2266.01 Submission Not Fully Responsive to Non-Final Office Action [R-08.2017]

A response by the patent owner will be considered not fully responsive to a non-final Office action where:

• (A) a bona fide response to an examiner’s non-final action is filed;
• (B) before the expiration of the permissible response period, including any extensions of the response period pursuant to 37 CFR 1.550(c);
• (C) but through an apparent oversight or inadvertence, some point necessary to a full response has been omitted (i.e., appropriate consideration of a matter that the action raised, or compliance with a requirement made by the examiner, has been omitted).

Where patent owner’s amendment or response prior to final rejection is not fully responsive to an Office action in a reexamination and meets all of (A) through (C) above, the prosecution of the reexamination proceeding should not be terminated; but, rather, a practice similar to that of 37 CFR 1.135(c) (which is directed to applications) may be followed. The examiner may treat a patent owner submission which is not fully responsive to a non-final Office action by:

• (A) waiving the deficiencies (if not serious) in the response and acting on the patent owner submission;
• (B) accepting the amendment as a response to the non-final Office action but notifying the patent owner (via a new Office action setting a new time period for response) that the omission must be supplied; or
• (C) notifying the patent owner that the response must be completed within the remaining period for response to the non-final Office action (or within any extension pursuant to 37 CFR 1.550(c)) to avoid termination of the prosecution of the proceeding under 37 CFR 1.550(d). This third alternative should only be used in the very unusual situation where there is sufficient time remaining in the period for response (including extensions under 37 CFR 1.550(c)), as is discussed below.

Where a patent owner submission responds to the rejections, objections, or requirements in a non-final Office action and is a bona fide attempt to advance the reexamination proceeding to final action, but contains a minor deficiency (e.g., fails to treat every rejection, objection, or requirement), the examiner may simply act on the amendment and issue a new (non-final or final) Office action. The new Office action may simply reiterate the rejection, objection, or requirement not addressed by the patent owner submission, or the action may indicate that such rejection, objection, or requirement is no longer applicable. In the new Office action, the examiner will identify the part of the previous Office action which was not responded to and make it clear what is needed. Obviously, this course of action would not be appropriate in instances in which a patent owner submission contains a serious deficiency (e.g., the patent owner submission does not appear to have been filed in response to the non-final Office action).

Where patent owner’s submission contains a serious deficiency (i.e., omission) to be dealt with prior to issuing an action on the merits and the period for response has expired, or there is insufficient time remaining to take corrective action before the expiration of the period for response, the patent owner should be notified of the deficiency and what is needed to correct the deficiency, and given a new time period for response. The patent owner must supply the omission within the new time period for response (or any extensions under 37 CFR 1.550(c) thereof) to avoid termination of the prosecution of the proceeding under 37 CFR 1.550(d). The patent owner may also file a further response as permitted under 37 CFR 1.111. This is analogous to 37 CFR 1.135(c) for an application.

Form paragraph 22.14 may be used where a bona fide response is not entirely responsive to a non-final Office action.

In the very unusual situation where there is sufficient time remaining in the period for response (including extensions under 37 CFR 1.550(c)), the patent owner may simply be notified that the omission must be supplied within the remaining time period for response. This notification should be made, first by telephone, or by email if authorized by the patent owner and contact could not be made via telephone. An interview summary record (see MPEP § 2281) must be completed and entered into the file of the reexamination proceeding to provide a record of such notification. If the examiner is not successful in contacting the patent owner, the procedure set forth above should be followed.

The practice of giving the patent owner a time period to supply an omission in a bona fide response (which is analogous to that set forth in 37 CFR 1.135(c) for an application) does not apply where there has been a deliberate omission of some necessary part of a complete response; rather, it is applicable only when the missing matter or lack of compliance is considered by the examiner as being “inadvertently omitted.” Once an inadvertent omission is brought to the attention of the patent owner, the question of inadvertence no longer exists. Therefore, a second Office action giving another new time period to supply the omission would not be appropriate. However, if patent owner’s response to the notification of the omission raises a different issue of a different inadvertently omitted matter, a second Office action may be given.

