By Kevin E. Noonan —

Although the final version of the new continuation rules have not been issued (see "New Continuation and Claims Rules to Be Published in Late Summer"), it is clear that the limitations on the right to file continuation applications (and perhaps Requests for Continued Examination) will act to focus patent prosecutors on ways of avoiding final rejections.  After all, if the Patent Office was willing to issue a sufficient number of Office Actions for an applicant to have a fair chance at meaningful prosecution before encountering a Final Rejection, much of the angst attendant with the new rules would be alleviated.

Since it is unlikely that the internal rules governing examination will change (since the Office would, no doubt, think issuing more than one Action before a Final Rejection could only reflect a lack of efficiency), it is incumbent upon patent prosecutors to understand the procedural avenues available to address improvidently-issued Office Actions.  A more detailed compendium of the relevant procedures will appear once the new continuation rules are issued.  For now, however, a relatively new provision of the Manual of Patent Examining Procedure (M.P.E.P.) provides a way to send particularly inadequate Actions back to the Office without responding (and thus without risking receiving a Final Rejection).

The rule is M.P.E.P. § 710.06, which reads:

710.06 Situations When Reply Period Is Reset or Restarted [R-3]

Where the citation of a reference is incorrect or an Office action contains some other error that affects applicant’s ability to reply to the Office action and this error is called to the attention of the Office within 1 month of the mail date of the action, the Office will restart the previously set period for reply to run from the date the error is corrected, if requested to do so by applicant.  If the error is brought to the attention of the Office within the period for reply set in the Office action but more than 1 month after the date of the Office action, the Office will set a new period for reply, if requested to do so by the applicant, to substantially equal the time remaining in the reply period.  For example, if the error is brought to the attention of the Office 5 weeks after mailing the action, then the Office would set a new 2-month period for reply.  The new period for reply must be at least 1 month and would run from the date the error is corrected.  See MPEP § 707.05(g) for the manner of correcting the record where there has been an erroneous citation.

Where for any reason it becomes necessary to remail any action (MPEP § 707.13), the action should be correspondingly redated, as it is the remailing date that establishes the beginning of the period for reply.  Ex parte Gourtoff, 1924 C.D. 153, 329 O.G. 536 (Comm’r Pat. 1924).  For Image File Wrapper (IFW) processing, see IFW Manual.

A supplementary action after a rejection explaining the references more explicitly or giving the reasons more fully, even though no further references are cited, establishes a new date from which the statutory period runs.

M.P.E.P. § 710.06 (emphasis added).

This provision should be useful for any of a variety of situations commonly encountered in prosecution, including for example:

• the Action states that there is no support for a claim term explicitly defined in the specification;
• the Action holds as indefinite a claim term explicitly defined in the specification;
• the Action asserts a reference under § 102 that clearly lacks a recited element of the claims;
• the Action makes statements or arguments that are unsupported by any evidence of record (where the request can include citation of 37 C.F.R. § 1.104(d)(2) for information known to any Office employee);
• the Action asserts that limitations or properties of the claimed invention are inherent without establishing any basis for the assertion;
• the Action rejects an independent claim and dependent claims, where the limitations of a dependent claim would clearly overcome the asserted rejection;
• the Action does not support a rejection with evidence or argument, but merely makes bald assertions without support in the record.

This list is exemplary and not exhaustive; there are, of course, many other types of deficiencies in many Office Actions that would fall within the scope of the rule.

The critical deadline for invoking this rule is that a request for a corrected Action be submitted within one month of the mailing date.  The rule also contains provisions for instances where an Action is delayed, for example by postal service disruptions or inefficiencies, but generally Actions are received with sufficient time for a petition to be filed within the one-month window of opportunity.  This option permits a prosecutor to avoid having to address improvidently-issued Actions, and to not waste time, effort, and client funds in responding (and risking an early final rejection).  It requires the prosecutor to review Office Actions as soon as they are received, to ascertain whether there is any basis for submitting a request for correcting such errors.  However, the advantages in receiving a better-prepared Action, where the real patentability issues can be addressed without distraction, is worth whatever minor inconvenience may be occasioned by early review of each Action.  Having been given this procedural advantage, good practice demands that patent prosecutors are aware of it and use it extensively, in partnership with the Patent Office in their efforts to improve the quality of examination and, consequently, the patents issued by the Office.  It seems the least we can do.

My thanks to David Boundy at Cantor Fitzgerald for directing my attention to this provision (which he calls the "30-day, money-back guarantee’).