What is a Non-Final Office Action?
A non-final office action is a communication issued by the United States Patent and Trademark Office (USPTO) in which the Applicant must “reply and request reconsideration or further examination, with or without amendment” if the office action is adverse in any way. (see 37 CFR 1.111 – Reply by Applicant or Patent Owner to a Non-Final Office Action). Failing to respond to the office action within the statutory time period will result in the patent application becoming abandoned.
In response to a non-final office action, the Applicant will likely submit an office action response (or amendment) requesting reconsideration of the patent application by “distinctly and specifically pointing out the supposed errors in the examiner’s action.” To accomplish the foregoing, the substance of the response (or amendment) will include one or more of the following actions: 1) amendment to the description or drawing(s); 2) amendment, cancellation, or addition of a claim(s); or 3) argument (with or without amendment) traversing the rejection(s)/objection(s).
Upon review of the Applicant’s response, the Examiner will determine whether any existing issues remain or if the application should be allowed (notice of allowance). If any issues remain, the Examiner will issue a Final Office Action.
The manner in which an Applicant responds to the content of an office action will depend upon a number of items, including: budget, need for an expedient patent grant, strength of the contentions furthered within the office action, etc. In a majority of instances, the primary roadblock to obtaining a patent grant is the prior art. Accordingly, most office actions will include at least one rejection related to prior art (e.g., 35 USC 102/35 USC 103). To overcome such a rejection, the Applicant will usually traverse the rejection solely by argument (e.g., the cited prior art does not teach a feature asserted by the Patent Examiner) or further a claim amendment. If the Applicant chooses to further a claim amendment, it is likely that a feature (or recitation) from one of the dependent claims will be utilized for the claim amendment.