BOOK THREE: THE LABYRINTH OF LAW AND LIES
Chapter Eight: Office Actions & Responses
The Prosecution Cycle: Understanding Office Actions
You've filed your application. The examiner reviews it. And then... you receive an office action.
An office action is the examiner's written communication explaining why your claims are rejected, objected to, or allowed. This is the heart of patent prosecution—the back-and-forth negotiation between applicant and examiner.
Why office actions matter: Very few applications are allowed on first examination. The average patent goes through 2-3 office actions before allowance. Understanding how to read, interpret, and respond to office actions is critical for both the exam and real practice.
Types of Office Actions
Office actions come in several types, each with different implications and response requirements:
📋 Types of Office Actions
1. Non-Final Office Action
- First substantive examination of claims
- Applicant has 3 months to respond (extendable up to 6 months with fees)
- Can amend claims, argue, submit new evidence
- Most common type—majority of applications receive this first
2. Final Office Action
- Issued when examiner maintains rejections after non-final response
- More limited amendment rights (only certain amendments permitted)
- 3-month response period (extendable)
- Options: RCE, appeal, continuation application, or abandon
3. Advisory Action
- Issued after response to final office action
- Not a new office action—just examiner's position on amendments filed
- Indicates whether amendments overcome rejections or not
4. Notice of Allowance
- Claims allowed! Patent will issue upon payment of issue fee
- 3-month period to pay issue fee
- After this, very limited ability to amend claims
Anatomy of an Office Action
Every office action follows a standard format. Understanding the structure helps you quickly find critical information during the exam.
Standard Office Action Components
📝 Office Action Structure
Header Information
- Application number
- Filing date
- Examiner name and art unit
- Type of action (non-final, final, etc.)
Summary Section
- Which claims are rejected
- Which claims are allowed (if any)
- Which claims are objected to
- Outstanding requirements or objections
Detailed Rejections
- Statutory basis (§ 101, § 102, § 103, § 112)
- Prior art cited (if applicable)
- Examiner's reasoning and analysis
- Claim elements mapped to prior art
Response Period
- Deadline to respond (typically 3 months, extendable)
- Extensions available and fees required
Common Rejection Types
Office actions typically include one or more of these rejection types:
🚫 Common Statutory Rejections
35 U.S.C. § 101 - Non-Statutory Subject Matter
"Claims 1-10 rejected under 35 U.S.C. § 101 as directed to an abstract idea without significantly more..."
Find in MPEP: Chapter 2100, specifically MPEP § 2106 (Alice/Mayo framework)
35 U.S.C. § 102 - Anticipation (Lack of Novelty)
"Claims 1-5 rejected under 35 U.S.C. § 102(a)(1) as anticipated by Smith (US Patent 1,234,567)..."
Find in MPEP: Chapter 2100, specifically MPEP § 2131-2133
35 U.S.C. § 103 - Obviousness
"Claims 1-10 rejected under 35 U.S.C. § 103 as obvious over Smith in view of Jones..."
Find in MPEP: Chapter 2100, specifically MPEP § 2141-2145
35 U.S.C. § 112(a) - Enablement/Written Description
"Claims 6-10 rejected under 35 U.S.C. § 112(a) as the specification does not enable one skilled in the art..."
Find in MPEP: Chapter 2100, specifically MPEP § 2161-2165
35 U.S.C. § 112(b) - Indefiniteness
"Claims 3-5 rejected under 35 U.S.C. § 112(b) as indefinite because the term 'substantially' renders the claim scope unclear..."
Find in MPEP: Chapter 2100, specifically MPEP § 2171-2175
Reading an Office Action: Speed Strategy for the Exam
During the exam, you don't have time to read entire office actions. You need to extract key information quickly.
The 30-Second Scan
✅ Speed Reading Office Actions
Step 1: Check the header (5 seconds)
- Is this non-final or final?
- What's the response deadline?
Step 2: Read summary section (10 seconds)
- Which claims rejected?
- What statutory sections cited? (§ 101, § 102, § 103, § 112)
Step 3: Identify prior art (10 seconds)
- How many references cited?
- Are they patents, publications, or combinations?
Step 4: Note objections vs. rejections (5 seconds)
- Objections = formal issues (drawings, specification format) - easier to fix
- Rejections = substantive patentability issues - harder to overcome
📖 Story Connection: Isaac's Formal Objection
When Isaac filed the formal objection to Zara's patent application, he structured it exactly like a USPTO office action:
- Header: Case number, filing party, date
- Claim as stated: "A vessel comprising genetic material... resulting in a child"
- Rejection: § 101 (Laws of Creation) - directed to natural phenomenon
- Response deadline: Three months or deemed abandoned
Zara treated it like patent prosecution because it was patent prosecution.
Response Options to Office Actions
When you receive an office action, you have several response options. The choice depends on the type of action and the strength of the rejections.
Responding to Non-Final Office Actions
📝 Response Strategies
Option 1: Amend Claims
- Add limitations to overcome rejections
- Cancel rejected claims
- Add new dependent claims
- Rule: Amendments cannot introduce new matter (§ 132)
Option 2: Argue Without Amendment
- Show examiner's interpretation is incorrect
- Distinguish prior art
- Provide evidence of unexpected results, commercial success, etc.
