woodard, emhardt, moriarty, mcnett & henry llp final office action practice kris lynch patent...

Woodard, Emhardt, Moriarty, Woodard, Emhardt, Moriarty, McNett & Henry LLPMcNett & Henry LLP

Final Office Action PracticeFinal Office Action Practice

Kris LynchKris Lynch

Patent Prosecution LuncheonPatent Prosecution Luncheon


Final Rejection DefinedFinal Rejection Defined

• 37 C.F.R. 37 C.F.R. § 1.113-114§ 1.113-114

• MPEP 706.07, 714.12-13MPEP 706.07, 714.12-13

• May be issued on a first actionMay be issued on a first action– continuations having claims drawn to same continuations having claims drawn to same

invention as the parent and would have been invention as the parent and would have been a proper final rejection if entered in parenta proper final rejection if entered in parent

• Typically issued in a second or Typically issued in a second or subsequent actionsubsequent action


Was the Final Action ProperWas the Final Action Proper

• Did the examiner introduce a new ground of rejection that is neither necessitated by applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed after final? MPEP § § 706.07(a)706.07(a)

• If so, request that Examiner withdraw finality of If so, request that Examiner withdraw finality of the office actionthe office action– Example: amendments after final were not entered Example: amendments after final were not entered

but receive a final rejection in a first action in a but receive a final rejection in a first action in a continuationcontinuation


Options for RespondingOptions for Responding

• File a response w/ or w/out an amendment File a response w/ or w/out an amendment under 37 C.F.R. under 37 C.F.R. § 1.116§ 1.116– Amendments at discretion of examinerAmendments at discretion of examiner– Possible interviewPossible interview

• File a declaration under 37 C.F.R. § 1.132File a declaration under 37 C.F.R. § 1.132• File a continuing application or request for File a continuing application or request for

continued examination (RCE)continued examination (RCE)– Done to enter an amendment or consider new artDone to enter an amendment or consider new art– More time to prepare a declarationMore time to prepare a declaration

• Appeal to the Board of Patent Appeals and Appeal to the Board of Patent Appeals and Interferences under 37 C.F.R. § 1.191Interferences under 37 C.F.R. § 1.191


File a ResponseFile a Response

• Argue on the merits that the cited Argue on the merits that the cited references do not applyreferences do not apply– Examiner unlikely to withdraw final rejection if Examiner unlikely to withdraw final rejection if

same arguments are presentedsame arguments are presented

• Likely only useful where remaining Likely only useful where remaining rejection(s) is very minor or where it is rejection(s) is very minor or where it is believed the Examiner has made an believed the Examiner has made an oversightoversight


File an Amendment and File an Amendment and Response under 37 C.F.R. Response under 37 C.F.R. § 1.116§ 1.116

• To comply with Examiner’s suggestionsTo comply with Examiner’s suggestions

• To reduce issues on appeal i.e., cancel To reduce issues on appeal i.e., cancel claims claims

• To present claims in better form for To present claims in better form for consideration on appealconsideration on appeal

• If they raise new issues of patentability, If they raise new issues of patentability, the Examiner will likely refuse to enter the Examiner will likely refuse to enter themthem


Advisory ActionAdvisory Action

• If reply to final office action within 2 If reply to final office action within 2 months, the shortened statutory period will months, the shortened statutory period will expire at 3 months from final office action expire at 3 months from final office action or from the date the advisory action is or from the date the advisory action is mailed from the PTO, whichever is latermailed from the PTO, whichever is later– Save on extension feesSave on extension fees– In no event can the statutory period expire In no event can the statutory period expire

later than 6 months from date of final office later than 6 months from date of final office actionaction


File a Continuing ApplicationFile a Continuing Application

• Continuation, divisional or CIP under 37 Continuation, divisional or CIP under 37 C.F.R. C.F.R. § 1.53(b)§ 1.53(b)– Different filing date and serial numberDifferent filing date and serial number

• Continued Prosecution Application under Continued Prosecution Application under 37 C.F.R. § 1.53(d) (Designs only)37 C.F.R. § 1.53(d) (Designs only)


File a File a RCE underRCE under37 C.F.R. § 1.11437 C.F.R. § 1.114

• Removes finality of most recent office Removes finality of most recent office actionaction– Can be done by certificate of mailingCan be done by certificate of mailing– Same filing date and serial numberSame filing date and serial number

• Requires a “submission”Requires a “submission”– Typically a response under 37 C.F.R. Typically a response under 37 C.F.R. § 1.111 § 1.111

if an outstanding office action existsif an outstanding office action exists

• Also requires a fee set forth in 37 C.F.R. Also requires a fee set forth in 37 C.F.R. § § 1.17(e)1.17(e)


