Improper Final Rejections And Suggestions For Avoiding Them (And Hopefully The Expense Of Having To Request Their Withdrawal)

February 12, 2008

in Examples of Responses,Practice Suggestions,Prosecution Strategy

Patent examination in the U.S. Patent Office is guided by the principles of compact prosecution, which I discussed in some detail in an earlier post here. Under the principles of compact prosecution, second Office actions are typically final.

The finality of second Office actions is addressed in section 706.07(a) the Manual of Patent Examining Procedure (MPEP), which provides that “Under present practice, second or any subsequent actions on the merits shall be final, except where the examiner introduces a  new ground of rejection that is neither necessitated by applicant’s amendment of the claims nor based on information submitted in an information disclosure statement during the period set forth in 37 C.F.R. §1.97(c) with [the appropriate fee].”

37 C.F.R. §1.97(c) provides that [upon satisfying certain prerequisites] an information disclosure statement shall be considered by the Office if it is filed after a first or non-final Office action but before the mailing date of a final Office action, a notice of allowance, or an action that otherwise closes prosecution.

Thus, when the Office has to introduce a new ground of rejection and that new ground of rejection is not necessitated by either:

(1) a claim amendment; or

(2) information submitted by the applicant between the immediately preceding action and a current Office action

then the next Office action cannot properly be made final.

So, for example, when a non-final Office action wholly fails to address a claim or fails to explain the basis for a rejection and the basis is not already of record, the finality of a next Office action rejecting that claim may be precluded. In the latter scenario, there are two arguments for this preclusion. First, any detailed rejection of the subject claim(s) in a next Office action may constitute a new ground rejection that was not necessitated by a claim amendment or an IDS. Second, the failure to adequately articulate the basis for rejecting a claim is a failure to provide the adequate notice that shifts the burden of rebuttal to the applicant. This is especially important when technical (non-art) rejections (e.g., §101 (patentable subject matter) are at issue because of the specific instructions of sections of the MPEP such as § 706.03 (major technical rejections (e.g., lack of proper disclosure, undue breadth, utility, etc.) should be stated with a full development of the reasons rather than by a mere conclusion coupled with some stereotyped expression).

Also, when an applicant successfully traverses a rejection by argument alone (e.g., presents a persuasive patentability argument or disqualifies cited art), the finality of next Office action may be suspect. For example, it is not uncommon for an Office action to reject some claims based on art (e.g., 35 U.S.C. §102 (anticipation) and/or 35 U.S.C. §103 (obviousness)) and to reject other claims based on technical (non-art) grounds. When the technical rejection of a claim is traversed by argument alone and no other grounds for rejection of that claim are presented, the finality of a next Office action rejecting that claim is precluded.

These limited circumstances precluding finality are not common and other issues sometimes camouflage them. Nevertheless, when they are present, a well-informed applicant can help himself or herself avoid an improper final Office action (along with the cost and inconvenience of having to prepare a paper asking for the withdrawal of that finality).

The following are some examples of ways to advise the Office, in a response to a non-final Office action, that a subsequent Office action cannot properly be made final.

1. Example – The Office Action Wholly Fails to Acknowledge a Claim

In this circumstance, a response might include a section such as:

Finality of the Next Action Is Precluded

Lastly, Applicant respectfully requests that the Office confirm the status of independent claim 19, which was not addressed by the Office Action. Applicant respectfully submits that the Office’s failure to acknowledge claim 19 precludes the finality of a next Office action rejecting that claim, because such a rejection will not have been necessitated by either a claim amendment or based on information from an information disclosure statement. (See MPEP § 706.07(a)).

