A Discussion Of Strategies To Address Successive Non-Final Office Actions That Are Not Advancing Prosecution

July 1, 2008

in Practice Suggestions,Prosecution Strategy,The MPEP

In an earlier post, I discussed the Office’s policy of compact prosecution and how that policy affects patent prosecution in the USPTO. Under that policy, second Office actions are usually made final, except in limited circumstances. Consequently, except for an allowance or an indication of allowable subject matter, a response that triggers a non-final Office action is often the best result an Applicant can expect. After all, forcing the Office to deviate from its policy of compact prosecution is usually evidence of effective patent prosecution, particularly when a non-final Office action is triggered without a claim amendment.

A Problem – Successive Non-Final Office Actions That Do Not Advance Prosecution

In some cases, however, second, third, or fourth non-final Office actions are arguably the result of poor Office action quality rather than the quality of the patentability arguments. These Office actions are problematic because they don’t advance an application or even provide practical measures of potential patentability, yet they require formal responses. Thus, Applicants incur the expenses of responses without the benefit of advancing prosecution.

A common example of this circumstance is a first non-final Office action that applies poor art. Sometimes, after an Applicant traverses the art rejections with patentability arguments and/or claim amendments that amount to no more than a rewrite of an original independent claim to incorporate an original dependent claim, the Applicant receives another non-final Office action (with new art) and the cycle is repeated.

This post addresses this atypical but vexing situation in which an Applicant is required to respond to successive non-final Office actions that aren’t advancing prosecution. To be clear, this post is NOT intended to address all successive non-final Office Actions. Rather, this post discusses some suggestions for escaping the administrative “purgatory” of successive non-final Office Actions that do not advance prosecution.

By Design or the Result of Ex Parte Prosecution?

Some practitioners, at least anecdotally, seem to be of the opinion that this could be an intentional practice by some art groups in the USPTO, intended to wear down applicants and get them to either: unduly limit their claims rather than seeking protection for the full scope of their inventions; or to abandon their cases. Others are of the opinion that this is the result of the sometimes inefficient process of ex parte prosecution and that Examiners cannot allow claims that they believe to be unpatentable.

Options to Consider

1. Consider An Appeal
One option might be to appeal at least some of the rejections. An applicant whose claim has been twice rejected may appeal, regardless of whether the claim is under a final rejection. See MPEP § 1204.  So, if any claim has faced the same rejection two times, appeal is an option.

2.  Consider an Interview
An Examiner interview is almost always an effective tool to advance prosecution.  Sometimes an Examiner misses novel features of the claims or misunderstands a patentability argument.  An interview is opportunity to meet the Examiner and to refocus prosecution.

3. Remind the Examiner of The Office’s Instructions for Art Searches
The MPEP establishes guidelines for art searches and the goals of these searches. For example, Section 904.02 of the MPEP, entitled General Search Guidelines, advises Examiners that:

    The search [for citable art] should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed.

Further, Section 904.03 of the MPEP, entitled Conducting the Search, instructs that:

    It is a prerequisite to a speedy and just determination of the issues involved in the examination of an application that a careful and comprehensive search, commensurate with the limitations appearing in the most detailed claims in the case, be made in preparing the first action on the merits so that the second action on the merits can be made final or the application allowed with no further searching other than to update the original search.

This section goes on to warn that:

    It is normally not enough that references be selected to meet only the terms of the claims alone, especially if only broad claims are presented; but the search should, insofar as possible, also cover all subject matter which the examiner reasonably anticipates might be incorporated into applicant’s amendment. In doing a complete search, the examiner should find and cite references that, while not needed for treating the claims, would be useful for forestalling the presentation of claims to other subject matter regarded by applicant as his or her invention, by showing that this other subject matter is old or obvious.

(emphasis added).  Finally, Section 904 warns that the examiner should cite only the best discovered art.

If anyone else has other strategies or suggestions to address this circumstance, I invite you to share them with other readers in the comments section.

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© 2008, Michael E. Kondoudis

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

{ 4 comments… read them below or add one }

Daniel July 1, 2008 at 11:24 am

Michael, thanks for this posting. However, I find the problem most prevalent in cases where the Examiner is completely incompetent and/or doesn’t speak English. In such cases, an appeal is the only real option, but with the complexity and pitfalls of appeals on the up, none of the options look really good. Any other suggestions?

Elizabeth July 1, 2008 at 6:13 pm

In an extreme case of this, I once successfully filed a Rule 181 petition to invoke supervisory authority to have the case reassigned to a different examiner. (I had received four nonfinal office actions, each with successively *worse* art, and had three interviews, two of them with two different SPEs on the call.) I received a Notice of Allowance from a different examiner, including a statement that all previous rejections had been reconsidered and withdrawn.

ACW July 11, 2008 at 4:15 pm

Michael, is there any recourse of which you are aware to contend with the following situation: Examiner indicates dependent claims allowable, prompting applicant to rewrite claims in independent form to solicit notice of allowance in reliance of indication, followed by Examiner rejecting rewritten claims as obvious over same reference(s). This practice should not be permitted as applicant never would have created potential estoppel issues, but for the indication of allowable subject matter. Interested in your thoughts.

mike July 16, 2008 at 5:55 pm

ACW,

The only practical recourse is to ensure that the Office action is not final. The rejection made in the hypothetical you describe precludes finality because the rejection could have been made in the prior Office action, but was not. Thus, it would not be based on an IDS or claim amendment. And, since the Office action is non-final, the Applicant would have the opportunity to undo the changes. Finally, an Applicant might consider reminding the Office of its policy of compact prosecution.

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