Patents and How to Get One: A Practical Handbook

by United States. Department of Commerce

On the second or later consideration, the rejection or other action may be made final. The applicant’s response is then limited to appeal in the case of rejection of any claim and further amendment is restricted. Petition may be taken to the Commissioner in the case of objections or requirements not involved in the rejection of any claim. Response to a final rejection or action must include cancellation of, or appeal from the rejection of, each claim so rejected and, if any claim stands allowed, compliance with any requirement or objection as to form.

In making such final rejection, the examiner repeats or states all grounds of rejection then considered applicable to the claims in the application.

Interviews with examiners may be arranged, but an interview does not remove the necessity for response to Office actions within the required time, and the action of the Office is based solely on the written record.

Restrictions

If two or more inventions are claimed in a single application, and are regarded by the Office to be of such a nature that a single patent should not be issued for both of them, the applicant will be required to limit the application to one of the inventions. The other invention may be made the subject of a separate application which, if filed while the first application is still pending, will be entitled to the benefit of the filing date of the first application. A requirement to restrict the application to one invention may be made before further action by the examiner.

Amendments to Application

Following are some details concerning amendments to the application:

The applicant may amend before or after the first examination and action as specified in the rules, or when and as specifically required by the examiner.

After final rejection or action, amendments may be made canceling claims or complying with any requirement of form which has been made but the admission of any such amendment or its refusal, and any proceedings relative thereto, shall not operate to relieve the application from its condition as subject to appeal or to save it from abandonment.

If amendments touching the merits of the application are presented after final rejection, or after appeal has been taken, or when such amendment might not otherwise be proper, they may be admitted upon a showing of good and sufficient reasons why they are necessary and were not earlier presented.