Chapter 700 — Examination of Applications

Ninth Edition, Revision 01.2024

Contents

Patent Bar study guide: MPEP Chapter 700

Chapter 700, Examination of Applications, follows an application through examination: the examiner's search and requirements for information (§ 704), rejections of claims and when they can be made final, including request for continued examination (RCE) practice (§ 706), the period for reply and when it is restarted (§ 710), abandonment (§ 711), interviews (§ 713), amendments and replies (§ 714), and the affidavits, declarations and other evidence an applicant files to overcome a rejection (§ 715 to § 718).

This is day-to-day prosecution practice, and exam questions put you in the practitioner's seat: what counts as a complete reply, whether a final rejection was proper, what an RCE needs. These rules are procedural (for example 37 CFR 1.111 on replies, 1.113 on final rejections and 1.114 on RCEs) and the AIA left most of them alone, which is why most of the chapter's released questions are still answered the same way today.

Most-tested sections of Chapter 700

  1. § 706 Rejection of Claims — 77 of the released USPTO exam questions (1999–2003) cite this section or one of its subsections.
  2. § 715 Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a) — 23 of the released USPTO exam questions (1999–2003) cite this section or one of its subsections.
  3. § 714 Amendments, Applicant’s Action — 21 of the released USPTO exam questions (1999–2003) cite this section or one of its subsections.
  4. § 710 Period for Reply — 16 of the released USPTO exam questions (1999–2003) cite this section or one of its subsections.
  5. § 716 Affidavits or Declarations Under 37 CFR 1.132 and Other Evidence Traversing Rejections — 16 of the released USPTO exam questions (1999–2003) cite this section or one of its subsections.
  6. § 704 Search and Requirements for Information — 8 of the released USPTO exam questions (1999–2003) cite this section or one of its subsections.
  7. § 713 Interviews — 8 of the released USPTO exam questions (1999–2003) cite this section or one of its subsections.
  8. § 717 Prior Art Exceptions under AIA 35 U.S.C. 102(b)(1) and (2) — 7 of the released USPTO exam questions (1999–2003) cite this section.

Free 10-question Chapter 700 quiz

  1. Question 1

    In accordance with proper USPTO practice and procedure, a submission for a request for continued examination does not include:

    1. An appeal brief or reply brief (or related papers).
    2. New arguments in support of patentability.
    3. New evidence in support of patentability.
    4. An amendment of the drawings.
    5. An amendment of the claims.

    Answer: (A) Under 37 CFR § 1.114(c), a 'submission' for purposes of a Request for Continued Examination (RCE) includes an information disclosure statement, an amendment to the written description, claims, or drawings, new arguments, or new evidence in support of patentability. However, § 1.114(d) expressly states that a submission does NOT include an appeal brief or reply brief filed pursuant to § 41.37 or § 41.41, or related papers. Therefore, an appeal brief or reply brief (or related papers) does not constitute a submission in continued examination. This provision remains unchanged under the AIA regime. Options B, C, D, and E are all recognized as valid 'submissions' under § 1.114(c).

    Question from the USPTO registration exam, April 2001 PM, question 26. Answer shown is the answer under current law. See MPEP § 706.07(h).

  2. Question 2

    For purposes of determining whether a request for continued examination is in accordance with proper USPTO rules and procedure, in which of the following situations will prosecution be considered closed?

    1. The last Office action is a final rejection.
    2. The last Office action is an Office action under Ex Parte Quayle.
    3. A notice of allowance has issued following a reply to a first Office action.
    4. The application is under appeal.
    5. All of the above.

    Answer: (E) Under current USPTO rules and MPEP 9th Edition, prosecution is considered closed in all four situations listed. MPEP 706.07(h) and 37 CFR 1.114 define 'closed prosecution' as occurring when: (A) a final rejection has been issued under 37 CFR 1.113; (B) an Office action under Ex Parte Quayle has issued (which closes prosecution on the merits); (C) a notice of allowance has issued; or (D) the application is under appeal. All four conditions independently constitute closed prosecution, making (E) the correct and most inclusive answer. This rule framework has not changed under the AIA.