- When to use: Claims are already narrow enough, examiner made error
Option 3: Amend AND Argue
- Narrow claims to overcome rejection
- Explain why amended claims are now allowable
- Most common strategy
Option 4: Conduct Interview
- Request examiner interview before filing written response
- Clarify issues, propose amendments, negotiate claim scope
- Follow up with written response confirming discussion
Time Periods for Response (37 CFR 1.134)
Standard period: 3 months from mailing date of office action
Extensions available:
- First month extension: Fee required
- Second month extension: Higher fee
- Third month extension: Even higher fee
- Maximum total time: 6 months from office action date
Failure to respond: Application becomes abandoned
⚠️ Abandonment
If applicant fails to respond within the statutory period (including extensions):
- Application becomes abandoned
- Can be revived within certain time limits (with petition and fee)
- But delay can affect patent term, priority rights, and enforceability
In the story: Isaac gave Zara three months to respond. If she failed to respond, the treaty would be "deemed abandoned" and protections would void—exactly like USPTO practice.
Responding to Final Office Actions
Final office actions are more restrictive. Your amendment rights are limited.
Limited Amendment Rights After Final (37 CFR 1.116)
After final office action, amendments are permitted ONLY if they:
- Cancel claims
- Adopt examiner's suggestions
- Place application in condition for allowance
- Narrow the scope without introducing new issues
Examiner is NOT required to enter amendments after final. If amendment raises new issues or broadens claims, examiner will likely refuse entry.
Options After Final Rejection
📋 Post-Final Options
1. Request for Continued Examination (RCE) - 37 CFR 1.114
- File RCE with fee
- Restarts prosecution - can amend freely again
- Examiner issues new (non-final) office action
- Most common post-final strategy
2. Appeal to Patent Trial and Appeal Board (PTAB)
- File Notice of Appeal + Appeal Brief
- Argue examiner's rejections are incorrect
- Board reviews examiner's decision
- Use when: Believe examiner is wrong, claims should be allowed as-is
3. File Continuation Application
- File new application (before parent abandons) claiming priority to original
- Same disclosure, different claims
- Gets fresh examination with new claim set
- Use when: Want to pursue different claim scope
4. Abandon Application
- Let it go. No response filed.
- Use when: Invention no longer commercially valuable, claims won't overcome rejections
MPEP Navigation for Office Action Responses
During the exam, you'll need to quickly find relevant MPEP sections to answer questions about office action responses.
✅ Quick MPEP Reference - Office Actions
Office Action Types & Procedures:
- MPEP § 706 - Rejection of claims (general)
- MPEP § 706.07(a) - Final rejections
- MPEP § 714 - Amendments
- MPEP § 714.03 - Amendments after final
Response Time Periods:
- 37 CFR 1.134 - Time for reply (statutory provision)
- MPEP § 710 - Completeness of response
Post-Final Options:
- 37 CFR 1.114 - Request for Continued Examination (RCE)
- MPEP § 706.07(h) - After final practice
- MPEP § 1200 - Appeal procedures
Exam Tip: When question asks "What can applicant do after final office action?" → Search "final office action options" or go directly to MPEP § 706.07(h)
Common Exam Scenarios: Office Actions
📝 Practice Scenario 1
Question: Applicant receives non-final office action on March 1. What is the last day to file a response without extension?
Analysis:
- Non-final office action = 3-month statutory period (37 CFR 1.134)
- Count from mailing date: March 1 + 3 months = June 1
Answer: June 1 (assuming no weekend/holiday adjustments)
MPEP Reference: MPEP § 710 (time for reply)
📝 Practice Scenario 2
Question: Applicant receives final office action. Can applicant amend claims to add new independent claim directed to different invention?
Analysis:
- After final = limited amendment rights (37 CFR 1.116)
- Adding new independent claim to different invention = raises new issues
- Examiner NOT required to enter amendment that raises new issues
Answer: Applicant can FILE the amendment, but examiner will likely refuse to enter it. Better option: File continuation application with new independent claim.
MPEP Reference: MPEP § 714.03 (amendments after final)
📝 Practice Scenario 3
Question: Applicant disagrees with examiner's final rejection. What options does applicant have?
Options:
- File RCE - Continue prosecution with amendments
- Appeal to PTAB - Challenge examiner's decision
- File continuation - Try different claim strategy
- Abandon - Give up
Choice depends on: Strength of examiner's rejection, commercial value of invention, budget for continued prosecution
MPEP Reference: MPEP § 706.07(h) (after final practice)
Chapter Summary: Office Actions
📖 Key Takeaways
Types of Office Actions:
- Non-final (most common, broad amendment rights)
- Final (limited amendment rights, strategic options needed)
- Advisory (not a new action, just examiner's position)
- Notice of Allowance (you won!)
Response Deadlines:
- 3 months statutory period (extendable to 6 months with fees)
- Failure to respond = abandonment
Post-Final Options:
- RCE (restart prosecution)
- Appeal (challenge examiner)
- Continuation (new application, new claims)
- Abandon (give up)
MPEP Quick Find:
- Office action procedures → MPEP § 706
- Final rejections → MPEP § 706.07(a)
- After final options → MPEP § 706.07(h)
- RCE → 37 CFR 1.114, MPEP § 706.07(h)
- Time periods → 37 CFR 1.134, MPEP § 710
Story Connection:
Isaac's formal objection to Zara's patent application = Non-final office action. Three-month response period. § 101 rejection (natural phenomenon). Zara must respond or treaty protections become abandoned. Exactly like USPTO practice.
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END OF CHAPTER 8 - OFFICE ACTIONS & RESPONSES