It is almost always in an Applicant’s best interest to maintain the best working relationship possible with an Examiner. After all, a happy Examiner is more likely to be a helpful Examiner. Also, despite the high turnover at the USPTO, you may very well be working with an Examiner again. So, staying on an Examiner’s “good side” is often good business.

There are many ways to get on the bad side of an Examiner. Some ways are obvious, while others may not be. An exhaustive list is impossible because just like every application, every Examiner is different. Nonetheless, from my many discussions with Examiners over the years, here are five sure-fire ways to get on your Examiner’s bad side.

The List

#5 – File multiple after final papers.

Remember – Examiners don’t get production credit for issuing Advisory Actions.

#4 – Present only a general argument with only generic citations to several pieces of art, without an explanation as to how the art supports the argument

Comment – It appears to me that leaving the grunt work to an Examiner is both unfair and a recipe for a poor Office action in response. Besides, specific citations of evidence tend to make an argument more persuasive. Also, keep in mind the requirements of 37 CFR 1.111(b):

In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.

Moreover, general arguments do not help a pre-appeal request for review because an Applicant cannot direct the panel back to the record when that record lacks specificity.

#3 – Submit a needlessly lengthy response inflated with numerous boilerplate paragraphs

Comment – No examiner needs a legal primer on the law of anticipation. Responses with paragraph after paragraph of boilerplate explanations of §§ 102 and/or 103 tend to lack clarity and can pose a challenge to even the most interested reader. Examiners are human and their natural inclination is to skip such paragraphs. This means that they may miss relevant, persuasive arguments, if they are embedded in or near these paragraphs. This also means that an Applicant is wasting resources writing paragraphs that will not be read by the Examiner.

Here, I would suggest taking a look at my earlier blog post on this subject.

#2 – Use uncommon terminology when there

are perfectly good and commonly acceptable terms of art

Comment – Under MPEP § 2111.01(IV) an applicant is entitled to be his or her own lexicographer. But, when an applicant chooses not to characterize an invention in terms that are consistent with commonly used and familiar terminology, he or she potentially impedes the examination of the application. For example, uncommon terminology makes an Examiner’s searching more difficult (i.e., time consuming). With limited time to examine an application, why force an Examiner to spend more time on the art search to the potential detriment of the Office action?

#1 – Attempting to bully an Examiner at an interview

With good fortune, you will be working in the patent profession for many years to come. With some misfortune, you will be back before that Examiner you just tried to bully. Enough said.

Honorable Mentions

1. Asserting that a rejection is somehow incorrect/deficient because claim features you just amended or added were not addressed in the rejections and/or are not found in the art. It seems both illogical and insulting to assert error based on claim features that were not present when the rejection was made. Instead, consider the following approach:

Without conceding the propriety of the Office’s characterization of the Smith widget, Applicant respectfully submits that Smith cannot teach the widget of claim 1, as presently amended.

2. Responding to a rejection by adding more claims with different combinations of previously presented limitations just to see if the new claims might be patentable, especially when (1) the original claims are left unchanged and/or (2) the applicant has argued that a rejection is traversed because the previously presented claims define over the cited art.

3. Reaching an agreement during an interview and then doing something completely different in the next response, without any explanation at all.

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© 2010, Michael E. Kondoudis

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

This post discusses requests to withdraw finality.  Under the USPTO’s policy of compact prosecution discussed here, a second office action may properly be made final under most circumstances.  The circumstances are set forth in §706.07(a) of the Manual of Patent Examining Procedure (MPEP), entitled Final Rejection, When Proper on Second Action, which states:

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 filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

The MPEP, in §706.07(d), also provides a remedy when a final Office Action is issued and the conditions of §706.07(a) have not been satisfied.  That section, entitled Final Rejection, Withdrawal of, Premature, provides:

If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, he or she should withdraw the finality of the rejection. The finality of the Office action must be withdrawn while the application is still pending. The examiner cannot withdraw the final rejection once the application is abandoned.

The following are a few examples of successful Requests to Withdraw Finality.

—- EXAMPLES —-

This first example was submitted in response to a final Office action that mischaracterized a claim.

REQUEST FOR WITHDRAWAL OF FINALITY

Applicants are in receipt of a final Office Action mailed March 13, 2007, in this application. Applicants respectfully request that the finality of the subject Office Action should be withdrawn because the Office has expressly and erroneously misinterpreted claims and, as a result, has failed to consider the patentability arguments presented in the most recently filed Amendment. Further, the Office’s express, incorrect claim characterization precludes the Office Action from addressing the merits of the argument presented concerning one of the presented independent claims.

