Patentably Defined

© 2009, Michael E. Kondoudis

Introduction

Most actions during prosecution of a patent application in the USPTO are eventually subject to quasi-judicial review by an appeal to the Board of Patent Appeals and Interferences.  The classic example of an action that is subject to this type of review is an art (§102 and/or §103) rejection of a claim. 

Other actions, however, are not subject to review by an appeal.  Rather, the only relief available is administrative review.  An example of this type of action is a review of a restriction requirement.  This administrative review is conducted, in part, through petition practice.

Still other actions, such as the revival of an abandoned application, may only be requested by petition.

The Starting Points for Any Petition

The Director of the USPTO has delegated to various USPTO officials the authority to decide certain petitions.  The various delegations are set forth in Chapter 1000 of the MPEP.  

The specific form and content of many common petitions are set forth in the Rules and the MPEP.  For example, the requirements of a petition to revive an abandoned application are set forth in 37 CFR 1.137 and MPEP 711.03(c). 

37 CFR 1.181(b) sets forth the general requirements for the content of a petition.  This Rule, along with section 1000 and any other relevant section(s) of the MPEP, should be primary resources for anyone drafting a petition.

The Requirements

Every petition in the USPTO must satisfy the following 5 requirements:

1.  The petition must be in writing (see 37 CFR 1.2).

Business with the USPTO should almost always be transacted in writing.  Enough said.

2.  The petition must: contain a statement of relevant facts; identify the issue(s) or error(s) presented for review; and state the action or relief sought by the petition.  (see 37 CFR 1.181(b)).

Every petition should be as complete as possible and provide all of the evidence necessary for the rendering of a decision.

3.  The petition must be accompanied by any required fee (see 37 CFR 1.181(d)).

The Office may properly dismiss any petition for lack of or insufficient fee.  Be sure to consult the USPTO’s current fee schedule here.

4.  The petition must be timely filed in compliance with 37 CFR 1.181(f), or as required in a specific statute or regulation.

As a general rule, a petition must be filed within 2 months from the date the action complained of occurred or it may properly be dismissed as untimely.  

5.  The petition must comply with any specific requirements as provided by statute, regulation or USPTO policy.

Review any applicable statute, regulation or USPTO policy relating to the issue being petitioned to determine if there are other requirements specific to that petition.

Final Points

1.  Petitions do not stay periods for reply - The mere filing of a petition will not stay the period for replying to an examiner’s action that may be running against an application or act as a stay of other proceedings. (37 CFR 1.181(f)).

2.  Be sure to separate each distinct subject, inquiry or request into a separate petition - different branches or sections of the USPTO may consider/decide different matters.  Filing separate papers will help to avoid confusion and delay in answering papers dealing with different subjects (see 37 CFR 1.4(c)).

3.  Send the petition to the correct decision maker – a petition should be directed to the USPTO official delegated the authority to decide that petition. (see MPEP Chapter 1000).

4.  The two-month period to file a petition is not extendable. (37 CFR 1.181(f)).

5.  The USPTO provides several fillable pdf petition forms on its website here.

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

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© 2009, Michael E. Kondoudis

This post discusses a less common but nonetheless important point that my earlier post on this subject did not – the mechanics of how to claim priority to a foreign patent document, along with a few examples.

Generally, the approach for claiming the benefit of foreign priority is similar to claiming domestic priority. There are a few more requirements to keep in mind, however.

THE RULE AND REQUIREMENTS

The controlling rule here is 37 CFR § 1.55, entitled Claim for Foreign Priority, which states:

An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).

Section 1.55(a) goes on to impose a non-extendable time limit to make the claim, stating that:

the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable.

Pursuant to § 1.55, the claim for the benefit of foreign priority must satisfy a few more requirements than a claim for domestic priority. In particular, the claim must identify the foreign application for which priority is claimed by specifying:

          1.  the application number of the priority document;

          2.  the country (or intellectual property authority) with which the priority document was filed

          3.  the day, month, and year the priority document was filed.

Also, of course, the foreign patent authority must have reciprocity with the USPTO, there must be an identity of inventorship, and the U.S. application must almost always have been filed within 12 months from the filing date of the priority document.

A FEW EXAMPLES

This application claims priority under 35 U.S.C. § 119 to German patent application DE 100 21 175.7, filed January 4, 2005, the disclosure of which is incorporated herein by reference.

This application is based on and claims the benefit of priority from Japanese Patent Application No. 5-234567, filed on October 15, 2007, the contents of which are incorporated by reference.