This practice authorizes, but does not require, an examiner to give the patent owner a new time period to supply an omission. Thus, where the examiner concludes that the patent owner is attempting to abuse the practice to obtain additional time for filing a response, the practice should not be followed. If time still remains for response, the examiner may telephone the patent owner and inform the patent owner that the response must be completed within the period for response to the non-final Office action or within any extension pursuant to 37 CFR 1.550(c) to avoid termination of the prosecution of the reexamination proceeding.

The practice of giving the patent owner a time period to supply an omission in a bona fide response does not apply after a final Office action. If a bona fide response to an examiner’s action is filed after final rejection (before the expiration of the permissible response period), but through an apparent oversight or inadvertence, some point necessary to fully respond has been omitted, the examiner should not issue (to the patent owner) a notice of failure to fully respond. Rather, an advisory Office action (form PTOL-467) should be issued with an explanation of the omission. The time period set in the final rejection continues to run and is extended by two months if the response is the first response after the final rejection in accordance with the guidelines set forth in MPEP § 2265. See also MPEP § 2272.

Amendments after final rejection are approved for entry only if they place the proceeding in condition for issuance of a reexamination certificate or in better form for appeal. Otherwise, they are not approved for entry. See MPEP § 714.12 and § 714.13. Thus, an amendment after final rejection should be denied entry if some point necessary for a complete response under 37 CFR 1.113 was omitted, even where the omission was through an apparent oversight or inadvertence. Where a submission after final Office action (e.g., an amendment filed under 37 CFR 1.116) does not place the proceeding in condition for issuance of a reexamination certificate, the period for response continues to run until a response under 37 CFR 1.113 (i.e., a notice of appeal or an amendment that places the proceeding in condition for issuance of a reexamination certificate) is filed. Where a submission after appeal (e.g., an amendment filed under 37 CFR 41.33) does not place the proceeding in condition for issuance of a reexamination certificate, the period for filing an appeal brief continues to run until an appeal brief or an amendment that places the proceeding in condition for issuance of a reexamination certificate is filed. The nature of the omission is immaterial. The examiner cannot give the patent owner a time period to supply the omission.

The examiner has the authority to enter the response, withdraw the final Office action, and issue a new Office action, which may be a final Office action, if appropriate, or an action in an otherwise allowable application under Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11 (Comm’r Pat. 1935), if appropriate. This course of action is within the discretion of the examiner. However, the examiner should recognize that substantial patent rights will be at issue with no opportunity for the patent owner to refile under 37 CFR 1.53(b) or 1.53(d) in order to continue prosecution nor to file a request for continued examination under 37 CFR 1.114. Thus, where the time has expired for response and the amendment submitted would place the proceeding in condition for issuance of a reexamination certificate except for an omission through apparent oversight or inadvertence, the examiner should follow this course of action.

2266.02 Examiner Issues Notice of Defective Paper in Ex Parte Reexamination [R-07.2015]

Even if the substance of a submission is complete, the submission can still be defective, i.e., an “informal submission.” Defects in the submission can be, for example:

• (A) The paper filed does not include proof of service;
• (B) The paper filed is unsigned;
• (C) The paper filed is signed by a non-practitioner who is not of record;
• (D) The amendment filed by the patent owner does not comply with 37 CFR 1.530(d)-(j);
• (E) The amendment filed by the patent owner does not comply with 37 CFR 1.20(c)(3) and/or 37 CFR 1.20(c)(4).

Where a submission made prior to final rejection is defective (informal), forms PTOL-475 and PTO-2311 are used to provide notification of the defects present in the submission. Form PTOL-475 provides notification of the defect(s) in a submission filed in a third-party requested ex parte reexamination, while form PTO-2311 provides notification of the defect(s) in a submission filed a in patent owner requested ex parte reexamination (including a reexamination ordered under 35 U.S.C. 257) or Director ordered ex parte reexamination. In many cases, it is only necessary to check the appropriate box on the form and fill in the blanks. However, if the defect denoted by one of the entries on the appropriate form needs further clarification (such as the specifics of why the amendment does not comply with 37 CFR 1.530(d)-(j)), the additional information should be set forth on a separate sheet of paper which is then attached to the form.