In support of this request, Applicants state the following:

1. On December 20, 2006, Applicants filed an Amendment that presented independent claim 15 with the following claim recitation:

a disk protector disposed at an outer edge of the disk damper….

2. In response to the Amendment filed December 20, 2006, the Office mailed a final Office Action on March 13, 2007, which explained that all rejections were maintained because:

Applicant argues the limitations which are not in the claim language” because Applicants only claim “…arranged/disposed along an outer edge of the disk damper…Applicant does not claim “… at an outer edge of the disk damper.”

(Office Action, page 3).

3. The aforementioned statement of paragraph 2 is manifestly incorrect and without basis in fact. Indeed, Applicants’ independent claim 15 expressly recites “at.”

4. Section 707.07(f) of the Manual of Patent Examining Procedure (MPEP) instructs that:

Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant’s argument and answer the substance of it.

5. The Office repeated the rejections of all of the claims. The Office, however, neither “took note” of Applicants’ argument nor “answered the substance” of Applicants’ argument. Thus, the final Office Action is deficient because the Office failed to satisfy the requirements of MPEP § 707.07(f).

6. Also, it is submitted that the outstanding Office Action has taken an improper and unreasonable interpretation of claim terms. And, for this additional reason, Applicants respectfully submit that the outstanding Office Action is improper.

In view of the foregoing, Applicants respectfully request withdrawal of the finality of the outstanding Office Action and further request a new non-final Office Action that addresses the merits of claim 15.

This second example was submitted in response to a final Office action that first rejected features that were previously presented for examination.

REQUEST FOR WITHDRAWAL OF FINALITY

Applicant is in receipt of a final Office Action mailed December 25, 2007, in this application.  Applicant respectfully submits that the finality of the subject Office Action is premature and therefore requests withdrawal of that finality, pursuant to Section 706.07(d) of the Manual of Patent Examining Procedure (MPEP).

Grounds
As grounds for this Request, Applicant states as follows:

1.  The final Office Action rejects independent claim 1 on new grounds.  As the Office itself states, “Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action.”  (Final Office Action, page 6).

2.  The sole amendment to independent claim 1 was made in an Amendment filed October 25, 2008.  In that Amendment, Applicant cancelled original claim 2 and amended independent claim 1 to recite the features of cancelled claim 2.

3.  The features of claim 2 that were added to independent claim 1 were previously presented for examination.  Thus, the added features could have been rejected in an earlier Office action but were not.

4.  Section 706.07(a) of the MPEP specifies the conditions under which the finality of a second or subsequent Office action is proper, providing 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….

5.  Applicant submits that because the features added to independent claim 1 were presented for examination in the preceding Office Action, the new ground of rejection of claim 1 made in the final Office Action cannot reasonably be said to be either necessitated by a claim amendment or an Information Disclosure Statement.

Conclusion
The conditions set forth in § 706.07(a) of the MPEP have not been satisfied.  Accordingly, for that reason alone, as well as the interests of fairness, the finality of the final Office Action should be withdrawn.

This final example was submitted in response to a final Office action that rejected a claim for the first time.

REQUEST FOR WITHDRAWAL OF FINALITY <

Applicant is in receipt of a final Office Action mailed December 25, 2007, in this application.  Applicant respectfully submits that the finality of the subject Office Action is premature and therefore requests withdrawal of that finality, pursuant to Section 706.07(d) of the Manual of Patent Examining Procedure (MPEP).

Grounds For Request
As grounds for this Request, Applicant states as follows:

1.  The final Office Action rejected independent claim 20.

2.  The non-final Office Action that immediately preceded the final Office Action did not reject independent claim 20.

3.  Section 706.07(a) of the MPEP specifies the conditions under which the finality of a second or subsequent Office action is proper, providing 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….

4.  Applicant submits that the rejection of independent claim 20 is a new ground of rejection.  Also, because Applicant neither amended claim 20 nor filed an IDS between the subject non-final and final Office actions, the conditions required by MPEP § 706.07(a) cannot yet be satisfied.

Conclusion
The conditions set forth in § 706.07(a) of the MPEP have not been satisfied.  Accordingly, for that reason alone, as well as the Office’s policy of compact prosecution, the finality of the final Office Action should be withdrawn.