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

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© 2009, Michael E. Kondoudis

This post discusses some of the mechanics involved in securing a right of priority to an earlier filed application, provides some examples of acceptable claims of priority, and ways to correct a failure to make the required claim.

BACKGROUND

When certain conditions are satisfied, a patent application is entitled to the benefit of the filing date of an earlier filed application.  These specific conditions are set forth in 35 U.S.C. § 120 and 37 CFR  1.78(a)(1) - (a)(3) for prior nonprovisional applications and 35 U.S.C.  119(e) and 37 CFR  1.78(a)(4) - (a)(6) for provisional applications. 

Generally, the Rules require that an Applicant make a “specific” reference to the prior-filed application in either:

          1.  the specification; or

          2.  an application data sheet (ADS).

The Rules do not articulate any particular form of the required “specific” reference.  They do, however, dictate that the “specific” reference:

          1.  identify the prior-filed application by application number; and

          2.  identify the specific relationship of the applications (i.e., continuation, divisional, or continuation-in-part).

Also, when there is a claim to a chain of applications, the relationship must be stated for each application, to establish the required co-pendency throughout the chain.

EXAMPLES

Example #1 - Benefit Claim to a Nonprovisional Application

CROSS-REFERENCE TO RELATED APPLICATION

This application claims the benefit of U.S. patent application no. 12/123,456, filed December 12, 2007.

Example #2 – Benefit Claim to Nonprovisional Applications

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation-in-part of Application No. 12/123,456, filed 21 March 2007, and is also a continuation-in-part of Application No. 12/234,567, filed 31 March 2007.

Example #3 - Benefit Claim to Chain of Nonprovisional Applications

If the benefit claim involves a chain of nonprovisional applications, then the specific reference must also include the interrelationships of the applications relative to each other, as a continuation, divisional, or continuation-in-part, to establish co-pendency throughout the entire chain.

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of Application No. 12/123,456, filed 21 March 2007, which is a divisional of Application No. 11/123,456, filed 21 March 2006, which is a continuation-in-part of Application No. 10/123,456, filed 1 January 2006.

Benefit Claims to International (PCT) Applications

When the specific reference is to an international application, an Applicant is required to:

         1. Identify the International application by International application number and International filing date (not the § 371(c) compliance date); and

         2. provide any specific interrelationship of multiple applications, when present.

Example #4 - Benefit Claim to a National Stage (§ 371) application

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of Application No. 10/123,456, which is the National Stage of International Application No. PCT/US2007/000004, filed January 1, 2007.

Example #5 – Benefit Claim to a Bypass Application

CROSS-REFERENCE TO RELATED APPLICATION

This application is a continuation of International Application No. PCT/US2008/00050, filed January 1, 2008.

Note: do not use the §371(c) compliance date for bypass applications.

Example #6 – Benefit Claim to an International Application (Benefiting From an Earlier Nonprovisional)

CROSS-REFERENCE TO RELATED APPLICATIONS

This application is a continuation of International Application No. PCT/US2008/00050, filed January 1, 2008, which is a continuation of U.S. Application No. 10/123,456, filed February 1, 2006.

Example #7 - Benefit Claim to Provisional Applications

Here again, a specific reference to the prior-filed application is required in the first sentence of the specification or an ADS.  This specific reference need not state the relationship between the nonprovisional application and the provisional application.

CROSS-REFERENCE TO RELATED APPLICATION

This application claims the benefit of U.S. Provisional Application No. 60/123,456, filed March 1, 2008.

THE TIME LIMITS AND CORRECTION

The Rules limit the time in which an Applicant may make a benefit claim.  37 CFR. 1.78(a) requires that any claim of priority must be made before the later of four months from the actual filing date or the date on which the national stage commenced, or sixteen months from the filing date of the prior-filed application.

The Impact of Failure To Make A Timely Benefit Claim

The failure to timely submit the “specific” reference is considered a waiver of any benefit claim.  The failure to make a timely claim is correctable, but this correction can be relatively expensive.  

How Do You Know If A Claim Has Been Correctly Acknowledged by the USPTO?

The Office, via the Official Filing Receipt, notifies Applicants that a benefit claim may not have been recognized or was not accurately recognized.  For this reason, it is important to review every Official Filing Receipt, which is usually provided shortly after the filing of an application so as to provide sufficient opportunity to make/correct a benefit claim within the specified time.

Timely Correction

During the time period set forth in 37 CFR 1.78(a), an Applicant may correct a benefit claim by:

          1. filing a request for corrected filing receipt, and

          2. making the required “specific” reference.