    Question from the USPTO registration exam, April 2001 AM, question 7. Answer shown is the answer under current law. See MPEP § 706.07(h).

  3. Question 3

    On June 9, 2000, you file two complete patent applications on behalf of your client, ABC Inc. The subject matter of the patent applications relates to a new automotive body design. One of the applications is filed as a utility application (A#1), and other is filed as a design application (A#2). Prosecution of each application moves forward independently of each other, and you receive final office actions in each application rejecting the respective claim(s) in each application. Your client, in consultation with you, decides that she would rather pursue prosecution in each case rather than appeal the final rejections. Which of following options is available to you under the USPTO rules and procedures ?

    1. File a request for continuing examination (RCE) for both A#1 and A#2.
    2. File a request for continuing examination (RCE) for A#1 and a continuing prosecution application (CPA) for A#2.
    3. File a request for continuing examination (RCE) for A#2 but not A#1.
    4. File a continuing prosecution application (CPA) for both A#1 and A#2.
    5. File a continuing prosecution application (CPA) for A#1 but not A#2.

    Answer: (B) Under current USPTO rules and procedures, the correct option is to file an RCE for the utility application (A#1) and a CPA for the design application (A#2). 37 CFR 1.114(e)(4) explicitly excludes design applications from RCE practice, so RCE is available only for A#1 (utility). 37 CFR 1.53(d) provides that CPA practice is available for design applications but not for utility applications filed on or after May 29, 2000. Since A#1 was filed June 9, 2000 (after May 29, 2000), CPA is not available for the utility application. Therefore, the only available combination is RCE for A#1 and CPA for A#2. This corresponds to answer choice (B) in the original question structure, which states 'File a request for continuing examination (RCE) for A#1 and a continuing prosecution application (CPA) for A#2.' These rules remain unchanged under the AIA and current MPEP.

    Question from the USPTO registration exam, April 2002 AM, question 19. Answer shown is the answer under current law. See MPEP § 706.07(h), MPEP § 201.06(d).

  4. Question 4

    Which of the following actions, if any, when taken as an initial step to dispute the propriety of the finality of an Office action, comports with proper PTO rules and procedure?

    I. Filing a request for reconsideration concerning the finality of the Office action, while the application is still pending before the primary examiner.

    II. Filing a Notice of Appeal, then a brief, and arguing in the brief the impropriety of the finality of the rejection.

    III. Filing a petition under 37 C.F.R. 1.181 based on improper finality of the rejection to stay the running of the period for reply set in the final Office action.

    1. I. only.
    2. II. only.
    3. III. only.
    4. I. and III.
    5. None of the above.

    Answer: (A) Under current MPEP 9th Edition rules, the analysis remains the same. (I) Filing a request for reconsideration concerning the finality of an Office action while the application is still pending before the primary examiner is the proper initial step — this is consistent with MPEP 706.07(c) and (d), which provide that an applicant who believes a final rejection was premature should petition or seek reconsideration before the examiner. (II) Filing a Notice of Appeal and arguing improper finality in the brief is improper because MPEP 706.07(c) states that the prematureness of a final rejection may not be raised as a ground of appeal; additionally, appeal procedures require payment of fees (37 CFR 41.20). (III) Filing a petition under 37 CFR 1.181 does not stay the running of the period for reply set in the final Office action — MPEP 1002.02(c) and 37 CFR 1.181(f) confirm that such a petition does not operate as a stay. Therefore, only option I comports with proper USPTO rules and procedure, making answer (A) correct.

    Question from the USPTO registration exam, April 2000 PM, question 47. Answer shown is the answer under current law. See MPEP § 706.07(c), MPEP § 706.07(d), MPEP § 1002.02(c).

  5. Question 5

    In which of the following situations would the finality of an Office action rejection be improper?

    I. The final Office action rejection is in a first Office action in a substitute application that contains material which was presented in the earlier application after final rejection but was denied entry because the issue of new matter was raised.

