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

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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.”