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional; (3) any terminal disclaimer required pursuant to 37 CFR 1.137(d) (see above discussion); and (4) the $[5] petition fee as set forth in 37 CFR 1.17(m). No consideration to the substance of a petition will be given until this fee is received. The Director may require additional information where there is a question whether the delay was unintentional.

The required items and fees must be submitted promptly under a cover letter entitled "Petition to Revive."

Further correspondence with respect to this matter should be addressed as follows:

By mail:

Mail Stop Petition

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX:

571-273-8300

Attn: Office of Petitions

Telephone inquiries with respect to this matter should be directed to the Office of Petitions Staff at (571) 272-3282. For more detailed information, see MPEP § 711.03(c).