2666.30 Submission Not Fully Responsive to Non-final Office Action [R-07.2015]

A response by the patent owner will be considered not fully responsive to a non-final Office action where a bona fide response to an examiner’s Office action is filed before the expiration of the permissible response period 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 some requirement, has been omitted). In this situation, the prosecution of the reexamination proceeding should not be terminated. Rather, the examiner may, pursuant to 37 CFR 1.957(d), treat the patent owner submission which is not fully responsive to an Office action by:

• (A) waiving the deficiencies (if not serious) in the response and acting on the patent owner submission;
• (B) treating the amendment/response as an incomplete response to the Office action and notifying the patent owner (via a written notification action pursuant to 37 CFR 1.957(d)) that the response must be completed within the period for response set in the notification action (or within any extension pursuant to 37 CFR 1.956)) to avoid termination of the prosecution (pursuant to 37 CFR 1.957(b)) or limiting prosecution of the claims to those found patentable (pursuant to 37 CFR 1.957(c)).

Discussion of Option (A). Where a patent owner submission responds to the rejections, objections, or requirements in an 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 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addressed by the patent owner submission, or the action may indicate that such rejection, objection, or requirement is no longer applicable.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 clearly indicate what is needed. 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 Office action).

Discussion of Option (B). Where the 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 the correction needed, and given a new time period for response (usually one month) pursuant to 37 CFR 1.957(d). The patent owner must then supply the omission within the new time period for response or any extensions under 37 CFR 1.956 thereof to avoid termination of the prosecution (pursuant to 37 CFR 1.957(b)) or limiting prosecution of the claims to those found patentable (pursuant to 37 CFR 1.957(c)). In this situation, the requester has thirty days from the date of service of patent owner’s corrected or supplemental response to file comments, unless only a fee (other than an excess claims fee to support an amendment) is needed to complete the response. See MPEP § 2666.40 for a detailed discussion.

Form paragraph 26.06 may be used where option (B) is employed by the examiner to obtain correction of the deficiency.

I. NO NOTIFICATION BY TELEPHONE

It should be noted that the patent owner cannot simply be notified by telephone that the omission must be supplied within the remaining time period for response. This notification would be an interview, and interviews are prohibited in inter partes reexamination. 37 CFR 1.955.

II. FURTHER DISCUSSION

The practice of giving the patent owner a time period to supply an omission in a bona fide response (pursuant to 37 CFR 1.957(d)) does not apply where there has been a deliberate omission of some necessary part of a complete response. It is applicable only when the missing matter or lack of compliance is considered by the examiner as being “inadvertently omitted” pursuant to 37 CFR 1.957(d). Once an inadvertent omission is brought to the attention of the patent owner, the question of inadvertence no longer exists. Therefore, a second written notification action giving another new (one month) time period to supply the omission would not be appropriate. However, if the patent owner’s response to the notification of the omission raises a different issue of a different inadvertently omitted matter, a second written notification 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.