Strategic Use Of A Deficient Office Action (Or Why A Call To An Examiner Might Not Be In An Applicant’s Best Interests)

March 16, 2008

in Practice Suggestions,Prosecution Strategy

I have received numerous comments, both public and private, about my earlier post on avoiding improper final rejections. In that post, I outlined a practice of advising the Office when a next Office action cannot properly be made final because of a deficiency in a current Office action.

In reading some of the comments, it appears that some nuances of a prosecution strategy might not be entirely clear.

A number of comments advocate resolving the issue by calling the Examiner to request a new Office action. This approach, they say, is cost-effective and obviates the need to advise the Office that finality is precluded.

I do not disagree that this approach should resolve the issue. I do, however, submit that in some circumstances the inclination to call the Examiner could squander what can be a significant tactical advantage.

Think about it. What might you do to rejected claims if you knew that the next Office Action could not properly be made final?

I believe that the best way to explore this issue is by an example. A significant number of the comments concerned what to do when the Office issues an Office action that fails to address a claim. Accordingly, I will use that example.

By way of review, this failure precludes the finality of a next Office action, if that Office action rejects the omitted claim. Also, in general, when the omitted claim is independent and/or of a significantly different scope/statutory class than substantively rejected claims, the omitted claim is less likely to be allowed in a next Office action.

When a next Office action cannot properly be made final if it rejects an omitted claim (and that omitted claim is not likely to be allowed on the next Office action), an Applicant has a rare opportunity to significantly amend the claims or even add new ones, without facing a final Office action in response. Also, the Applicant enjoys the advantage of modifying the presented claims based on the cited art, the Examiner’s application of that art, and the Examiner’s claim construction. Essentially, the Applicant gets “a second bite at the apple” to submit claims that, like originally filed claims, must be examined as a matter of right.

The potential benefits are self-evident.

Secondly, in view of the production quotas Examiner’s must satisfy, this approach might (even if only marginally) help obtain an allowance, since counts are not awarded for successive non-final Office actions.

In sum, calling the Examiner may be the most cost-effective way to resolve a deficient Office action but, unless overall cost and/or a speedy allowance are top priorities, it may be advantageous to consider a substantive response to such an Office action.

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© 2008, Michael E. Kondoudis

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

{ 2 comments… read them below or add one }

anonymous March 26, 2008 at 5:17 pm

Of course, it really depends on what you’re trying to do with the extra bite at the apple. If you want to get some extra arguments/evidence in, that may not irritate the examiner and may advance prosecution. On the other hand, if you’re trying to pursue new subject matter that will require additional searching, you may violate the rule that you don’t want to make the examiner mad.

JD March 27, 2008 at 3:42 pm

Michael,

I agree with your post. The problem remains though. Examiners know that making an OA final starts the clock running and they also know that the petition process is a complete joke.

I’ve been to the AIPLA’s “Partnering in Patents” meetings (held annually the Thursday before the AIPLA annual meeting), and consistently the number one complaint from practitioners is after final practice.

Using your example of a non-final OA not treating a claim, I always mention it in my response, right up front, and always state that any OA that rejects/objects to that claim must be non-final. (I would never amend a claim that wasn’t treated as that is an invitation to the examiner to reject it and claim “necessitated,” which would be completely false, but when you complain the (mis)manager handling your complaint is going to give it a cursory review and conclude, “Well you amended it.”)

I always add claims in the situation you describe because what I’ve experienced in the past in that situation is examiners rejecting the previously unaddressed claim and making the rejection final. When I complain, what I get is, “Well, that was a typo, you shoulda known it was rejected.” The examiners do that because they’re rolling the dice that you’re not going to go over their head. And their (mis)managers will likely back them up. Because they too are rolling the dice. They figure you won’t make a big deal out of one claim.

But when I add claims, I tell the examiner, “Hey, your initial OA was deficient because it didn’t treat claim X. You cannot make the next OA final. And in reliance on that, I’ve added claims to further define the invention.” That puts them on notice that I will complain if the next OA is improperly made final.

I’ve faced the exact situation of your example several times. (There’s simply no proof reading going on over there.) Sometimes the examiner acknowledges the mistake and makes the next OA non-final. But there’s always that one, or two, that figure they’re gonna roll the dice.

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