Alexander receives his first Office Action from Examiner Athelia containing multiple rejections under §§ 102 (anticipation), 103 (obviousness), and 112(a) (enablement). Racing against the statutory deadline, he must analyze each rejection, amend claims without introducing new matter, and craft arguments distinguishing prior art references. This chapter teaches the complete Office Action structure, response requirements, claim amendment strategies, and the critical distinction between narrowing amendments to overcome rejections versus prohibited broadening amendments. The story encodes the high-stakes nature of patent prosecution deadlines and the strategic balance between fighting rejections through argument versus amending claims to allowable scope.
Office Actions are official USPTO communications rejecting or objecting to claims. Non-Final Office Action (37 CFR § 1.104) is the first substantive examination communication, allowing full claim amendments and arguments. Final Office Action comes after applicant's response to Non-Final, restricting amendment options significantly. Advisory Action responds to amendments after Final, indicating whether they overcome rejections. Notice of Allowance under 35 U.S.C. § 151 issues when all claims are allowed. Restriction Requirement under § 121 forces election between independent and distinct inventions before substantive examination begins.
§ 102 Anticipation: Single prior art reference discloses every claim limitation ("all elements" rule). § 103 Obviousness: Combination of prior art references makes claimed invention obvious to PHOSITA. § 112(a) Enablement: Specification doesn't teach PHOSITA how to make and use invention. § 112(b) Indefiniteness: Claims don't particularly point out and distinctly claim the invention. § 101 Eligibility: Claims directed to abstract idea (Alice/Mayo framework), law of nature, or natural phenomenon without significantly more.
37 CFR § 1.134 establishes 3-month statutory period to respond to Office Actions, extendable to 6 months total with extension fees increasing monthly. Must respond to EVERY rejection and objection - cannot pick and choose which to address. Applicant can amend claims, argue, or both in response. Failure to timely respond = abandonment under 37 CFR § 1.135(a), though petition to revive possible under § 1.137 (unintentional) or § 1.138 (unavoidable) with fees and showing.
35 U.S.C. § 132(a) prohibits amendments adding new matter not supported by original disclosure. Amendments must be narrowing (adding limitations) to overcome prior art - broadening amendments only allowed in continuing applications. Dependent claims strategy: Convert broader independent claim into dependent claim of narrower independent, preserving claim scope range. Continuation applications allow pursuit of non-elected subject matter or broader claim scope without new matter restriction from parent's disclosure.
Distinguishing prior art: Identify claim limitations not disclosed in cited references. Teaching away doctrine: Prior art actively discourages claimed combination (stronger than merely disclosing alternatives). Secondary considerations under § 103: commercial success, long-felt need, failure of others, unexpected results, copying by competitors. Unexpected results: Claimed invention achieves results not predictable from prior art teachings. Commercial success with nexus: Success must result from claimed features, not unrelated factors like marketing.
MPEP § 713 governs examiner interviews. Telephonic vs. in-person: Remote interviews common, in-person at USPTO available. Pre-appeal brief conferences: Last attempt to resolve rejections before formal PTAB appeal. Interview summary requirement: Examiner must record substance of interview on record - ensure accuracy. Interviews allow real-time discussion of rejections, clarification of claims, proposed amendments, and often compact prosecution significantly by resolving misunderstandings.
35 U.S.C. § 121 allows examiner to restrict examination to one invention when claims encompass independent and distinct inventions. Applicant must elect species or group for examination. Traverse vs. election without traverse: Can challenge restriction while electing (preserves right to petition Director). Divisional applications allow pursuit of non-elected inventions with benefit of parent filing date under § 120. Restriction avoids forcing examiner to search multiple unrelated fields.
After Final, amendments limited to placing application in condition for allowance (37 CFR § 1.116). RCE (Request for Continued Examination) under 37 CFR § 1.114 reopens prosecution, converting Final to Non-Final for fee. Appeal to PTAB under 35 U.S.C. § 134 challenges examiner's rejections on legal/factual grounds. Continuation application filing maintains prosecution with fresh examination while Final prosecution pending. Strategic choice depends on strength of rejections, claim scope goals, and timing/budget constraints.
Question: Applicant receives § 102 rejection citing Reference A disclosing "metal fastener." Original claim 1 recites "steel fastener." Can applicant amend claim 1 to recite "fastener" (removing "steel" limitation) to avoid Reference A which only discloses metal, not all materials?
