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2266    Responses [R-11.2013]

37 C.F.R. 1.111   Reply by applicant or patent owner to a non-final Office action.

  • (a)
    • (1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
    • (2) Supplemental replies. (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
        • (A) Cancellation of a claim(s);
        • (B) Adoption of the examiner suggestion(s);
        • (C) Placement of the application in condition for allowance;
        • (D) Reply to an Office requirement made after the first reply was filed;
        • (E) Correction of informalities (e.g., typographical errors); or
        • (F) Simplification of issues for appeal.
      • (ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).
  • (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. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
  • (c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.

37 C.F.R. 1.550   Conduct of ex parte reexamination proceedings.

  • (a) All ex parte reexamination proceedings, including any appeals to the Board of Patent Appeals and Interferences, will be conducted with special dispatch within the Office. After issuance of the ex parte reexamination order and expiration of the time for submitting any responses, the examination will be conducted in accordance with §§ 1.104 through 1.116 and will result in the issuance of an ex parte reexamination certificate under § 1.570.
  • (b) The patent owner in an ex parte reexamination proceeding will be given at least thirty days to respond to any Office action. In response to any rejection, such response may include further statements and/or proposed amendments or new claims to place the patent in a condition where all claims, if amended as proposed, would be patentable.
  • (c) The time for taking any action by a patent owner in an ex parte reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which action by the patent owner is due, but in no case will the mere filing of a request effect any extension. Any request for such extension must be accompanied by the petition fee set forth in § 1.17(g). See § 1.304(a) for extensions of time for filing a notice of appeal to the U.S. Court of Appeals for the Federal Circuit or for commencing a civil action.
  • (d) If the patent owner fails to file a timely and appropriate response to any Office action or any written statement of an interview required under § 1.560(b), the prosecution in the ex parte reexamination proceeding will be a terminated prosecution, and the Director will proceed to issue and publish a certificate concluding the reexamination proceeding under § 1.570 in accordance with the last action of the Office.
  • (e) If a response by the patent owner is not timely filed in the Office,
    • (1) The delay in filing such response may be excused if it is shown to the satisfaction of the Director that the delay was unavoidable; a petition to accept an unavoidably delayed response must be filed in compliance with § 1.137(a); or
    • (2) The response may nevertheless be accepted if the delay was unintentional; a petition to accept an unintentionally delayed response must be filed in compliance with § 1.137(b).
  • (f) The reexamination requester will be sent copies of Office actions issued during the ex parte reexamination proceeding. After filing of a request for ex parte reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.
  • (g) The active participation of the ex parte reexamination requester ends with the reply pursuant to § 1.535, and no further submissions on behalf of the reexamination requester will be acknowledged or considered. Further, no submissions on behalf of any third parties will be acknowledged or considered unless such submissions are:
    • (1) in accordance with § 1.510 or § 1.535; or
    • (2) entered in the patent file prior to the date of the order for ex parte reexamination pursuant to § 1.525.
  • (h) Submissions by third parties, filed after the date of the order for ex parte reexamination pursuant to § 1.525, must meet the requirements of and will be treated in accordance with § 1.501(a).
  • (i) A petition in an ex parte reexamination proceeding must be accompanied by the fee set forth in § 1.20(c)(6) except for petitions under paragraph (c) of this section to extend the period for response by a patent owner, petitions under paragraph (e) of this section to accept a delayed response by a patent owner, petitions under § 1.78 to accept an unintentionally delayed benefit claim, and petitions under § 1.530(l) for correction of inventorship in a reexamination proceeding.

Pursuant to 37 CFR 1.550(a):

“After issuance of the ex parte reexamination order and expiration of the time for submitting any responses, the examination will be conducted in accordance with §§ 1.104 through 1.116…”

Accordingly, the provisions of 37 CFR 1.111 apply to the response by a patent owner in a reexamination proceeding.

The certificate of mailing and certificate of transmission procedures (37 CFR 1.8), and the “Express Mail” mailing procedure (37 CFR 1.10), may be used to file any response in a pending ex parte reexamination proceeding.

The patent owner is required to serve a copy of any response made in the reexamination proceeding on the third party requester. 37 CFR 1.550(f). See MPEP § 2266.03 as to service of patent owner responses to an Office action.

