MPEP Section 714.04, Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty

Executive summary:

This document contains Section 714.04 ("Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty") of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Eighth Revision (July 2010). This page was last updated in January 2011. You may return to the section index to find a particular section. Alternatively, you may search the MPEP using the search box that appears on the left side of every page of BitLaw--you may restrict your search to the MPEP on the search results page.

For more information on patent law, please see the Patent Section of BitLaw. For patent services, see the Beck & Tysver pages.

Previous Section (§714.03(a)) | Next Section (§714.05)

714.04 Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty

In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the claims should not be allowed. See 37 CFR 1.111 and MPEP § 714.02.

An amendment failing to point out the patentable novelty which the applicant believes the claims present in view of the state of the art disclosed by the references cited or the objections made may be held to be not fully responsive and a time period set to furnish a proper reply if the statutory period has expired or almost expired ( MPEP § 714.03). However, if the claims as amended are clearly open to rejection on grounds of record, a final rejection should generally be made.