What must a fully responsive reply to a non-final Office action address?

A fully responsive reply to a non-final Office action must address every rejection ground presented by the examiner. This means that the applicant must specifically respond to all points raised in the Office action, which typically includes any rejections based on prior art or other issues. By doing so, the applicant demonstrates to the examiner that they have fully considered the arguments and concerns expressed in the Office action.

In addition to addressing all rejections, the response may also include new claims to clarify and support the overall patentability of the invention. Submitting new claims can often help overcome certain rejection issues, allowing the applicant to adjust the claims in light of the examiner's feedback. Thus, a complete response that tackles every rejection creates a more robust case for the patentability of the invention.

This comprehensive approach is important because it ensures that the applicant has thoroughly engaged with the examiner's feedback, thereby facilitating a more efficient examination process and potentially avoiding further office actions on the same issues.