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 2673    Examiner Consideration of Submissions After ACP and Further Action

MPEP SECTION SUMMARY This section covers examiner considerations of submissions after ACP and further actions. For instance, the patent owner is given 30 days or one month, whichever is longer, to make the submission after Action Closing Prosecution (ACP). In addition, this section covers options as to which action to issue and the action taken by an examiner in reference to the submission. A patent owner cannot, as a matter of right, amend claims rejected in the ACP, add new claims after an ACP, or reinstate previously canceled claims.

I.   WHEN THE CASE IS TAKEN UP FOR ACTION

The patent owner is given 30 days or one month, whichever is longer, to make the 37 CFR 1.951(a) submission after Action Closing Prosecution (ACP).

• If no patent owner submission under 37 CFR 1.951(a) is received after two months from the ACP, the examiner will take up the case for action.
• The case should be acted on promptly, in accordance with the statutory requirement for “special dispatch within the Office”.
• Where a patent owner obtained an extension of time under 37 CFR 1.956, the examiner will wait until the extended time plus one month expires before taking up the case for action.

If the patent owner submission under 37 CFR 1.951(a) is received, the third party requester will then have 30 days from service of the patent owner’s submission to file the third party requester’s 37 CFR 1.951(b) submission.

• If no third party requester submission under 37 CFR 1.951(b) is received after two months from the date of service of the patent owner’s 37 CFR 1.951(a) submission, the examiner will take up the case for action.

Where both the 37 CFR 1.951(a) and (b) submissions have been received, the case should be taken up for action as soon as possible.

II.   OPTIONS AS TO WHICH ACTION TO ISSUE

• Right of Appeal Notice - Where no 37 CFR 1.951(a) submission has been filed by the patent owner, or where a submission under 37 CFR 1.951(a) (and 37 CFR 1.951(b)) has been filed and the examiner will not modify his/her position; the examiner should issue a Right of Appeal Notice (RAN).
  • If the patent owner’s submission included a proposed amendment, the RAN will indicate whether or not it was entered.
• Office action reopening of prosecution

III.   ACTION TAKEN BY EXAMINER

It should be kept in mind that a patent owner cannot, as a matter of right, amend claims rejected in the ACP, add new claims after an ACP, nor reinstate previously canceled claims.

• A showing under 37 CFR 1.116(b) is required and will be evaluated by the examiner for all proposed amendments after the ACP, except where an amendment merely cancels claims, adopts examiner’s suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner.

Where the entry of the proposed amendment (after the ACP) would result in any ground of rejection being withdrawn or any additional claim indicated as patentable, the proposed amendment generally raises new issues requiring more than cursory review by the examiner.

• The examiner would need to indicate new grounds for patentability for any claim newly found patentable and/or the reason why the rejection was withdrawn and would also need to deal with any third party requester’s comments on the proposed amendment.

In view of the fact that the patent owner cannot 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, the examiner should consider the feasibility of entering a proposed amendment paper, where the entirety of the amendment would result only in an additional claim (or claims) being indicated as patentable.

• The examiner is encouraged to enter such an amendment unless the entry would cause an “undue burden” on the examiner. Where the examiner does not enter the amendment, the examiner should explain the “undue burden.”

Where multiple amendments are submitted after the ACP, all amendments except for the first one will be returned without consideration, since they are improper submissions.

• Thus, if prosecution is reopened, only the first amendment will be present for entry.

An amendment filed at any time after the ACP and prior to the RAN may be entered (where appropriate for entry).

• An amendment filed after the RAN will not be entered at all, in the absence of a grantable petition under 37 CFR 1.183 because 37 CFR 1.953(c) prohibits an amendment after the RAN in inter partes reexamination.
• If the examiner wishes to have the patent owner provide an amendment after the RAN, the examiner can reopen prosecution, enter the amendment, and issue a new ACP.

Where a proposed amendment is not entered, the examiner will provide a detailed explanation of the reasons for not entering the proposed amendment.

• For example, if the claims as amended would present a new issue requiring further consideration or search, the new issue should be identified, and an explanation provided as to why a new search is necessary and/or why more than nominal consideration is necessary.

The parties to the reexamination will be notified in the RAN, or the Office action issued in lieu of the RAN (e.g., action reopening prosecution), as to whether the proposed amendment will be entered or will not be entered.