2. Example – The Office Action Fails to Specifically Reject a Claim in the Detailed Action – An Arguable Absence of a Prima Facie Case

In this situation, a response might include a statement like the following:

Finality of the Next Action Is Precluded

Applicant notes the Office Action does not specifically reject independent claim 19. Indeed, although the Summary of the Office Action indicates that claim 19 stands rejected, the Detailed Action omits any explanation of how any cited art anticipates [or renders obvious] this claim. Applicant respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicant. Consequently, a next Office action rejecting claim 19 cannot properly be made final since only then would the Applicant be obligated to rebut the rejection, presuming that such an Office action sets forth a prima facie case. (See MPEP § 706.07(a)).

3. Example – The Office Action Makes Only a Rebutted Technical (Non-Art) Rejection Against a Claim

Here, an appropriate response might include a section like the following:

Accordingly, Applicant respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 101.

Finality of the Next Action Is Precluded

Applicant notes the absence of an art rejection against independent claim 19 and respectfully submits that a next Office Action rejecting this claim under any section of Title 35 of the United States Code other than 35 U.S.C. § 101 cannot properly be made final because such a rejection will not have been necessitated by a claim amendment or based on information from an information disclosure statement. (See Section 706.07(a) of The Manual of Patent Examining Procedure).

Conclusion

U.S. Patent Office rules preclude the finality of an Office action in certain limited circumstances. Keeping these circumstances in mind when responding to non-final Office actions, and using techniques like those discussed above, may help an applicant avoid improper final rejections, without having to incur the expense and inconvenience of having to request the withdrawal of improper finality. So, when appropriate circumstances are present, consider memorializing, in responses to non-final Office actions, reasons why finality of a next Office action would be improper.

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© 2008, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 7 comments… read them below or add one }

anonymous February 12, 2008 at 9:15 pm

If you’re going to insist that the next action can’t be final, I like the idea of having a header entitled “Finality of the Next Action Is Precluded” followed by your rationale. This may become necessary if the USPTO finds a way to limit RCEs. Until then, you have to balance your desire to avoid finality versus the “don’t make the examiner mad” rule.

JD February 13, 2008 at 6:09 pm

Michael,

Good advice in the post. Unfortunately, I’ve found that examiners know they have applicant over a barrel once a final rejection is issued, and they know it.

The usual response PTO (mis)management when you get an improper final is “Call the examiner, or the SPE” or “File a petition.”

The SPE’s aren’t really interested in getting to the merits of your argument in a phone call. And the petition will get sat on until your 6 months runs out, and then you’re forced to file a Notice of Appeal, at which point your petition is dismissed as moot.

Great.

I had a case recently where I amended my two independent claims. The first claim was amended to get around A v. B. No doubt. I changed “and/or” to “and”. However, the second independent claim was amended to provide antecedent basis and overcome a 112. I specifically stated that in my remarks.

I get a final rejection A v. B. v. C. C is a new reference, never of record before. I request the finality be withdrawn, and I specifically cite the MPEP section that states that if a claim was amended in a foreseeable manner (e.g. to provide an element that was missing, i.e. to provide antecedent basis), a final rejection is improper.

The examiner responds with, “But the amendment to the first independent claim necessitated reference C.”

Great. How about addressing my argument about the second independent claim?

I’m just appealing. Reference C is crap.

Lazarus Long February 14, 2008 at 11:45 pm

Michael,

While your advise is good to an extent, I really do think that the better (and by far cheaper) course of action for most of your examples is to call the examiner before you ever submit a response.

I am specifically referring to situations where claims were not addressed/acknowledged. In these instances, a phone call will usually result in a new non-final being sent out. That way the applicant is not on the hook for a response that is (basically) nothing more than a formality to get a 2nd action non-final (2NF). Just make sure you file an interview summary of your own and keep after the examiner to produce the new action. If they refuse or don’t get out the action (and if you don’t want to follow-up with their SPE) you are no worse than under your suggestions.

Similarly, if the only rejections that were in the 1st NF were technical (101, 112-types), usually a phone call to the examiner is a good way to make sure that what you think is a satisfactory way to overcome the rejections is something that the examiner also thinks would overcome the rejection.

