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