Analysis Points: This is a broadening amendment - removing limitations expands claim scope. Broadening amendments prohibited during prosecution of pending application (only allowed in reissue or continuation using original disclosure). Proper strategy: Argue steel is patentably distinct from generic metal, or add different narrowing limitation (e.g., specific structural feature) while potentially keeping "steel." If broadening desired, file continuation claiming benefit to original filing date.
Question: Examiner issues restriction requirement forcing election between (Group I) method claims and (Group II) apparatus claims. Both seem related to same invention. Should applicant traverse the restriction, elect without traverse, or simply elect? What are strategic considerations?
Analysis Points: Traverse challenges restriction propriety, preserving right to petition Director if restriction improper. Election without traverse accepts restriction, limiting ability to challenge. If inventions truly related (apparatus and method of using apparatus), strong traverse argument exists - single inventive concept. Consider: (1) strength of restriction (clear independence?), (2) cost of divisional vs. benefit of challenge, (3) examination delay from petition. Often elect Group I with traverse, file divisional for Group II to preserve all rights while advancing prosecution.
Question: After Final rejection under § 103, applicant has three options: (A) RCE with amended claims, (B) Appeal to PTAB, (C) File continuation with new claims. Compare strategic advantages and disadvantages of each option.
Analysis Points: RCE: Pros - reopens prosecution, allows full amendments, relatively quick. Cons - costs RCE fee, no guarantee of allowance, same examiner. Appeal: Pros - challenges rejection on merits, fresh review by APJs, can win on law/facts. Cons - expensive, slow (1-2 years), technical brief required, might lose and need RCE anyway. Continuation: Pros - fresh examination, potential different examiner, preserves parent filing date, can pursue different claim scope. Cons - new filing fees, resets prosecution, doesn't resolve whether original claims allowable. Choice depends on: rejection strength, claim scope importance, budget, timeline urgency.
Question: When should applicant request examiner interview? (A) Before first Office Action, (B) After Non-Final Office Action before responding, (C) After Final Office Action, (D) During appeal? What can be accomplished in interview vs. written response?
Analysis Points: Pre-first-action interview (MPEP § 713.01): Can clarify claims, discuss prior art, shape examination direction - often productive. After Non-Final: Most common - discuss rejections, propose amendments, resolve misunderstandings. After Final: Critical for compact prosecution - propose specific amendments, get examiner agreement before filing RCE/continuation. Pre-appeal conference: Last chance to avoid appeal - examiner and supervisory examiner review. Interviews excel at: clarifying claim scope, explaining technical distinctions, proposing concrete amendments, building examiner relationship. Written responses better for: complex legal arguments, detailed technical evidence, creating prosecution history record.
Question: Applicant receives § 112(a) enablement rejection: "Specification doesn't teach how to synthesize claimed pharmaceutical compound." Applicant wants to add paragraph to specification describing detailed synthesis procedure based on inventor's later lab work. Why does this violate 35 U.S.C. § 132(a) new matter prohibition?
Analysis Points: § 132(a) prohibits introducing new matter - subject matter not present in application as filed. Synthesis procedure from post-filing lab work was not in original specification, so it's new matter even if invented by same inventor. Adding it would give applicant benefit of original filing date for subject matter not disclosed until later (unfair). Proper responses to § 112(a): (1) Argue specification already enables (cite specific passages), (2) Show knowledge in art makes synthesis routine, (3) Cite prior art disclosing synthesis method, (4) If truly not enabled, consider: abandoning claims, filing CIP (continuation-in-part) with new matter but loses filing date benefit, or narrowing claims to enabled embodiments. Critical lesson: disclosure at filing determines maximum claim scope - cannot bootstrap later developments.
Federal Circuit, 1992 - 977 F.2d 1443
Patent application claimed mechanical ear clamp for hoses with specific inwardly-bent closure panel design. Examiner rejected claims under § 103 as obvious over combination of two references: (1) Kalnberz reference disclosing ear clamp with outwardly-bent closure panel, and (2) Calmettes reference showing inwardly-bent panel in different fastener context. Applicant argued references could not be combined because Kalnberz taught away from inward-bending design by expressly preferring outward-bending and criticizing inward designs as inferior.
Does prior art reference "teach away" from claimed invention when it discloses alternative approach and expresses preference for that alternative, or must reference expressly criticize or discourage the specific claimed combination to constitute teaching away?
