Can a new Office action be made final when reopening prosecution after an appeal?
Yes, a new Office action containing a new ground of rejection can be made final when reopening prosecution after an appeal, but only under specific circumstances. According to MPEP 1207.04: “The Office action containing a new ground of rejection may be made final if the new ground of rejection was (A) necessitated by amendment, or…
Read MoreWhen should I file an Information Disclosure Statement (IDS) in a reissue application?
While 37 CFR 1.97(b) allows for filing an Information Disclosure Statement (IDS) within 3 months of the filing of an application or before the mailing date of a first Office action, the MPEP recommends earlier filing for reissue applications: “While 37 CFR 1.97(b) provides for the filing of an information disclosure statement within 3 months…
Read MoreWhat is the duty of disclosure in a reissue application?
The duty of disclosure in a reissue application is the same as for any other nonprovisional application. Applicants have a continuing obligation under 37 CFR 1.56 to disclose all information known to be material to patentability. The MPEP states: “A reissue application is subject to the same duty of disclosure requirements as is any other…
Read MoreWhat documents are used to list references in a patent application?
References in a patent application are typically listed on two main documents: Form PTO-892 (Notice of References Cited) Form PTO/SB/08 (Information Disclosure Statement) As stated in MPEP 1302.12: All references which have been cited by the examiner during the prosecution, including those appearing in Patent Trial and Appeal Board decisions or listed in the reissue…
Read MoreWhat happens to documents filed during the Board’s jurisdiction?
According to 37 CFR 41.35(d), documents filed while the Board has jurisdiction over a proceeding are generally held in abeyance: “Except for petitions authorized by this part, consideration of any information disclosure statement or petition filed while the Board possesses jurisdiction over the proceeding will be held in abeyance until the Board’s jurisdiction ends.” This…
Read MoreWhat are examples of Board remands that are not for further consideration of a rejection?
MPEP § 1211.01 provides two examples of situations where the Board may remand a case for examiner action that is not for further consideration of a rejection: A remand to consider an Information Disclosure Statement A remand for the examiner to consider a reply brief In these cases, 37 CFR 41.50(a)(2) does not apply. The…
Read MoreHow does an Information Disclosure Statement (IDS) affect final rejections?
An Information Disclosure Statement (IDS) can affect final rejections in patent examination as follows: If an IDS is filed during the period set forth in 37 CFR 1.97(c) with the required fee, the examiner may use the information in the IDS to make the next Office action final, even if the claims haven’t been amended.…
Read MoreHow does an Information Disclosure Statement (IDS) affect the rejection of previously allowed claims?
An Information Disclosure Statement (IDS) can significantly impact the rejection of previously allowed claims. According to MPEP 706.04: Where an application is withdrawn from issue for further examination pursuant to 37 CFR 1.313(b), and the subsequent examination indicates that an additional rejection is warranted, the first Office action containing that rejection should be made final…
Read MoreHow does an Information Disclosure Statement (IDS) affect the finality of a rejection in patent examination?
An Information Disclosure Statement (IDS) can affect the finality of a rejection in patent examination, particularly if it introduces new prior art that necessitates a new ground of rejection. According to MPEP 706.07(a): The information submitted with an information disclosure statement may necessitate making a new rejection (i.e., citing the newly submitted reference either alone…
Read MoreHow should examiners handle information submitted beyond the scope of a 37 CFR 1.105 requirement?
When applicants submit information that goes beyond the scope of a 37 CFR 1.105 requirement, examiners have specific guidelines to follow. The MPEP provides clear instruction: “Information that is beyond the scope of a 37 CFR 1.105 requirement, submitted along with information responding to a requirement under 37 CFR 1.105, need not be considered unless…
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