The patent owner will normally be given a period of 2 months to respond to the Office action. An extension of time can be obtained only in accordance with 37 CFR 1.550(c). Note that 37 CFR 1.136 does not apply in reexamination proceedings.

If the patent owner fails to file a timely and appropriate response to any Office action, the prosecution of the reexamination proceeding will be terminated, unless the response is “not fully responsive” as defined in MPEP § 2266.01 or is an “informal submission” as defined in MPEP § 2266.02. After the prosecution of the proceeding is terminated, the Director will proceed to issue and publish a reexamination certificate.

Pursuant to 37 CFR 1.111(a)(2), a response that is supplemental to a response that is in compliance with 37 CFR 1.111(b) will not be entered as a matter of right. The Office may enter a supplemental response if the supplemental response is clearly limited to: (A) cancellation of a claim(s); (B) adoption of the examiner suggestion(s); (C) placement of the proceeding in condition for Notice of Intent to Issue Reexamination Certificate (NIRC); (D) a response to an Office requirement made after the first response was filed; (E) correction of informalities (e.g., typographical errors); or (F) simplification of issues for appeal. When a supplemental response is filed in sufficient time to be entered into the reexamination proceeding before the examiner considers the prior response, the examiner may approve the entry of a supplemental response if, after a cursory review, the examiner determines that the supplemental response is limited to meeting one or more of the conditions set forth in 37 CFR 1.111(a)(2)(i).

A supplemental response, which has not been approved for entry, will not be entered when a response to a subsequent Office action is filed, even if there is a specific request for its entry in the subsequent response. If a patent owner wishes to have the unentered supplemental response considered by the examiner, the patent owner must include the contents of the unentered supplemental response in a proper response to a subsequent Office action.

The patent owner in an ex parte reexamination proceeding must not file papers on behalf of a third party. 37 CFR 1.550(g). If a third party paper accompanies, or is submitted as part of a timely filed response, the response and the third party paper are considered to be an improper submission under 37 CFR 1.550(g), and the entire submission shall be returned to the patent owner, since the Office will not determine which portion of the submission is the third party paper. The third party paper will not be considered. The decision returning the improper response and the third party paper should provide an appropriate extension of time under 37 CFR 1.550(c) to refile the patent owner response without the third party paper. See MPEP § 2254 and § 2267.

Patent owner cannot submit an application data sheet (ADS) in a reexamination proceeding since a reexamination proceeding is not an “application” (see 37 CFR 1.76). An ADS is an improper paper in a reexamination proceeding.

2266.01   Submission Not Fully Responsive to Non-Final Office Action [R-08.2012]

A response by the patent owner will be considered not fully responsive to a non-final Office action where:

  • (A) a bona fide response to an examiner’s non-final action is filed;
  • (B) before the expiration of the permissible response period;
  • (C) but through an apparent oversight or inadvertence, some point necessary to a full response has been omitted (i.e., appropriate consideration of a matter that the action raised, or compliance with a requirement made by the examiner, has been omitted).

Where patent owner’s amendment or response prior to final rejection is not fully responsive to an Office action in a reexamination and meets all of (A) through (C) above, the prosecution of the reexamination proceeding should not be terminated; but, rather, a practice similar to that of 37 CFR 1.135(c) (which is directed to applications) may be followed. The examiner may treat a patent owner submission which is not fully responsive to a non-final Office action by:

  • (A) waiving the deficiencies (if not serious) in the response and acting on the patent owner submission;
  • (B) accepting the amendment as a response to the non-final Office action but notifying the patent owner (via a new Office action setting a new time period for response) that the omission must be supplied; or
  • (C) notifying the patent owner that the response must be completed within the remaining period for response to the non-final Office action (or within any extension pursuant to 37 CFR 1.550(c)) to avoid termination of the prosecution of the proceeding under 37 CFR 1.550(d). This third alternative should only be used in the very unusual situation where there is sufficient time remaining in the period for response (including extensions under 37 CFR 1.550(c)), as is discussed below.

