37 C.F.R. § 1.111

Reply by applicant or patent owner to a non-final Office action

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(a)(1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.

(2) Supplemental replies. (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:

(A) Cancellation of a claim(s);

(B) Adoption of the examiner suggestion(s);

(D) Reply to an Office requirement made after the first reply was filed;

(E) Correction of informalities (e.g., typographical errors); or

(F) Simplification of issues for appeal.

(ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).

(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner's action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.

(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.

[46 FR 29182, May 29, 1981, as amended at 62 FR 53192, Oct. 10, 1997; 65 FR 54672, Sept. 8, 2000; 69 FR 56542, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005]

Notes of Decisions

Cited in 41 cases (4 in the last 5 years), 1969–2022 · leading case: Struthers Pat. Corp. v. Nestle Co., Inc., 558 F. Supp. 747 (D.N.J. 1981).

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Struthers Pat. Corp. v. Nestle Co., Inc., 558 F. Supp. 747 (D.N.J. 1981). · cites it 11× “37 C.F.R. § 1.111 (referred to in the Rule quoted above) prescribes: § 1.”

In Re Stephen B. Bogese II, 303 F.3d 1362 (Fed. Cir. 2002). · cites it 4× “Although the PTO, both in the Board decision below and in its brief on appeal, relies on 37 C.F.R. § 1.111 as supporting its action, Ex parte Bogese II, slip op.”

Teva Pharm. USA, Inc. v. Sandoz Inc., 810 F. Supp. 2d 578 (S.D.N.Y. 2011). · cites it 5× “9 ('476 patent prosecution, Amendment Under 37 C.F.R. § 1.111 , at 4) (Teva v. Sandoz claim construction).”

Univ. of Virginia Pat. Found. v. Gen. Elec. Co., 755 F. Supp. 2d 738 (W.D. Va. 2011). · cites it 4× “’s Draft Response Under 37 C.F.R. § 1.111 and § 1.550 at 6, 33 (Nov.”

Lear, Inc. v. Adkins, 395 U.S. 653 (1969). · cites it 2× “[2] 37 CFR § 1.111 (1967). [3] 37 CFR § 1.106 (1967).”

K/S Himpp v. Hear-Wear Tech., LLC, 751 F.3d 1362 (Fed. Cir. 2014). · cites it 2× “” (citing 37 C.F.R. § 1.111 (b))). I respectfully dissent from the majority’s affirmance of the Board.”

Astra Aktiebolag v. Andrx Pharm., Inc., 222 F. Supp. 2d 423 (S.D.N.Y. 2002). “(P10A, Amendment under 37 C.F.R. § 1.111 of 7/22/91, at 3.) On this ground, the examiner granted the ’342 patent.”

Gilbert Hyatt v. Off. of Mgt. & Budget, 908 F.3d 1165 (9th Cir. 2018). “37 C.F.R. §§ 1.111 , 1.115, 1.116. 4 The American Association for Equitable Treatment, Inc.”

Hewlett-Packard Co. v. Bausch & Lomb, Inc., 116 F.R.D. 533 (N.D. Cal. 1987). · cites it 2× “Whether it is protected by the attorney client privilege turns on the nature of the communication and the principal purpose for which it was made.”

In Re: Brandt, 886 F.3d 1171 (Fed. Cir. 2018). “§ 132 (a) ; 37 C.F.R. § 1.111 . Upon review of the applicant's reply to the rejections, if the examiner finds the claims satisfy the conditions of patentability, the examiner issues a Notice of Allowance.”

Mark I Mktg. Corp. & Mark I Mktg. Corp. of Am. v. R.R. Donnelley & Sons Co., 66 F.3d 285 (Fed. Cir. 1995). “points out, with the particularity required by 37 CFR 1.111(b) and (c), how the claimed subject matter is distinguishable over the references.”

Hyatt v. United States Pat. & Trademark Off., 146 F. Supp. 3d 771 (E.D. Va. 2015). “37 C.F.R. § 1.111 (b) (stating that the applicant’s reply must “specifically point[ ] out supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action”).”

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— 37 C.F.R. § 1.111(b) — 2 cases

Young v. Lumenis, Inc., 341 F. Supp. 2d 925 (S.D. Ohio 2004).

— 37 C.F.R. § 1.111(c) — 1 case

Procter & Gamble Co. v. McNeil-PPC, Inc., 615 F. Supp. 2d 832 (W.D. Wis. 2009).

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