Analyzing Office Actions

This feature allows you to detect and summarize rejections/objections/allowances in USPTO Office Actions (DOCX or PDF) to be used in shell OA responses (+Shells version).  In general, Office Actions in DOCX format are preferred because in some cases, OCRing text is not 100% accurate and some documents may not parse completely, although every effort is made to extract as much useful information from the Office Action as possible. After running analysis (or even without it), you can generate shell documents enriched with bibliographic and Office Action information. ClaimMaster also can let you analyze the contents of the OA using OpenAI GPT (+Shells versions only).

Getting Started

  • From the ClaimMaster Ribbon, click on the USPTO Office Actions, Shells, and Forms menu, then select Analyze Office Actions and Generate Shell Documents, then select Analyze Office Action + Generate Shells (+Shells add-on) or Analyze Office Action (without +Shells add-on):

  • Once you launch this feature, you will next need to specify the source of the Office Action.  You can analyze the Office Action already opened in Word or load Office Action from another document (PDF or DOCX).  Once you select the source, click on Load Office Action button to start the OA analysis.  

    • Note that recent versions of Word/Office 365 now include built-in OCR that does a good job of converting PDFs to Word documents.  By default, ClaimMaster will attempt to open PDFs as Word documents, which helps with OA navigation and analysis.

Feature Options

Selecting the above feature will open the Office Action browser. The Office Action browser allows you to browse rejections/objections/allowances in the Office Action and download the cited prior art references. The following operations are available: 

    1. Once the OA document is analyzed, a hierarchical representation of rejections/objections/allowances will be shown in the Overview tab. For each rejection, the view shows the rejection type (i.e., 101, 102, 103, double patenting, 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 and new bases for rejection. This operation will automatically update text summary of the Office Action.

    1. Press this button to rerun the analysis on the currently open document.  This may be needed if you made any corrections to the text of the OA.
    2. Enabling this checkbox will highlight the text of rejections/objections/allowances in the OA (only if OA is opened in DOCX format).
    3. Clicking this button will insert hyperlinks to the identified patent prior art directly in the Office Action (only if OA is opened in DOCX format).
    4. 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 10). Only the references used within rejections are downloaded from the US/EPO sites.  
    5. Press this button to open the Foreign/NPL page at Patent Center for the specified application # (using your default browser).
    6. 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 select multiple files by dragging the mouse across each row or using Shift/control keys + left click.
    7. 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.
    8. The "Save Settings" tab lets you specify various save options for the downloaded prior art documents (e.g., save directory location or preferred file names for the documents):

      1. Here you can specify the directory where you'd like to store the downloaded prior art.
      2. Here you can specify a custom file naming template for the downloaded prior art using replacement text fields that will be replaced with the actual bibliographic/date information for each generated form.  For example, "[APPNUM]_[FORMNAME]_[DATE]" or any other combination of the available fields.  Please take care not to use characters in your template that are forbidden by Windows in file paths, such as * " / \ [ ] : ; | ,. The following replacement fields can be used in the file naming template:
      • [APPNUM] - application number
      • [REFNUM] - reference patent/publication #
      • [REFNAME] - reference name (i.e., first inventor), in all caps
      • [Refname] -  reference name (i.e., first inventor), with only the 1st letter capitalized
    1. The Claim Status Table tab 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. The OA Text Summaries tab shows shows the textual summaries of the Office Action in various formats (original, summarized by ClaimMaster, summarized by GPT). You can also 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. The "Original Snippets" section shows the language of the identified rejections/objections/allowances exactly as used in the Office Action.

      1. The "Regenerated Summary" tab shows the language of the identified rejections/objections/allowances as re-summarized by ClaimMaster using specific summary/citation preferences.

      1. The "Summary (Open AI GPT)" tab shows shows the textual summary of the Office Action, as summarized by OpenAI's GPT (available in +Shells versions only).  ClaimMaster will not automatically access OpenAI's or Azure OpenAI GPT service using API. You will only send the contents of the Office Action to GPT when you press the "Summarize OA with GPT" button. However, do not pass sensitive data as input unless you review and are OK with GPT data usage policies.

    1. To generate a shell OA response (available in Pro+Shells and Lite+Shells versions), switch to the Generate an OA Response tab.