Where a patent owner submission responds to the rejections, objections, or requirements in a non-final Office action and is a bona fide attempt to advance the reexamination proceeding to final action, but contains a minor deficiency (e.g., fails to treat every rejection, objection, or requirement), the examiner may simply act on the amendment and issue a new (non-final or final) Office action. The new Office action may simply reiterate the rejection, objection, or requirement not addressed by the patent owner submission, or the action may indicate that such rejection, objection, or requirement is no longer applicable. In the new Office action, the examiner will identify the part of the previous Office action which was not responded to and make it clear what is needed. Obviously, this course of action would not be appropriate in instances in which a patent owner submission contains a serious deficiency (e.g., the patent owner submission does not appear to have been filed in response to the non-final Office action).

Where patent owner’s submission contains a serious deficiency (i.e., omission) to be dealt with prior to issuing an action on the merits and the period for response has expired, or there is insufficient time remaining to take corrective action before the expiration of the period for response, the patent owner should be notified of the deficiency and what is needed to correct the deficiency, and given a new time period for response (usually 1 month). The patent owner must supply the omission within the new time period for response (or any extensions under 37 CFR 1.550(c) thereof) to avoid termination of the prosecution of the proceeding under 37 CFR 1.550(d). The patent owner may also file a further response as permitted under 37 CFR 1.111. This is analogous to 37 CFR 1.135(c) for an application.

Form paragraph 22.14 may be used where a bona fide response is not entirely responsive to a non-final Office action.

¶ 22.14    Submission Not Fully Responsive to Non-Final Office Action - Ex Parte Reexamination

The communication filed on [1] is not fully responsive to the prior Office action. [2]. The response appears to be bona fide, but through an apparent oversight or inadvertence, consideration of some matter or compliance with some requirement has been omitted. Patent owner is required to deal with the omission to thereby provide a full response to the prior Office action.

A shortened statutory period for response to this letter is set to expire ONE MONTH, or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If patent owner fails to timely deal with the omission and thereby provide a full response to the prior Office action, prosecution of the present reexamination proceeding will be terminated. 37 CFR 1.550(d).

Examiner Note:

  • 1. In bracket 2, the examiner should explain the nature of the omitted point necessary to complete the response, i.e., what part of the Office action was not responded to. The examiner should also make it clear what is needed to deal with the omitted point.
  • 2. This paragraph may be used for a patent owner communication that is not completely responsive to the outstanding (i.e., prior) Office action. See MPEP § 2266.01.
  • 3. This practice does not apply where there has been a deliberate omission of some necessary part of a complete response.
  • 4. This paragraph is only used for a response made prior to final rejection. After final rejection, an advisory Office action and Form PTOL 467 should be used, and the patent owner informed of any non-entry of the amendment.

In the very unusual situation where there is sufficient time remaining in the period for response (including extensions under 37 CFR 1.550(c)), the patent owner may simply be notified that the omission must be supplied within the remaining time period for response. This notification should be made, by telephone, and an interview summary record (see MPEP § 2281) must be completed and entered into the file of the reexamination proceeding to provide a record of such notification. When notification by telephone is not possible, the procedure set forth above should be followed.

The practice of giving the patent owner a time period to supply an omission in a bona fide response (which is analogous to that set forth in 37 CFR 1.135(c) for an application) does not apply where there has been a deliberate omission of some necessary part of a complete response; rather, it is applicable only when the missing matter or lack of compliance is considered by the examiner as being “inadvertently omitted.” Once an inadvertent omission is brought to the attention of the patent owner, the question of inadvertence no longer exists. Therefore, a second Office action giving another new (1 month) time period to supply the omission would not be appropriate. However, if patent owner’s response to the notification of the omission raises a different issue of a different inadvertently omitted matter, a second Office action may be given.

This practice authorizes, but does not require, an examiner to give the patent owner a new time period to supply an omission. Thus, where the examiner concludes that the patent owner is attempting to abuse the practice to obtain additional time for filing a response, the practice should not be followed. If time still remains for response, the examiner may telephone the patent owner and inform the patent owner that the response must be completed within the period for response to the non-final Office action or within any extension pursuant to 37 CFR 1.550(c) to avoid termination of the prosecution of the reexamination proceeding.

The practice of giving the patent owner a time period to supply an omission in a bona fide response does not apply after a final Office action. If a bona fide response to an examiner’s action is filed after final rejection (before the expiration of the permissible response period), but through an apparent oversight or inadvertence, some point necessary to fully respond has been omitted, the examiner should not issue (to the patent owner) a notice of failure to fully respond. Rather, an advisory Office action (form PTOL-467) should be issued with an explanation of the omission. The time period set in the final rejection continues to run and is extended by 1 month if the response is the first response after the final rejection in accordance with the guidelines set forth in MPEP § 2265. See also MPEP § 2272.

