TMEP 715.03(a)(ii)(C): Outstanding Refusals and/or Requirements May Be Resolved if Applicant Is Given 30 Days or Time Remaining in Response Period to Comply with Issues

October 2017 Edition of the TMEP

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715.03(a)(ii)(C)    Outstanding Refusals and/or Requirements May Be Resolved if Applicant Is Given 30 Days or Time Remaining in Response Period to Comply with Issues

The preferred action is to issue an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or, if appropriate, "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter") if: (1) the request for reconsideration does not overcome or resolve all outstanding refusal(s) and/or requirement(s); (2) the applicant’s response complies with the criteria in 37 C.F.R. §2.65(a)(2) for granting additional time to complete the response, regardless of whether time remains in the response period, because such issues can be resolved with additional time, including where the record indicates that the applicant can place the application in condition for approval for publication or registration by completing the response or all issues can be resolved by examiner’s amendment; and (3) no notice of appeal has been filed. See In re P.T. Polymindo Permata, 109 USPQ2d 1256, 1257 (Dir USPTO 2013). See TMEP § 715.03(a)(ii)(E) regarding responses to final actions that comply with the criteria in 37 C.F.R. §2.65(a)(2) (those signed by unauthorized persons, unsigned responses, and TEAS responses consisting solely of a signature or missing significant data or attachments).

This Office action must: (1) include an appropriate explanation of the problem with the response; (2) give the applicant 30 days, or to the end of the six-month response period set forth in the previous Office action, whichever is longer, to submit a complete response; and (3) omit the six-month response clause. See TMEP §§705.08, 718.03(b).

If the examining attorney determines that an examiner's amendment ( see TMEP §§707─707.03) will immediately put the application in condition for publication or registration, the examining attorney should attempt to contact the applicant to obtain authorization to issue an examiner's amendment to resolve the matters that remain outstanding.

Once the examining attorney has issued an "Examiner’s Action Continuing a Final Refusal – 30 day Letter" (or "SU – Examiner’s Action Continuing a Final Refusal – 30 day Letter") the examining attorney must abandon the application for incomplete response, using the "Abandoned Due to Incomplete Response" action, if the applicant (1) does not submit within the time remaining a complete response or a request for reconsideration that presents a new issue or new evidence significantly different from that previously provided or (2) fails to respond. The application should be abandoned for incomplete response and not for failure to respond, because the applicant did in fact respond to the final Office action by filing a request for reconsideration.

Granting additional time to complete a response under 37 C.F.R. §2.65(a)(2) does not stay or extend the deadline for filing an appeal to the Board (or petition to the Director under 37 C.F.R. §2.63(b)(2), if appropriate). See 15 U.S.C. §1062(b)37 C.F.R. §2.142(a). See TMEP §718.02(a) for information about processing an incomplete response to a partial final refusal or requirement.