How to respond to a USPTO office action

Non-final and final office actions

The first action on the merits is non-final. In reply you can amend the claims and specification, cancel or add claims, argue, and file declarations, all as of right (37 CFR 1.111).

The second action is normally final. Under MPEP 706.07(a), a second or later action on the merits is made final unless the examiner introduces a new ground of rejection that your amendment did not necessitate and that is not based on an information disclosure statement filed with the fee under 37 CFR 1.17(p). If a final action rests on a new ground you did not cause, say so in the reply and ask for the finality to be withdrawn.

A final action closes prosecution. After it, amendments are entered only within the limits of 37 CFR 1.116, covered below.

The deadline and extension fees

35 U.S.C. 133 gives the applicant 6 months after an action to reply, or a shorter time of at least 30 days set by the Director. 37 CFR 1.134 allows the full 6 months unless the action sets a shorter period. In practice it always does. MPEP 710.02(b) sets a shortened statutory period of 3 months for an action on the merits and 2 months for a restriction or election of species requirement with no action on the merits.

Under 37 CFR 1.136(a) you can extend the shortened period without asking permission, by filing a petition and paying the fee in 37 CFR 1.17(a). The fee depends on the date you file, not on when the period ended, and nothing can carry the reply past 6 months from the action. For a 3-month period the fees are:

Fees effective January 19, 2025, as listed on the USPTO fee schedule. Fourth and fifth month extensions ($2,495 and $3,395 standard) are only usable where the period set was shorter than 3 months.

The 2-month rule after a final rejection

A final rejection also sets 3 months, with one difference. If your first reply is filed within 2 months of the final action, the period ends 3 months from the final action or on the date the advisory action is mailed, whichever is later (MPEP 706.07(f)). Extension fees are then counted from that later date. File after 2 months and you lose that protection: if the advisory action arrives after the 3 months, you pay extension fees counted from the 3-month date. Either way, the period cannot run past 6 months from the final action.

Restriction requirements

If the examiner finds more than one independent and distinct invention, or several patentably distinct species, the first action may be a restriction or election requirement with no examination of the merits (35 U.S.C. 121, MPEP 800). Your reply must elect one invention or species, even if you disagree (37 CFR 1.143).

To keep the right to challenge the requirement, elect with traverse and give reasons that distinctly and specifically point out the errors. An election with no statement, or with only a general objection, is treated as an election without traverse (MPEP 818.01(a)). Only a traversed requirement can later be taken to a petition under 37 CFR 1.144, which must be filed no later than appeal. Restriction is petitionable, not appealable. Non-elected inventions can be pursued in a divisional application.

Objections and rejections

A rejection goes to the merits: the claim is unpatentable as written. An objection goes to form, such as a dependent claim that would be allowable but depends on a rejected claim, or a drawing that does not show a claimed feature. The difference matters for review. A rejection that persists can be appealed to the Patent Trial and Appeal Board. An objection can only be reviewed by petition to the Director (MPEP 706.01). Answer both. 37 CFR 1.111(b) lets you ask that objections of form not needed for examining the claims be held in abeyance until allowable subject matter is found.

Common rejections and how to answer them

Section 101: the Alice/Mayo framework

Examiners apply the two-step test from Alice and Mayo as set out in MPEP 2106. Step 1 asks whether the claim falls in a statutory category. Step 2A asks whether it recites a judicial exception (prong one) and, if so, whether the claim as a whole integrates it into a practical application (prong two). Only if it does not, Step 2B asks whether the additional elements amount to significantly more than the exception. Most software and AI rejections are won or lost at prong two.

The USPTO's eligibility guidance now sits in MPEP 2103 to 2106.07, with later material listed on its eligibility page: the 2024 AI guidance update (July 17, 2024), a memo to examiners of August 4, 2025, the advance notice of MPEP changes (December 5, 2025) after the Appeals Review Panel decision in Ex parte Desjardins, designated precedential on November 4, 2025, and memos on subject matter eligibility declarations under 37 CFR 1.132 (April 30, 2026 and September 29, 2026). Desjardins treats an improvement to how a machine learning model itself operates as a possible improvement to technology, and warns examiners against reading claims at so high a level of generality that real technical limitations are dismissed as generic computer parts. Tie your argument to the specific technical improvement the specification describes, and cite the guidance by name.

Section 103: Graham and KSR

Obviousness is decided on the Graham v. John Deere factual inquiries: the scope and content of the prior art, the differences between the art and the claim, and the level of ordinary skill (MPEP 2141). After KSR v. Teleflex, the examiner may rely on any of the rationales in MPEP 2143, such as combining known elements by known methods for predictable results, or "obvious to try". But the rejection still needs articulated reasoning with some rational underpinning.

A good 103 response checks each finding: is every claim limitation actually in the cited art, does the stated reason to combine hold up, would the combination change the principle of operation of the primary reference or make it unfit for its purpose, and would a skilled person have expected success? Then add objective evidence where you have it, such as unexpected results, commercial success or long-felt need, by declaration under 37 CFR 1.132. Read the references in full. A free USPTO patent search pulls up cited US patents and publications with their claims.

