37 CFR 1.111 - Reply by applicant or patent owner to a non-final Office action.
(1) If the Office action after the first examination ( § 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
(i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
(E) Correction of informalities (e.g., typographical errors); or
(F) Simplification of issues for appeal.
(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.
- 37 CFR 1.143 — Reconsideration of Requirement.
- 37 CFR 1.111 — Reply by Applicant or Patent Owner to a Non-Final Office Action.
- 37 CFR 1.112 — Reconsideration Before Final Action.
- 37 CFR 1.560 — Interviews In
- 37 CFR 1.181 — Petition to the Director.
- 37 CFR 41.39 — Examiner's Answer.
- 37 CFR 1.1063 — Notification of Refusal.
- 37 CFR 1.945 — Response to Office Action by Patent Owner In
- 37 CFR 41.50 — Decisions and Other Actions by the Board.
- 37 CFR 1.703 — Period of Adjustment of Patent Term Due to Examination Delay.
- 37 CFR 1.133 — Interviews.
- 37 CFR 41.40 — Tolling of Time Period to File a Reply Brief.