How does an examiner handle withdrawals of rejections in an Action Closing Prosecution (ACP)?
When an examiner withdraws a rejection in an Action Closing Prosecution (ACP) during inter partes reexamination, they must handle it carefully. According to MPEP 2671.02:
- For rejections initiated by the examiner: “Where the examiner withdraws a ground of rejection originally initiated by the examiner, such withdrawal should be clearly stated in the ACP as a decision favorable to patentability with respect to the withdrawn rejection.”
- For rejections proposed by the third party requester: “Where the examiner withdraws a ground of rejection previously proposed by the third party requester, the examiner should treat the issue as rejection proposed by the third party requester that the examiner refuses to adopt.”
The MPEP also notes: “The third party requester’s next set of comments that may be filed (after a patent owner response to an action) may propose the withdrawn rejection as a ‘rejection proposed by the third party requester.'”
Furthermore, “In the event the patent owner fails to respond to the ACP and a Right of Appeal Notice (RAN) is then issued, the third party requester may appeal this withdrawal of rejection as a final decision favorable to patentability. See 37 CFR 41.61(a)(2).”
This approach ensures that all parties are aware of the status of each rejection and maintains the third party requester’s rights in the proceeding.
To learn more: