2666.05 Third Party Comments After Patent Owner Response [R-07.2015]

I. TIMELINESS

A third party requester may once file written comments on any patent owner response to an Office action, during the examination stage of an inter partes reexamination proceeding. The third party requester comments must be filed within a period of 30 days from the date of service of the patent owner’s response on the third party requester. 37 CFR 1.947. The date that the Office receives the patent owner’s response has no bearing on the time period for which the third party requester must file the comments.

The certificate of mailing and the certificate of transmission procedures (37 CFR 1.8), and the Priority Mail Express® mailing procedure (37 CFR 1.10), may be used to file comments. Any comments by the third party requester must be served upon the patent owner in accordance with 37 CFR 1.248. See also MPEP § 2666.06.

If the third party requester comments are filed after 30 days from the date of service of the patent owner’s response on the third party requester, the comments will not be considered. See 37 CFR 1.957(a).

The following special circumstance is to be noted. It may happen that a patent owner files a response to an Office action and the page length of the response exceeds the page length set by 37 CFR 1.943(b). Accompanying the response is a petition under 37 CFR 1.183 requesting waiver of the 37 CFR 1.943(b) requirement. Until such a 37 CFR 1.183 petition to waive the page length is granted, or a page length compliant response is filed (if the 37 CFR 1.183 petition is not granted), the patent owner response is incomplete. Pursuant to MPEP § 2666.40, “[a]fter the owner completes the response, the examiner will wait two months from the date of service of the patent owner’s completion of the response, and then take up the case for action, since the 30 days for the third party requester comments on the response as completed will have expired by that time. The third party requester may file comments on the response as completed…The response as completed is treated as a new response on-the-merits to the Office action; thus, the third party requester is entitled to file comments and has 30 days to do so.” Based on the above, at the time the 37 CFR 1.183 petition is granted, the patent owner response becomes complete with its content being set in place, and the requester has 30 days from the date of the decision granting the 37 CFR 1.183 petition to file a comment paper pursuant to 37 CFR 1.947. However, if the Office finds that patent owner’s response is compliant with the page length set by 37 CFR 1.943(b) and that a waiver under 37 CFR 1.183 is not necessary, requester will not be granted additional time to submit comments as the 30 day time period is set by statute. Therefore, requester is advised to file comments within 30 days from the date of service of patent owner’s response to preserve their right to comment. If the comments exceed the page length set by 37 CFR 1.945(b), then the comments should be accompanied by a petition under 37 CFR 1.183 requesting waiver of the page length requirement of 37 CFR 1.948(b) to the extent that entry of the accompanying comment paper is permitted. Alternatively, the comments could request that if the patent owner’s petition under 37 CFR 1.183 is granted, then the accompanying comments should not be entered, and the requester’s comment period be re-set to run 30 days from the date the patent owner filed a proper response (e.g., the mailing date of the decision granting patent owner’s petition under 37 CFR 1.183 or submission of a corrected response).

When the requester takes issue with the page length of the patent owner’s response and the patent owner has not filed a petition requesting waiver of the page length requirement, the requester may file a 37 CFR 1.181 petition to expunge an improper paper that was entered into the IFW record, accompanyingits comments on patent owner’s response (which must be filed within 30 days from the date of service of the response). The 37 CFR 1.181 petition may request that (A) if the patent owner response is expunged, then the accompanying comments should not be entered, and the requester’s comment period be re-set to run 30 days from the date of service of a corrected patent owner response, and (B) if the petition to expunge is denied/dismissed, then the comments accompanying the petition should be entered and that 37 CFR 1.943(b) be waived to the extent that entry of the accompanying comment paper is permitted.

II. CONTENT

The third party requester comments must be directed to points and issues covered by the Office action and/or the patent owner’s response. The written comments filed by a third party requester should specify the issues and points in the Office action or the patent owner’s response to which each comment is directed. Thus, the third party requester should (1) set forth the point or issue, (2) state the page of the Office action and/or the patent owner response where the point or issue is recited, and (3) then present the third party requester’s discussion and argument as to the point or issue. If this is not done by the third party requester, the comments should not be held defective if the examiner can ascertain that all of the comments filed by the third party requester are directed to the issues and points in the Office action and/or the patent owner’s response.