    II. The final Office action rejection is in a first Office action in a continuing application, all claims are drawn to the same invention claimed in the earlier application, and the claims would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.

    III. The final Office action rejection is in a first Office action in a continuation-in-part application where at least one claim includes subject matter not present in the earlier application.

    1. I
    2. II
    3. III
    4. I and III
    5. II and III

    Answer: (D) The question concerns when a final Office action rejection is improper, governed by MPEP § 706.07(b). Under the current MPEP 9th Edition, Rev. 01.2024, the rules regarding propriety of final rejections in substitute and continuing applications remain unchanged. A final rejection is improper when: (I) it is in a first Office action in a substitute application containing material presented after final rejection in the earlier application but denied entry due to new matter issues, and (III) it is in a first Office action in a continuation-in-part application where any claim includes subject matter not present in the earlier application. The answer D (both I and III are improper) remains correct under current rules.

    Question from the USPTO registration exam, October 2000 AM, question 34. Answer shown is the answer under current law. See MPEP § 706.07(b).

  6. Question 6

    A first Office action on the merits rejecting Claim 1 under 35 USC 103 as being obvious in view of reference A set a three month shortened statutory period for reply. A registered practitioner files a timely response (without an extension of time) to the first Office action amending Claim 1 to include a limitation not found in reference A or any other prior art of record. However, the limitation also lacks support in applicant’s original disclosure, i.e., it is new matter. Which of the following courses of action, if taken by the primary examiner, would be in accord with the USPTO rules and the procedures set forth in the MPEP?

    1. Hold the application abandoned after expiration of the three month shortened statutory period for reply because an amendment adding new matter to the claims is not a bona fide response.
    2. Consider the new matter and reject Claim 1 under 35 USC 101 because a claim that recites new matter lacks utility.
    3. Consider the new matter and treat Claim 1, determining whether the invention as claimed with the new matter, would have been obvious in view of reference A, and reject Claim 1 under 35 USC 112, first paragraph, for lack of support in the original disclosure for new matter.
    4. Ignore the new matter and reject Claim 1 again under § 103 in view of reference A.
    5. All of the above.

    Answer: (C) Under current MPEP 9th Edition, the correct course of action remains as described in answer (C): the examiner must consider all claim limitations including new matter when evaluating obviousness under 35 U.S.C. § 103, and must reject the claim under 35 U.S.C. § 112(a) (post-AIA) for lack of written description/support in the original disclosure. MPEP § 2143.03 still states that all limitations must be considered and given weight, including those not supported in the original specification. MPEP § 706.03(o) still directs rejection under 35 U.S.C. § 112 (now § 112(a) under AIA) for new matter in claims. The other options remain incorrect for the same reasons: (A) abandonment is improper and new matter amendments are not automatically non-bona fide responses; (B) new matter does not equate to lack of utility under § 101; (D) contradicts MPEP § 2143.03's requirement to consider new matter. The AIA renumbered 35 U.S.C. § 112 first paragraph to § 112(a), but the substantive rules regarding new matter and the examination procedures are unchanged.

    Question from the USPTO registration exam, April 2003 PM, question 34. Answer shown is the answer under current law. See MPEP § 706.03(o), MPEP § 2143.03.

  7. Question 7

    Registered practitioner Rick drafted a patent application for inventor Sam. The application was filed in the USPTO on May 15, 2000, with a power of attorney appointing Rick. On March 15, 2001, Sam filed a revocation of the power of attorney to Rick, and a new power of attorney appointing registered practitioner Dave. In a non-final Office action dated September 12, 2001, the examiner included a requirement for information, requiring Dave to submit a copy of any non-patent literature, published application, or patent that was used to draft the application. Which of the following, if timely submitted by Dave in reply to the requirement for information, will be accepted as a complete reply to the requirement for information?