MPEP SECTION SUMMARY This section covers details on reopening the prosecution after an ACP. Where a submission after Action Closing Prosecution (ACP) has been filed and the examiner decides to modify his/her position, the examiner should ordinarily reopen prosecution. Mandatory reopenings and discretionary reopenings are discussed.

I.   MANDATORY REOPENING

Where a submission after Action Closing Prosecution (ACP) has been filed pursuant 37 CFR 1.951(a) (and 37 CFR 1.951(b)) and the examiner decides to modify his/her position, the examiner should ordinarily reopen prosecution, in accordance with the following guidelines.

The patent owner must be given an opportunity to adequately address any change in position adverse to the patent owner’s position.

• A Right of Appeal Notice (RAN) cannot be issued until the patent owner has had the opportunity to address each and every rejection prior to the appeal stage.
• Thus, the examiner should reopen prosecution where any new ground of rejection is made or any additional claim is rejected.

Prosecution is ordinarily reopened in this situation by issuing a non-ACP action, i.e., an Office action prior to the ACP stage.

• If prosecution were reopened at the ACP stage, the patent owner loses rights as to amending the claims in response to the change in the examiner’s position, because the patent owner’s amendment rights are limited after ACP.

As opposed to the examiner making a new ground of rejection, if a new finding of patentability is made (i.e., a ground of rejection is withdrawn or an additional claim is indicated as patentable), prosecution need not be reopened.

• The third party requester has no right to comment on and address a finding of patentability made during the reexamination proceeding until the appeal stage, unless the patent owner responds (after which the third party requester may file comments).
• Thus, the third party requester may address any new finding of patentability at the appeal stage in the same manner that it would address a finding of patentability made during the reexamination proceeding where the patent owner does not respond (e.g., all claims are allowed on the first Office action and the patent owner sees no reason to respond).

II.   DISCRETIONARY REOPENING

In addition to the above situation which requires reopening of prosecution, the examiner should be liberal in reopening prosecution where the equities of the situation make such appropriate, because patent owner cannot continue the proceeding by refiling under 37 CFR 1.53(b) or 1.53(d), nor by filing a Request for Continued Examination.

MPEP SECTION SUMMARY This section discusses the Right of Appeal Notice (RAN). A Right of Appeal Notice (RAN) is a final Office action which presents a final decision to reject the claims (i.e., a final decision that the claims are rejected) and/or a final decision favorable to patentability as to the claims (i.e., a final decision not to make a proposed rejection).

 

The RAN will identify the status of each claim.

It will set forth:

• the grounds of rejection for all claims rejected in the RAN;
• the reasons why a proposed rejection is not made for all decisions favorable to patentability as to claims that were contested by the third party requester; and
• the reasons for patentability for all claims “allowed” and not contested by the third party requester.

The RAN will also advise parties of their rights of appeal at this stage in the reexamination proceeding, and the consequences of failure to appeal.

• An amendment filed after the RAN will not be entered.

I.   EXAMINER NEVER ISSUES A NIRC AFTER ACP

Once an ACP has been issued, there is no requirement for the patent owner to respond; where the patent owner does not respond to the rejection of the patent claims, a RAN will still be issued and the patent owner can appeal at that point to the Board.

• Because there is no requirement for the patent owner to respond, there is no situation in which a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) can be issued after an ACP and prior to the RAN. Even if (after an ACP has been issued) the examiner finds the patent owner’s subsequent argument to be persuasive as to all of the claims, a NIRC would still not be issued, but rather, a RAN would be issued to provide the third party requester with an opportunity to appeal the “allowed” claims to the Board.

II.   EXPEDITED RIGHT OF APPEAL NOTICE

At any time after the patent owner’s response to the first Office action on the merits in an inter partes reexamination, the patent owner and the third party requester (all third party requesters, if there is more than one due to a merged proceeding) may request the immediate issuance of a RAN.

The request for an expedited RAN must:

• stipulate that the issues are appropriate for a final action, which would include a final rejection and/or a final determination favorable to patentability;
• state that the patent owner and the third party requester (all third party requesters, if there is more than one) join in making the request;
• identify all of the appealable issues; and
• identify and discuss the positions of the patent owner and the third party requester(s) on the identified issues.

 

» 2674 Appeal in Inter Partes Reexamination