Office Actions – What Are They and Why You Need a Professional to Respond

Patent practitioners refer to communications regarding a successfully filed patent application from the United States Patent and Trademark Office (USPTO) Office that require the patent applicant to respond as an “Office Action.”  A successfully filed patent application is one that has received a filing date from the USPTO.  Further, patent practitioners actually only refer to USPTO correspondence that require a substantive response as Office Actions.

In contrast, a common a first correspondence from the USPTO is often a “restriction requirement” which is really not a first Office Action, because the USPTO examiner has not made a substantive review of the application with respect issues of patentability, but is only telling the applicant that he has claimed more than one invention and thus requires the applicant to elect which sets of claims the examiner is to actually substantively review.  So generally for the patent practitioner, responding to the restriction requirement is fairly simple and quick.  (Although for the applicant, this may entail additional costs if the applicant wants to pursue all the claims in the original application because now the applicant will have to file a continuing application (e.g. a divisional) to address the non-elected claims.)

Whereas, in a true Office Action the examiner has made a substantive review of the application claims (and the specification and drawings) and writes up a report to the applicant summarizing why the examiner believes certain aspects of the application are objectionable or rejected.  And this is why properly and timely responding to the Office Action is critical, because if the action is not responded to at all then an application will become abandoned or if responded to poorly no claims will be allowed.

When to Expect the First Office Action?

Currently the overall average is a bit over 18 months, which is also about the time an application should be published by the USPTO.  Thus, on average, an applicant will have a bit over 18 months of lag time from the time they file their application to when they have to again work on the application when they receive the first Office Action.

Note, this overall average can vary significantly.  It can vary because of the type of technology involved or because the applicant has paid for fast tracking the prosecution.  For example, see which is a “First Office Action Estimator” tool that the USPTO provides, where you can get an estimate by entering your technologies art classification (or group art unit).  See also for visual summaries of many patent prosecution related statistics.

How Many Office Actions Are There?

Generally, many prosecutions of patent applications will involve two official Office Actions, a first action, followed by a second action, which is often also the final action.  The CFR and MPEP actually specify for two rounds of Office Actions, which actually makes logical sense.  Because in responding to the first Office Action the practitioner most often amends the claims by adding additional language or limitations to the claims, to narrow them and move them beyond the prior art.  But such a response, which is common, also means that when the examiner receives the amended claims back, the examiner must conduct another search to see if there is any new prior art that reads on the amended claims with the new limitations and this leads to the second Office Action.  There can be more Office Actions as well, particularly if the applicant files for a RCE (Request for Continued Examination).

Most Common Rejections

First, a word on objections versus rejections.  Rejections are more severe than an objection.  An objection generally just refers to a technicality, usually a formatting error, that is easily corrected upon amendment when responding to the Office Action.  Whereas, rejections are much more serious and must be corrected or else the rejected claim will never be allowed.  Depending upon the situation, some rejections can be fatal, i.e. not curable.  See MPEP 706.01.

Also with respect to rejections, it is not usual in a first Office Action to have all of the applicant’s claims rejected, which can be a scary situation for the applicant to deal with.  However, if your application was prepared by a professional patent practitioner, then generally having all the claims rejected is actually a good thing because it often means the claim drafter did not start with claims that were too narrow to begin with, i.e. the goal is to draft as broad of claims as the prior art will permit.

The most common basis for rejections are as follows: 101 subject matter eligibility, 101 utility, 102 novelty, 103 obviousness, 112 enablement, 112 written description, 112 best mode, 112 distinct language, and 112 claim form.  Each one of the above refers to a section number of the statute 35 U.S.C.  Each one of these statutory sections could easily be the subject of its own article, so for now we will just summarize each of these bases for rejection.  Also, note 103 obvious rejections are common to all fields of technology; whereas 101 subject matter eligibility rejections are more common in areas of emerging technology, especially software and biotechnology.