Third party requester comments are limited to issues covered by the Office action or the patent owner’s response. New prior art can be submitted with the comments only where the prior art (A) is necessary to rebut a finding of fact by the examiner, (B) is necessary to rebut a response of the patent owner, or (C) for the first time became known or available to the third party requester after the filing of the request for inter partes reexamination.

As to item (A) above, 37 CFR 1.948(a)(1) permits the requester to provide new prior art rebutting the examiner’s interpretation/finding of what the art of record shows. However, a statement in an Office action that a particular claimed feature is not shown by the prior art of record (which includes references that were cited by requester) does NOT permit the requester to then cite new art to replace the art originally advanced by requester. Such a substitution of a new art for the art of record is not a rebuttal of the examiner’s finding that a feature in question is not taught by the art of record. Rather, such a substitution would amount to a rebuttal of a finding that a feature in question is not taught by any art in existence. A finding that the feature in question is not taught by any art in existence could not realistically be made for the reexamination proceeding, since the proceeding does not include a comprehensive validity search, and such was not envisioned by Congress as evidenced by the 35 U.S.C. 314(c) mandate that reexamination proceedings are to be conducted in the Office with special dispatch.

As to item (B) above, 37 CFR 1.948(a)(2) permits the requester to provide a new proposed rejection, where such new proposed rejection is necessitated by patent owner’s amendment of the claims. Analogous to item (A) above, a statement by the patent owner that a particular claimed feature is not shown, or is not obvious, by the prior art of record does NOT permit the requester to then (for unamended claims) cite newly-presented prior art to show the particular claimed feature, or otherwise propose any new rejection to replace the originally advanced proposed rejections in the reexamination request. Such a substitution of a newly proposed rejection for the original proposed rejection (for the unamended claims) is not a rebuttal of the patent owner’s statement asserting that a feature in question is not taught, or is not obvious, by the art of record. Rather, to rebut the patent owner’s statement in accordance with 37 CFR 1.947 and 1.948(a)(2), the requester may cite newly presented art directed to supporting the originally advanced proposed rejection(s) made in the request for reexamination, and include the new art as a supporting reference in the existing rejection. For example, the newly presented art may provide evidence that the modification of the reference(s) in the originally advanced proposed rejection would be obvious.

As to item (C) above, prior art submitted under 37 CFR 1.948(a)(3) must be accompanied by a statement that explains the circumstances as to when the prior art first became known or available to the third party requester, including the date and manner that the art became known or available, and why it was not available earlier. The submission must also include a discussion of the pertinency of each reference to the patentability of at least one claim. It is to be noted that entry of prior art submitted under 37 CFR 1.948(a)(3) does not, in and of itself, allow for a proposed rejection based on that art.

In summary, newly presented patents and printed publications (art) may be cited only in accordance with items (A) – (C) above. A newly proposed rejection based on the newly presented art, or on art already of record, may only be presented if the patent owner has presented an amendment to the patent claims, or proposed new claims, which necessitated the newly proposed rejection. The third party requester must present each newly proposed rejection in compliance with the guidelines set forth in MPEP § 2617, since any such new proposed rejection stands on the same footing as a proposed rejection presented with the request for reexamination, and is treated the same way as to future Office actions and any appeal. See MPEP § 2617 as to the required discussion of the pertinency of each reference to the patentability of at least one claim presented for the newly submitted prior art. An explanation pursuant to the requirements of 35 U.S.C. 311 of how the art is applied is no less important at this stage of the prosecution, than it is when filing the request. (It is to be understood that a rejection may be “proposed” by requester if the examiner withdrew that rejection in a prior Office action, and this is the first time requester has had an entry right to make it a “proposed” rejection; however, such is not being discussed here, since, although it is “newly proposed,” it is an old rejection to the case, based on art already of record).

