2671 Examiner Action Following Response/Comments or Expiration of Time for Same
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2671.01 Examiner Issues Action on Merits That Does Not Close Prosecution
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Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.
I. WHEN A NON-ACP ACTION IS ISSUED
After reviewing the patent owner’s response and third party requester comments (if such comments are filed), the examiner may determine that the proceeding is not ready for issuing an Action Closing Prosecution (ACP).
Such a determination would be based upon the following:
- An action will not normally close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.
- The examiner will not normally close prosecution where a new ground of rejection not necessitated by an amendment is made, because the patent owner’s right to amend the claims becomes limited after prosecution is closed.
- The examiner will not normally close prosecution where a new ground of rejection not necessitated by an amendment is made, because the patent owner’s right to amend the claims becomes limited after prosecution is closed.
- Where an ACP would be proper, but the examiner feels that the issues are not yet clearly defined, it is always within the discretion of the examiner to issue an Office action that does not close prosecution (rather than an ACP).
II. OVERALL CONTENT
Where the examiner determines that the proceeding is not ready for issuing an ACP, the examiner will issue an Office action that will be similar in form to a first Office action, but will differ in that it addresses the positions and argument set forth in the patent owner’s response and the third party requester comments (if such comments are filed).
- This Office action will be a statement of the examiner’s position, so complete that the next Office action can properly be made an action closing prosecution.
The action should be comprehensive. It should address all issues as to the patents or printed publications.
The action will clearly set forth each ground of rejection and/or ground of objection, and the reasons supporting the ground(s).
The action will also clearly set forth each rejection proposed by the third party requester that the examiner refuses to adopt.
Reasons why the rejection proposed by the third party is not appropriate (i.e., why the claim cannot be rejected under the ground proposed by the third party requester) must be clearly stated for each rejection proposed by the third party requester that the examiner refuses to adopt.
Comprehensive reasons for patentability must be given for each determination favorable to patentability of claims.
III. REVIEW OF AMENDATORY MATTER UNDER 35 U.S.C. 112
Where an amendment has been submitted in the patent owner’s response, the amendatory matter (i.e., matter revised or newly added) should be reviewed for compliance with 35 U.S.C. 112.
- As to the content of the patent that has not been revised, a review based upon 35 U.S.C. 112 is not proper in reexamination, and no such review should be made.
IV. WITHDRAWAL OF REJECTION
Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the Office action as a decision favorable to patentability with respect to the withdrawn rejection.
- The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester.”
- In the event the patent owner fails to respond to all actions leading to the Right of Appeal Notice (RAN), including the ACP, and a RAN is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability.
Where the claims have not been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester (e.g., based on the patent owner’s argument or evidence submitted), the examiner should treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.
VII. SIGNATORY AUTHORITY
As with all other Office correspondence on the merits in a reexamination proceeding, the action must be signed by a primary examiner.
VIII. CONCLUDING PARAGRAPHS
In view of the requirement for “special dispatch” in inter partes reexamination proceedings, it is intended that the examiner be able to close prosecution at the earliest possible time.
- Accordingly, the Office action should include a statement cautioning the patent owner that a complete response should be made to the action, since the next action is expected to be an ACP.
- The action should further caution the patent owner that the requirements of 37 CFR 1.116(b) will be strictly enforced after an ACP and that any amendment after an ACP must include “a showing of good and sufficient reasons why they are necessary and were not earlier presented” in order to be considered.
IX. PROCESS OF PREPARING THE ACTION
Upon receipt of a patent owner response to the action (and third party requester comments where permitted) by the CRU, or upon the expiration of the time to submit same, the examiner will be notified.
- The examiner will prepare for and set up a panel review conference, to discuss the issuance of the Office action.
- The examiner may prepare the Office action after the conference, or may prepare the Office action prior to the conference and revise it as needed after the conference.
If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims and issue a non-final Office action, the proposed Office action shall be issued and signed by the examiner, with the two or more other conferees initialing the action (as "conferee" ) to indicate their presence in the conference.
X. NO RESPONSE BY PATENT OWNER
Where the patent owner fails to timely respond to an action requiring a response and there are no patentable claims, a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) will be issued.
- No panel review conference is needed in this instance, as the issuance of the NIRC is essentially ministerial.
2671.02 Examiner Issues Action Closing Prosecution (ACP)
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Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.
Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution.
- The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor.
- An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.
Although an Action Closing Prosecution (ACP) has many attributes similar to a “final rejection” made in an ex parte reexamination proceeding or in a non-provisional application, it is not a final action, and, as such, it cannot be appealed from.
- An appeal can only be taken after the examiner issues a Right of Appeal Notice (RAN).
Before an ACP is in order, a clear issue should be developed.
- When all claims are found patentable in the first action, the examiner will, at that point, issue an ACP, since the patent owner has nothing to respond to.
- Otherwise, it is intended that the second Office action in the reexamination proceeding will ordinarily be an ACP.
All parties to the reexamination should recognize that a reexamination proceeding may result in the final cancellation of claims from the patent and that the patent owner does not have the right to continue the proceeding by refiling under 37 CFR 1.53(b) or 1.53(d) nor by filing a Request for Continued Examination under 37 CFR 1.114, and the patent owner cannot file an inter partes reexamination request.
- Complete and thorough actions by the examiner, coupled with complete responses by the patent owner and complete comments by the third party requester will go far in reaching a desirable early termination of the prosecution of the reexamination proceeding.
I. CONTENT
The grounds of rejection and determinations of patentability must (in the ACP) be clearly developed to such an extent that the patent owner and the third party requester may readily judge the advisability of filing comments after an ACP.
The ACP should address all issues as to the patents or printed publications.
- The ACP will clearly set forth each rejection proposed by the third party requester that the examiner refuses to adopt.
