WorkflowIntellectual Property

Patent Office Action Response

An office action response that starts with each rejection laid out against the cited art, element by element, and ends with cited remarks the attorney of record signs.

Watch it work Book a walkthrough

Follow one action, rejection by rejection ↓

Watch with transcript →

The problem

A week of re-reading cited art before the reply has its first sentence

The action lands with a shortened clock and a stack of references. Before anyone writes a sentence, someone re-reads each reference at each passage the examiner cites, tests each claim element against it, and hunts the specification for support in case the claims must change. On a fixed fee, those hours come out of the firm’s margin.

The trouble hides in the mapping. A single sensor in the reference gets read as two claimed sensors, or a pressure reading stands in for a temperature. A narrowing amendment goes in before anyone measures what it gives up. The draft reaches the attorney late in the week, so the examiner interview is booked late or skipped.

Built forPatent attorneysPatent agentsIP paralegalsIP practice chairs

The Problem Today

Each office action starts a fixed reply clock, and the examiner’s mapping of the art is usually half right.

4.2: office actions on average before a patent is allowed published
$4,000: median charge for one office action response published

Done by hand on each action

Cited art
Claim maps
Remarks
Deadlines

A week on a fixed feeReading and drafting hours come out of the firm’s margin
Scope given away blindAmendments made without measuring what they give up

The Solution

Each rejection laid outThe examiner’s words beside each claim element and the passage cited
The art read line by lineEach cited passage tested, so what the art lacks is shown and quoted
Argue or amend, scoredTwo paths per rejection, each amendment with its support and scope cost
Cited remarks, signedA pinpoint cite on each argument; the attorney of record signs

Built-in controls

Nothing is filed or sent without the attorney
The client approves each narrowing amendment
Inventor data is used for the reply, never to teach a model

What You Get

Attorneys spend their hours on the argue-or-amend call, and each examiner interview starts with an agenda.

3 hours: of practitioner time per response, down from 12–15 our estimate

Scope cost before you amendWhich known designs a claim still covers, before and after
Interviews with an agendaThe points and the passages to show, timed for the examiner
No fee you did not chooseReply date, extension fees and disclosures on the docket

Rejection to signature

The office action response, worked through the grid and eight more screens

Nine parts of one reply, in the order a prosecutor works the action, each with the role it serves.

01The office action, parsed
Each ground of rejection pulled out in the examiner’s own words
How it works
- The action shown as the examiner wrote it, each parsed span highlighted
- Rejections, objections, claims, references and the examiner’s mapping pulled into one structure
- Each ground keeps the page of the action it came from
- Three rejections over three references, each with its claims
Patent agentStops the first hour of each action going on retyping the grounds and the mapping into a chart.
02Response grid
One grid: the rejection, its claim elements and both paths
How it works
- One row per rejection: the examiner’s sentence, the claims and the references
- Claim elements against each reference, marked found, partial or missing with a cite
- Two paths on the right, argue and amend, scored for strength
- A strip of open matters across the top, this one due in 33 days
Patent attorneySees the whole action on one screen and spends her hour on the argue-or-amend call, with no hunt for the cited paragraph.
03Cited art, tested
The examiner’s mapping tested passage by passage in the cited art
How it works
- Each reference read at the passages the examiner cites, and around them
- Amber marks what the examiner cited, blue what the reader found
- Each verdict sets the examiner’s reading beside what the passage says
- Element 1d marked missing: the primary reference has one sensor, in one of two places
Patent agentFinds which half of the examiner’s mapping holds up without re-reading three references at each cited paragraph and column.
04Argue, drafted
An argument drafted once the attorney picks argue, cited to the line
How it works
- Choosing argue on a row drafts that rejection’s remarks paragraph
- The claim 1 paragraph carries 5 cites to paragraphs, columns and lines, and the action page
- It shows the secondary reference’s second sensor measures pressure
- Arguing scored 82 against 64 for amending
Patent attorneyGets a cited argument to edit within minutes of deciding, while the reasoning she just weighed is still fresh.
05Amend, with its scope cost
An amendment scored by how much claim scope it gives up
How it works
- Each amendment carries a scope cost: low, medium or high
- Scope measured against the six known pack designs the attorney keeps
- Amending claim 11 scores 88 and still reads on 5 of 6 designs
- The amend paragraph drafts with its support at ¶[0042] and Fig. 3
Patent attorneyKnows before amending how much coverage the client keeps, instead of learning after allowance that a narrowing cost more than it had to.
06Claim 11, marked up
Claim markup beside its support, a scope ruler and the equivalents surrendered
How it works
- The amended claim in markup, the added words underlined
- The supporting passage from the application as filed, so no new matter
- A ruler marks which known designs the claim reads on, today and amended
- The one design given up is the anticipating reference’s own
Patent attorneyCan tell the client what a narrowing gives up, and why it costs little, before asking for the approval needed to file it.
07Examiner interview
An interview agenda timed to the examiner’s own record
How it works
- The examiner’s record: 58% allowance, 91% of interview requests granted
- Three agenda items in 30 minutes, each with the passage to show
- Three proposed times inside the examiner’s interview hours
- No agent contacts the examiner; the paralegal submits the request
IP paralegalGets an agenda the attorney approves and a request form already filled, so the interview is booked well before the reply date.
08Deadlines and fees
Each extension month on the docket with its own fee and date
How it works
- The reply date, each extension month and the statutory bar on one line
- $235, $690 and $1,590 for one, two and three months
- Dates that fall on a weekend or holiday roll to the next business day
- Reminders at 30, 14 and 5 days before
IP paralegalPuts the price of each extra month in front of the attorney early enough to file before the first fee falls due.
09Response and remarks
Remarks cited to the line, with a checklist before signing
How it works
- Claim listing, status, one section per rejection and a conclusion
- 12 pages in full with 31 cites to a paragraph, a column and line, or the action page
- A checklist tracks grounds answered, the client’s approval, a second cite check and fees
- The agent who prepared the draft cannot sign it
Patent attorneySigns a reply she can check sentence by sentence, where a click on any cite opens the passage it rests on.