How to structure the reply

37 CFR 1.111(b) requires a written reply that distinctly and specifically points out the errors in the action and answers every ground of objection and rejection. A general statement that the claims are patentable does not comply. Under 1.111(c), when you amend you must also point out the patentable novelty and show how the amendment avoids the references. A typical reply runs in this order:

1. Introduction: application number, examiner, art unit, the date of the action, and any extension of time requested.
2. Amendments to the specification: replacement paragraphs, each with an instruction saying where it goes, added text underlined and deleted text struck through (37 CFR 1.121(b)).
3. Claim listing: on a separate sheet, every claim ever presented in numerical order, each with a status identifier: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New) or (Not entered). Only currently amended claims carry markings: underlining for additions, strike-through for deletions, or double brackets for deleting five or fewer characters (37 CFR 1.121(c)).
4. Amendments to the drawings: replacement sheets, if any.
5. Remarks: the status of the claims, a summary of any interview, then each objection and rejection in the order of the action. For every amendment, cite the paragraphs that support it. No new matter may be added (35 U.S.C. 132(a)).
6. Evidence: declarations under 37 CFR 1.130 or 1.132, where you rely on them.

Keep the remarks narrow. Statements made to get around a reference can limit the claim later through prosecution history estoppel, so argue the limitation that matters and stop there. Amend dependent claims into independent form where the examiner has indicated they are allowable. The same claim drafting habits that avoid 112(b) problems apply here; see how to write patent claims.

Who may sign: since July 20, 2026, applicants and patent owners domiciled outside the United States must be represented by a registered patent practitioner, and their replies must be signed by one (37 CFR 1.31 and 1.33(b)). Juristic entities already needed one.

Examiner interviews

An interview is often the fastest way to learn what claim language the examiner will accept. Request one with the USPTO's Automated Interview Request (AIR) form or form PTOL-413A, and send a short agenda and any proposed claim amendments in advance (MPEP 713.01). Interviews can be held by phone, by video or in person.

• Before the first action, an interview is ordinarily granted only in continuing or substitute applications; in others it is at the examiner's discretion (37 CFR 1.133(a)(2), MPEP 713.02).
• After a final rejection, normally one interview is allowed, and only if the issues can be resolved with nominal further consideration (MPEP 713.09).
• The substance of every interview must be made of record. Put your own summary in the reply (37 CFR 1.133(b), MPEP 713.04).
• An interview does not stop the clock. The reply is still due on the same date.

Options after a final rejection

The After Final Consideration Pilot 2.0, which gave examiners extra time to consider a narrowing amendment after final, ended on December 14, 2024. Requests filed after that date are not accepted. As of October 25, 2026 the USPTO has not announced a replacement. That leaves these routes:

• Amendment after final (37 CFR 1.116): an amendment that only cancels claims or meets a requirement of form already set out in an action may be made. Other amendments may be entered if they put the claims in better form for appeal, or on a showing of good and sufficient reasons why they are necessary and were not presented earlier. Rewriting an allowable dependent claim in independent form is the usual way to get a case allowed at this stage. The examiner replies with an advisory action, and the clock keeps running.
• Request for continued examination (37 CFR 1.114): withdraws finality and reopens prosecution. It must include a submission that meets 37 CFR 1.111, such as an amendment, new arguments or new evidence, and the fee: $1,500 for the first RCE and $2,860 for each later one (standard rate; small entity $600 and $1,144, micro $300 and $572).
• Appeal to the PTAB (37 CFR 41.31): once any claim has been rejected twice, file a notice of appeal within the period for reply, with the $905 fee (standard). The appeal brief is due within 2 months of the notice (37 CFR 41.37(a)) and has no fee. If the examiner answers the brief, a $2,535 forwarding fee is due to send the appeal to the Board.
• Pre-appeal brief conference: filed with the notice of appeal, at no extra fee. A panel of examiners reviews the rejection for clear errors before you write the brief. The arguments may not exceed 5 pages, and no amendment may be filed with the request (MPEP 1204.02). It works best where the examiner has missed a limitation or misread a reference.
• Continuation: a new application filed while the parent is pending, to pursue different claims while the parent goes to appeal or is abandoned.

Abandonment and revival

If no complete reply is filed within the period, as extended, the application is abandoned (37 CFR 1.135(a)). An amendment after final that is not entered does not save it (1.135(b)). A reply that is a bona fide attempt but inadvertently misses something may get a new period to supply the omission (1.135(c)).

An abandoned application can be revived if the delay was unintentional. The petition under 37 CFR 1.137(a) must include the missing reply (an RCE or a continuing application can serve where prosecution was closed), the petition fee, and a statement that the entire delay, from the due date to the filing of a grantable petition, was unintentional. The fee is $2,260 (small $904, micro $452) if the delay is one year or less and $3,000 (small $1,200, micro $600) if it is longer. For petitions filed after August 13, 2026, the USPTO requires an additional explanation of the circumstances when the petition comes more than one year after abandonment, down from two years (Federal Register, June 24, 2026). File promptly once you learn of the abandonment.

Responding to an Indian application instead? See how to respond to a First Examination Report.

More USPTO guides

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• Patent drawing requirements: USPTO, EPO and India

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• How to write patent claims: USPTO, EPO and India

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