714.05 Examiner Should Immediately Review [R-07.2022]

Created OnMay 31, 2023

byChhabra Law Firm

Actions by applicant, especially those filed near the end of the period for reply, should be reviewed as soon as possible upon becoming available to the examiner to determine whether they are completely responsive to the preceding Office action so as to prevent abandonment of the application. If found inadequate, and sufficient time remains, applicant should be notified of the deficiencies and warned to complete the reply within the period. See MPEP § 714.03.

All amended applications forwarded to the examiner should be reviewed at once to determine the following:

(A) If the amendment is properly signed (MPEP § 714.01(a)).
(B) If the amendment has been filed within the statutory period, set shortened statutory period, or time limit (MPEP § 710 – § 710.05).
(C) If the amendment is fully responsive (MPEP § 714.03 and § 714.04) and complies with 37 CFR 1.121 (MPEP § 714).
(D) If the changes made by the amendment warrant transfer (MPEP § 909.01(c)).
(E) If the application is special (MPEP § 708.01).
(F) If claims suggested to applicant for interference purposes have been copied. (MPEP Chapter 2300).
(G) If there is a traversal of a requirement for restriction MPEP § 818.01(a)).
(H) If applicant has cited references (MPEP § 707.05(b) and § 1302.12).
(I) If a terminal disclaimer has been filed (MPEP § 804.02, § 804.03, and § 1490).
(J) If any matter involving security has been added (MPEP § 115).

ACTION CROSSES AMENDMENT

A supplemental action may be necessary when an amendment is filed on or before the mailing date of the regular action but reaches the Technology Center later. The supplemental action should be promptly prepared. It need not reiterate all portions of the previous action that are still applicable but it should specify which portions are to be disregarded, pointing out that the period for reply runs from the mailing of the supplemental action. The action should be headed “Responsive to amendment of (date) and supplemental to the action mailed (date).”