2671.02 Examiner Issues Action Closing Prosecution (ACP) [R-07.2015]
37 CFR 1.949 Examiner’s Office action closing prosecution in inter partes reexamination.
Upon consideration of the issues a second or subsequent time, or upon a determination of patentability of all claims, the examiner shall issue an Office action treating all claims present in the inter partes reexamination, which may be an action closing prosecution. The Office action shall set forth all rejections and determinations not to make a proposed rejection, and the grounds therefor. An Office action will not usually close prosecution if it includes a new ground of rejection which was not previously addressed by the patent owner, unless the new ground was necessitated by an amendment.
Although an Action Closing Prosecution (ACP) has many attributes similar to a “final rejection” made in an ex parte reexamination proceeding or in a non-provisional application, it is not a final action, and, as such, it cannot be appealed from. An appeal can only be taken after the examiner issues a Right of Appeal Notice (RAN). See MPEP § 2673.02.
Before an ACP is in order, issues should be clearly developed. When all claims are found patentable in the first action, the examiner will, at that point, issue an ACP, since the patent owner has nothing to respond to. Otherwise, it is intended that the second Office action in the reexamination proceeding will ordinarily be an ACP. The criteria for issuing an ACP is analogous to that set forth in MPEP § 706.07(a) for making a rejection final in an application.
All parties to the reexamination should recognize that a reexamination proceeding may result in the final cancellation of claims from the patent and that the patent owner does not have the right to 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, and the patent owner cannot file an inter partes reexamination request (see MPEP § 2612). Complete and thorough actions by the examiner, coupled with complete responses by the patent owner and complete comments by the third party requester (including early presentation of evidence under 37 CFR 1.131(a) or 1.132) will go far in reaching a desirable early termination of the prosecution of the reexamination proceeding.
In making an ACP, (A) all outstanding grounds of rejection of record should be carefully reviewed, (B) all outstanding determinations of patentability (decisions to not make a proposed rejection) of record should be carefully reviewed, and (C) any grounds of rejection relied upon and any determinations of patentability relied upon should be reiterated.
I. CONTENT
The grounds of rejection and determinations of patentability must (in the ACP) be clearly developed to such an extent that the patent owner and the third party requester may readily judge the advisability of filing comments after an ACP pursuant to 37 CFR 1.951(a) and (b), respectively.
The ACP should address all issues as to the patents or printed publications. The ACP will clearly set forth each rejection proposed by the third party requester that the examiner refuses to adopt. Reasons why the rejection proposed by the third party requester is not appropriate (i.e., why the claim cannot be rejected under the ground proposed by the third party requester) must be clearly stated for each rejection proposed by the third party requester that the examiner refuses to adopt. Comprehensive reasons for patentability must be given for each determination favorable to patentability of claims. See MPEP § 1302.14 for examples of suitable statements of reasons for allowance.
Where a previous Office action contains a complete statement of a ground of rejection or of reasons for not making a proposed rejection, the ACP may incorporate by reference that statement. In any event, the ACP must also include a rebuttal of any arguments raised in the patent owner’s response and must reflect consideration of any comments made by the third party requester.
II. REVIEW OF AMENDATORY MATTER UNDER 35 U.S.C. 112
Where an amendment has been submitted in the patent owner’s response, the amendatory matter (i.e., matter revised or newly added) should be reviewed for compliance with 35 U.S.C. 112. As to the content of the patent that has not been revised, a review based upon 35 U.S.C. 112 is not proper in reexamination, and no such review should be made.
III. WITHDRAWAL OF REJECTION
Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the ACP 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 the ACP and a Right of Appeal Notice (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). Where the examiner withdraws a ground of rejection previously proposed by the third party requester, the examiner should treat the issue as rejection proposed by the third party requester that the examiner refuses to adopt.
IV. ISSUES NOT WITHIN SCOPE OF REEXAMINATION
If questions not within the scope of reexamination proceedings (for example, questions of patentability based on public use or on sale, conduct issues, abandonment under 35 U.S.C. 102(c) have been newly raised by the patent owner response or the third party requester comments being addressed by the ACP, the existence of such questions will be noted by the examiner in the ACP, using form paragraph 26.03.
¶ 26.03 Issue Not Within Scope of Inter Partes Reexamination
An issue has been raised in the present reexamination proceeding that is not within the scope of inter partes reexamination proceedings. [1]. This issue will not be considered in the present proceeding. 37 CFR 1.906(c).
Examiner Note:
- 1. In bracket 1, identify the issues.
- 2. This paragraph may be used either when the patent owner or the third party requester raises issues such as (but not limited to) public use or on sale, conduct, or abandonment of the invention. Such issues should not be raised independently by the patent examiner.