Two last comments.  First, I prefer to file these Requests as separate, stand alone documents.  Second, each of the examples in this post is based on successful Request.  They are by no means appropriate for every final Office action.  But, when finality is premature, this type of Request can be an effective remedy.

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© 2009, Michael E. Kondoudis

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

This post concerns “after final practice,” that is, practice after a final Office Action has been issued in an application. A brief survey of some basics of after final practice follows, along with some suggestions, sample paragraphs, and practice tips for after final practice.

Prosecution After Final Rejection is Restricted

The most significant aspect of after final practice is that it is restricted. Once a final Office Action has issued, an Applicant is no longer entitled to further unrestricted prosecution on the merits, as a matter of right. This is the result of the Office’s policy of compact prosecution, which is discussed here.

The restricted nature of after final practice has some not insignificant ramifications. For example, the amendments in an Amendment After Final are actually proposed changes to that application, except in limited circumstances. And, entry of those proposed changes is generally at the Examiner’s discretion, with direction from Patent Office regulations and guidance from the Manual of Patent Examining Procedure (MPEP).

The Regulations and the MPEP

The regulations and the MPEP establish a conceptual hierarchy for the entry of after final responses. Section 714.13 of the MPEP, entitled “Amendments and Other Replies After Final Rejection or Action,” provides that

[e]xcept where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR §1.116(b)(3) is expected in all amendments after final rejection.

And, 37 CFR §1.116(b)(3) requires a showing of “good and sufficient reasons” why the amendment after final rejection is (1) necessary and (2) was not earlier presented. In this regard, the MPEP instructs that a “refusal to enter the proposed amendment should not be arbitrary” and that it should be given “sufficient consideration to determine whether the claims are in condition for allowance and/or whether the issues on appeal are simplified.” MPEP 714.13(II).

Part (b) of 37 CFR §1.116, entitled “Amendments and affidavits or other evidence after final action and prior to appeal” provides that

(b) After a final rejection or other final action … in an application … :

(1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;

(2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or

(3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.

Unfortunately, neither the MPEP nor 37 CFR 1.116 provide any examples, standards, or other guidance as to what constitutes “good and sufficient reasons.” And, this is a significant standard. Indeed, the Patent Office’s own electronic filing system (EFS-Web) tutorial wholly ignores the possibility of the existence of “good and sufficient reasons,” advising that an Amendment After Final “will not be entered if it requires an additional search or more than a cursory review.”

Additionally, section 714.13 (II) of the MPEP instructs Examiners to advise an Applicant when: (1) certain portions of the amendment would be acceptable as placing some of the claims in better form for appeal or complying with objections or requirements as to form, if a separate paper were filed containing only such amendments; and/or (2) proposed amendment(s) to some of the claims would render them allowable.

The After Final Hierarchy

The foregoing regulations and MPEP guidance establishes the following hierarchy:

1. Responses After Final that cancel claims or amend an application to address a formal requirement made earlier (e.g., adopting Examiner suggestions) are entered as a matter of right. No showing of “good and sufficient reasons” is required.

2. Responses After Final that require only a cursory review by the Examiner (e.g ., removing issues for appeal or presenting rejected claims in better form for appeal) may entered at the non-arbitrary discretion of Examiner with or without a showing of “good and sufficient reasons.”

3. Responses After Final that “touch on the merits” or otherwise do not require “only a cursory review by the Examiner” (e.g., necessitating further search) may be entered at discretion of Examiner with a showing of “good and sufficient reasons.”

In view of this hierarchy, it would appear to be a better practice to prepare after final responses that appeal to the discretion of the Examiner, when they are not to be entered as a matter of right. Such responses would ideally reflect the restricted nature of after final practice, satisfy the requirements of the relevant rules, and reflect the MPEP’s guidance, so as to maximize the likelihood of entry.

Suggestions

The following are examples of suggested modifications tailored for after final practice, including some examples of paragraphs to consider including in after final responses to maximize the likelihood of their entry.

1. Acknowledge The Restricted Nature Of After Final Practice And Ask The Examiner To Exercise His/Her Discretion To Enter Your Response

One way to accomplish this might be to begin an after final response with a paragraph like the following:

In response to the final Office Action mailed April 5, 2007, and having a period for response set to expire on July 5, 2007, Applicant respectfully requests that the Examiner amend the present application in the manner set forth in this Amendment.

Or alternatively,

In response to the final Office Action mailed April 5, 2007, and having a period for response set to expire on July 5, 2007, Applicant respectfully requests that the Examiner favorably consider the following remarks.

