Analyzing Office Actions

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.

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. Clicking this button will bring up a dialog that will let you select an Office Action file, either in PDF or Word format.  ClaimMaster will then attempt to identify rejections in the selected file.  If a PDF file is specified and you have an OCR option in your version of ClaimMaster, the software will attempt to OCR the pdf file if it does not contain text.
    2. Click this button will bring up the PAIR download dialog, allowing you to download the latest Office Action from either public 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. Press these buttons to browse the pages of the PDF on the right-hand side (shown in item 17).
    5. Enter a specific page # and click "Go" to jump to that page in the PDF document (item 17)
    6. Once the OA document is analyzed, a hierarchical representation of rejections/objections/allowances will be shown. 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 (see item 8).
    7. 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'.
    8. This section shows the text summary of rejections in the Office Action.  To customize the format of citations used in the Office Action summary, switch to the "Summary Settings" tab, explained in section 9 below.
    9. You can customize how the US and foreign prior art references are cited in the Office Action summary.  To do so, specify the text around #NUM# and #NAME# placeholders in the fields for US patents, US publications, and foreign references. By default, the name of the 1st inventor will be capitalized if #NAME# placeholder is used (e.g., "HARDWICK").  If you use #Name# placeholder instead, only the first letter of the inventor's name will be capitalized (e.g., "Hardwick").  Your edits to the template will be automatically saved when you switch back to the OA Summary tab or close the dialog.

    1. If this checkbox is selected, the OA summary will also include citations to the pages of the Office Action for each identified rejection.
    2. Clicking this button will bring up a Generate Shell Response window that will be 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.
    3. 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 13).
    4. 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.  
    5. 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..
    6. 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.
    7. 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 reanalize 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. Shows the page of the Office Action where the identified rejection is located.  The rejection will be highlighted.