Three rejections, two arguments and one amendment in an office action response

The two paths scored for one battery-pack application, and the attorney’s call on each.

Rejection	Argue	Amend	Chosen
Obviousness, claims 1–10 and 14–17	82: no reference shows two thermal sensors whose difference drives flow	64: high scope cost, 2 of 6 designs	Argue
Anticipation, claims 11–13	34: the reference reads both temperatures	88: low scope cost, 5 of 6 designs	Amend claim 11
Written description, claims 18–20	76: the route is described at ¶[0056]–[0058] and Fig. 7	70: medium scope cost, 4 of 6 designs	Argue, with the amendment held for the interview

Where the examiner’s mapping slipped, found before the reply was drafted

What the reading turned up in one action, each with the passage behind it.

One sensor counted twice

The examiner read the primary reference’s sensor 34 as both claimed sensors. Its own text puts that one sensor at the coolant inlet or on a cell surface, never both.

A second sensor that reads pressure

The secondary reference does have a second sensor, at col. 4, ll. 12–29. It measures coolant pressure at the outlet so a blocked channel can be reported.

A rate of rise where the claim needs a difference

The flow control the examiner relied on raises pump speed when one temperature climbs faster than 0.5 °C per minute. Claim 1 sets flow from the difference between two readings.

A new reference from the family

A foreign search report on the family cited a new reference after the action was mailed. An information disclosure statement goes in with the response, with no fee.

Around the reply

Six more screens the prosecution team opens around the grid

What the attorney, the agent and the paralegal check around the decisions.

Log of how the grid was built in nine minutes: the action split into three rejections, 41 passages read, support found and the family checked — **How the grid was built**Ready nine minutes after the action was opened: 41 passages read and 16 element checks, 12 found, 1 partial and 3 missing.

Passage ¶[0033] of the primary reference opened from the grid, with the reader’s note that its one sensor cannot be both claimed sensors — **A cite, opened**Clicking a cell opens the passage as published. Here the primary reference’s ¶[0033], with the note that its one sensor sits in one of two places.

Claim 18 amendment in markup held for the interview, with its support at ¶[0056] and a medium scope cost of 4 of 6 known designs — **The fallback, held back**The written-description amendment to claim 18 stays out of the reply and goes to the interview, at a medium cost of 4 of 6 designs.

Duty of candor card with a new reference added to the response, beside the attorney’s docket of six office actions due over the next 75 days — **Candor across the family**The new foreign reference joins an information disclosure statement with the response, and the attorney decides materiality. Beside it, the next 75 days of her docket.

Audit trail for the office action: the agents’ reads and drafts and the attorney’s argue and amend choices, each with its time — **Each choice on the record**Reads, choices and drafts in order, agents and people apart: the argue and amend calls, each paragraph drafted, and the docketing.

Settings for remark style, strength model weights, the six scope designs, separation of duties, the docket and data retention — **The firm’s rules**Strength weights of 0.5, 0.3 and 0.2, paths under 40 shown as weak, the six scope designs, and a preparer who may not sign.

Six readers and drafters behind the grid, kept away from the examiner

Each does one part of the reading or the drafting, and stops where the attorney’s judgment starts.

Action reader

Splits the action into rejections and objections with their claims, references and the examiner’s mapping, quoting the action page.

Never paraphrases the examiner without the quote beside it

Art reader

Reads each cited reference at the passages the examiner cites and around them, and tests each claim element: found, partial or missing.

Never calls an element missing without quoting the passage it read

Support finder

Finds support in the specification for each amendment and measures its scope cost against the firm’s list of known designs.

Never proposes an amendment without written support

Remarks drafter

Writes the remarks for the path the attorney chose, with a paragraph, column-and-line or page cite on each argument.

Never characterizes the invention beyond the claims
Never signs

Interview planner

Reads the examiner’s record and drafts the agenda and the interview request.

Never contacts the examiner

Deadline keeper

Dockets the reply date, each extension month and its fee, the statutory bar and the disclosure window, and checks the family for new art.

Never pays a fee
Never lets a date pass unflagged

Before it touches a reply date: questions prosecutors raise

What is office action response software for patent prosecutors?

Office action response software reads the action, the claims and each cited reference, and lays each rejection out against the art element by element. This one offers two paths per rejection, argue or amend, drafts the remarks with a pinpoint cite on each argument, and leaves the choice and the signature to the attorney of record.

How does it help overcome an obviousness rejection?

It tests the examiner’s mapping of each claim element against each reference, at the cited passage and around it. When an element is missing from the combination, the grid quotes the passage that shows it and drafts the remarks around that gap.

Can it propose claim amendments without adding new matter?

Each amendment option comes with its support in the application as filed. The support finder proposes no amendment without written support, and the claims screen shows the supporting passage beside the markup.

How does it show what a narrowing amendment gives up?

A scope ruler checks the claim against the known product designs the attorney keeps, before and after the amendment. The client approves any narrowing before the attorney signs.

Does it contact the examiner or file the response?

No. The interview planner drafts the agenda and the request, the attorney approves them and the paralegal submits them. Filing happens only after the attorney of record signs, and the agents pay no fees.

How does it track the office action response deadline and extension fees?

The deadline keeper dockets the reply date, each extension month with its fee, and the statutory bar, with reminders ahead of each. Paying a fee stays with people.

Intellectual Property