2. Determine Where A Reply After Final Rejection Should Be Categorized In The Hierarchy And Expressly Explain Why The Reply Should Be Entered

For example, an Amendment After Final that addresses formal matters raised by an Examiner should be entered as a matter of right. So, an appropriate explanation might be:

Applicant submits that this Amendment After Final Rejection only addresses formal matters raised a previous Office Action. Accordingly, Applicant is entitled to entry of this Amendment as a matter of right under 37 C.F.R. §1.116 (b)(1).

When an Amendment arguably places the application in better form for appeal, an appropriate explanation might be:

Applicant submits that this Amendment After Final Rejection at least places this application in better form for appeal. Applicant respectfully submits that this Amendment should only require a cursory review because the claim amendments presented herein do not add any new features and/or do not significantly alter the scope of the claims. Consequently, the claim amendments should not require any further search by the Examiner. This Amendment is necessary as it clarifies and/or narrows the issues for consideration by the Board and was not earlier presented because Applicant believed that the prior response(s) placed this application in condition for allowance, for at least the reasons set forth in those response(s). Accordingly, entry of the present Amendment, as an earnest attempt to advance prosecution and/or to reduce the number of issues, is requested under 37 C.F.R. §1.116.

When an Amendment touches on the merits, an appropriate explanation might be:

Applicant submits that this Amendment After Final Rejection places this application in condition for allowance by amending claims in manners that are believed to render all pending claims allowable over the cited art and/or at least place this application in better form for appeal. This Amendment is necessary because … and was not earlier presented because Applicant believed that the prior response(s) placed this application in condition for allowance, for at least the reasons discussed in those responses. Accordingly, entry of the present Amendment, as an earnest attempt to advance prosecution and/or to reduce the number of issues, is requested under 37 C.F.R. §1.116.

Of course, this type of paragraph should be modified to articulate the particular “good and sufficient” reason(s) specific to a particular application.

3. Include An Express Request For The Specific Notice That MPEP §714.13 Instructs Examiners To Provide An Applicant

For example

In the event that the Office declines to enter the present Amendment, and (i) any portion of the present Amendment would place some of the claims in better form for appeal if a separate paper were filed containing only such amendments or (ii) any proposed amendment to any claim would render that claim allowable, Applicant respectfully requests that the Office inform Applicant of the same pursuant to MPEP §714.13.

4. File After Final Responses Electronically

Filing electronically avoids the delay between the time documents are received by the Patent Office and the time they are converted and placed into the image file wrapper (IFW). And, since time can be of the essence in after final practice, knowing a document has been received and is in the IFW can be a great benefit. For example, if the after final reply is filed within 2 months of the date of the final Office Action, the shortened statutory period for response will expire either 3 months from the mailing date of the final rejection or on the date the advisory action is mailed, whichever is later. Still further, there are also patent term extension advantages to filing electronically, as I discussed here.

5. When Filing By Mail Or By Hand, Take Advantage Of The U.S. Patent Office’s Expedited Procedure For After Final Responses

The Patent Office has an expedited processing procedure for processing paper responses after final rejection under 37 CFR 1.116. To take advantage of the expedited procedure, after final responses under 37 CFR 1.116 need to be marked as a “Reply under 37 CFR 1.116 – Expedited Procedure – Technology Center (XXXX)” on the upper right portion of the paper. Also, if the response is filed by mail, the envelope must be marked “Mail Stop AF” in the lower left hand corner. The markings preferably should be written in a bright color with a felt point marker. If the reply is hand-carried to the Customer Window, the outside of the envelope should be marked “Reply Under 37 CFR 1.116 – Expedited Procedure – Technology Center (XXXX).” See MPEP 714.13(V).

Three Final Comments

1. If you are not filing electronically through the Patent Office’s EFS-Web, I suggest that you consider starting to. The system is surprisingly simple and easy to use.

2. Under Patent Office rules, every Amendment must include markings showing the changes relative to the last entered amendment. So, in Amendments After Final (or Amendments filed with a request for continued examination (RCE)), it is important to take care not to include markings that indicate changes relative to any unentered amendment. Doing so should result in a Notice Of Non-Compliant Amendment. Never assume that an after final amendment has entered because they are not entered as a matter of right.

3. In view of the U.S. Patent Office’s new rules changing continuation practice, it appears that getting the most out of every response, before and after final, is going to be more important than ever.

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© 2007, Michael E. Kondoudis

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