V. COVER SHEET
Form PTOL-2065 should be used as the cover sheet for the ACP. Since the Office action is responsive to a patent owner response, and possibly the third party requester comments, the space on the PTOL-2065 for the date of the communication(s) to which the Office action is responsive to should be filled in. Generally, the patent owner is given one month to respond to the action, and thus “One” should be inserted in the appropriate space for such.
VI. SIGNATORY AUTHORITY
As with all other Office correspondence on the merits in a reexamination proceeding, the ACP must be signed by a primary examiner.
VII. CONCLUDING PARAGRAPHS
The ACP should conclude with the following form paragraphs:
¶ 26.07 Action Closing Prosecution
This is an ACTION CLOSING PROSECUTION (ACP); see MPEP § 2671.02.
- (1) Pursuant to 37 CFR 1.951(a), the patent owner may once file written comments limited to the issues raised in the reexamination proceeding and/or present a proposed amendment to the claims which amendment will be subject to the criteria of 37 CFR 1.116 as to whether it shall be entered and considered. Such comments and/or proposed amendments must be filed within a time period of 30 days or one month, whichever is longer, from the mailing date of this action. Where the patent owner files such comments and/or a proposed amendment, the third party requester may once file comments under 37 CFR 1.951(b) responding to the patent owner’s submission within 30 days from the date of service of the patent owner’s submission on the third party requester
- (2) If the patent owner does not timely file comments and/or a proposed amendment pursuant to 37 CFR 1.951(a), then the third party requester is precluded from filing comments under 37 CFR 1.951(b).
- (3) Appeal cannot be taken from this action, since it is not a final Office action.
¶ 26.73 Correspondence and Inquiry as to Office Actions
All correspondence relating to this inter partes reexamination proceeding should be directed:
By EFS: Registered users may submit via the electronic filing system EFS-Web, at https://efs.uspto.gov/efile/ myportal/efs-registered.
By Mail to: Mail Stop Inter Partes Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-9900
Central Reexamination Unit
By hand: Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except for a request for reexamination and a corrected or replacement request for reexamination) will be considered timely filed if (a) it is transmitted via the Office’s electronic filing system in accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece of correspondence stating the date of transmission, which is prior to the expiration of the set period of time in the Office action.
Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to the Central Reexamination Unit at telephone number (571) 272-7705.
Examiner Note:
- 1. This form paragraph is used at the end of inter partes reexamination communications.
- 2. The examiner having charge of the proceeding is not to be contacted by the parties to the proceeding.
VIII. PROCESS OF PREPARING THE ACTION
After an examiner has determined that the reexamination proceeding is ready for the ACP action, the examiner will set up a panel review conference as per MPEP § 2671.03, to discuss the issuance of the ACP action. The examiner may prepare the action after the conference, or may prepare the action prior to the conference and revise it as needed after the conference.
If the conference confirms the examiner’s preliminary decision to reject and/or allow the claims and issue an ACP, the proposed ACP action shall be issued and signed by the examiner, with the two other conferees initialing the action (as conferee) to indicate their presence in the conference. When ready, the examiner’s action given to the CRU SPRS and/or technical support staff for processing and mailing.
IX. WHERE PATENT OWNER FAILS TO RESPOND AND CLAIMS HAVE BEEN FOUND PATENTABLE
Where the patent owner fails to respond to the first Office action (or any subsequent Office action which is prior to ACP) and claims have been found patentable in the first action (or a subsequent action), the examiner will issue an ACP (see MPEP § 2671). The ACP should repeat all determinations of patentability (decisions to not make a proposed rejection) applicable to the patentable claims and incorporate by reference the reasons for each determination (the reasons for not making each proposed rejection). If the examiner realizes that more explanation would be helpful, the examiner should include it. Since the patent owner failed to respond to the first Office action (or a subsequent action), the proceeding will be limited to the claims found patentable and to new claims which do not expand the scope of the claims found patentable (if the new claims have an entry right or are otherwise entered at the option of the examiner). See MPEP § 2666.10. A panel review conference pursuant to MPEP § 2671.03 will be held.
X. ART CITED BY PATENT OWNER DURING PROSECUTION
Where art is submitted in a prior art citation under 37 CFR 1.501 and/or 37 CFR 1.555 (an IDS filed in a reexamination is construed as a prior art citation) and the submission is not accompanied by a statement similar to that of 37 CFR 1.97(e), the examiner may use the art submitted and make the next Office action an ACP action whether or not the claims have been amended, provided that no other new ground of rejection is introduced by the examiner based on art not cited in the prior art citation. See MPEP § 706.07(a).