Federal Circuit held that prior art reference does not teach away merely by disclosing alternative approach or expressing preference for different embodiment. To constitute "teaching away," reference must criticize, discredit, or otherwise discourage investigation into the claimed solution. Kalnberz's preference for outward-bending did not teach away from inward-bending - merely disclosed alternative. Court affirmed obviousness rejection.
"Teaching away" requires more than preference for alternative: Reference must actively discourage or criticize claimed approach. Standard is high - protects against hindsight bias in § 103 analysis. Showing teaching away is powerful rebuttal to prima facie obviousness because it demonstrates skilled artisan would not have been motivated to make claimed combination even if references technically disclose all elements.
This case is critical for responding to § 103 obviousness rejections based on combinations of references. When examiner combines Reference A and Reference B, applicants often argue A "teaches away" from B. Oetiker clarifies this argument requires showing Reference A actively discourages using Reference B's teaching, not merely that A prefers different approach.
Practical application in Office Action responses:
Alexander's Office Action response in Chapter 7 includes § 103 obviousness rejection combining multiple prior art references. He must determine whether any references teach away from the combination. The Oetiker standard shapes his argument strategy - he cannot merely argue references disclose alternatives; he must show the references actively discourage the claimed combination. This demonstrates the precision required in patent prosecution arguments and why understanding Federal Circuit precedent is essential for effective Office Action responses.
(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.
(b) The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1).
Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto.
(a) Patent Applicant. - An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
(b) Patent Owner. - A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal.
(a) The reply by the applicant or patent owner to a non-final Office action under § 1.104 must be made within the time period set for reply in the Office action. The time period for reply expires on the date on which the time period is due to expire under the provisions of paragraph (c) of this section. Extensions of time are governed by § 1.136.
(b) The reply by the applicant or patent owner must be reduced to writing and must distinctly and specifically point out the supposed errors in the examiner's action. The applicant or patent owner must reply to every ground of objection and rejection in the Office action, except that reply to a requirement (35 U.S.C. 112) or to an objection or rejection claiming lack of enablement or lack of written description (35 U.S.C. 112(a)) may be deferred until an objection or rejection under 35 U.S.C. 112(b) or (d) has been made.
(a) Amendments in applications and reexamination proceedings:
(1) Amendments in applications (including reissue applications) and ex parte reexamination proceedings must be made in one of the following manners:
(i) Replacement paragraph(s): By submitting the entire text of an added or rewritten paragraph, including markings pursuant to paragraph (c) of this section to show all changes relative to the previous version of the paragraph.
(ii) Replacement page(s): For drawings, by submitting replacement pages including markings to show all changes relative to the previous version.
(b) Amendments in the specification, claims, or abstract must be made by submission of the entire text of a paragraph changed or added, together with an instruction to cancel, replace, or add a paragraph.
(a) The date of a notice of allowance or Office action is the date indicated on the notice or Office action, as evidence of which the Office will accept the postmark or indication of actual mailing date. The three-month period in which to reply to an Office action in an application (including a reexamination proceeding) or a patent under reexamination runs from the date the Office action was mailed. Extensions of time are governed by § 1.136.
(b) The period for reply expires on the same day of the month as the date on which the Office action was mailed or given. If the day of the month is missing because the month has insufficient days, the period for reply expires on the last day of the month. If the day of the month is missing, the period for reply expires on the last day of the month.
Purpose: Interviews between examiners and applicants (or applicant's representatives) are encouraged as they often advance prosecution efficiently by clarifying issues, discussing claim interpretation, and resolving rejections that may be based on misunderstandings.
Interview Summary Requirement: Examiner must make a complete written record of each substantive interview. The summary must include (1) date of interview, (2) participants, (3) claims discussed, (4) substance of interview including objections and rejections discussed, applicant's positions, and examiner's responses, and (5) description of any agreed-upon amendments or actions. Applicant has right to file statement within one month confirming or correcting interview summary.
Pre-First-Action Interview Pilot Program (§ 713.01): Allows applicant to request interview before first Office Action. Can be productive for establishing claim scope, discussing prior art approach, and setting examination direction.
Conduct of Interviews: Interviews may be conducted in person at USPTO, via telephone, or via video conference. Personal interviews generally limited to applications where issues cannot be adequately addressed remotely. Telephonic interviews are most common for routine claim/rejection discussions.