2673 Examiner Consideration of Submissions After ACP and Further Action [R-07.2015]
I. WHEN THE CASE IS TAKEN UP FOR ACTION
The patent owner is given 30 days or one month, whichever is longer, to make the 37 CFR 1.951(a) submission after Action Closing Prosecution (ACP). If no patent owner submission under 37 CFR 1.951(a) is received after two months from the ACP, the examiner will take up the case for action. The case should be acted on promptly, in accordance with the statutory requirement for "special dispatch within the Office" (35 U.S.C. 314(c) ). Where a patent owner obtained an extension of time under 37 CFR 1.956, the examiner will wait until the extended time plus one month expires before taking up the case for action.
If the patent owner submission under 37 CFR 1.951(a) is received, the third party requester will then have 30 days from service of the patent owner’s submission to file the third party requester’s 37 CFR 1.951(b) submission. If no third party requester submission under 37 CFR 1.951(b) is received after two months from the date of service of the patent owner’s 37 CFR 1.951(a) submission, the examiner will take up the case for action.
Where both the 37 CFR 1.951(a) and (b) submissions have been received, the case should be taken up for action as soon as possible.
II. OPTIONS AS TO WHICH ACTION TO ISSUE
- (A) Right of Appeal Notice - Where no 37 CFR 1.951(a) submission has been filed by the patent owner, or where a submission under 37 CFR 1.951(a) (and 37 CFR 1.951(b) ) has been filed and the examiner will not modify his/her position; the examiner should issue a Right of Appeal Notice (RAN). See MPEP § 2673.02. If the patent owner’s submission included a proposed amendment, the RAN will indicate whether or not it was entered.
Where a submission has been filed under 37 CFR 1.951(a) (or 37 CFR 1.951(b) ) and that submission is incomplete or is defective, the examiner should notify the parties, in the RAN, that the submission has not been considered, and that no additional opportunity is available to correct the defect(s) in the submission, because 37 CFR 1.951(a) and (b) provide that comments may only be filed "once."
- (B) Office action reopening of prosecution - See MPEP § 2673.01 for a discussion of when the examiner should issue an action reopening prosecution.
III. ACTION TAKEN BY EXAMINER
It should be kept in mind that a patent owner cannot, as a matter of right, amend claims rejected in the ACP, add new claims after an ACP, nor reinstate previously canceled claims. A showing under 37 CFR 1.116(b) is required and will be evaluated by the examiner for all proposed amendments after the ACP, except where an amendment merely cancels claims, adopts examiner’s suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner.
Where the entry of the proposed amendment (after the ACP) would result in any ground of rejection being withdrawn or any additional claim indicated as patentable, the proposed amendment generally raises new issues requiring more than cursory review by the examiner. The examiner would need to indicate new grounds for patentability for any claim newly found patentable and/or the reason why the rejection was withdrawn and would also need to deal with any third party requester’s comments on the proposed amendment (made pursuant to 37 CFR 1.951(b) in response to owner’s proposed amendment). Thus, the examiner is not required to enter the proposed amendment.
In view of the fact that the patent owner cannot continue the proceeding by refiling under 37 CFR 1.53(b) or 1.53(d) nor by filing a Request for Continued Examination under 37 CFR 1.114, the examiner should consider the feasibility of entering a proposed amendment paper, where the entirety of the amendment would result only in an additional claim (or claims) being indicated as patentable. The examiner is encouraged to enter such an amendment unless the entry would cause an "undue burden" on the examiner. Where the examiner does not enter the amendment, the examiner should explain the "undue burden." Where the examiner does enter the amendment, see MPEP § 2673.01 as to whether a Right of Appeal Notice (RAN) can be issued or whether there is a need to reopen prosecution.
Where multiple amendments are submitted after the ACP, all amendments except for the first one will be returned without consideration, since they are improper submissions. Thus, if prosecution is reopened, only the first amendment will be present for entry.
An amendment filed at any time after the ACP and prior to the RAN may be entered (where appropriate for entry). An amendment filed after the RAN will not be entered at all, in the absence of a grantable petition under 37 CFR 1.183 because 37 CFR 1.953(c) prohibits an amendment after the RAN in inter partes reexamination. If the examiner wishes to have the patent owner provide an amendment after the RAN, the examiner can reopen prosecution, enter the amendment, and issue a new ACP.
Where a proposed amendment is not entered, the examiner will provide a detailed explanation of the reasons for not entering the proposed amendment. For example, if the claims as amended would present a new issue requiring further consideration or search, the new issue should be identified, and an explanation provided as to why a new search is necessary and/or why more than nominal consideration is necessary.
Affidavits submitted after an ACP are subject to the same treatment as amendments submitted after an ACP. This is analogous to the treatment of affidavits submitted after a final rejection in an application. See In re Affidavit Filed After Final Rejection, 152 USPQ 292, 1966 C.D. 53 (Comm’r Pat. 1966).
The parties to the reexamination will be notified in the RAN, or the Office action issued in lieu of the RAN (e.g., action reopening prosecution), as to whether the proposed amendment will be entered or will not be entered.