The examination of the application consists of a study of the application for compliance with the legal requirements and a search through United States patents, foreign patent documents, and available literature, to see if the claimed invention is new and nonobvious. A decision is reached by the examiner in the light of the study and the result of the search.
As a result of the examination by the Office, patents are granted in the case of about two out of every three applications for patents which are filed.
Office Action
The applicant is notified in writing of the examiner’s decision by an “action” which is normally mailed to the attorney or agent of record. The reasons for any adverse action or any objection or requirement are stated in the action and such information or references are given as may be useful in aiding the applicant to judge the propriety of continuing the prosecution of his/her application.
If the claimed invention is not directed to patentable subject matter, the claims will be rejected. If the examiner finds that the claimed invention lacks novelty or differs only in an obvious manner from what is found in the prior art, the claims may also be rejected. It is not uncommon for some or all of the claims to be rejected on the first office action by the examiner, relatively few applications are allowed as filed.
Applicant’s Response
The applicant must request reconsideration in writing, and must distinctly and specifically point out the supposed errors in the examiner’s action. The applicant must respond to every ground of objection and rejection in the prior Office action (except that 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 action must appear throughout to be a bona fide attempt to advance the case to final action. The mere allegation that the examiner has erred will not be received as a proper reason for such reconsideration.
In amending an application in response to a rejection, the applicant must clearly point out why he/she thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made. He/she must also show how the claims as amended avoid such references or objections.
After response by the applicant the application will be reconsidered, and the applicant will be notified as to the status of the claims, that is, whether the claims are rejected, or objected to, or whether the claims are allowed, in the same manner as after the first examination. The second Office action usually will be made final.