Of course, if it can be settled with a phone call instead of a few pages of remarks, that would be less hours you can bill, so while it may be advantageous to the applicant it may not be so to the lawyer :)

Re JD’s remarks, clearly in his example he is right. The appeal will probably be dropped and a new action sent out, wasting a lot of time & money on both sides, unfortunately.

However, I disagree with him about calling the SPE. Most SPEs (not all, but most) will get on their examiner to get out the corrected new action. If for no other reason so that you don’t keep calling them. As an alternative, schedule an interview and request that the SPE be present at it. Even if you are dealing with a primary. It can be done.

thanks,

LL

random.examiner February 20, 2008 at 4:54 am

A couple of things here:

(1) JD not provide antecedent basis (is he human?) Surely there is an impostor posting!

(2) Shortly after I started at the office I inherited a case where the Applicant had amended from the dependent claims and also a little bit from the spec. It was a close call, but I made it final. As I saw it, he had changed the claim scope, and the changes came from the spec. Final. That’s not the issue. He called me up and asked me about finality. This was months after I wrote the action (and had long forgotten about it), he calls me out of the blue and asks me about some random case. In the minute or two on the phone, I could see where he was coming from, but I wasn’t entirely convinced. So I leveled with him, told him I was new to the office, had the case handed to me from someone else, and asked him to walk me through it. It should be noted the attorney was in the JD mold* – i.e. the “I did your job better than you” former examiner mold. You know what his response was? Laughter. No joke. He laughed at me. What a pr*ck! I told him to file his petition. The case went abandoned. Before JD goes off on me or quotes some part of the MPEP that I probably haven’t read, I will repeat: I asked this guy to walk me through it (i.e. okay attorney, I’m listening) and he laughed at me.

I share this story b/c I appreciate your style (MK) of advocacy. It combines the hard-nosed good advocacy that the prima facie case gives Applicants with the respect for the system/forum/body/whatever that my law school taught me. About 1 in 10 responses I read I can tell read your blog. Nice work.

* it was not a JD case

JD February 20, 2008 at 2:10 pm

(1) I inherited the case, i.e. I didn’t write the claims with the offending lack of antecedent basis. But yes, I am human. Though that doesn’t prevent me from getting the lame “no antecedent basis” rejections for things like “the circumference” when I previously recite “a circular object” in the claim. Robotic, pro-forma rejections are de rigueur in the PTO. They are what help examiners like random above maintain such “outstanding quality” during their PAP reviews. Yes, your work is truly outstanding. I see it every day. Congratulations.

(2) In addition to what are, I’m sure, many, if not all, MPEP sections that you haven’t read, apparently you don’t bother reading my posts either. As I’ve told you, and others of your ilk, over and over and over, I’m very nice. I would never call an examiner and expect them to remember the minute details of a case in a minute or two. I always provide the examiner with the opportunity to review the case and get back to me, or me get back to them, if necessary. Unfortunately, I’m not afforded the same courtesy by examiners like you. I get the standard phone call every second Friday at 4:45 PM informing me that if I don’t agree to kitchen sink amendment over the phone right then and there, you’re “going to have to send out a final.” Thanks. That’s real professional of you. I guess that’s why you’re working at the PTO instead of outside.

(3) I’ve invited anybody reading/posting on JPE’s site who’s ever had a phone call or personal interview with me who thought I was rude, or even impolite to any degree, to speak up. The response I got was silence.

(4) You also don’t understand the standard for issuing a final rejection. You recite that tired old “changed to scope of the claim” nonsense that I see/hear from examiners all the time. That’s not the standard. The standard is that the amendment “necessitated” the new grounds of rejection. Just another MPEP section I guess you haven’t read. Oh well. I’m sure your SPE still thinks you’re outstanding.

(4) Yes, I did do the job better than you. If by “the job” you mean conduct examination accordingy to the law. If by “the job” you mean “gittin’ counts,” well then I’m sure you’re the master. Congratulations again.