Amendments after final rejection are approved for entry only if they place the proceeding in condition for issuance of a reexamination certificate or in better form for appeal. Otherwise, they are not approved for entry. See MPEP § 714.12 and § 714.13. Thus, an amendment after final rejection should be denied entry if some point necessary for a complete response under 37 CFR 1.113 was omitted, even where the omission was through an apparent oversight or inadvertence. Where a submission after final Office action (e.g., an amendment filed under 37 CFR 1.116) does not place the proceeding in condition for issuance of a reexamination certificate, the period for response continues to run until a response under 37 CFR 1.113 (i.e., a Notice of Appeal or an amendment that places the proceeding in condition for issuance of a reexamination certificate) is filed. Where a submission after appeal (e.g., an amendment filed under 37 CFR 41.33) does not place the proceeding in condition for issuance of a reexamination certificate, the period for filing an appeal brief continues to run until an appeal brief or an amendment that places the proceeding in condition for issuance of a reexamination certificate is filed. The nature of the omission is immaterial. The examiner cannot give the patent owner a time period to supply the omission.

The examiner has the authority to enter the response, withdraw the final Office action, and issue a new Office action, which may be a final Office action, if appropriate, or an action closing prosecution in an otherwise allowable application under Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11 (Comm’r Pat. 1935), if appropriate. This course of action is within the discretion of the examiner. However, the examiner should recognize that substantial patent rights will be at issue with no opportunity for the patent owner to refile under 37 CFR 1.53(b) or 1.53(d) in order to continue prosecution nor to file a request for continued examination under 37 CFR 1.114. Thus, where the time has expired for response and the amendment submitted would place the proceeding in condition for issuance of a reexamination certificate except for an omission through apparent oversight or inadvertence, the examiner should follow this course of action.

2266.02   Examiner Issues Notice of Defective Paper in Ex Parte Reexamination [R-11.2013]

Even if the substance of a submission is complete, the submission can still be defective, i.e., an “informal submission.” Defects in the submission can be, for example:

  • (A) The paper filed does not include proof of service;
  • (B) The paper filed is unsigned;
  • (C) The paper filed is signed by a non-practitioner who is not of record;
  • (D) The amendment filed by the patent owner does not comply with 37 CFR 1.530(d)-(j);
  • (E) The amendment filed by the patent owner does not comply with 37 CFR 1.20(c)(3) and/or (c)(4).

Where a submission made prior to final rejection is defective (informal), form PTOL-475 is used to provide notification of the defects present in the submission. In many cases, it is only necessary to check the appropriate box on the form and fill in the blanks. However, if the defect denoted by one of the entries on form PTOL-475 needs further clarification (such as the specifics of why the amendment does not comply with 37 CFR 1.530(d)-(j)), the additional information should be set forth on a separate sheet of paper which is then attached to the form.

The defects identified above as (A) through (E) are specifically included in form PTOL-475. If the submission contains a defect other than those specifically included on the form, the “other” box on the form is to be checked and the defect explained in the space provided for the explanation. For example, a response might be presented on easily erasable paper, and thus, a new submission would be needed.

A time period of one month or thirty days, whichever is longer, from the mailing date of the PTOL-475 letter will be set in form PTOL-475 for correction of the defect(s). Extension of time to correct the defect(s) may be requested under 37 CFR 1.550(c). If, in response to the notice, the defect still is not corrected, the submission will not be entered. If the failure to comply with the notice results in a patent owner failure to file a timely and appropriate response to any Office action, the prosecution of the reexamination proceeding generally will be terminated under 37 CFR 1.550(d).

If a defective (informal) response to an examiner’s action is filed after final rejection (before the expiration of the permissible response period), the examiner should not issue a form PTOL-475 notification to the patent owner. Rather, an advisory Office action (form PTOL-467) should be issued with an explanation of the defect (informality). The time period set in the final rejection continues to run and is extended by 1 month if the response is the first response after the final rejection in accordance with the guidelines set forth in MPEP § 2265. See also MPEP § 2272.