Where the third party requester written comments are directed to matters other than issues and points covered by the Office action or the patent owner’s response, or where the prior art submitted with the comments does not satisfy at least one of (A) – (C) above, the written comments are improper. If the written comments are improper, the examiner should return the written comments (the entire paper) with an explanation of what is not proper; if the comments have been scanned into the Image File Wrapper (IFW) for the reexamination proceeding prior to the discovery of the impropriety, they should be expunged from the record, with notification being sent to the third party requester. If the comments were filed prior to the mailing of an Action Closing Prosecution (e.g., in response to a non-final Office action), the notification to the third party requester may provide a time period of fifteen (15) days for the third party requester to rectify and refile the comments. If, upon the second submission, the comments are still not proper, the comments will be returned to third party requester with an explanation of what is not proper, and at that point the comments can no longer be resubmitted. The loss of right to submit further comments applies only to the patent owner response at hand. See MPEP § 2666.20. To the extent that 37 CFR 1.947 provides that the third party requester “may once” file written comments, that provision is hereby waived to the extent of providing the third party requester the one additional opportunity to remedy a comments paper containing merits-content that goes beyond what is permitted by the rules; 37 CFR 1.947 is not waived to provide any further opportunity in view of the statutory requirement for special dispatch in reexamination.

Any replacement comments submitted in response to the notification must be strictly limited to (i.e., must not go beyond) the comments in the original (returned) comments submission. No comments that add to those in the returned paper will be considered for entry.

The above practice of giving the third party requester a time period of 15 days to rectify and refile comments that are responsive but go beyond the regulatory requirements to the extent discussed above should not be confused with the situation where the third party requester files comments that are late (untimely), or such comments are “inappropriate” within the meaning of 37 CFR 1.957(a) and the time for response has expired. Where the comments are late or inappropriate, an additional 15 days is not given; rather, the comments must be refused consideration pursuant to 37 CFR 1.957(a).

The third party requester is not permitted to file further papers to supplement the third party requester’s written comments. Any such improper supplemental comments will not be considered, and will be returned. A third party requester may, however, file written comments to any supplemental response filed by the patent owner.

See MPEP § 2666.20 for the situation where a third party requester elects not to file written comments on a patent owner response.

Where the patent owner does not respond to an Office action, the third party requester is prohibited from filing written comments under 37 CFR 1.947.

Note that a prior art citation which is proper under 37 CFR 1.501 and is submitted by any party as a separate paper and does not include argument and comments and does not go to the merits of the case, will not be returned, but rather will be stored until the ongoing reexamination proceeding is concluded. See MPEP §§ 2204 and 2206. Also note that prior art returned by the examiner in connection with the third party requester comments as discussed above can be resubmitted as a separate prior art citation under 37 CFR 1.501, and it will be stored until the ongoing reexamination proceeding is concluded.

III. EXAMINER WITHDRAWS A GROUND OF REJECTION

If the examiner withdraws a ground of rejection at any time in the prosecution of the inter partes reexamination proceeding, the following guidelines apply:

• (A) Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the Office action as a decision favorable to patentability with respect to the withdrawn rejection. The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester.” In the event the patent owner fails to respond to all actions leading to the Right of Appeal Notice (RAN), including the Action Closing Prosecution (ACP), and a RAN is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability. See 37 CFR 41.61(a)(2). Likewise, where the rejection is first withdrawn in the RAN, there will be no requester opportunity to comment prior to appeal, and the requester may appeal this withdrawal of rejection in the RAN as a final decision favorable to patentability.
• (B) Where the claims have not been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester (e.g., based on patent owner’s argument or evidence submitted), the examiner should treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.
• (C) Generally (subject to the below-stated exception), where the claims have been amended and the examiner withdraws a ground of rejection previously proposed by the third party requester, this is not a refusal of the examiner to adopt the rejection proposed by the requester, since the rejection was never proposed as to the amended claims. The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a “rejection proposed by the third party requester” as to the amended claims. In the event the patent owner fails to respond to all actions leading to the RAN, including the ACP, and a RAN is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability. See 37 CFR 41.61(a)(2). Likewise, where the rejection is first withdrawn in the RAN, there will be no requester opportunity to comment prior to appeal, and the requester may appeal this withdrawal of rejection in the RAN as a final decision favorable to patentability.
• (D) If a claim is amended merely to include a dependent claim that was previously subjected to a proposed requester rejection, and the examiner withdraws that ground of rejection as to the newly amended claim, such would be a refusal to adopt the third party requester’s previously proposed rejection of the dependent claim. Thus, the examiner would treat the issue as a rejection proposed by the third party requester that the examiner refuses to adopt.