Here, the required “specific: reference can be made either:

           by filing an amendment to the specification or by filing an ADS; or

           by submitting a copy of the amendment or ADS, if the claim was previously submitted.

Note – There is an important departure from standard USPTO practice here.  A preliminary amendment to merely add a claim of priority does not require a substitute specification.  See MPEP 714.01(e).  The Office would prefer that claims are made via an ADS, however.

Untimely Correction

After the time period set forth in 37 CFR 1.78(a), an Applicant may correct a benefit claim by:

          1. filing a petition to accept an unintentionally delayed claim under rule 1.78(a) and the surcharge under rule 1.17(t) (presently 1500.00 USD); and

          2.  making the required specific reference (including the relationship of the non-provisional applications and identification of any intermediate application which directly claims the benefit of the provisional application).

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

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The USPTO has unveiled a series of proposals that would bring significant change to the examiner “count system” – the methodology for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination. The proposals were developed by a task force comprised of senior USPTO patent managers and representatives of the Patent Office Professional Association (POPA), the union that represents patent examiners.

The proposed changes would be the most significant in more than 30 years. The last revision to the count system was in 1976.

According to the USPTO, the proposals provide the following:

• Improved working conditions:  While the proposal increases the time examiners have overall, it provides incentives to encourage examiners to do a high-quality first action, and shifts resources from a focus on examiner recertification to front-end quality improvements. This change in incentives will ultimately encourage examiners to dispose of applications more quickly.
• More time for examiners:  The proposed changes will give examiners more time overall, more time for a first action on the merits, and time for examiner-initiated interviews, while decreasing credits on requests for continued examination (RCEs)* and providing consistent credits for transferred or inherited amendments.
• Process changes:  These changes will increase work credit certainty for examiners, increase fairness to applicants, and balance the load on IT systems.

The USPTO’s press release on the proposed changes can be found here.

The USPTO’s full proposal can be found here.

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

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© 2009, Michael E. Kondoudis

Introduction

USPTO rules require that every non-provisional patent application include an Abstract.  This Abstract is a concise summary of the invention disclosed in the application.  This summary enables the Office (and the public) to quickly determine the nature of the disclosed subject matter.

Although only a summary, it is prudent to draft an Abstract with care. The Abstract is a part of a written disclosure of the application and Federal Courts may properly rely on an Abstract to construe claims.  For this reason, it is beneficial to draft an Abstract at least as broadly as the broadest independent claim.

The many requirements for a patent Abstract are set forth in 37 CFR 1.72(b) and MPEP § 608.01(b). These respective sections of the Rules and the Manual of Patent Examination Procedure should be an Applicant’s primary resources.  The USPTO may properly object to any Abstract that does not satisfy all of the requirements and may require correction by the applicant.  The following are the five most common reasons the Office will object to an Abstract:

1.  The Abstract is not on a separate sheet
A proper Abstract commences on a separate sheet that does not include either other parts of the application or any other material.  Preferably, an Abstract is presented after the claims, which preferably follow the Specification.

2.  The Abstract is too long/too short
A proper Abstract is between 50 and 150 words and does not exceed 15 lines of text.

3.  The Abstract includes improper language
A proper Abstract avoids the legal phraseology commonly found in patent claims, such as “means” and “said.”  Instead, the language used should encompass that which is new and be clear and concise.  Thus, a proper Abstract also avoids phrases that can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc.

Remember - the content of an Abstract should enable a reader, regardless of his or her degree of familiarity with patents, to determine quickly whether there is a need to consult the full patent text.

4.  The Abstract is non-narrative/non-descriptive
A proper Abstract neither discusses purported merits or speculative applications of a disclosed invention nor does it compare the invention with prior art. Rather, a proper Abstract efficiently describes the disclosed subject matter and encompasses what is believed to be novel. Accordingly, extensive mechanical and design details of an apparatus should not be included.

5.  The Abstract is more than one paragraph
A proper Abstract is a single paragraph within the range of 50 to 150 words.

Abstract Drafting Suggestions

1.  An Abstract is part of the written disclosure of an application and can be used to construe (and likely limit) the claims in future litigation.  So, when drafting this portion of an application always keep in mind Miranda – “anything you say can and will be used against you in a court of law.”

2.  A common drafting strategy is to incorporate the language of the broadest independent claim, without the “patentese” (pure claim terminology).  This strategy tends to produce an Abstract that is both adequately broad and that avoids characterizations of the invention.  Moreover, this strategy is efficient because it leverages the care and effort used to draft the independent claim on which the Abstract is based.

