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2305 Examiner Suggests Claim to Applicant - 2300 Interference Proceedings
2305 Examiner Suggests Claim to Applicant
37 CFR 1.605 Suggestion of claim to applicant by examiner.
(a) If no claim in an application is drawn to the same patentable invention claimed in another application or patent, the examiner may suggest that an applicant present a claim drawn to an invention claimed in another application or patent for the purpose of an interference with another application or a patent. The applicant to whom the claim is suggested shall amend the application by presenting the suggested claim within a time specified by the examiner, not less than one month. Failure or refusal of an applicant to timely present the suggested claim shall be taken without further action as a disclaimer by the applicant of the invention defined by the suggested claim. At the time the suggested claim is presented, the applicant may also call the examiner's attention to other claims already in the application or presented with the suggested claim and explain why the other claims would be more appropriate to be designated to correspond to a count in any interference which may be declared.
(b) The suggestion of a claim by the examiner for the purpose of an interference will not stay the period for response to any outstanding Office action. When a suggested claim is timely presented, ex parte proceedings in the application will be stayed pending a determination of whether an interference will be declared.
While the claims of two or more applications may not be identical, if they are directed to the same patentable invention, as defined in 37 CFR 1.601(n), an interference exists. See MPEP § 2303. Therefore, it should be emphasized that it should not be necessary to suggest a claim to an applicant in most situations. If an applicant is not claiming the same patentable invention as another applicant, the examiner, in deciding whether to suggest a claim or claims to the first applicant, should bear in mind that mere disclosure by an applicant of an invention which he or she is not claiming does not afford a ground for suggesting to that applicant a claim for the said invention based upon claims from another application that is claiming the invention. The intention of the parties to claim the same patentable invention, as expressed in the summary of the invention or elsewhere in the disclosure or in the claims, is essential to declaring an interference or suggesting interfering claims in every instance.
The question of what claim or claims to suggest in the interfering application is one of great importance, and failure to suggest claims that will clearly define the matter in issue leads to confusion and to prolongation of the contest.
Before deciding what claim or claims to suggest to an applicant, the examiner should decide what the count or counts of the prospective interference will be, keeping in mind that the count must be patentable over the prior art and define the parties' common invention. The claim suggested to the applicant need not be identical to the prospective count, but rather should be the broadest claim within the scope of the prospective count which the applicant's disclosure will support, and which is otherwise patentable to the applicant. In general, only one claim should be suggested for each prospective count. Moreover, if the other application has been published, the examiner should ensure that the suggested claim is not barred under 35 U.S.C. 135(b)(2).
Under 37 CFR 1.605, timely filing of an amendment presenting a claim suggested by the examiner for purposes of an interference would stay ex parte proceedings in the application in which the claim is presented pending a determination by the examiner of whether an interference will be declared. Also under 37 CFR 1.605(a), when an examiner suggests a claim, the applicant will be required to copy verbatim the suggested claim. At the time the suggested claim is copied, however, the applicant may also (A) call the examiner's attention to other claims already in the application or which are presented with the copied claim and (B) explain why the other claims would be more appropriate to be designated to correspond to a count in any interference which may be declared.
A reply to the examiner's suggestion of a claim is not complete unless it includes an amendment adding the exact claim suggested to the application. Even though the applicant may consider the suggested claim unpatentable, too narrow, or otherwise unsuitable, it must be presented; otherwise, the invention defined by the suggested claim is considered to be disclaimed. The applicant must make known any such objections to the examiner, and may at the same time present other claims, or call the examiner's attention to other claims already in the application, and explain why those claims would be more appropriately designated to correspond to a count in the interference. The examiner may then determine whether the applicant's alternatively proposed claims are more appropriate than the claim suggested.
If, in copying a suggested claim, an error is introduced by the applicant, the examiner should correct the applicant's claim to correspond to the suggested claim.
It should be noted at this point that if an applicant presents a claim which allegedly corresponds exactly or substantially to a claim in another application or patent without suggestion by the examiner, 37 CFR 1.604(b) and 37 CFR 1.607(c) require him or her to identify the other application or patent. See MPEP § 2307.05.
If the parties have the same attorney, notification of this fact should be given to both parties at the time claims are suggested even though claims are suggested to only one party. Notation of the persons to whom this letter is mailed should be made on all copies.
The content of Form Paragraph 23.05 is usually added to the letter suggesting claims where the same attorney or agent is of record in applications of different ownership which have conflicting subject matter.
¶ 23.05 Same Attorney, Both Applications
Attention is called to the fact that the attorney (or agent) in this application is also the attorney (or agent) in an application of another party and of different ownership claiming substantially the same patentable invention as claimed in the above identified application.
The examiner should raise the fact that two conflicting parties have the same attorney by drawing the matter to the attention of the Board when proposing the interference as explained in MPEP § 2309.02.
Form Paragraphs 23.04 and 23.06 may be used to suggest claims for purposes of interference to applicants. If the Office action incorporating these Form Paragraphs addresses other issues, such as a rejection of other claims, Form Paragraph 23.07 should be included at the end of the action.
¶ 23.04 Suggestion of Claim
The following allowable claim is suggested for the purpose of an interference:
[1]
The suggested claim must be copied exactly, although other claims may be proposed under 37 CFR 1.605(a).
Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this communication to make the suggested claim. Failure to do so will be considered a disclaimer of the subject matter of this claim under the provisions of 37 CFR 1.605(a), but will not result in abandonment of this application. THE PROVISIONS OF 37 CFR 1.136 DO NOT APPLY TO THE TIME SPECIFIED IN THIS ACTION.
Claim [2] considered unpatentable over this suggested claim.
Examiner Note
1. In bracket 1, insert the suggested claim.
2. In bracket 2, list all claims pending in the application not considered to be patentably distinct from the suggested claim.
3. Only one claim should be suggested unless claims to separate patentably distinct inventions are present. See 37 CFR 1.601(n). To suggest an additional claim to a separate distinct invention, form paragraph 23.06 should follow this paragraph.
4. If the Office action addresses other issues, such as a rejection of other claims, form paragraph 23.07 should be included at the end of the action.
¶ 23.06 Suggestion of Additional Claim for a Distinct Invention
The following claim is considered allowable and directed to a separate patentable invention from the claim suggested above:
[1]
The additionally suggested claim must be copied exactly, although other claims may be proposed under 37 CFR 1.605(a).
Applicant is given ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this communication to make this additionally suggested claim. Failure to do so will be considered a disclaimer of the subject matter of this claim under the provisions of 37 CFR 1.605(a), but will not result in abandonment of this application. THE PROVISIONS OF 37 CFR 1.136 DO NOT APPLY TO THE TIME SPECIFIED IN THIS ACTION.
Claim [2] considered unpatentable over this additionally suggested claim.
Examiner Note
This paragraph must be preceded by form paragraph 23.04 and should only be used to suggest a patentably distinct claim from the one suggested in form paragraph 23.04.
¶ 23.07 Suggestion of Claims - Prosecution Suspended
Applicant need not respond to the remaining issues in this action if a suggested claim is copied for the purpose of an interference within the time limit specified above ( 37 CFR 1.605(b)).
Examiner Note
This paragraph should be used at the end of any Office action where claims are suggested using either form paragraph 23.04 or 23.09 and where additional issues (e.g., a rejection of other claims) are addressed in the action that will be suspended should applicant copy the suggested claim.
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