How does the examiner determine whether to issue an ACP or a final rejection in ex parte reexamination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs 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. The examiner’s decision to issue an Action Closing Prosecution (ACP) or a final rejection in ex parte reexamination depends on specific criteria outlined in the MPEP. According to MPEP 2260 : “If the patent owner’s response overcomes all rejections and objections, a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) should be issued. If the patent owner’s response does not overcome all rejections and objections, the examiner will issue an ACP.” The examiner considers the following factors: The completeness and persuasiveness of the patent owner’s response Whether all rejections and objections have been addressed The presence of any new issues or evidence If the examiner believes that prosecution should be closed, they will issue an ACP. If further clarification or amendments are needed, they may issue another non-final Office action instead. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Cautionary Statement for First Office Action MPEP 2260 Examiner’s First Ex Parte Action Establishes Issues in Reexamination MPEP 2260 Patent Owner Must File Statement and Amendment Before First Action MPEP 2260 Permitted Caution for Complete Response After First Action MPEP 2260 Recommended Issues Must Be Clearly Defined In First Ex Parte Action MPEP 2260 Recommended Amendments Must Show Reasons for Delayed Presentation After Final Action MPEP 2260 Required Form Paragraph 22.05 May Be Used in Office Action MPEP 2285 Permitted Examiner Must Add Form Paragraph 4.03 in Office Actions After Practitioner Death MPEP 406 Recommended Initial Office Action on Merits to Order Reexamination Under 35 U.S.C. 257 MPEP 2818.01 Permitted Form Paragraph for Office Action Prior ...