Analyzing Office Actions and generating shell OA responses 

This feature allows you to import rejections from an OCRed PDF or DOC files that contains a USPTO Office Action.  The rejections will be parsed and, to the extent possible, analyzed. Note that if the OCRed text is not 100% accurate, some documents may not parse completely, although every effort is made to extract as much useful information from the Office Action as possible. You can also generate shell responses directly from the same interface.

Getting Started

  • In Word 2007 or later - from the ClaimMaster Ribbon, click on the USPTO Office Actions, Shells, and Forms menu, then select Identify rejections/prior art in the Office Action:

  • In Word 2003 or earlier - from the ClaimMaster toolbar, click on the Office Actions, Shells, and Forms menu, then select Identify rejections/prior art in the Office Action:

Feature Options

Selecting the above feature will start the Office Action browser. The Office Action browser allows you to browse rejections in the Office Action and download the cited references identified by the software in the Office Action. The following operations are available: 


    1. Depending on the selected source, clicking this button will bring up a dialog that will let you select an Office Action file (either in PDF or Word format) or will bring up the PAIR download dialog, allowing you to download the latest Office Action from either Patent Center or private PAIR.  
    2. This option lets you select a source of the Office Action.  It can be either an existing Office Action file (either in PDF or Word format) or ClaimMaster can download the latest Office Action from either Patent Center or Private PAIR.  The downloaded Office Action will be automatically loaded into the Office Action browser and analyzed.  By default, to improve accuracy, if DOCX file is available for the Office Action, it will be analyzed instead of the PDF file.
    3. If this checkbox is checked, the software will attempt to OCR only the rejection and cited references section of the Office Action to reduce OCR processing time. Note: this feature is only available in ProPlus and LitePlus versions of ClaimMaster.
    4. Once the OA document is analyzed, a hierarchical representation of rejections/objections/allowances will be shown.
    5. If you switch to the OA Summary Text tab, you will see the textual summary of the Office Action, as summarized by ClaimMaster. Here, you can customize how the US and foreign prior art references are cited in the Office Action summary, as well as how the rejections/objects/allowances are written out. 

    1. For each rejection, the view shows the rejection type (i.e., 101, 102, 103, etc) and the numbers of rejection claims. In addition, for each rejection, the view provides a list of references for that rejection. When you click on the rejection, you will be taken to the page where the rejection is described. Note: you can right-click on the tree elements to edit claim listings and also edit/add/remove references. This operation will automatically update text summary of the Office Action.

    1. After the OA is processed, the Download button will become enabled. When you click this button, the software will download PDF copies of the prior art references used in the rejections in the Office Action to the specified save location (item 8).
    2. Specifies the location where the patent references are downloaded by the software.  Only the references used within rejections are downloaded from the US/EPO sites.  
    3. This table lists all US/EPO references identified and downloaded by the software.  In addition, the table provides a link to the Office Action file (PDF) that includes colored boxes/bookmarks for the locations of the rejections/objections/allowances. You can multiple files by dragging the mouse across each row or using Shift/control keys + left click.
    4. These buttons allow you to print, email, or open one or more of the selected prior art references & the annotated Office Action in the table on the left side.
    5. Switch between the PDF/Text view to see the page of the Office Action where the identified rejection is located (either in PDF or Text form).  Note: when you are in Text view tab, you can edit the text of the OA displayed in the window and have the tool re-analyze it for rejections by clicking the "Re-analyze OA text" button.  This allows you to fix any OCR issues that might prevent ClaimMaster from correctly identifying rejections or prior art references in the OCRed text.

    1. Press these buttons to browse the pages of the PDF on the right-hand side (shown in item 15)
    2. Enter a specific page # and click "Go" to jump to that page in the PDF document (item 15)
    3. This section shows 'unaddressed' claims, if there are any.  After the Office Action is parsed, the software will attempt to identify any claims in the entire range of claims mentioned by the Office Action that have not been specifically addressed by the Office Action.  For example, if the Office Action addresses claims 1-7 and 11-12, ClaimMaster will identify claims 8-10 as 'unaddressed'. 
    4. Shows the page of the Office Action where the identified rejection is located.  The rejection will be highlighted. Click and hold on the figure with the left mouse button to bring up the magnifier for smaller images.
    5. After the OA is processed, this tab will become available. The tab shows varies bibliographic info extracted directly from the OA.  It also allows you to lookup additional bibliographic information from PEDS or PAIR to be used in filling out a shell OA response.

      1. Enter the application or patent number in this field.  You can also select a value from all of the entries loaded in the PAIR cache using a pull-down menu.
      2. Press this button to download bibliographic information for the specified application number (item #1) from Patent Center, PEDS, or Private PAIR, as specified in item # 9. 
      3. If this checkbox is selected, ClaimMaster will proceed to download the bibliographic data directly from Patent Center, PEDs, or Private PAIR rather than loading it from PAIR cache.  The newly downloaded bibliographic data for this application will then be stored in PAIR cache.  If you switch to the PAIR Source and Cache Settings tab here, you'll have access to the following options.
      4. Various bibliographic replacement fields in this table will be filled in when "lookup biblio data" button (item #2) is clicked. These fields will be used to fill-out the OA shells.
      5. Here you can specify whether to capitalize inventor/examiner/applicant names and title in the replacement fields. You can choose to keep the original capitalization, initialize first letters in each word, or capitalize all words.
      6. Use these buttons to edit, delete, or add new fields to the table above.
      7. Click this button to configure/edit custom replacement fields.
      8. Lists the date of the Office Action (used in filling out the shells and for computing various replacement fields).  

    1. After the OA is processed, this tab will become available, allowing you to generate a shell OA response that's populated with the various information extracted from the Office Action, including the application number and rejections/objections/allowances.  Note: this feature is only available in ProPlus and LitePlus versions of ClaimMaster:

      1. Use this field to specify the location of the document with the latest claim set you want to insert into the Office Action response.  Alternatively, you can have ClaimMaster download the latest claims from either Patent Center or Private PAIR (if they are available there).
      2. If this checkbox is selected,  ClaimMaster will update the status indicators in the claims inserted in the Office Action response, such as from (Currently Amended) to (Previously Presented), etc.  In addition, amendments in the claims will be accepted as well. The placeholder for this item in the templates is [CLAIMS]
      3. This table shows a list of all available shells.  Click on a particular row in the table to select the shell for further processing.  You can select multiple shells either by dragging your mouse across the selection or using Ctlr + mouse click to select multiple forms simultaneously.  

Note: if you select multiple shells/documents to fill with bibliographic data, a valid Save directory (item 6) is required and all generated documents will be saved there once they are filled out.

      1. Configures shell settings.
      2. Specifies a save location for the generated documents.
      3. These fields allow you to specify additional items to include with the generated shells to create an Office Action "package".  They can include: (1) an annotated and OCRed Office Action, (2) cited prior art, and (3) a document with a clean claim set.  You can also select to zip all generated documents together.

Note: if you select any of these documents, a valid Save location (item 6) is required and all generated documents will be saved there.

      1. Click this button to fill-in the selected shell template(s) with information.  Any placeholder fields in the Word or email shell(s) will be replaced with bibliographic data, claims, rejections, etc., if available.  Any automatic fields in the templates (e.g., page #s of different sections) will be updated at the end of the document creation.