3.  When an invention is of a basic nature, the Abstract may be directed to the entire disclosure.

4.  When an invention is an improvement of an old apparatus, process, product, or composition, the Abstract preferably focuses on the improvement.

5.  When an invention is in the nature of compounds and compositions, the abstract preferably sets forth both a process for making and a use of the compound or composition.

6.  Where applicable, an Abstract should include the following:

(1) if the invention is a machine or apparatus, its organization and operation;
(2) if the invention is an article of manufacture, its method of making;
(3) if the invention is a chemical compound, its identity (i.e., the general nature of the compound, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas”) and use;
(4) if the invention is a mixture, its ingredients; and
(5) if the invention is a process, its operations or steps.

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

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The USPTO has revised its schedule of fees to reflect upward revisions of some PCT fees to foreign patent offices.  The fee increases will go into effect on October 2, 2009.  The revised fee schedule is available here.

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

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© 2009, Michael E. Kondoudis

As several patent blogs have recently discussed, the backlog at the Board of Patent Appeals and Interferences (BPAI) has topped 20 months and shows few signs of decreasing any time soon.  New appeals are being filed at a rate of about 2.5 times the disposal rate.  Also, new rules limiting continuing practice may still be put into effect, which would certainly increase the rate of future appeals.

One way to avoid further extending the time to have an appeal heard is to avoid having to submit an amended appeal brief because the original was deemed non-compliant.  Knowing the requirements set forth in the Rules and the MPEP may not be enough, however.  This is because an appeal brief may fully satisfy each and every requirement set forth in the Rules and the MPEP and still be returned as non-complaint.

Sections 1205 - 1205.03 of the MPEP address appeal briefs.  In those sections, one will find:

    1205 - the Rule governing appeal briefs, 37 CFR 41.37;

    1205.01 - the timing for filing the appeal brief;

    1205.02 - the required content for an appeal brief; and

    1205.03 -  how the Office deals with non-compliant appeal briefs.

Obviously, MPEP § 1205.02 is a good place to start when preparing an appeal brief.   Relying solely on the MPEP and Rule 37 CFR 41.37 may not be advisable, however.

Not widely known is that the USPTO Appeal Center uses an internal checklist to judge whether an appeal brief is compliant (and accepted) or is non-compliant (and returned to the appellant for resubmission).  Following this link to download the Checklist.

A review of the Checklist is illuminating.  For example, it instructs Appeal Center reviewers that an appeal brief should not be held non-complaint merely because:

     1.  the required sections are “not in the order indicated”;

     2.  there is no statement of the real party in interest (because the Office will assume the named inventors are the real part in interest;

     3.  there is no statement of related cases (because the Office will assume that there are no related cases; and

     4.  there is no evidence section (because the Office will assume that that there is no evidence.

The Checklist, however, does much more than just identify various minor deficiencies that do not alone rise to non-compliance.  In fact, a review of the checklist reveals possible additional requirements that are not found in 37 CFR 41.37 or in the MPEP.  The following are a few examples.

Status Identifiers in the Claim Appendix
Item 9 of the Checklist inquires about whether the claims listed in the Claims Appendix are accompanied by status identifiers. MPEP § 1205 and 37 CFR 41.37 only require a claim appendix that includes a clean, accurate version of all pending claims in numerical order, however.   Specifically, 37 CFR 41.37, subsection (c)(1)(iii)(“Status of claims”) only requires:

A statement of the status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims that are being appealed.

Nonetheless, the Checklist instructs a reviewer to return to the appellant as non-compliant any appeal brief that lacks status identifiers in the Claims Appendix.

Table of Contents
Item 3 of the Checklist inquires about the presence of a table of contents and instructs the Appeal Center reviewer to hold an appeal brief non-compliant if a table or its heading is omitted.  But, neither Rule 41.37 nor the MPEP requires a table.  In fact, MPEP § 1205.02 actually characterizes tables of contents or authority as merely desirable and instructs that an appeal brief may comply with 37 CFR 41.37 even when those tables are absent.

Page Numbering
Item 13 of the Checklist inquires about the page numbering, which is a requirement not found in either the MPEP or Rule 41.37.  Nonetheless, according to the Checklist:

The pages of the appeal brief, including all sections of the appendix, shall be numbered consecutively … beginning  with the first page of the appeal brief, which shall be numbered page 1.

While admittedly imprudent to submit an Appeal Brief without consecutive page numbers, this is not the only formatting requirement that is found in the Checklist but not in the MPEP.