101 Subject Matter Eligibility

Inventions must be claimed to fit the invention into one (or more) of the pigeon holes as set forth in section 101 of the code, which specifies the following statutory categories of invention: process, machine, manufacture, or composition of matter.  So for example, software, the raw code itself, does not fit into any of these statutory categories and that is why the software code cannot be patented.  But by claiming the software as the process it accomplishes, by claiming all the steps and logic involved, method claims pertaining to how software functions is generally patentable.  See MPEP 2105 – 2106 and the landmark case in this area is Bilski v. Kappos, 545 F.3d 943 (2010).

101 Utility

The section 101 utility requirement actually stems from judicial interpretation of 101 as well as the word “useful” in the statutory section, where the interpretations require that the patent application, the specification in particular, generally disclose how the invention that is claimed is useful.  Note, this requirement does not apply to the patentability of design patents; but, only to utility patents.  Also, it is generally better to disclose the usefulness in the body of the specification rather than only in the claims.

This requirement is easy to meet when one is initially drafting the specification before filing, but can be a fatal error if omitted once filed because if you try to amend the specification to include language of how the invention is useful after filing, you will likely be prevented from doing so under the grounds that you are attempting to inject “new matter” that was not supported by the originally filed disclosure.  Note, a deficiency under 101 for lacking utility always also creates a 112(a) (1st paragraph) deficiency because if the invention is not useful how can it be enabling?  See MPEP 2701.

102 Novelty

Section 102 and 103 rejections are based on prior art and are the most common type of rejection.  At its core section 102 just requires that the invention must be new, i.e. not anticipated by an existing invention.  In operation it can be a little tedious as the prior art must read on each and every element cited in the applicant’s claim to count as 102 prior art and of course the prior art must originate from before the applicant’s filing date (under the current America Invents Act (AIA) first to file system).  There are additional requirements as well, e.g. the prior art must be an “enabling” disclosure to be used as prior art.

Additionally, section 102 includes the one year grace period or statutory bars, which provides patent applicants with one year in which to file their patent application from the time they disclose information about their invention, which may occur because of: printed publication (including internet publication), “public use” of the invention, “on-sale,” or it was otherwise available to the public.  This requirement applies to utility and design patent applications.

Note, there is much existing case law under the pre-AIA 102 which specified what printed publication, public use, and on-sale meant, and in each situation they are generally more encompassing than the plain language suggests.  For example, the “on-sale” bar also would include if the inventor had merely offered to sell the invention to another, i.e. if a commercial offer to sell occurred then the inventor would have one year to file the patent application or be forever barred from obtaining a patent under section 102.  Further, the on-sale bar refers to sales and offers to sell the invention, but NOT to an assignment or offer to assign the rights to the invention.  Lastly, the phrase “or otherwise available to the public” appearing in new 102(a) is new statutory language that has yet to be litigated, so its impact is currently unclear (as of November 5, 2013).  See MPEP 2131 – 2133, note this area of the MPEP is in a state of flux as we transition from the pre-AIA to the AIA with respect to section 102.

103 Obviousness

103 obviousness rejections are the most common and most subjective type of claim rejection.  Essentially the 103 obvious rejections boil down to the examiner arguing to the applicant, “anybody could have done that” with respect to the invention.  Actually, it would be more accurate to say, “an ordinary person of skill in the art could have done that.”  So although what would be obvious is judged against this imaginary person of ordinary skill in the relevant art, in practice 103 rejections are subjective because they originate from an examiner who believes your invention is obvious.  The analytical framework for the examiner to make the rejection and for the practitioner to respond are governed by an older Supreme Court case, Graham v. John Deere, 383 U.S. 1 (1966) (which set forth the big picture analytical framework), and a more recent case KSR v. Teleflex, 550 U.S. 398 (2007) (which sets forth when it was proper to make a 103 obviousness rejection).  See MPEP 2141 – 2146.

The most common response technique for 103 rejections (and 102 rejections) is to simply amend the claims adding further limitations to move the claim language beyond the prior art (as long as the added language is supported by the original filed specification disclosure).  While this is the easy way out, it is not desired because you are introducing limits to the broadness of your claims.  The other techniques and strategies for overcoming a 103 rejection without amending the claims are many, although the use of any given technique is highly dependent upon the facts; but in any event, those techniques are beyond the scope of this article.

