How to withdraw an inappropriate final rejection from the US Patent Office (USPTO)

When the examiner can properly make the final decision of the administrative process

Under the compact procurement USPTO policy, the second office work may be done appropriately and ultimately under most circumstances. The situation is described in § 706.07 (a) of the Patent Examination Procedure (MPEP).

Under current practice, the second or consequential measures on merits, except in cases where the examiner introduces the reasons for the new refusal required by the amendment of the applicant's request, . It also compares the statement submitted during the period specified in 37 CFR 1.97 (c) of information disclosure with the fee listed in 37 CFR 1.17 (p).

MPEP in § 706.07 (d) also provides a remedy if the final Office action is issued and the conditions of § 706.07 (a) are not satisfied. In the section titled "final rejection" and "early withdrawal"

If the applicant requests reconsideration, the main inspector should withdraw the final stage of refusal if it determines that the final rejection was too early. While the application is pending, the final of the Office action has to be canceled. The examiner can not withdraw the final refusal when the application is abandoned.

Below are some examples of final withdrawal request based on various situations where such final was inappropriate.

Example of final withdrawal request

This first example was submitted in response to the final Office action which misclassified claims.

Cancellation request for FINALITY

The applicant has accepted the final Office Action mailed on 13th March 2007. Since the applicant mistakenly interpreted and misinterpreted the claims by the Patent and Trademark Office and consequently did not consider the patentability claims presented in the most recently proposed amendment, the final decision of the subject matter was withdrawn Carefully request that it be done. In addition, Office's explicit and incorrect claim characterization excludes Office actions from addressing the merits of the presented discussion on one of the presented independent claims.

In support of this request, the applicant states as follows.

1. On December 20, 2006, the applicant submitted the amendment proposed in independent claim 15 with the following claim.

Disk protector destroyed at the outer edge of the disc damper ....

2. In response to the amendment submitted on December 20, 2006, Office explained that the final Office Action was processed on March 13, 2007 and that all rejections were maintained for the following reasons .

The applicant claims a limitation not in the claim language as the applicant claims to be "placed / arranged along the outer edge of the disk damper", the applicant says, "The outer edge of the disk damper Department "

(Office Action, page 3).

3. The second paragraph above is practically unfounded and incorrect. Indeed, applicant, independent claim 15 expresses "at".

4. Section 707.07 (f) of the Patent Examination Procedure (MPEP) directs:

If the application crosses the refusal, the examiner should pay attention to the applicable discussion and respond to the content when repeating the refusal.

5. The Secretariat repeatedly expressed the refusal of all claims. However, the Secretariat will not "pay attention" to the applicant's claim or "not respond" to the applicant's claim. argument. Therefore, because Office does not meet the requirements of MPEP § 707.07 (f), the final Office Action is inadequate.

6. Also, excellent lawsuits have been filed to take improper and unfair interpretation of the claims clause. For this additional reason, the applicant carefully submits that outstanding Office Action is inappropriate.

In light of the above, the applicant wishes for a final withdrawal of outstanding Office Action and further requires a new non-finalized Office Action corresponding to the merit of claim 15.

This second example was submitted in response to the final Office action that initially restored the functions previously submitted for review.

Cancellation request for FINALITY

The applicant has received the final administrative treatment mailed on December 25, 2007 in this application. The applicant proposes that the final act of this Office is premature, accordingly, according to section 706.07 (d) of the Patent Examination Procedure (MPEP), and therefore requires the withdrawal of the final result.

Premises

As the basis for this request, the applicant states as follows.

1. The final Office action rejects independent claim 1 for new evidence. As stated by the Secretariat himself, "The amendment of the applicant required a new reason for refusal presented in this Office action" (Final office action, page 6).

2. In the amendment, the applicant withdrew original claim 2 and amended independent claim 1 and implied the features of claim 2 in claim 2.

The features of claim 2 added to independent claim 1 were those previously presented for testing. Therefore, the added functionality may have been restored in previous Office actions.

4. MPEP section 706.07 (a) specifies the final terms of the second or supplementary litigation,

Under current practice, unless the examiner introduces the reasons for the new refusal required by the amendment of the applicant's request, and based on the information submitted in the information disclosure statement ... .

Because the applicant has submitted the function added to independent claim 1 for screening in the former Office action, the new grounds for dismissing claim 1 made in the final Office action are inevitable Statement or information disclosure statement.

Conclusion

The conditions specified in § 706.07 (a) of MPEP are not satisfied. Therefore, not only for the reason, but also the final nature of the final action of the agency should be eliminated, as well as the interests of fairness.

This final example was submitted in response to the final Office action which revised the initial claim.

Cancellation request for FINALITY

Reason for request

As the basis for this request, the applicant states as follows.

1. The final litigation dismissed the independent claim.

2. The non-final Office action immediately before the final Office action did not refuse the independent claim.

Section 706.07 (a) of MPEP specifies the final terms of the second or supplementary Office action,

4. The applicant submits that the refusal of independent claim 20 is a new basis for refusal. Also, the applicant likewise modified claim 20 and did not submit IDS with the final final action, so the conditions required by MPEP § 706.07 (a) are not yet satisfied.

Conclusion

The conditions specified in § 706.07 (a) of MPEP are not satisfied. Therefore, as well as the reasons for the office for compact prosecution, the final event action action should be revoked.

Final thought

First of all, I like submitting these requests as separate and independent documents. Next, each example of this post is based on a successful request. It is by no means appropriate for all actions of the final agency. However, if the final is too early, this type of request will be an effective remedy.