Examination, Office actions and replies

A reply must be in writing, address every ground of objection and rejection, and point out specifically how the claims distinguish the references; a general allegation of patentability is not enough (37 CFR 1.111(b); MPEP 714.02). Only objections as to form that are not needed for further consideration of the claims may be held in abeyance. A supplemental reply is not entered as of right unless filed during a suspension of action; the Office may enter it if it is limited to cancelling claims, adopting suggestions, placing the case in condition for allowance and similar listed items (MPEP 714.03(a)).

If a reply to a non-final action is bona fide and substantially complete but something was inadvertently omitted, the examiner may set a new 2-month period to supply it (37 CFR 1.135(c); MPEP 714.03). This relief does not apply to deliberate omissions, such as refusing to elect because the requirement seems wrong, or to amendments cancelling every claim, which are not entered and are not express abandonments (MPEP 711.01).

• •Amendments follow 37 CFR 1.121: every claim amendment carries a full claim listing with status identifiers; added text is underlined and deleted text struck through (double brackets for five or fewer characters).
• •A cancelled claim returns only as a new claim with a new number (37 CFR 1.121(c)(5)).
• •A preliminary amendment present on the filing date is part of the original disclosure; one filed later is not (37 CFR 1.115(a)).

Periods run from the mail date on the action to the corresponding day of the later month (MPEP 710.01(a)). A due date on a Saturday, Sunday or federal holiday rolls to the next business day (35 U.S.C. 21(b); 37 CFR 1.7), but extensions are added to the true last day of the original period. Extension fees are cumulative, and the extension obtained is the one paid for (37 CFR 1.136(a)(2)). The application is abandoned after midnight of the last day the reply could have been filed (MPEP 711.04(a)).