Petitioning Incomplete Rejections

With the significant increase in government fees at the US Patent and Trademark Office, applicants are increasingly sensitive to piecemeal prosecution. A contributing factor that cuts against compact prosecution is incomplete Office action rejections. While often the Applicant can correctly guess the basis of a rejection, the increasing use of the Broadest Reasonable Interpretation and Alice-type rejections, coupled with incomplete reasoning, can significantly increase client frustrations. The bureaucratic approach taken in some cases thus has the net result of disenfranchising less sophisticated inventors who feel that they just are not getting a fair return for their fees.

Consider an Alice-type 101 rejection that is applied to all pending claims, but detailed reasoning is provided only for claim 1. A reasonable response to the rejection is to not only address the issues regarding claim 1 (with amendments, argument, etc.), but to also point out specific features of other claims that have not been addressed sufficiently by the Office. Often this results in a Final rejection, with still only vague assertions regarding claims beyond claim 1. The Applicant is then left in catch-22 situation - appeal rejections without a full understanding of the reasoning for all of the claims, or pay an RCE fee and again try to request the Office to provide more detailed reasoning.

An alternative option is to file a petition under 37 CFR 1.181 (no government fee) by the 2-month date of the Final rejection, pointing out the deficiencies of the rejection. Experience has shown that the Office of Petitions can be receptive in circumstances where the Office has provided an incomplete rejection. Usually in such cases the petition decision forwards the application to the examiner via the Supervisory Patent Examiner of the art unit for issuance of a new Office action specifically addressing the claims in detail and fully responding to applicant's arguments.

While the petition does require attorney time and fees, the substance of the petition is generally clear and straightforward such that it is significantly less expensive than an RCE fee, even for small entities. A sample outline for a sample petition is provided below with example arguments, which can be adapted to particular situations:

Statement of Facts

In support of this request, Applicant states the following:

1.      On DATE1, a non-final Office action (the “non-final OA”) was mailed including rejections under U.S.C. §§ 101. Claims 1-20 were pending in the application. Specifically, claims 1-20 were rejected under 35 U.S.C. § 101.

2.      On DATE2, Applicant responded to the non-final OA (the “non-final OA Response”). Applicant’s non-final OA Response included amendments to claims 1-x.  Applicant presented arguments against the rejection of claims 1-20 under 35 U.S.C. § 101.

3.      On DATE3, a final Office action was mailed (the “final OA”). On page 4, the final OA concluded with the statement, “THIS ACTION IS MADE FINAL” (emphasis original).

Basis for Petition

I. The final rejection of claims 13-20 is improper because the Office failed to specifically reject the claim in the detailed action.

Applicant notes the non-final OA did not specifically reject claim 13 under 35 U.S.C. § 101. On page 3 of the non-final OA, claims 1-20 are stated to be rejected under § 101, and on pages 3-4, specific arguments follow with respect to independent claims 1 and 9, and dependent claims 2-4, 6-8, 11, and 12. However, no argument or rationale is provided with respect to independent claim 13, or dependent claims 14-20.  Applicant respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicant. (See MPEP § 706.07(a)).

II. The final rejection of claims 13-20 is improper because the Office failed to respond to Applicant’s traversal.

Section 707.07(f) of the MPEP instructs that:

Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant’s argument and answer the substance of it.

As discussed in item (2) above, Applicant traversed the rejection of claims 1-20 in responding to the non-final OA.   Specifically, on page 10 of the non-final OA Response, Applicant traversed the rejection of claims 13-20, reproduced below:

With regard to claim 13 and dependent claims 14-20, Applicant notes that while the Office action asserts that these claims are rejected under § 101, no rationale whatsoever is provided supporting the rejection.  As best understood by Applicant, claims 13-20 were included in the § 101 rejection inadvertently.  If the Office did mean to reject claims 13-20 under § 101, however, Applicant submits that the rejection is improper on its face as no reasoning is provided for the rejection.

Though the final OA acknowledges Applicant’s arguments on page 3, the final OA provides no adequate response to the arguments put forth by Applicant with respect to claims 13-20, failing to either acknowledge or provide a substantive response to Applicant’s arguments.

Applicant notes that while the Office appears to respond to Applicant’s arguments, and specifically lists claims 1, 9, and 13 at the outset, the remarks are general in nature and directed to the method claims 1 and 9, and do not address the claims on an individual basis; in particular, no specific arguments are provided to support the rejection of system claim 13.  

As such, Applicant submits that the assertions of the final OA fail to adequately take note of Applicant’s argument and fail to address the substance of Applicant’s argument regarding the rejection of claims 13-20 under U.S.C. § 101.  Applicant submits that the Examiner’s failure to answer the substance of the argument traversing the rejection of claims 13-20 is in contravention of Section 707.07(f) of the MPEP.