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. You can also generate shell responses directly from the same interface.

Getting Started

  • From the ClaimMaster Ribbon, click on the USPTO 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.  
    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 Private PAIR (+Shells version).  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 PDF file 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. 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. This table shows the summary matrix of the claims in the OA - i.e., it identifies which claims were addressed in the OA, which were allowed/objected or rejected.  For unaddressed claims, 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 allowed/objected/rejected 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'. 
    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. Press this button to show/hide the PDF/Text view window.
    6. 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. 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.
    4. To generate a shell OA response (available in Pro+Shells and Lite+Shells versions), switch to the Generate an OA Response tab.