MPEP 2671
Examiner Action Following Response/Comments or Expiration of Time for Same

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

Previous: §2670 | Next: §2671.01

2671    Examiner Action Following Response/Comments or Expiration of Time for Same [R-07.2015]

I.    RECONSIDERATION

After response by the patent owner and any third party comments, the patent under reexamination will be reconsidered. The patent owner and the third party requester will be notified as to any claims rejected, any claims found patentable and any objections or requirements made. The patent owner may respond to such Office action with or without amendment, and the third party requester may provide comments after the patent owner’s response. If the patent owner response contains an amendment, the examiner will consider the amendment to determine whether the amendment raises issues of 35 U.S.C. 112 and/or broadening of the claims under 35 U.S.C. 314. The patent under reexamination will be reconsidered until the proceeding is ready for closing prosecution, at which point the examiner will issue an Action Closing Prosecution (ACP). See MPEP § 2671.02.

II.    CASE IS TAKEN UP FOR ACTION

The case should be acted on promptly, in accordance with the statutory requirement for "special dispatch within the Office" (35 U.S.C. 314(c) ).

After the examiner receives notification of a response/comment (e.g., having the patent owner’s response to the Office action and any third party requester comments on that response), he/she will prepare for and participate in a conference in accordance with MPEP § 2671.03.

After the conference, the proceeding, with the completed action, will be forwarded to the CRU Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) for review. If the CRU SPRS/TC QAS returns the case to the examiner for correction/revision, the correction/revision must be handled expeditiously and returned to the CRU SPRS/TC QAS within the time set for such by the CRU SPRS/TC QAS.

III.    OPTIONS AS TO OFFICE ACTION TO ISSUE

At this point in the proceeding, the examiner will have the following options as to the next Office action to issue:

  • (A) There is no timely response by the patent owner (since the patent owner did not respond, no third party requester comments may be filed):
    • (1) If all claims are under rejection, the examiner will issue a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC). See MPEP § 2687. All claims will be canceled by formal examiner’s amendment (attached as part of the NIRC).
    • (2) If at least one claim is free of rejection and objection, the examiner will issue an Action Closing Prosecution (ACP). In the ACP, it will be stated that any claims under rejection or objection are withdrawn from consideration and will be canceled upon issuance of a NIRC. It will further be stated that the proceeding will be limited to the claims found patentable at the time of the failure to respond, and to claims (added or amended) which do not expand the scope of the claims found patentable at that time. See MPEP § 2666.10.

It should be noted that even in a situation where there has been no patent owner response, the examiner is always free to issue a supplemental Office action providing a new rejection of claims previously found patentable, where new information comes to the attention of the examiner warranting the new rejection. Of course, such an action would ordinarily not be made an ACP.

  • (B) There is a timely response by the patent owner, and the third party requester does not timely provide comments:
    • (1) If the response by the patent owner is incomplete, the examiner may issue an incomplete-response action. See MPEP § 2666.30.
    • (2) If there is a formality defect in the response by the patent owner, the examiner will issue a Notice of Defective Paper in Reexam. See MPEP § 2666.50.
    • (3) If the patent owner’s response is complete and defect-free, and the proceeding is ready for closing prosecution, the examiner will issue an ACP. See MPEP § 2671.02. This is true if all claims are determined to be patentable, all claims are determined to be rejected, or if some claims are determined to be patentable and some claims are determined to be rejected. After the ACP has been issued, the patent owner can submit comments with or without a proposed amendment in accordance with MPEP § 2672, and the third party requester can then file comments responsive to the patent owner’s submission.
    • (4) If the patent owner’s response is complete and defect-free, and the proceeding is not ready for closing prosecution, the examiner will issue a new Office action that does not close prosecution. See MPEP § 2671.01.
  • (C) There is a timely response by the patent owner, and the third party requester does provide timely comments:
    • (1) If the response by the patent owner is incomplete, the examiner may issue an incomplete-response action. See MPEP § 2666.30.
    • (2) If the comments by third party requester go beyond the scope of what is permitted for the third party comments, the examiner will follow the procedures set forth in MPEP § 2666.05 for improper comments.
    • (3) If there is a formality defect in the response by the patent owner, the examiner will issue a Notice of Defective Paper in Reexam. See MPEP § 2666.50.
    • (4) If there is a formality defect in the comments by the third party requester, the examiner will issue a Notice of Defective Paper in Reexam. See MPEP § 2666.50.
    • (5) If the response and comments are in order, and the proceeding is ready for closing prosecution, the examiner will issue an ACP. See MPEP § 2671.02. This is true if all claims are determined to be patentable, all claims are determined to be rejected, or if some claims are determined to be patentable and some claims are determined to be rejected. After the ACP has been issued, the patent owner can submit comments with or without a proposed amendment in accordance with MPEP § 2672 and the third party requester can then file comments responsive to the patent owner’s submission.
    • (6) If the response and comments are in order and the proceeding is not ready for closing prosecution, the examiner will issue a new Office action that does not close prosecution. See MPEP § 2671.01.
  • (D) There is a timely request for issuance of an Expedited Right of Appeal Notice:
    • 37 CFR 1.953(b) provides for the issuance of an expedited Right of Appeal Notice (RAN), where the criteria for the same is satisfied. At any time after the patent owner’s response to the first Office action on the merits in an inter partes reexamination, the patent owner and third party requester(s) may request the immediate issuance of a RAN. Where such a request is presented in the proceeding, see MPEP § 2673.02 for guidance as to whether an expedited Right of Appeal Notice will be issued.