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2671.01 Examiner Issues Action on Merits That Does Not Close Prosecution [Added R-2] - 2600 Optional Inter Partes Reexamination
2671.01 Examiner Issues Action on Merits That Does Not Close Prosecution [Added R-2]
37 CFR 1.949 Examiner's Office action closing prosecution in inter partes reexamination.
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:
(A) In accordance with 37 CFR 1.949, 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 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.
(B) 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. See MPEP § 1302.14 for examples of suitable statements of reasons for allowance.
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. WITHDRAWL 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 - see 37 CFR 1.959(a)(2).
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.
V. 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, fraud, 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 present Office action, the existence of such questions will be noted by the examiner in the Office action, using form paragraph 26.03.
¶ 26.03 Issue Not Within Scope of Inter Partes Reexamination
It is noted that an issue not within the scope of reexamination proceedings has been raised. [1].The issue will not be considered in a reexamination proceeding. 37 CFR 1.906(c). While this issue is not within the scope of reexamination, the patentee is advised that it may be desirable to consider filing a reissue application provided that the patentee believes one or more claims to be partially or wholly inoperative or invalid.
Examiner Note
1. In bracket 1, identify the issues.
2. This paragraph may be used either when the patent owner or the third party requester raises issues such as (but not limited to) public use or on sale, fraud, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.
Note that if questions of patentability based on public use or on sale, fraud, abandonment under 35 U.S.C. 102(c), etc., have been independently discovered by the examiner during a reexamination proceeding but were not raised by the third party requester or the patent owner, the existence of such questions will not be noted by the examiner in any Office action, because 37 CFR 1.906(c) is only directed to such questions "raised by the patent owner or the third party requester."
VI. COVER SHEET
Form PTOL-2064 should be used as the Office action cover sheet. Since the Office action is responsive to a patent owner response, and possibly the third party requester comments, the space on the PTOL-2064 for the date of the communication(s) to which the Office action is responsive to should be filled in. Generally, the patent owner is given two months to respond to the action, and thus "Two" should be inserted in the appropriate space.
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 (35 U.S.C. 314(c)), 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. Form paragraph 26.05 should be inserted at the end of the Office action followed by form paragraph 26.73.
¶ 26.05 Papers To Be Submitted in Response to Action
In order to ensure full consideration of any amendments, affidavits or declarations, or other documents as evidence of patentability, such documents must be submitted in response to this Office action. Submissions after the next Office action, which is intended to be an Action Closing Prosecution (ACP), will be governed by 37 CFR 1.116, which will be strictly enforced.
¶ 26.73 Correspondence and Inquiry as to Office Actions
All correspondence relating to this inter partes reexamination proceeding should be directed:
By Mail to: Mail Stop Inter Partes Reexam
Central Reexamination Unit
Office of Patent Legal Administration
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (703) 305-1013
Central Reexamination Unit
By hand: Central Reexamination Unit
Crystal Plaza Three-Four, 3D68
2201 South Clark Place
Arlington, VA
Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (703) 308-9692.
IX. 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 Parte Reexamination Certificate (NIRC) will be issued as the action that does not close prosecution.
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