The defects identified above as (A) through (E) are specifically included in form PTOL-475 and PTO-2311, with the exception of (A), which only appears in form PTOL-475 (proof of service is inapplicable in patent owner requested reexaminations). If the submission contains a defect other than those specifically included on the form, the “other” box on the form is to be checked and the defect explained in the space provided for the explanation. For example, a response might be presented on easily erasable paper, and thus, a new submission would be needed.

A time period from the mailing date of the notice will be set in the appropriate form (PTOL-475 or PTO-2311) for correction of the defect(s). Extension of time to correct the defect(s) may be requested under 37 CFR 1.550(c). If, in response to the notice, the defect still is not corrected, the submission will not be entered. If the failure to comply with the notice results in a patent owner failure to file a timely and appropriate response to any Office action, the prosecution of the reexamination proceeding generally will be terminated under 37 CFR 1.550(d).

If a defective (informal) response to an examiner’s action is filed after final rejection (before the expiration of the permissible response period), the examiner should not issue a form PTOL-475 or form PTO-2311 notification to the patent owner. Rather, an advisory Office action (form PTOL-467 or PTOL-467A) should be issued with an explanation of the defect (informality). The time period set in the final rejection continues to run and is extended by two months if the response is the first response after the final rejection in accordance with the guidelines set forth in MPEP § 2265. See also MPEP § 2272.

2266.03 Service of Papers [R-08.2017]

Any paper filed with the Office in a third party requested reexamination, i.e., any submission made by either the patent owner or the third party requester, must be served on every other party in the reexamination proceeding.

As proof of service, the party submitting the paper to the Office must attach a certificate of service to the paper. It is required that the name and address of the party served, and the method of service be set forth in the certificate of service. Further, a copy of the certificate of service must be attached with the copy of the paper that is served on the other party.

Any paper for which proof of service is required, which is filed without proof of service, may be denied consideration. Where no proof of service is included, the Central Reexamination Unit should immediately contact the party making the submission to see whether the indication of proof of service was inadvertently omitted from the submission but there was actual service.

If service was in fact made, the party making the submission should be advised to submit a supplemental paper indicating the manner and date of service. The Central Reexamination Unit should enter the submission for consideration, and annotate the submission with:

“Service confirmed by [name of person] on [date]”

If no service was made, or the party making the submission cannot be contacted where an effort to do so was made, the submission is placed in the reexamination file and normally is not considered. Where the submission is not considered because of a service defect, the submission is added to the IFW file history as an unentered paper with a “N/E” notation, along with a brief annotation as to why the paper is not entered. The submission itself shall be annotated with “no service,” which also can be crossed through if the appropriate service is later made.

If the party making the submission cannot be contacted, a Notice of Defective Paper (PTOL-475), giving one month or thirty days, whichever is longer, to complete the paper, with a supplemental paper indicating the manner and date of service, will generally be mailed to the party.

If it is known that service of a submission was not made, notice of the requirement for service of copy may be given (to the party that made the submission), if appropriate, and a one month or thirty days, whichever is longer, time period is set. Form paragraph 22.15 may be used to give notice.

The cover sheet to be used for mailing the notice will be form PTOL-473.

If the submission that lacks proof of service is a response to a final rejection, form PTOL-475 or form paragraph 22.15 should not be used. Rather, an advisory Office action (form PTOL-467 or PTOL-467A) should be issued with an explanation that the response lacks proof of service. The time period set in the final rejection continues to run and is extended by two months if the response is the first response after the final rejection in accordance with the guidelines set forth in MPEP § 2265. See also MPEP § 2272.

The failure of a party to serve the submission in response to the notice will have the following consequences:

• (A) For a patent owner statement or a third party reply, the submission may be refused consideration by the Office. Where consideration is refused, the submission will not be addressed in the reexamination proceeding other than to inform parties of the lack of consideration thereof;
• (B) For a patent owner response to an Office action, the response may be refused consideration by the Office. Where consideration of a response is refused, the prosecution of the proceeding will be terminated in accordance with 37 CFR 1.550(d), unless the patent owner has otherwise completely responded to the Office action.

See MPEP § 2220 as to the initial third party request.

See MPEP § 2249 as to the patent owner statement.

See MPEP § 2251 as to third party reply.

See MPEP § 2266 as to patent owner responses to an Office action.