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Topic: Final Office Action (Read 3294 times) |
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greg l.
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I received a final office action rejecting my claims. I understand my options to be:
1. RCE
2. Appeal
3. Abandon
If I respond to the final office action within the statutory time, does the examiner have to respond to me?
Do I have to file an RCE within that period as well?
Is appeal expensive?
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JimIvey
Moderator
Senior Member
 
Posts: 2584
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Re: Final Office Action
« Reply #1 on: Mar 5th, 2007, 9:05pm » |
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on Mar 5th, 2007, 5:25pm, greg l. wrote:I received a final office action rejecting my claims. I understand my options to be:
1. RCE
2. Appeal
3. Abandon |
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I've been giving some thought to challenging the finality of final Office Actions. Many of them are just wrong. Examiner's tend to search incrementally. I've had many admit (perhaps unwittingly) that they can't buy my argument (w/o amendments) because they'll have to do further searching. What the ...?! Did the previous OA involve a search?!
They're supposed to search not only the claims you have pending but also significant limitations in the spec that you'd likely add to the claims in response to a rejection. Of course, that presupposes that the examiner reads the spec -- a bit of a lost art, apparently.
I started thinking about this in response to the proposed rule changes a while back that would have limited the number of RCEs and other continuations/divisionals/etc. you can file. I was getting ready to fight and appeal any arguably unreasonable final Office Action.
on Mar 5th, 2007, 5:25pm, greg l. wrote:| If I respond to the final office action within the statutory time, does the examiner have to respond to me? |
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Yes (I think). But you should expect an Advisory Action that pretty much tells you that your response was ignored entirely and the period for response to the final OA continues to run.
And, filing a response forecloses my typically preferred course of action.
on Mar 5th, 2007, 5:25pm, greg l. wrote:| Do I have to file an RCE within that period as well? |
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Yes. If the Advisory Action tells you what they all do -- that your response was generally ignored and did nothing to help your case, the period for response to the final OA continues to run and failure to take further action will result in abandonment of the application.
on Mar 5th, 2007, 5:25pm, greg l. wrote:
It's less expensive than an RCE -- well, maybe not, and at least not by much. But the cost is comparable (unless you're paying someone to prepare those papers for you -- an appeal involves much more paperwork).
You didn't ask, but my favorite response to a final OA is as follows (about to file one as soon as I stop typing here....).
1. File a Notice of Appeal with a request for a Pre-Appeal Conference along with supporting arguments. They'll convene a meeting in the next month or so and go over the merits. You can't do that if you've responded to the final OA already.
2. When the pre-appeal conference results effectively in a "bring it on!" (it always does for me, although I understand more than half result in reopening prosecution), file the Appeal Brief.
Interestingly enough, after all that, I often get a Notice of Allowability in response to the Appeal Brief. If I don't, I tend to do well in appeals -- much better than I do talking with examiners. I have no idea why the pre-appeal conference often confirms the examiner's position that is immediately thereafter dropped by the examiner.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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rj22
Newbie
Posts: 5
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Re: Final Office Action
« Reply #2 on: Mar 22nd, 2007, 1:54am » |
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Jim, You say you prefer to go straight to appeal, but if I want to amend some of the claims is it right I will probably need to file an RCE?
BTW one thing about the final action time-line puzzles me. What advantage do I get by responding to a final action within 2 months, as per 706.07(f):
"if the reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later."
If I've already replied, how is it an advantage to have the shortened statutory period for reply extended? If I want to make a further reply (say an RCE, if the advisory action indicates my amendments will not be entered because they "require further search") surely I will want to wait until the advisory action is mailed, at which point the extended period for reply has expired anyway...
rj
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Isaac
Senior Member
Posts: 3472
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Re: Final Office Action
« Reply #3 on: Mar 22nd, 2007, 8:44am » |
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on Mar 22nd, 2007, 1:54am, rj22 wrote:| "if the reply is filed within 2 months of the date of the final Office action, the shortened statutory period will expire at 3 months from the date of the final rejection or on the date the advisory action is mailed, whichever is later." |
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Sometimes activity can occur after submitting a final response but before the advisory action is issued to put the claims in better condition. The rule would allow examiner's amendments and supplemental responses without extension fees as long as you had not gotten an advisory action.
It wouldn't be useful at all in the scenario you suggest, but occasionally it is helpful.
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Isaac
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JimIvey
Moderator
Senior Member
Posts: 2584
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Re: Final Office Action
« Reply #4 on: Mar 22nd, 2007, 9:51am » |
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on Mar 22nd, 2007, 1:54am, rj22 wrote:| Jim, You say you prefer to go straight to appeal, but if I want to amend some of the claims is it right I will probably need to file an RCE? |
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Yes.
And, to elaborate on Isaac's post slightly, the "activity" can include calling the examiner up and talking through your arguments. Maybe you can convince her/him to send a Notice of Allowance rather than an Advisory Action.
That was then, this is now. Now, examiner's don't really have direct authority to allow cases. Oftentimes, the case goes through various levels of administrative review prior to being allowed. So, the perception I have is that examiners really don't want to allow cases because of all the bureaucratic headaches it entails. So, right now, it's rather useless to talk to the examiner -- they don't have final authority like they used to.
Regards.
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James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
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