Actions Which Require the Attention of a Primary Examiner
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USPTO MPEP › Chapter 1000 - Matters Decided by Various U.S. Patent and Trademark Office Officials › MPEP § 1004
Text
Existing practice requires the primary examiner to be personally
responsible for the following actions:
1. Allowances (
MPEP § 1302.13
).
2. Examiner’s amendments (
MPEP § 1302.04
).
3. Quayle actions (
MPEP § 714.14
).
4. Final rejections (
MPEP § 706.07
).
5. Final Office actions containing a final requirement for
restriction (
MPEP §
803.01
).
6. Withdrawal of final rejection (
MPEP §§ 706.07(d)
and
706.07(e)
).
7. Actions on amendments submitted after final rejection
(
MPEP §
714.12
).
8. All examiner’s answers on appeal (
MPEP § 1207
).
9. Actions reopening prosecution (
MPEP § 1214.07
).
10. Entry of amendments under
37 CFR 1.312
that are
directed merely to formal matters or the cancellation of claims (
MPEP § 714.16
).
11. Rejection of a previously allowed claim (
MPEP § 706.04
).
12. Holding of abandonment for insufficient reply (
MPEP § 711.03(a)
).
13. Decision on affidavits or declarations (for example, under
37 CFR
1.130(a)
(
MPEP § 717.01(a) et seq.
),
37 CFR 1.130(b)
(
MPEP § 717.01(b) et
seq.
),
37 CFR 1.131(a)
(
MPEP § 715.08
),
37 CFR
1.131(c)
(
MPEP § 718
), or
37 CFR 1.132
(
MPEP §
716
)).
14. First request for suspension of examiner’s action
(
MPEP §
709
).
15. Decision on reissue oath or declaration (
MPEP § 1414
).
16. International Preliminary Examination Reports (
MPEP § 1879
).
17. Classification of allowed cases (
MPEP § 903.07
).
18. Treatment of newly filed application which obviously fails to comply
with
35 U.S.C.
112
(
MPEP § 702.01
).
19. Consideration of the advisability of a patentability report
(
MPEP §
705.01(a)
).
20. Requests filed prior to September 16, 2012 under 37 CFR 1.48 for
correction of inventorship or to accept amendments, statements, or oaths or declarations
under 37 CFR 1.48 (See MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the
MPEP, published in January 2018).
21. Actions suggesting claims for interference purposes
(
MPEP §§
2304.04
,
2304.04(b)
)
report
(
MPEP §
705.01(a)
).
20. Requests filed prior to September 16, 2012 under 37 CFR 1.48 for
correction of inventorship or to accept amendments, statements, or oaths or declarations
under 37 CFR 1.48 (See MPEP § 602.01(c)(3) in Revision 08.2017 of the Ninth Edition of the
MPEP, published in January 2018).
21. Actions suggesting claims for interference purposes
(
MPEP §§
2304.04
,
2304.04(b)
). Note that the examiner should
consult with a Technology Center Practice Specialist (TCPS),
MPEP § 2304.04
.
22. Actions involving copied patent claims
(
MPEP §
2304.04(b)
.
23. Suggesting an interference (
MPEP § 2304.04
).
24. Calling Administrative Patent Judge’s attention to a discovered
reference which makes a claim corresponding to a count unpatentable.
For matters decided by supervisory patent examiners, see
MPEP §
1002.02(d)
.
For a list of actions that are to be submitted to the Technology Center
Directors, see
MPEP
§§ 1002.02(c)
and
1003
.
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