    1. A statement by Dave that the information required to be submitted is unknown and is not readily available to Dave.
    2. A statement by Dave that the requirement for information is improper because it was included in a non-final Office action.
    3. A statement by Dave that the requirement for information is improper because Dave is not an individual identified under 37 CFR 1.56(c).
    4. A statement by Dave that the requirement for information is improper because information used to draft a patent application may not be required unless the examiner identifies the existence of a relevant database known by Sam that could be searched for a particular aspect of the invention.
    5. None of the above.

    Answer: (A) Under 37 CFR 1.105(a)(3) and MPEP § 704.12(b), a reply to a requirement for information is complete if it states that the information required to be submitted is unknown and/or not readily available to the party required to provide the information. Dave's statement that the required information is unknown constitutes a complete reply. The other options are incorrect for the same reasons as originally explained: (B) requirements for information may be included in an Office action or sent separately per 37 CFR 1.105(b); (C) 37 CFR 1.56(c) includes attorneys or agents who prepare or prosecute applications; (D) there is no such limitation in 37 CFR 1.105 restricting requirements for information about drafting materials. These provisions of 37 CFR 1.105 and MPEP § 704.12(b) remain substantively unchanged under the AIA regime.

    Question from the USPTO registration exam, October 2001 AM, question 47. Answer shown is the answer under current law. See MPEP § 704.12(b).

  8. Question 8

    Which of the following is/are information which the USPTO may require an attorney of record in a reissue application to submit in a reply to a first Office action dated April 12, 2001?

    1. Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
    2. The publication date of an undated document mentioned by applicant which may qualify as printed publication prior art.
    3. Comments on a new decision by the Federal Circuit that appears on point in the examination of the aplication.
    4. (A), (B), and (C).
    5. None of the above.

    Answer: (D) 37 CFR 1.105(a) remains in effect under the current rules and authorizes the USPTO to require an applicant, including an attorney of record in a reissue application, to submit information reasonably necessary to examine a claimed invention. The examples listed in 37 CFR 1.105(a)(1) include copies of non-patent literature, foreign patents, and other documents used in the invention process. The provision has not been substantively altered by the AIA. Options (A), (B), and (C) are all examples of information the USPTO may require, making (D) — which encompasses all of (A), (B), and (C) — the correct answer. This rule applies equally to reissue applications. MPEP 704.10 et seq. discuss requirements for information under 37 CFR 1.105.

    Question from the USPTO registration exam, April 2001 AM, question 15. Answer shown is the answer under current law. See MPEP § 704.10.

  9. Question 9

    Which of the following would comply with the patent laws, rules and procedures as related in the MPEP and would be a fully responsive reply to a non-final Office action on the merits rejecting all the claims in the application as being unpatentable under 35 USC 102 and/or 103 over prior art references?

    1. A timely filed and properly signed written reply which does not include an amendment to the claims, but includes a request for the examiner’s rejections to be reconsidered supported by arguments replying to every ground of rejection and distinctly and specifically points out the supposed errors in every rejection. and pointing out the specific distinctions believed to render the claims patentable over any applied references.
    2. A timely filed and properly signed written reply which includes an amendment canceling all the claims in the application and adding new claims, and a request for the examiner’s rejections to be reconsidered in view of the newly presented claims.
    3. A timely filed and properly signed written reply which does not include an amendment to the claims, but does generally alleges that the claims define a patentable invention.
    4. A timely filed and properly signed written request for continued examination (RCE).
    5. All of the above.

    Answer: (A) Under 37 CFR § 1.111 and MPEP § 714.02, a fully responsive reply to a non-final Office action rejecting claims under 35 USC 102/103 must: (1) be timely filed and properly signed; (2) distinctly and specifically point out supposed errors in the examiner's action; and (3) reply to every ground of rejection with arguments pointing out specific distinctions believed to render the claims patentable over applied references. Choice (A) satisfies all these requirements. Choice (B) fails because merely canceling and adding claims without arguing how the new claims overcome the rejections is insufficient. Choice (C) fails because a general allegation that claims define a patentable invention without specifically pointing out how the claims distinguish the references explicitly does not comply with § 1.111. Choice (D) fails because an RCE under 37 CFR § 1.114 is only available when prosecution is closed (after final rejection or notice of allowance), not in response to a non-final Office action. Therefore, only (A) is correct.

