Non-Final Office Action

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Non-Final Office Action

Rejections are typically found in an office action from the USPTO.  Typically, the first office action received is a non-final office action.  In responding to such an action, the M.P.E.P. indicates that: 

(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. 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 does not comply with the requirements of this section.

(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must 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. The applicant or patent owner must also show how the amendments avoid such references or objections.[1]M.P.E.P. § 714.02; 37 C.F.R. § 1.111.

So in responding to the non-final office action response, you must fully respond to the Examiner’s arguments.  Rather than responding to each claim individually, typically all of your independent claims will be grouped and rejected together.  You can respond by arguing the appropriate claim limitation but indicating something like “Claim XX requires [quote the “similar” language of the corresponding claim].  Accordingly, the rejection inherits the deficiencies of the rejection of claim 1 for reasons similar to those set forth above regarding the rejection of claim 1.” 

Or, you may simply include the language “see this or similar but not necessarily identical claim language in each of the independent claims.”  The second example may create some level of prosecution history estoppel as arguments made for one claim are applied and inherited to other claim sets as well.

Additionally, it is not necessary to argue each and every dependent claim.  Typically, a few dependent claims will be argued.  But at the end of the arguments, stock language can be inserted similar to:

Claims X1-X2 have been objected to as being dependent upon a rejected base claim.  Such objection is deemed avoided by virtue of the arguments set forth herein.

In this manner, because the dependent claims stem from the independent claim, the arguments for the independent claims would inherently also apply to the dependent claims as well.  Indeed, for obviousness rejections, there is case law that provides authority for this proposition. In particular, if an independent claim is nonobvious under 35 U.S.C. § 103, then any claim depending therefrom is nonobvious. See In re Fine, 837 F.2d 1071 (Fed. Cir. 1988).


1 M.P.E.P. § 714.02; 37 C.F.R. § 1.111.