How to read and respond to an Office Action from the USPTO

Office Actions are formal documents prepared and communicated from a patent examiner at the United States Patent and Trademark Office. Office Actions are common in patent prosecution to obtain a patent, and typically during patent prosecution at least 2-3 Office Actions will be issued before a patent application is granted as a patent. These linked blog posts include sample language of how to respond to specific rejections within an office action: 1) How to respond to a 35 USC 102 rejection, 2) How to respond to a 35 USC 103 rejection.

In this overview, I will go over an office action for patent application number 13/399,325 which was a patent application that covered the MacBook Air made by Apple. A copy of the patent application can be found here,325&ei=-TrnUP2YHou00QG8nIHQDQ. For full prosecution history of the patent application, visit which is “public pair” that includes all communications between an attorney and the USPTO.

On the cover page of the Office Action there are various identifiers associated with the patent application, including the application number that can be used to find a patent on public pair or, the filing data of the application that may establish a prior date of the application, the first name of the inventor, the attorney docket number that is used internally by the law firm, the art unit that is the classification of the patent by the USPTO, and the notification date. Inventors/lawyers have a 3 month period to reply to an office action without paying additional fees. However, the office action can be replied to within 6 months with governmental fees. Even if you do not reply within the 6 month period you can respond to the office action with VERY HIGH governmental fees.

On the first page of the office action is a summary of the office action. The office action will state the last response was filed with the uspto and whether the office action is FINAL or NON-FINAL. The main difference between the two is that in non-final Office Actions arguments and claim amendments can be made without paying an additional government fee. Whereas, in final Office Actions arguments can be made without an additional fee but if an applicant desires to amend the claims it is required to pay an additional governmental (RCE) fee. After filing the RCE fee with claim amendments, typically in the next issued action will be a notice of allowance of another non-final office action.

The meat of this office action begins on page 2 of this Office Action. Page 2 initially lists claims objections which are typically directed towards formality type issues in the claims. To overcome claim objections, the wording of the claims may need to be amended to overcome the objections. For example, in this Office Action the claims were to be amended to overcome typos. Claim objections may also be directed towards amending the claims to include proper antecedent basis. Essentially antecedent bases refers to the first time a claim limitation is brought in it should be recited as “a device” and subsequent references to the claim limitation should be recited as “the device.” A sample response to overcome claim objections is provided below:

                Applicant has amended the objected to claims to correct minor typographical errors recited in the claims. Therefore, withdrawal of these objections is respectfully requested.

Additionally, on page 2 of the Office Action the examiner brought forth a 35 USC 103 “cited art” rejection. A 35 USC 103 rejection is a rejection that uses elements from multiple references to meet each claim limitation recited in a claim. In other Office Actions, inventors may see a 35 USC 102 rejection that is a rejection that uses a single reference to meet each limitation as recited by a claim. To overcome a cited art rejection, the claims can be amended to distinguish the claimed invention from the cited art and/or arguments can be provided that tell why the cited art is different than the claimed limitations. A typical response to an office action is recited as follows:

To expedite prosecution and without conceding to the Examiner’s positions independent claim 1 has been amended to recite “… + 123.” For at least the following reasons, these limitations are not met by the cited art.

                On page X of the Office Action dated ABC, the Examiner alleges that reference A discloses “…” as recited in independent claim 1. Reference A discloses DCE. Reference A further discloses FGH. However,  reference A is completely silent with regards to “… + 123” as recited in amended claim 1.

                The Examiner does not use, nor do references B and C disclose the above mentioned limitations of amended claim 1. Therefore, references B and C fail to overcome the above-mentioned deficiencies between reference A and amended claim 1.

                In view of the above, Applicant submits that the references alone or in combination meet each and every limitation as recited in independent claim 1. The other independent claims are allowable at least for somewhat similar reasons as independent claim 1, as well as on their own merits. The dependent claims are allowable at least by virtue of their dependency from an allowable independent claim. Therefore, Applicant respectfully requests the withdrawal of these rejections.

By | 2013-08-09T12:16:03+00:00 January 4th, 2013|Patent Basics, Uncategorized|Comments Off on How to read and respond to an Office Action from the USPTO