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

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A fully responsive reply to a non-final Office action must address every ground of rejection articulated by the examiner. This means that the applicant must directly respond to all rejections listed in the Office action, providing arguments or amendments that are pertinent to each rejection. While it is typical for such a response to also include new claims if they are being introduced to overcome the rejections, addressing all rejection grounds is paramount to ensuring that the response is considered fully compliant. This thoroughness is crucial because failing to address even one rejection could result in the application being deemed non-responsive, which could impede the prosecution process.

In this context, focusing solely on major grounds of rejection would not satisfy the requirements, as even minor rejections need to be addressed to advance in the examination process. Similarly, just correcting errors made by the examiner misses the broader responsibility of addressing all stated rejections. Lastly, only submitting new claims without addressing the rejections would not constitute a fully responsive reply, as it overlooks necessary arguments against the existing rejections.

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