PROBLEM SOLUTION/ROOT-CAUSE ANALYSIS

OFFICE ACTION RESPONSE



An office action is written correspondence from the patent examiner that requires a properly signed written response from the applicant in order for prosecution of the application to continue. Moreover, the reply must be responsive to each ground of rejection and objection made by the examiner. Examples of office actions include a restriction requirement, a non-final office action, and a final office action. If an applicant does not submit an acceptable timely response to an office action, the application will be held abandoned.

An office action response includes both legal and technical arguments that should co-exist harmoniously to rebut the rejections/objections raised in the office action. While legal arguments are based on one’s familiarity with patent laws and manuals, the technical arguments are based on technical understanding of the claimed invention and the cited art. In addition, understanding the examiner's contention and appreciation of the claim element and cited art is imperative for drafting a response to office action.


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