What a Response to an Office Action Contains
Read from 47 reply bundles across 22 application families, as filed. Grounds are the unit for status figures. Method and limits: how we read these filings.
Nearly every reply in this sample carried both a claims document and remarks. What varied was how a ground was answered, and it varied with the statutory provision the examiner printed. Section 112 looks like the outlier until you split it by subsection, at which point the apparent outlier mostly disappears.
What Is Physically in a Reply
| Document | Reply bundles |
|---|---|
| Claims document | 47 of 47 (100%) |
| Remarks | 46 of 47 (97.9%) |
| Request for continued examination | 14 of 47 (29.8%) |
| Supplemental amendment | 12 of 47 (25.5%) |
A recorded examiner interview accompanies 18 of the 47 reply-bearing pairs, in 10 of the 22 families. That is a count of interview records in the file, and nothing about what was discussed.
The shape is consistent: a reply is a claim set plus an argument, and in roughly a third of cases a procedural vehicle to keep examination open. The presence of a claims document does not mean every claim was amended.
How Grounds Were Answered
Each ground was recorded with one status describing what the reply did about it. The full composition, grouped by the statutory provision the examiner's document printed:
| Printed basis | Amended | Argued | Amended and argued | Claims cancelled | No responsive text | Grounds |
|---|---|---|---|---|---|---|
| Section 101 | 4.0% | 8.0% | 88.0% | 0.0% | 0.0% | 25 |
| Section 102 | 0.0% | 6.7% | 93.3% | 0.0% | 0.0% | 15 |
| Section 103 | 7.5% | 14.9% | 71.3% | 6.4% | 0.0% | 94 |
| Section 112 | 72.9% | 1.7% | 20.3% | 5.1% | 0.0% | 59 |
Three of the four groups look alike: the reply amends and argues. Section 112 inverts that, with amendment alone accounting for nearly three quarters of its grounds. It is tempting to explain this by calling section 112 a formality, and that explanation is wrong, because section 112(a) carries the written description and enablement requirements, which are as substantive as anything in the statute.
The sample offers a better explanation.
Section 112 Is Not One Thing
Splitting the 59 section 112 grounds by the subsection the examiner actually printed separates two different patterns that the aggregate row had merged.
| Subsection | Grounds | Families | Amended | Argued | Amended and argued | Claims cancelled |
|---|---|---|---|---|---|---|
| 112(b), indefiniteness | 52 of 59 | 11 | 80.8% | 1.9% | 13.5% | 3.8% |
| 112(a), written description and enablement | 5 of 59 | 3 | 0.0% | 0.0% | 100.0% | 0.0% |
| 112(d), dependent claim form | 2 of 59 | 1 | 50.0% | 0.0% | 0.0% | 50.0% |
88% of the section 112 grounds in this sample are 112(b) indefiniteness, and those are the ones answered by amendment alone. The five 112(a) grounds were every one of them amended and argued, which is the same pattern as sections 101, 102 and 103.
So the aggregate section 112 row was not telling us that section 112 gets treated as a formality. It was telling us that most section 112 rejections in this sample are indefiniteness rejections, and that the written description grounds, when they appear, are answered like the other substantive grounds.
One Ground, End to End
The statuses are abstractions. Here is one ground in one family, from the examiner's sentence to the amended claim.
| Step | As filed |
|---|---|
| The examiner's ground | "Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite" |
| Claims named | Claim 20, alone. |
| The applicant's remark | "Accordingly, the Applicant has amended Claim 20 to depend from Claim 17 rather than Claim 15." |
| The claim as amended | Claim 20 is refiled marked "Currently Amended", with the dependency changed from claim 15 to claim 17. The old claim number is shown in double brackets, which is the convention for text being removed. |
| Recorded status | Amended. |
That is what 80.8% of the 112(b) grounds look like. The rejection identified a defect in the claim as written, and the reply changed the claim rather than defending it. Nothing in the record says the change resolved the rejection, and this reading made no finding either way.
Passages are from a published US file history, quoted as filed. The family is identified by the sample's own reference rather than by applicant or firm.
What This Does Not Decide
- It does not say which approach works. That would require outcomes, which this reading deliberately did not collect.
- It does not say what any particular rejection requires. The provision an examiner cites and what answering it takes are specific to the claims and the record.
- It does not describe the statutory provisions themselves, only which ones were printed and what the replies contained.
- Two basis groups from the source are omitted here because their denominators were three grounds and one ground. Shares on that base are noise.
- The document counts describe what was retrievable. Inventory records show some documents existed whose text could not be obtained, and those are recorded as unobserved rather than absent.
Educational, not legal advice. Responding to an office action is practitioner work with deadlines attached.
If You Are Reading an Office Action Now
This page describes what replies contain across a sample. For the provisions themselves, the procedure, and what a given rejection type involves, our practitioner-facing site covers office actions in depth at patent-actions.com.
Related
- How we read these filings, the sampling, the definitions and the limits
- What happens during prosecution
- What happens after a final rejection
- What happens after a restriction requirement
- The end of the after-final pilot
- What patent applications contain