PTO WITHDRAWS ACTION CLOSING PROSECUTION

Scott Daniels | April 27, 2010

The PTO’s treatment of petitions under 37 C.F.R. § 1.182 is being tested in the inter partes reexamination (95/000,313) of U.S. Patent No. 6,925,469.

In March 2009, the examiner issued an action closing prosecution (ACP), in which all pending claims were rejected.  The ‘469 patentee replied by cancelling some of the claims, amending others, and traversing the rejections in the action.  The examiner was not persuaded and issued a right of appeal notice (RAN), stating that the patentee had not shown why the amendments were necessary and had not been made earlier.  The examiner did not enter the amendments.

The ‘469 patentee replied to the RAN with a § 1.182 petition seeking entry of the claim amendments.  Section 1.182 applies to “[a]ll situations not specifically provided for in the regulations.”  The provision was created to address the need to submit an amendment or evidence, where that need could not have been anticipated, i.e., the need was not apparent until issuance of the final rejection or action closing prosecution.

In this case, the PTO (acting through the Office of Patent Legal Administration) granted the petition, agreeing with the ‘469 patentee that

(1)   there was no other regulation permitting entry of the amendments,

(2)   the amendments were made in response to rejections presented for the first time in the action closing prosecution, satisfying the requirement that the amendments could not have been anticipated,

(3)   the amendments have been denied entry, and

(4)   the amendment sought to cancel some claims and change others, thereby reducing the issues for appeal and/or placing the claims in better condition for issuance.

The requester has now filed a substantial comment of its own regarding the grant of the § 1.182 petition, asking that it be reversed because the amendments could have been anticipated and should not have been entered.  We will report the PTO’s response.

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