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Failure to Address All Claims in Office Action


Sometimes, Examiners fail to address every claim that is currently pending in an application. When an Examiner fails to reject a claim under any grounds (art-based or non-art-based), Applicant may choose to request a new Office Action along the lines of the following.

Example Argument

Applicant respectfully notes that all of the claims have not been addressed in the outstanding Office Action. Specifically, the Office Action failed to address [UNADDRESSED CLAIMS]. The failure to address these claims causes the status of the unaddressed claims to be uncertain and further renders the Office Action deficient.

MPEP § 707.07(d) states:

Where a claim is refused for any reason relating to the merits thereof it should be "rejected" and the ground of rejection fully and clearly stated, and the word "reject" must be used. The examiner should designate the statutory basis for any ground of rejection by express reference to a section of 35 U.S.C. in the opening sentence of each ground of rejection.

Because the Office Action failed to address [UNADDRESSED CLAIMS] in the manner required by the MPEP, Applicant cannot determine whether the Examiner intended to reject or allow these claims. Further, 37 C.F.R. § 1.104(b) requires that the Office Action must be complete as to all matters and such is not the case where one or more claims have not been addressed.

Accordingly, Applicant respectfully requests that the Examiner issue a new Office Action addressing [UNADDRESSED CLAIMS] as required by the MPEP and the C.F.R. Additionally, because the rejection of [UNADDRESSED CLAIMS] would be presented for the first time on the record, Applicant respectfully notes that the new Office Action rejecting one or more of these claims cannot be made final per 37 C.F.R. § 1.113.

Important Note

It is not necessary that the Examiner reject the claim under a prior art rejection. All that is required is that the Examiner address the claims under some rejection. In other words, the Examiner has to either indicate that the claim is allowed or rejected. If the claim is rejected, the Examiner is required to indicate what section of 35 U.S.C. that the Examiner used to reject the claim, and also the Examiner is required to set forth reasons why the rejection has been made. In the case that a claim is objected to without also being rejected or without an indication that the claim would be allowable if the objection is overcome, the claim has not been properly addressed and the Office Action can be challenged in a similar manner to that presented above.