707.07(j) State When Claims Are Allowable [R-11.2013]
When, during the examination of a pro se application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.
This practice will expedite prosecution and offer a service to individual inventors not represented by a registered patent attorney or agent. Although this practice may be desirable and is permissible in any case deemed appropriate by the examiner, it is especially useful in all cases where it is apparent that the applicant is unfamiliar with the proper preparation and prosecution of patent applications.
II. ALLOWABLE EXCEPT AS TO FORM
When an application discloses patentable subject matter and it is apparent from the claims and applicant’s arguments that the claims are intended to be directed to such patentable subject matter, but the claims in their present form cannot be allowed because of defects in form or omission of a limitation, the examiner should not stop with a bare objection or rejection of the claims. The examiner’s action should be constructive in nature and, when possible, should offer a definite suggestion for correction. Further, an examiner’s suggestion of allowable subject matter may justify indicating the possible desirability of an interview to accelerate early agreement on allowable claims.
If the examiner is satisfied after the search has been completed that patentable subject matter has been disclosed and the record indicates that the applicant intends to claim such subject matter, the examiner may note in the Office action that certain aspects or features of the patentable invention have not been claimed and that if properly claimed such claims may be given favorable consideration.
If a claim is otherwise allowable but is dependent on a canceled claim or on a rejected claim, the Office action should state that the claim would be allowable if rewritten in independent form.
III. EARLY ALLOWANCE OF CLAIMS
Where the examiner is satisfied that the prior art has been fully developed and some of the claims are clearly allowable, the allowance of such claims should not be delayed.
Form paragraphs 7.43, 7.43.01, and 7.43.02 may be used to indicate allowable subject matter.
¶ 7.43 Objection to Claims, Allowable Subject Matter
Claim [1] objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
¶ 7.43.01 Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Independent Claim/Dependent Claim
Claim [1] would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in this Office action.
Examiner Note:
This form paragraph is to be used when (1) the noted independent claim(s) or (2) the noted dependent claim(s), which depend from an allowable claim, have been rejected solely on the basis of35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and would be allowable if amended to overcome the rejection.
¶ 7.43.02 Allowable Subject Matter, Claims Rejected Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, Second Paragraph, Dependent Claim
Claim [1] would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Examiner Note:
This form paragraph is to be used only when the noted dependent claim(s), which depend from a claim that is rejected based on prior art, have been rejected solely on the basis of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, and would be allowable if amended as indicated.
¶ 7.43.04 Suggestion of Allowable Drafted Claim(s), Pro Se
The following claim [1] drafted by the examiner and considered to distinguish patentably over the art of record in this application, [2] presented to applicant for consideration:
[3].
Examiner Note:
- 1. In bracket 2, insert –is– or –are–.
- 2. In bracket 3, insert complete text of suggested claim(s).
Form paragraph 7.97 may be used to indicate allowance of claims.