Obviously Informal Cases

When an application is taken up for examination and it is then

discovered to be impractical to give a complete action on the merits because of an

informal or insufficient disclosure, the following procedure may be followed:

(A) A reasonable search should be made of the invention so far as it

can be understood from the disclosure, objects of invention and claims and any

apparently pertinent art cited. In the rare case in which the disclosure is so

incomprehensible as to preclude a reasonable search, the Office action should

clearly inform applicant that no search was made;

(B) Any form that lists informalities and any additional formal

requirements to be made should be included in the first Office action (see

MPEP §

707.07(a)

);

(C) A requirement should be made that the specification be revised to

conform to idiomatic English and United States patent practice;

(D) The claims should be rejected as failing to define the invention

in the manner required by

35 U.S.C. 112

if they are

informal. A blanket rejection is usually sufficient.

The examiner should attempt to point out the points of informality in

the specification and claims. The burden is on the applicant to revise the application

to render it in proper form for a complete examination.

If a number of obviously informal claims are filed in an application,

such claims should be treated as being a single claim for fee and examination

purposes.

It is to applicant’s advantage to

file

the

application with an adequate disclosure and with claims which conform to the U.S. Patent

and Trademark Office usages and requirements. This should be done whenever possible. If,

however, due to the pressure of a Convention deadline or other reasons, this is not

possible, applicants are urged to submit

promptly, preferably within 3 months

after filing,

a preliminary amendment which corrects the obvious

informalities

n adequate disclosure and with claims which conform to the U.S. Patent

and Trademark Office usages and requirements. This should be done whenever possible. If,

however, due to the pressure of a Convention deadline or other reasons, this is not

possible, applicants are urged to submit

promptly, preferably within 3 months

after filing,

a preliminary amendment which corrects the obvious

informalities. The informalities should be corrected to the extent that the disclosure

is readily understood and the claims to be initially examined are in proper form,

particularly as to dependency, and otherwise clearly define the invention. “New matter”

must be excluded from these amendments since preliminary amendments filed after the

filing date of the application do not enjoy original disclosure status. See

MPEP

§ 608.04(b)

.

Whenever, upon examination, it is found that the terms or phrases or

modes of characterization used to describe the invention are not sufficiently consonant

with the art to which the invention pertains, or with which it is most nearly connected,

to enable the examiner to make the examination specified in

37 CFR 1.104

, the

examiner should make a reasonable search of the invention so far as it can be understood

from the disclosure. The action of the examiner may be limited to a citation of what

appears to be the most pertinent prior art found and a request that applicant correlate

the terminology of the specification with art-accepted terminology before further action

is made.

Use form paragraph

7.01

where the terminology is such that

a proper search cannot be made.