Conclusion
The bottom line, whether supported or unsupported, every appellant needs to be aware of the Checklist and the additional requirements that it appears to impose on appeal briefs.  Ignoring these additional requirements increases the chances that an appeal brief will be returned as non-compliant, which would extend the already lengthy wait for a BPAI decision.

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

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© 2009, Michael E. Kondoudis

Gene Quinn of IPWATCHDOG.COM has a troubling an interesting post about the USPTO from the inside.  For anyone curious as to why the allowance rate has dropped below 50% (it is presently at 42%), and why the quality of examination has declined so much in recent years, I recommend taking a few minutes to read Mr. Quinn’s post entitled “Perspective of an Anonymous Patent Examiner“.  A few nuggets from the anonymous Examiner:

 [The USPTO’s] “reject, reject, reject now” policy is encouraged by management’s policy of issuing a written warning on an examiner’s permanent file for allowance error percentage above 10%.

Additionally, there is a lack of motivation to get cases allowed, because there is no incentive for the examiner to do the extra work required to arrive at claim language which can be allowed.

Over the years, I too have heard many of the same views from multiple Examiners.  It is little wonder why morale at the USPTO is so low.  I leave you with Mr. Quinn’s final question from his post, which I second:

With so many Czars and hundreds of billions of dollars being thrown around Washington, DC, can’t we get just a little attention at the agency that is tasked with promoting the progress of science and useful arts?  I don’t think that is too much to ask for, is it?

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

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© 2009, Michael E. Kondoudis

This is the second part of a two-part discussion of RCEs and the submission requirement.  In my earlier post here, I discussed legal principles about RCEs and some RCE strategy.  This post presents and discusses some additional strategic uses for RCEs beyond reopening/continuing prosecution after a final Office action.

An RCE can be used to have art considered and made of record when the statement under 37 CFR § 1.97(e) is required but cannot properly be made.

Consider a circumstance where an Applicant seeks to have art considered by the Office (i) after a final Office action and (ii) more than three months after the art was cited in a corresponding foreign application.  If the Examiner declines to consider the art (the Rules do not prohibit the Examiner from considering art at any time during prosecution), filing an RCE with an IDS will require the USPTO to consider the art as a matter of right. 

In this circumstance, the Applicant may consider foregoing a Response After Final and file an RCE with two submissions, a fully responsive Response and an IDS.

Two Comments About RCEs and IDSs
1.  Keep in mind that 37 CFR 1.97 specifies when an IDS shall be considered by the Office.  Thus, compliance with this rule ensures consideration of submitted art as a matter of right.  A failure to satisfy the requirements of this rule does not preclude the consideration of the cited art, just consideration as a matter of right.

2.  The three-month window of 37 CFR 1.53(b) (an IDS will be considered if filed within three months after the filing date) does not apply to RCE applications.  An IDS after an RCE will, however, be considered without a statement and fee so long as the IDS is filed before the first action after the RCE.

An RCE can be used to withdraw an appeal.

After a Notice of Appeal, an Applicant/Appellant sometimes (i) decides to amend claims or (ii) discovers new art that is material to patentabilty.  In either of these situations, filing an RCE would withdraw the appeal and reopen prosecution so that the amendments or art can be made of record.

An RCE can be used to withdraw an allowed application from issue.

After a Notice of Allowance, but before payment of the Issue Fee, an Applicant begins to evaluate whether the claims are of adequate scope or whether additional claims are warranted.  If there is a risk of the application issuing, an RCE will stop it.  In this circumstance, filing an RCE with a submission that merely amends the Abstract to change as little as a single word can be used to buy the Applicant time to decide whether to permit the application to issue.

An RCE may also be used to avoid paying an Issue Fee but maintaining pendency  when it is unclear whether an Applicant wants to pay an Issue Fee. 

Here again, a submission that merely amends the Abstract to change as little as a single word can be used.

A Comment on Reporting Issue Fees
To avoid the latter situation illustrated above in which it is unclear whether the Applicant wants to pay the Issue Fee, one might consider a paragraph such as the following in a Notice of Allowance and Notice of Allowability reporting letter:

The Issue Fee and Publication Fee are due no later than January 1, 2009, and we will pay those fees on the due date unless we receive your instructions otherwise.  In that regard, if you instruct us to file a request for continued examination (RCE), we must have your proposed amendment or other submission before the due date.

Such a paragraph makes clear that the fees will be paid in the absence of further instructions.

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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.

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

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