112(a) Enablement

Under the pre-AIA statute, the enablement requirement was found in 112 first paragraph (i.e. before the AIA section 112 was never numbered into sub-sections like 102 and 103 were).  Note the enablement, written description, and best mode requirements are all found in the language of 112(a).

Enablement refers to the requirement that the specification must “enable” one of ordinary skill in the art to both use the invention and to also be able to make the invention.  So the specification disclosure must be sufficient to cover both bases (use and make) and that level of sufficient detail will then vary by the type of technology.  The test of whether there was a sufficient enabling disclosure is whether the disclosure would require undue experimentation to reach the claimed invention.  If one of ordinary skill in the art would require some experimentation to arrive at the claimed invention that is fine, but if practicing the invention requires that person of ordinary skill in the art to perform undue experimentation then the disclosure was not enabling.  See MPEP 2164.

112(a) Written Description

Section 112(a) plainly specifies that the patent specification must contain a written description of the invention.  The courts have consistently held this requirement is a separate requirement apart from the enablement requirement and have interpreted this to mean that the inventor must demonstrate he was in “possession” of the invention at the time of filing.

In practice, this type of rejection often arises when the scope of the disclosure (specification) does not match the scope of the claims.  Or when a reference teaches contrary results.  Or if one skilled in the art would not consider the inventor possessed the claimed invention (this often happens with a brand new technology, e.g. when the laser was first invented).  See MPEP 2163.

112(a) Best Mode

Both the pre-AIA version of 112 and the AIA version contain the best mode requirement; however, under the AIA a best mode deficiency is no longer grounds for seeking invalidity of the patent.  In any event, the best mode requirement simply requires the applicant to disclose preferred embodiments of the invention.  The preferred embodiment has to be preferred at the time of filing the application, but there is no need to update the file if the preferred embodiment changes afterwards (which it often does).  Additionally, the specification disclosure does not need to explicitly point out which embodiment is best (although that is certainly fine and meets the statutory requirement); but the applicant cannot conceal what is the best mode.  See MPEP 2165.

112(b) Distinct Language Requirement – Indefinite Claim Rejections

This section requires that the specification section of the patent application conclude with at least one claim, and that such claims must particularly point out and distinctly claim the subject matter that the inventor regards as the invention.  This definiteness requirement is an objective one and is about carving out the boundary of the invention, so others will know if they are infringing or not.  See MPEP 2171.

Rejections in this area most commonly arise because of the use of adjectives and adverbs in the claims which can be interpreted as making the claim ambiguous.  For example, if a claim states a first surface is both “near” and “parallel” to a second surface, the use of the word “near” may create a 112(b) rejection as the word by itself could mean many things; whereas, the word “parallel” is not ambiguous.  One way around this problem is make sure such potentially indefinite claim language is clearly defined in the body of the specification.  For example, the following words can lead to a 112(b) rejection if not properly defined in the specification: about, substantially, essentially, effective amount, similar, relatively, suitable, homologous, etc.

This type of indefiniteness rejection can also arise because of antecedent basis problems with the claims, e.g. using the indefinite article in succession for the same item.  For example, if element (a) of claim 1 recited “a first surface” and element (b) of claim also recited “a first surface” this introduces an uncertainty, element (b) should have used the definite article, “the first surface” since this second surface was previously introduced in element (a), i.e. the first time an element is introduced use the indefinite article and then thereafter use the definite article.

Note, 112(b) also is interpreted to contain a second requirement, a subjective one, where the applicant must set forth the subject matter of what the inventor considers the invention.

112 Claim Form Rejections

Rejections in this category stem from 112(c) – 112(f).  Subjection (c) states claims may be independent, dependent, or multiple dependent.  Subsection (d) explicitly defines what a dependent claim is, which implicitly defines what an independent claim is.  And subjection (f) addresses “means-plus” and “step-plus” claiming.  Problems in these areas are often actually objections and not rejection and thus easily cured.


In summary, if you went through the trouble and expense of filing a non-provisional patent application let us assist you with responding to your Office Actions as a mistake in responding can be fatal.

Eric Kelly
USPTO Registration No. 70,302
Patent Agent at