Continuation vs. RCEContinuation vs. RCE

• Continuation if want to keep application pending Continuation if want to keep application pending longer to target infringers or to provoke an longer to target infringers or to provoke an interferenceinterference– or to prepare a declarationor to prepare a declaration

• Continuation if some claims are allowed and Continuation if some claims are allowed and want an issued patent while pursuing rejected want an issued patent while pursuing rejected claims in another applicationclaims in another application

• Continuation if claims are going to be Continuation if claims are going to be independent and distinct from parent independent and distinct from parent 37 C.F.R. 37 C.F.R. § § 1.1451.145


Continuation vs. RCE ContinuedContinuation vs. RCE Continued

• RCEs generally have a lower costRCEs generally have a lower cost– Save on additional claim feesSave on additional claim fees

• RCEs have a faster turnaround timeRCEs have a faster turnaround time

• Generally no double patenting issuesGenerally no double patenting issues

• Easiest choice if looking to simply have an Easiest choice if looking to simply have an amendment or piece of prior art amendment or piece of prior art consideredconsidered


New PTO Rules (Rumors)New PTO Rules (Rumors)

• If received first office action on the meritsIf received first office action on the merits– 2 Continuations + 1 RCE2 Continuations + 1 RCE

• If no first office action on the meritsIf no first office action on the merits– 3 Continuations + 1 RCE3 Continuations + 1 RCE

• No limit on divisionalsNo limit on divisionals

• Possible implementation in September-Possible implementation in September-NovemberNovember


Strategies for New RulesStrategies for New Rules

• Review applications to determine how Review applications to determine how many continuations/RCEs have been filed many continuations/RCEs have been filed or are likely to be filed in the futureor are likely to be filed in the future

• Only option at final may be to appealOnly option at final may be to appeal


AppealsAppeals

• Can appeal any claim that has been rejected Can appeal any claim that has been rejected twicetwice– Doesn’t require a final actionDoesn’t require a final action

• File a Notice of Appeal under 37 C.F.R. File a Notice of Appeal under 37 C.F.R. § § 1.191(a)1.191(a)– Within 3 months extendable to 6 monthsWithin 3 months extendable to 6 months– Used as a tool to avoid abandonmentUsed as a tool to avoid abandonment

• File an Appeal Brief under 37 C.F.R. § 192(b)File an Appeal Brief under 37 C.F.R. § 192(b)– 2 months from of Notice of Appeal (measured from 2 months from of Notice of Appeal (measured from

day of receipt) extendable for another 5 monthsday of receipt) extendable for another 5 months– Can also file an RCE which effectively removes the Can also file an RCE which effectively removes the

appeal request MPEP § 1215.01appeal request MPEP § 1215.01


Pre-Appeal Brief Conference Pre-Appeal Brief Conference Pilot ProgramPilot Program

• File at same time as Notice of AppealFile at same time as Notice of Appeal– 5 or less total pages5 or less total pages– Decision within 45 daysDecision within 45 days

• Use if rejections are clearly not proper and Use if rejections are clearly not proper and are without basisare without basis– e.g., limitation is not met by a reference or the e.g., limitation is not met by a reference or the

Examiner failed to show proper motivation for Examiner failed to show proper motivation for making a modification in an obviousness making a modification in an obviousness rejection rejection


Appeals ContinuedAppeals Continued

• Board reverses:Board reverses:– Forwarded to Examiner to issue a Notice of Forwarded to Examiner to issue a Notice of

Allowance Allowance

• Board Affirms:Board Affirms:– AbandonmentAbandonment– File continuationFile continuation

• Abandon parentAbandon parent

– Petition Board for rehearing under 37 C.F.R. Petition Board for rehearing under 37 C.F.R. § 1.197§ 1.197– Bring civil action in district court for DC under 35 Bring civil action in district court for DC under 35

U.S.C. § 146U.S.C. § 146– Appeal to Federal CircuitAppeal to Federal Circuit


Final Action StrategiesFinal Action Strategies

• Some Allowed ClaimsSome Allowed Claims– Respond to try and overcome the rejected Respond to try and overcome the rejected

claimsclaims– Cancel rejected claims and pursue them in a Cancel rejected claims and pursue them in a

continuationcontinuation• May not be best option once new rules are May not be best option once new rules are

implementedimplemented• May end up on appealMay end up on appeal


Final Action Strategy ContinuedFinal Action Strategy Continued

• All Claims Remain RejectedAll Claims Remain Rejected– Try to negotiate allowance with the ExaminerTry to negotiate allowance with the Examiner– RCE or ContinuationRCE or Continuation

• Consider filing notice of appeal to delay responseConsider filing notice of appeal to delay response

– AppealAppeal• To limit prosecution historyTo limit prosecution history• If no intention of amending or otherwise limiting If no intention of amending or otherwise limiting

claim scopeclaim scope

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