When an examiner can successfully pass an office action
Under the USPTO’s compact prosecution policy, a second office action can be final in most circumstances. The circumstances are established in § 706.07 (a) of the Patent Examination Procedure Manual (MPEP), entitled Final rejection, when appropriate in the second action, which establishes:
According to current practice, second or subsequent actions on the merits will be final, except when the examiner introduces a new reason for rejection that is not necessary for the applicant’s amendment of the claims, nor is it based on the information presented in a statement of disclosure of information presented during the period established in 37 CFR 1.97 (c) with the rate established in 37 CFR 1.17 (p).
The MPEP, at §706.07 (d), also provides a remedy when a final Office Action is issued and the conditions of §706.07 (a) are not met. That section, titled Final Rejection, Withdrawal of, Premature, provides:
If, at the request of the reconsideration applicant, the lead examiner considers the final rejection to have been premature, he must withdraw the purpose of the rejection. The purpose of the Office action should be withdrawn while the application is still pending. The examiner cannot withdraw the final rejection once the application has been abandoned.
The following are some examples of successful Requests to Withdraw the purpose, based on various circumstances in which the purpose was inappropriate.
Examples of requests to withdraw firmness
This first example was presented in response to a final action by the Office that mischaracterized a claim.
REQUEST FOR WITHDRAWAL OF PURPOSE
Applicants are receiving a final Office Action mailed March 13, 2007 on this application. Applicants respectfully request that the purpose of the Office Action in question be withdrawn because the Office has expressly and erroneously misinterpreted the claims and, as a result, has not taken into account the patentability arguments presented in the most recently submitted Amendment. Furthermore, the express and incorrect characterization of the claim by the Office prevents the Office Action from addressing the merits of the argument presented in relation to one of the independent claims presented.
In support of this application, the applicants declare the following:
1. On December 20, 2006, the Requesters submitted an Amendment presenting independent claim 15 with the following claim recitation:
a disc protector disposed on an outer edge of the disc damper …
2. In response to the Amendment filed on December 20, 2006, the Office mailed a final Office Action on March 13, 2007, explaining that all rejections were upheld because:
Applicant argues limitations that are not in claim language “because applicants only claim” … arranged / arranged along an outer edge of the disk damper … Applicant does not assert “… in an outer edge of the disc damper. “
(Office action, page 3).
3. The statement in paragraph 2 mentioned above is manifestly incorrect and lacks factual basis. In fact, Applicants’ independent claim 15 expressly recites “in”.
4. Section 707.07 (f) of the Patent Examination Procedure Manual (MPEP) instructs that:
When the applicant experiences a rejection, the examiner must, if he repeats the rejection, take note of the applicant’s argument and respond to the merits thereof.
5. The Office reiterated the rejection of all claims. However, the Office did not “take note” of the applicants ‘argument nor did it “respond to the merits” of the applicants’ argument. Therefore, the Office’s final Action is deficient because the Office did not meet the requirements of MPEP § 707.07 (f).
6. Furthermore, it is presented that the pending Office Action has taken an inappropriate and unreasonable interpretation of the terms of the claim. And, for this additional reason, the Requesters respectfully submit that the pending Office Action is inappropriate.
In view of the foregoing, the Requesters respectfully request the withdrawal of the purpose of the pending Office Action and also request a new, non-final Office Action that addresses the merits of the claim 15.
This second example was submitted in response to a final action by the Office that first rejected features that had previously been submitted for review.
REQUEST FOR WITHDRAWAL OF PURPOSE
The applicant is receiving a final Office Action mailed on December 25, 2007 on this application. The applicant respectfully submits that the purpose of the Office Action in question is premature and therefore requests the withdrawal of that purpose, in accordance with Section 706.07 (d) of the Patent Examination Procedure Manual (MPEP) .
Gardens
As the basis for this Application, the Applicant declares the following:
1. Final Office Action rejects independent claim 1 for new reasons. As the Office itself states, “the applicant’s amendment required the new grounds for rejection presented in this Office action.” (Final office action, page 6).
2. The only amendment to independent claim 1 was made in an Amendment filed on October 25, 2008. In that Amendment, the Applicant canceled original claim 2 and modified independent claim 1 to list the characteristics of canceled claim 2.
3. The features of claim 2 that were added to independent claim 1 were previously submitted for your review. Therefore, the added functions might have been rejected in a previous Office action, but they were not.
Section 706.07 (a) of the MPEP specifies the conditions under which the purpose of a second or subsequent action by the Office is appropriate, provided that:
Under current practice, secondary or subsequent actions on the merits will be final, except where the examiner introduces a new reason for denial that is not necessary for the applicant’s amendment of the claims or is based on information submitted in a disclosure statement. of information …
The applicant contends that because the features added to independent claim 1 were submitted for consideration in the previous Office Action, it cannot reasonably be said that the new ground for rejection of claim 1 in the final Office Action required by an amendment to the lawsuit or a Disclosure Statement.
conclusion
The conditions established in § 706.07 (a) of the MPEP have not been met. Accordingly, for that reason alone, as well as in the interest of fairness, the finality of the final Office Action should be withdrawn.
This latter example was presented in response to a final action by the Office that rejected a claim for the first time.
REQUEST FOR WITHDRAWAL OF PURPOSE
The applicant is receiving a final Office Action mailed on December 25, 2007 on this application. The applicant respectfully submits that the purpose of the Office Action in question is premature and therefore requests the withdrawal of that purpose, in accordance with Section 706.07 (d) of the Patent Examination Procedure Manual (MPEP) .
Reasons for request
As the basis for this Application, the Applicant declares the following:
The final action of the Office rejected the independent claim 20.
2. The non-final Office Action that immediately preceded the final Office Action did not reject the independent claim 20.
Section 706.07 (a) of the MPEP specifies the conditions under which the purpose of a second action or a subsequent action by the Office is appropriate, provided that:
Under current practice, secondary or subsequent actions on the merits will be final, except where the examiner introduces a new reason for denial that is not necessary for the applicant’s amendment of the claims or is based on information submitted in a disclosure statement. of information …
4.Applying argues that the rejection of independent claim 20 is a further ground for rejection. Furthermore, because the Applicant did not modify claim 20 or file an IDS between the non-final and final Office actions in question, the conditions required by MPEP § 706.07 (a) still cannot be met.
conclusion
The conditions established in § 706.07 (a) of the MPEP have not been met. Consequently, for that reason alone, as well as the Office’s compact prosecution policy, the purpose of the Office’s final Action should be withdrawn.
Final thoughts
First, I prefer to present these Applications as separate and independent documents. Second, each of the examples in this post is based on a successful Request. They are in no way appropriate for every final action of the Office. But, when the purpose is premature, this type of Request can be an effective remedy.