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

A submission is considered not fully responsive when it’s a bona fide attempt to respond to an examiner’s Office action filed within the permissible response period, but through oversight or inadvertence, omits a necessary point. As stated in MPEP 2666.30:

“A response by the patent owner will be considered not fully responsive to a non-final Office action where a bona fide response to an examiner’s Office action is filed before the expiration of the permissible response period but through an apparent oversight or inadvertence, some point necessary to a full response has been omitted.”

This might include failing to address every rejection, objection, or requirement in the Office action.

To learn more:

• inter partes reexamination
• non-final Office action
• patent owner response
• incomplete submission