Generating Shell Office Action Responses

Home » Tutorials » Office Action Response Tools » Generating Shell Office Action Responses

ClaimMaster includes a powerful library of Office Action response tools. Specifically, ClaimMaster lets you to identify rejections/objection/allowances from the USPTO Office Actions in PDF and DOCX formats (Pro+/Lite+ versions).  Once the contents of the Office Action (“OA”) are analyzed, you can generate shell responses incorporating contents of the OA based on pre-defined templates, such as responses and reporting letters/emails.

Follow these steps to quickly generate shell documents based on the USPTO OA:

  1. Open Office Action Browser

    From the ClaimMaster Ribbon, click on the USPTO Office Actions, Shells, and Forms menu, then select Identify rejections/prior art in the Office Action.
    office action browser

  2. Load Office Action into the OA Browser

    Next, you need to load the existing OA into the tool. You have several options for this: (1) point ClaimMaster to the existing PDF or DOCX file or (2) have ClaimMaster download the latest Office Action directly from Patent Center (DOCX) or (3) Private PAIR (DOCX). If the PDF is not OCRed yet, ClaimMaster will OCR it prior to processing.

    office action import

    Note: If “Smart OCR” option is enabled, then to save processing time, ClaimMaster will only OCR the front portion of the OA (i.e., cover page, rejections, and  PTO-892 form), without OCRing the rest of the document.

  3. Review identified rejections in the OA

    Once the OA is loaded into the OA Browser, you will get a list of rejections/objections/allowances identified in the OA on the left. If you click on the specific row in the table, the tool will navigate to the annotated OA page on the right, allowing you to quickly browse the identified rejections. In addition, blue OA Biblio and Replacement Data and Generate Office Action Response tabs become available in the user interface.

  4. Edit citations (optional)

    If you notice that some claim listings or cited prior art references were not correctly identified (this could be due to the errors in OCR), you can bring up the edit menu by right-clicking on the incorrect item. In addition, from the same menu, you can add new references or remove extra references from the rejection summary.

    When editing references, you can either directly type in the reference cite and click Save or first verify the inventor name in the cite from the USPTO/EPO database and then save your edits.

  5. Edit OA Summary (optional)

    Based on the information shown in the table (including your edits), ClaimMaster will automatically generate a summary of the OA rejections/objections/allowances and place it into the OA Text Summary tab, as shown below. You can make further edits to this summary, if you’d like, as this will be the OA summary blurb that will be inserted into the shell response (in a place of the [OASUMMARYCOMPOSED] replacement field).

    Note: you can further control how ClaimMaster generates the text summary by customizing OA Summary Settings.

  6. Download prior art cited in the rejections (optional)

    Once ClaimMaster identifies rejections in the OA, you can also click on the Download cited art button to download PDFs of the cited references from the USPTO/EPO. You’ll get a list of all successful downloads in the window, from where you’ll be able to open the files or email/print them.

  7. Review/update bibliographic data for the OA

    If you switch to the OA Biblio and Replacement Data tab, you’ll be able to specify the application # for your shell and ClaimMaster will automatically pull the corresponding bibliographic information from PEDS or PAIR. This data will be used to fill-out the header in your shell documents using corresponding replacement field. Normally, the software will attempt to detect the application number from the OA, but if that doesn’t work, you can just manually type in the application number into the field below to pull bibliographic data. You can also edit the fields, including OA data and other information, using the same interface.

  8. Generate Office Action response shells and packages with supplementary documents

    Once you confirm that the OA summary and bibliographic data is correct, you can proceed to generate any number of shell documents based on the templates pre-configured in ClaimMaster.

    You can generate multiple documents, such as OA response and reporting letters/emails, simultaneously – just select the desired documents in the table and click on Generate selected shells button. These documents will have configured replacement fields replaced with the specific OA and bibliographic data.

    The results could be saved to a specified directory or stored in a zip file. For example, your OA response packet might include:

    * Draft Response – an office action response shell with your application information, caption, response, current claim language, and rejection bases already populated;

    * Office Action – an OCRed and annotated version of your office action, allowing you to quickly search the document for rejections, cited art and other key phrases;

    * Cited Art – PDFs of the art cited in your office action; and

    * Clean claims – a document containing clean claims without amendments for reporting.

    * Client Letter – a letter that can be either mailed or emailed to inform your client of the rejection bases and art cited; and

    * Client Reporting Email – a draft Outlook email (.msg) with all the necessary attachments and the summary of the Office Action.

  9. Further help/information about the related features

    OA Browser Help – further information about OA Browser options and advanced features

    OA Template Wizard – a tool that helps you turn existing OA responses into OA shells that can be reused within ClaimMaster

    Setting up OA Shell templates – learn how to quickly set up and edit OA existing shells

    Using OA Response Assistant – a handy tool for quickly inserting boilerplate response language and other information into the existing OA responses