What constitutes a submission not fully responsive to a non-final Office action in a patent reexamination?

A submission is considered not fully responsive to a non-final Office action in a patent reexamination when:

• A bona fide response to the examiner’s non-final action is filed
• It’s filed before the expiration of the permissible response period, including extensions
• But through an apparent oversight or inadvertence, some necessary point has been omitted

As stated in MPEP 2266.01: “Where patent owner’s amendment or response prior to final rejection is not fully responsive to an Office action in a reexamination and meets all of (A) through (C) above, the prosecution of the reexamination proceeding should not be terminated; but, rather, a practice similar to that of 37 CFR 1.135(c) (which is directed to applications) may be followed.”

To learn more:

• patent reexamination
• non-final Office action
• response
• bona fide attempt