JD February 20, 2008 at 4:40 pm

“The appeal will probably be dropped and a new action sent out, wasting a lot of time & money on both sides, unfortunately.”

LL,

I guess I need to provide some more background for the case I referenced above.

I got the case with a final rejection including the 103(a) A v. B rejection (against all claims), and a 112 for no antecedent basis in the second independent claim. I filed an after final amendment, amending the first independent claim to get around A v. B, and amending the second independent claim to provide antecedent basis, and that’s all. And I clearly noted in my remarks that the amendment to the second independent claim was only to overcome the 112.

Standard advisory denying entry on the old “new issues” reason. No indication that the amendment would overcome the 112.

I filed a pre-appeal request. The lack of antecedent basis rejection is weak (the second recitation is not verbatim, but anybody with half a brain in their head would recognize the antecedent), the 103(a) rejection is weak, so let’s pre-appeal.

I check PAIR and see a new final rejection is entered in response to my pre-appeal. All claims rejected A v. B. v. C. Not mailed. Stuck in the system. (Somebody forgot to push ENTER or something.) Two weeks go buy, still not mailed. Available in IFW, but not mailed. (Great billion dollar system PTO (mis)management bought.)

Call the examiner, ask to re-mail. Won’t do that without a written request. Fine. And how can the rejection be final? Oh, it was necessitated by the after final amendment? You don’t say?

File my request for re-mailing and restarting SSP. Also include request to withdraw finality. Amendment to second independent was entirely foreseeable. It’s actually the exact same situation that is provided in the MPEP as an example of a foreseeable amendment. (Random examiner, that’s M-P-E-P, stands for Manual of Patent Examining Procedure. It may actually be on your desktop, i.e. computer. Feel free to peruse it at your leisure.)

Get the re-mailed final. Completely ignores my arguments about the premature finality with respect to the second independent claim. Application of C reference was necessitated by amendment to first independent claim.

But what about application of C to second independent? Cleary wasn’t necessitated.

Argument ignored.

This examiner is clearly playing games. And being expertly coached by SPE. I’ve interviewed the SPE with another one of the SPE’s juniors. There’s no point in attempting to reason with this SPE. It’s all game playing.

So I’m filing my appeal brief. If the examiner wants a count, the examiner can write an answer to a brief that separately argues 26 claims.

Is that expensive? A little. Is it a waste of time/money/effort? No. Feeding this examiner and SPE RCE counts would be a waste of time/money/effort. That will only encourage more game playing. They wanna play games? Fine. They’ll learn. Eventually they’ll learn.

anonymous October 21, 2008 at 1:57 pm

JD:

I have followed Michael’s suggestion and added a “finality preclusion” header and paragraph. I have used it as the first paragraph in my remarks to set the tone and ensure that any SPE reviewing the next Office Action won’t miss the issue before it gets mailed out the door as a Final Office Action. In each of the handful of cases I have used this so far, I have obtained a second non-final.

MPEP § 706.07(a) states that “second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).”

So the rule *isn’t* the second office action is final if it contains a new rejection necessitated by amendment, which is apparently what the examiner in your case thought.

The rule is the second office action is final unless you have a new rejection that was not necessitated by an amendment/ids.

In layman’s terms, the rule is that they can’t go final if they mess up on one claim. The rule isn’t that they can go final if we mess up on one claim.

I’d recommend preserving at least one unamended claim or one merely rewritten in independent form to leverage this approach. If you do so, you can then argue something like this:

In the present case, if the next Office Action rejects Claim ##, the next office must provide a new rejection of Claim ##, given the current rejection does not present a prima facie case.
This new rejection, however, would not have been necessitated by a claim amendment. As noted below, Claim ## has merely been rewritten in independent form and thus has the same scope. Because Claim ## has the same scope, the new rejection would not have been necessitated by a claim amendment.
Moreover, this new rejection would not have been based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) because no such information disclosure statements have been filed. Accordingly, under MPEP § 706.07(a), the next Office Action must be non-final if it rejects Claim ##.

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