    Question from the USPTO registration exam, October 2003 PM, question 21. Answer shown is the answer under current law. See MPEP § 714.02.

  10. Question 10

    Which of the following statements regarding a registered practitioner is most correct?

    1. An unsubstantiated argument by a practitioner that applicant discovered the problem is insufficient to show that applicant discovered the source of the problem.
    2. An unsubstantiated argument by a practitioner that the invention provides a solution of a long-felt need is insufficient to show that the invention fills a long- felt need.
    3. Where an examiner has advanced a reasonable basis for questioning the adequacy of disclosure, an argument by a practitioner that the application meets the requirements of 35 U.S.C. § 112, first paragraph, is entitled to little, if any weight, in the absence of facts supporting a basis for deciding that the specification complies with 35 U.S.C. § 112, first paragraph.
    4. An argument by a practitioner that the prior art reference is inoperative is insufficient to show the claimed subject matter is unobvious in the absence of objective evidence demonstrating inoperability of the prior art reference.
    5. Each of (A), (B), (C), and (D) is correct.

    Answer: (E) ANSWER: (E) is the most correct answer because each statement (A), (B), (C), and (D) is correct. Since the question asks which statement is "most correct," the best answer is E because it captures all four true statements about the evidentiary rule that unsubstantiated practitioner/attorney arguments cannot substitute for evidence in the record. (A) is correct. An unsubstantiated argument that applicant discovered the problem is insufficient to show discovery of the source. See MPEP 2141.02; In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). (B) is correct. An unsubstantiated argument about long-felt need is insufficient. See MPEP 716.01(c); In re Knowlton, 500 F.2d 566, 183 USPQ 33 (CCPA 1974). (C) is correct. Where an examiner has questioned disclosure adequacy, an argument about compliance with 35 U.S.C. § 112 requires factual support. See MPEP 2163; arguments of counsel alone cannot substitute for evidence. In re Budnick, 537 F.2d 538, 190 USPQ 424; In re Schulze, 346 F.2d 600, 145 USPQ 716; In re Cole, 326 F.2d 769, 140 USPQ 230. (D) is correct. An unsubstantiated argument about prior art inoperability requires objective evidence. See MPEP 716.01(c) and 2145. These evidentiary and procedural standards remain valid under current MPEP guidelines. The AIA changes to §102/§103 (first-inventor-to-file, grace period) do not alter these fundamental evidentiary principles governing how applicants overcome rejections during prosecution.

    Question from the USPTO registration exam, April 2000 PM, question 18. Answer shown is the answer under current law. See MPEP § 716.01(c), MPEP § 2141.02, MPEP § 2145.

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Chapter 700 FAQ

How many patent bar questions come from MPEP Chapter 700?

168 of the 899 questions the USPTO released from its 1999–2003 registration exams cite a section of Chapter 700 (Examination of Applications), the second most of any chapter. 112 of them are still answered the same way under current law. The USPTO does not publish how many questions on today's exam come from each chapter, so treat these counts as a guide to what the exam has emphasised, not a quota.

Which sections of MPEP Chapter 700 are tested most?

In the released questions, the most-cited sections are § 706 (Rejection of Claims, 77 questions), § 715 (Swearing Behind a Reference — Affidavit or Declaration Under 37 CFR 1.131(a), 23 questions), § 714 (Amendments, Applicant’s Action, 21 questions). Counts include questions that cite a subsection.

Are the old USPTO questions on Chapter 700 still useful?

Yes, if you check them against current law. Of the 168 released questions citing Chapter 700, 112 are marked current under today's rules; the rest turn on rules that have since changed. Every question in the quiz on this page is a current one, and the answer shown is the answer under current law.

How are these counts worked out?

Each released question is mapped to the MPEP sections that govern it under the current edition. A question counts once for each section it cites (and once for the chapter), and a section's count includes its subsections. The questions come from the 899 questions the USPTO released for its exams from 1999 to 2003.