Ex Parte Quayle Office Action Response

Summary

This office action response template is for a response and amendment to an Ex parte Quayle office action in a pending patent application in the United States Patent Office (USPTO). This form includes practical guidance and drafting notes. When patent prosecution is officially concluded, but the application is still with the examiner, on final review of the file, the examiner may identify one or more relatively minor issues that remain to be addressed. In these circumstances, the examiner will issue an Ex parte Quayle office action. See Ex parte Quayle, 25 U.S.P.Q. 74, 453 O.G. 213 (Comm'r Pat. 1935). Essentially, an Ex parte Quayle office action tells the applicant that the application is allowable, but certain minor issues must be addressed before a notice of allowance can be issued. In other words, this type of office action raises objections rather than rejections. For example, during the examiner's final check preceding a notice of allowance, the examiner might see that a figure should have been labeled prior art and wasn't, or the examiner may discover a lack of antecedent basis that was previously overlooked. One of the most common types of Ex parte Quayle office actions is a requirement to cancel withdrawn claims. To avoid abandonment of a patent application, you must respond to any office action in writing. You must address all the grounds for the examiner's rejections or objections and request reconsideration or further examination, either with or without amendments. The crucial thing to remember about an Ex parte Quayle office action is that the response time is only two months (which can be extended up to six months after the mailing date). Also, the second paragraph in the remarks is particularly important. In this paragraph, you should acknowledge that the examiner has allowed the claims and closed prosecution, and the office action only requests that you fix certain minor informalities. This template includes amendments to the specification, claims, and drawings. An examiner may object to the form of a claim (e.g., improper claim numbering or a lack of proper antecedent basis). Similarly, the examiner may object to informalities in the application's specification, including drawings. This template includes examples of responses to such objections. You should tailor this template to respond to the examiner's specific objection(s). Remember that your response will form part of the prosecution history that may later become important in patent enforcement and validity proceedings. For example, courts may consult office action responses to help construe claim limitations and evaluate whether the applicant disclaimed particular claim scope during prosecution. Ensure your response does not contain any unnecessary admissions that would limit claim scope. Also, avoid unnecessary characterizations of the invention. Stick to the claim language when referring to the invention and, preferably, refer to the "presently claimed subject matter" rather than "the present invention" whenever possible. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). It is important that your response is correctly filed and displayed in the file history. You should, therefore, include the following caption in a header on each page of your response: Attorney Docket No. [Attorney docket number] Application No. [Application number] Art Unit [Art unit number] Response to Office Action mailed [Office action mailing date] Each page should also be numbered to ensure that every page has been properly filed and to facilitate reference to a particular page of the response in later prosecution, if necessary. See Patent Office Action Response for a template for responding to a non-final rejection.