Form PTOL-475 Notice of Defective Paper in Ex Parte ReexaminationForm PTOL-475 Notice of Defective Paper in Ex Parte Reexamination

2266.03   Service of Papers [R-11.2013]

37 C.F.R. 1.510   Request for ex parte reexamination.

*****

  • (b) Any request for reexamination must include the following parts:

*****

  • (5) A certification that a copy of the request filed by a person other than the patent owner has been served in its entirety on the patent owner at the address as provided for in § 1.33(c). The name and address of the party served must be indicated. If service was not possible, a duplicate copy must be supplied to the Office

*****

37 C.F.R. 1.550   Conduct of ex parte reexamination proceedings.

*****

  • (f) The reexamination requester will be sent copies of Office actions issued during the ex parte reexamination proceeding. After filing of a request for ex parte reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party in the reexamination proceeding in the manner provided by § 1.248. The document must reflect service or the document may be refused consideration by the Office.

*****

Any paper filed with the Office, i.e., any submission made, in a third party requested reexamination by either the patent owner or the third party requester, must be served on every other party in the reexamination proceeding.

As proof of service, the party submitting the paper to the Office must attach a certificate of service to the paper. It is required that the name and address of the party served, and the method of service be set forth in the certificate of service. Further, a copy of the certificate of service must be attached with the copy of the paper that is served on the other party.

Any paper for which proof of service is required, which is filed without proof of service, may be denied consideration. Where no proof of service is included, the Central Reexamination Unit should immediately contact the party making the submission by telephone to see whether the indication of proof of service was inadvertently omitted from the submission but there was actual service.

If service was in fact made, the party making the submission should be advised to submit a supplemental paper indicating the manner and date of service. The Central Reexamination Unit should enter the submission for consideration, and annotate the submission with:

“Service confirmed by [name of person] on [date]”

If no service was made, or the party making the submission cannot be contacted where an effort to do so was made, the submission is placed in the reexamination file and normally is not considered. Where the submission is not considered because of a service defect, the submission is added to the IFW file history as an unentered paper with a “N/E” notation, along with a brief annotation as to why the paper is not entered. The submission itself shall be annotated with “no service,” which also can be crossed through if the appropriate service is later made.

If the party making the submission cannot be contacted, a Notice of Defective Paper (PTOL-475), giving 1 month or 30 days, whichever is longer, to complete the paper, with a supplemental paper indicating the manner and date of service, will be mailed to the party.

If it is known that service of a submission was not made, notice of the requirement for service of copy is given (to the party that made the submission), and a 1-month or 30 days, whichever is longer, time period is set. Form paragraph 22.15 may be used to give notice.

¶ 22.15    Lack of Service - 37 CFR 1.550(f)

The submission filed on [1] is defective because it appears that the submission was not served on the [2]. After the filing of a request for reexamination by a third party requester, any document filed by either the patent owner or the third party requester must be served on the other party (or parties where two or more third party requester proceedings are merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248. See 37 CFR 1.550(f).

It is required that service of the submission be made, and a certificate of service be provided to the Office within a shortened statutory period of ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If service of the submission is not timely made, the submission may be denied consideration.

Examiner Note:

  • 1. This paragraph may be used where a submission to the Office was not served as required in a third party requester reexamination proceeding.
  • 2. In bracket 2, insert --patent owner-- or --third party requester--, whichever is appropriate.

The cover sheet to be used for mailing the notice will be form PTOL-473.

The failure of a party to serve the submission in response to the notice will have the following consequences:

  • (A) For a patent owner statement or a third party reply, the submission may be refused consideration by the Office. Where consideration is refused, the submission will not be addressed in the reexamination proceeding other than to inform parties of the lack of consideration thereof;
  • (B) For a patent owner response to an Office action, the response may be refused consideration by the Office. Where consideration of a response is refused, the prosecution of the proceeding will be terminated in accordance with 37 CFR 1.550(d), unless the patent owner has otherwise completely responded to the Office action.

See MPEP § 2220 as to the initial third party request.

See MPEP § 2249 as to the patent owner statement.

See MPEP § 2251 as to third party reply.

See MPEP § 2266 as to patent owner responses to an Office action.

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Last Modified: 03/27/2014 10:10:34