- Reasons why the rejection proposed by the third party requester is not appropriate (i.e., why the claim cannot be rejected under the ground proposed by the third party requester) must be clearly stated for each rejection proposed by the third party requester that the examiner refuses to adopt.
- Comprehensive reasons for patentability must be given for each determination favorable to patentability of claims.
Where a previous Office action contains a complete statement of a ground of rejection or of reasons for not making a proposed rejection, the ACP may incorporate by reference that statement.
- In any event, the ACP must also include a rebuttal of any arguments raised in the patent owner’s response and must reflect consideration of any comments made by the third party requester.
II. REVIEW OF AMENDATORY MATTER UNDER 35 U.S.C. 112
Where an amendment has been submitted in the patent owner’s response, the amendatory matter (i.e., matter revised or newly added) should be reviewed for compliance with 35 U.S.C. 112.
- As to the content of the patent that has not been revised, a review based upon 35 U.S.C. 112 is not proper in reexamination, and no such review should be made.
III. WITHDRAWAL OF REJECTION
Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the ACP as a decision favorable to patentability with respect to the withdrawn rejection.
- The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester.”
- In the event the patent owner fails to respond to the ACP and a Right of Appeal Notice (RAN) is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability.
Where the examiner withdraws a ground of rejection previously proposed by the third party requester, the examiner should treat the issue as rejection proposed by the third party requester that the examiner refuses to adopt.
IV. ISSUES NOT WITHIN SCOPE OF REEXAMINATION
If questions not within the scope of reexamination proceedings (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102(c)) have been newly raised by the patent owner response or the third party requester comments being addressed by the ACP, the existence of such questions will be noted by the examiner in the ACP.
VI. SIGNATORY AUTHORITY
As with all other Office correspondence on the merits in a reexamination proceeding, the ACP must be signed by a primary examiner.
VIII. PROCESS OF PREPARING THE ACTION
After an examiner has determined that the reexamination proceeding is ready for the ACP action, the examiner will set up a panel review conference to discuss the issuance of the ACP action.
- The examiner may prepare the action after the conference, or may prepare the action prior to the conference and revise it as needed after the conference.
If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims and issue an ACP, the proposed ACP action shall be issued and signed by the examiner, with the two other conferees initialing the action (as conferee) to indicate their presence in the conference.
- When ready, the examiner’s action is hand-carried by the examiner directly to the CRU support staff for processing and mailing.
IX. WHERE PATENT OWNER FAILS TO RESPOND AND CLAIMS HAVE BEEN FOUND PATENTABLE
Where the patent owner fails to respond to the first Office action (or any subsequent Office action which is prior to ACP) and any claims have been found patentable in the first action (or a subsequent action), the examiner will issue an ACP.
The ACP should repeat all determinations of patentability (decisions to not make a proposed rejection) applicable to the patentable claims and incorporate by reference the reasons for each determination (the reasons for not making each proposed rejection).
- If the examiner realizes that more explanation would be helpful, the examiner should include it. Since the patent owner failed to respond to the first Office action, the proceeding will be limited to the claims found patentable and to new claims which do not expand the scope of the claims found patentable (if the new claims have an entry right or are otherwise entered at the option of the examiner).
- A panel review conference will be held.
X. ART CITED BY PATENT OWNER DURING PROSECUTION
Where art is submitted in a prior art citation under 37 CFR 1.501 and/or 37 CFR 1.555 (an IDS filed in a reexamination is construed as a prior art citation) and the submission is not accompanied by a statement similar to that of 37 CFR 1.97(e), the examiner may use the art submitted and make the next Office action an ACP action whether or not the claims have been amended, provided that no other new ground of rejection is introduced by the examiner based on art not cited in the prior art citation.
2671.03 Panel Review
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The panel review is carried out for each Office action. The panel reviews the examiner’s preliminary decision to reject and/or allow the claims in the reexamination proceeding, prior to the issuance of each Office action.
II. PANEL PROCESS
The examiner must inform his/her manager of his/her intent to issue an Office action. The manager will then convene a panel and the members will confer and review the patentability of the claim(s).
- If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims, the Office action shall be issued and signed by the examiner, with the two other conferees initialing the action (as “conferee”) to indicate their participation in the conference.
- Both conferees will initial, even though one of them may have dissented from the 3-party conference decision as to the patentability of claims.
- If the conference does not confirm the examiner’s preliminary decision, the examiner will reevaluate and issue an appropriate Office action.
Where the examiner in charge of the proceeding is not in agreement with the conference decision, the manager will generally assign the proceeding to another examiner.
III. WHAT THE CONFERENCES SHOULD ACCOMPLISH
Each conference will provide a forum to consider all issues of patentability as well as procedural issues having an impact on patentability.
- Review of the patentability of the claims by more than one primary examiner should diminish any perception that the patent owner can disproportionately influence the examiner in charge of the proceeding.
- The conferences will also provide greater assurance that all matters will be addressed appropriately.
- All issues in the proceeding will be viewed from the perspectives of three examiners.
- What the examiner in charge of the proceeding might have missed, one of the other two conference members would likely detect.
- The conference will provide for a comprehensive discussion of, and finding for, each issue.
IV. CONSEQUENCES OF FAILURE TO HOLD CONFERENCE
Should the examiner issue Office action without panel review, the patent owner or the third party requester who wishes to object must promptly file a paper alerting the Office of this fact.
- Any challenge of the failure to hold a panel review conference must be made within two weeks of receipt of the Office action issued, or the challenge will not be considered.
- In no event will the failure to hold a patentability review conference, by itself, be grounds for vacating any Office decision(s) or action(s) and “restarting” the reexamination proceeding.
» 2672 Patent Owner Comments/Amendment After ACP and Third Party Requester Responsive Comments
