MPEP § 2671
After response by the patent owner and any third party comments, the patent under reexamination will be reconsidered. The patent owner and the third party requester will be notified as to any claims rejected, any claims found patentable and any objections or requirements made. The patent owner may respond to such Office action with or without amendment, and the third party requester may provide comments after the patent owner’s response. If the patent owner response contains an amendment, the examiner will consider the amendment to determine whether the amendment raises issues of 35 U.S.C. 112 and/or broadening of the claims under 35 U.S.C. 314. The patent under reexamination will be reconsidered until the proceeding is ready for closing prosecution, at which point the examiner will issue an Action Closing Prosecution (ACP). See MPEP § 2671.02.
The case should be acted on promptly, in accordance with the statutory requirement for "special dispatch within the Office" (35 U.S.C. 314(c) ).
After the examiner receives notification of a response/comment (e.g., having the patent owner’s response to the Office action and any third party requester comments on that response), he/she will prepare for and participate in a conference in accordance with MPEP § 2671.03 .
After the conference, the proceeding, with the completed action, will be forwarded to the CRU Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) for review. If the CRU SPRS/TC QAS returns the case to the examiner for correction/revision, the correction/revision must be handled expeditiously and returned to the CRU SPRS/TC QAS within the time set for such by the CRU SPRS/TC QAS.
At this point in the proceeding, the examiner will have the following options as to the next Office action to issue:
It should be noted that even in a situation where there has been no patent owner response, the examiner is always free to issue a supplemental Office action providing a new rejection of claims previously found patentable, where new information comes to the attention of the examiner warranting the new rejection. Of course, such an action would ordinarily not be made an ACP.
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.
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:
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.
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.
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 41.61(a)(2).
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.
Generally (subject to the below-stated exception), where the claims have been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester, this is not a refusal of the examiner to adopt the rejection that was proposed by the requester, since the rejection was never proposed as to the amended claims. 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" as to the amended claims. In the event the patent owner fails to respond to all actions leading to the 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 41.61(a)(2).
If a claim is amended merely to include a dependent claim that was previously subjected to a proposed requester rejection, and the examiner withdraws that ground of rejection as to the newly amended claim, such would be a refusal to adopt the third party requester’s previously proposed rejection of the dependent claim. Thus, the examiner would treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.
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 ) 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.
An issue has been raised in the present reexamination proceeding that is not within the scope of inter partes reexamination proceedings. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.906(c).
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, conduct, 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, conduct issues, 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."
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.
As with all other Office correspondence on the merits in a reexamination proceeding, the action must be signed by a primary examiner.
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.
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(b) and (d), which will be strictly enforced.
All correspondence relating to this inter partes reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/ myportal/efs-registered.
By Mail to: Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.
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 (571) 272-7705.
1. This form paragraph is used at the end of inter partes reexamination communications.
2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.
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 as per MPEP § 2671.03, 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.
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.
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). See MPEP § 2673.02.
Before an ACP is in order, issues should be clearly 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. The criteria for issuing an ACP is analogous to that set forth in MPEP § 706.07(a) for making a rejection final in an application.
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 (see MPEP § 2612). Complete and thorough actions by the examiner, coupled with complete responses by the patent owner and complete comments by the third party requester (including early presentation of evidence under 37 CFR 1.131(a) or 1.132 ) will go far in reaching a desirable early termination of the prosecution of the reexamination proceeding.
In making an ACP, (A) all outstanding grounds of rejection of record should be carefully reviewed, (B) all outstanding determinations of patentability (decisions to not make a proposed rejection) of record should be carefully reviewed, and (C) any grounds of rejection relied upon and any determinations of patentability relied upon should be reiterated.
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 pursuant to 37 CFR 1.951(a) and (b), respectively.
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. See MPEP § 1302.14 for examples of suitable statements of reasons for allowance.
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.
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.
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. See 37 CFR 41.61(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.
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, using form paragraph 26.03.
An issue has been raised in the present reexamination proceeding that is not within the scope of inter partes reexamination proceedings. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.906(c).
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, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.
Form PTOL-2065 should be used as the cover sheet for the ACP. Since the Office action is responsive to a patent owner response, and possibly the third party requester comments, the space on the PTOL-2065 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 one month to respond to the action, and thus "One" should be inserted in the appropriate space for such.
As with all other Office correspondence on the merits in a reexamination proceeding, the ACP must be signed by a primary examiner.
The ACP should conclude with the following form paragraphs:
This is an ACTION CLOSING PROSECUTION (ACP); see MPEP § 2671.02.
All correspondence relating to this inter partes reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/ myportal/efs-registered.
By Mail to: Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office's electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.
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 (571) 272-7705.
1. This form paragraph is used at the end of inter partes reexamination communications.
2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.
After an examiner has determined that the reexamination proceeding is ready for the ACP action, the examiner will set up a panel review conference as per MPEP § 2671.03, 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 given to the CRU SPRS and/or technical support staff for processing and mailing.
Where the patent owner fails to respond to the first Office action (or any subsequent Office action which is prior to ACP) and claims have been found patentable in the first action (or a subsequent action), the examiner will issue an ACP (see MPEP § 2671). 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 (or a subsequent 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). See MPEP § 2666.10. A panel review conference pursuant to MPEP § 2671.03 will be held.
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. See MPEP § 706.07(a).
A panel review will be conducted at each stage of the examiner’s examination in an inter partes reexamination proceeding, other than for actions such as notices of informality or incomplete response. Matters requiring decision outside of the examiner’s jurisdiction (e.g., decisions on petitions or extensions of time, or Central Reexamination Unit (CRU) support staff notices) will not be reviewed by a panel.
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.
The panel will consist of three members, one of whom will be a manager. The second member will be the examiner in charge of the proceeding. The manager may select the third member. The examiner-conferees will be primary examiners, or examiners who are knowledgeable in the technology of the invention claimed in the patent being reexamined and/or who are experienced in reexamination practice. The majority of those present at the conference will be examiners who were not involved in the examination or issuance of the patent. An "original" examiner (see MPEP § 2636) should be chosen as a conferee only if that examiner is the most knowledgeable in the art, or there is some other specific and justifiable reason to choose an original examiner as a participant in the conference.
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.
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.
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. (The failure to hold a panel review conference would be noted by the parties where there are no conferees’ initials at the end of the Office action.) 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.