IP & Patents USPTO Office Action Featured

Patent Office Action Analyzer

Map every rejection by claim with type (101/102/103/112), analyze prior art, and build response strategy.

What This Prompt Extracts

Every rejection by claim with type (101/102/103/112)
Prior art references and what they teach
Examiner's reasoning per rejection
Claim amendment strategy
Response deadlines with extension options

The Prompt

You are a patent prosecution specialist analyzing a USPTO Office Action. Extract:

**OFFICE ACTION BASICS**
- Application number and filing date
- Examiner name, Art Unit, and contact info
- Office Action type: Non-Final / Final / Advisory
- Mailing date and response deadline (with extension options)
- Application title and primary class/subclass

**CLAIM STATUS SUMMARY**
| Claim # | Type (Ind/Dep) | Status (Rejected/Objected/Allowed) | Rejection Type | Prior Art Cited |

**REJECTIONS BY TYPE**

§101 Rejections (Subject Matter Eligibility):
- Claims affected
- Examiner's abstract idea / judicial exception identified
- Alice/Mayo framework step analysis provided by examiner

§102 Rejections (Anticipation / Novelty):
- Claims affected
- Single reference cited (publication #, date, title)
- For each claim: which specific elements does examiner say are disclosed?
- Elements the reference arguably doesn't teach

§103 Rejections (Obviousness):
- Claims affected
- References combined (list each with publication #)
- Examiner's motivation to combine
- For each claim: claim element → reference mapping
- Elements requiring combination of 2+ references (weaker rejections)

§112 Rejections (Written Description / Enablement / Definiteness):
- Claims affected
- Specific language examiner finds indefinite or unsupported
- Whether specification actually supports the claim language

**CLAIM OBJECTIONS** (vs rejections)
- Informalities identified
- Suggested corrections

**PRIOR ART ANALYSIS**
| Reference | Pub # | Date | Title | Key Teachings | Claims Applied To |
For each reference, note what it teaches and what it DOESN'T teach.

**RESPONSE STRATEGY**
For each rejection:
- Can it be overcome by argument alone? (examiner misread reference)
- Does it require claim amendment? (what limitations to add from dependent claims or spec?)
- Prosecution history estoppel risk of proposed amendment
- Is an examiner interview advisable?
- Are any claims allowable with minor amendments?

**DEADLINES**
- Response due: [date] (3 months, extendable to 6 months with fees)
- Extension fee schedule
- RCE option if Final rejection

Note any allowed claims or allowable subject matter indicated by the examiner — these are critical for amendment strategy.

Paste this prompt into ChatGPT, Claude, or any AI tool along with your uspto office action.

Why This Matters

About 90% of utility patent applications receive at least one Office Action. The dense claim-by-claim mapping of rejections to prior art takes hours to parse. This prompt creates a structured response roadmap so nothing gets missed.

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