Do I have to file a continuation after a Quayle action of 1st office action?

[Weng Tianxiang]

Hi,

I received 1st office action with Quayle action for my an application.

The document says that "Appropriate corrections are required", and "Prosecution on the merits is closed." There are 107 claim rejections totally by the Examiner.

Based on the 107 claim rejections, I filed an amendment based on the suggestions made by the Examiner. Now I found if I strictly follow the claim rejections, somethings are wrong. So I decide to file a 2nd amendment to fully correct the claim rejections.

In the 2nd amendment I never add any new matter.

I don't know if my 2nd amendment is allowed to enter the prosecution?

Should I have to file a continuation application or not?

I have filed 4 non-provisional patent application, is a continuation accounted as a new non-provisional application?

If so I would lose the statue of micro entity while filing the continuation.

201.07   Continuation Application [R-3]

A continuation is a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented. The continuation application may be filed under 37 CFR 1.53(b)  (or 1.53(d) if the application is a design application). The applicant in the continuation application must include at least one inventor named in the prior nonprovisional application. The disclosure presented in the continuation must be the same as that of the original application; i.e., the continuation should not include anything which would constitute new matter if inserted in the original application. The continuation application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120  or 365(c ). For more information on claiming the benefit of a prior nonprovisional application, see MPEP § 201.11.

An application claiming the benefits of a provisional application under 35 U.S.C. 119(e)  should not be called a "continuation" of the provisional application since an application that claims benefit of a provisional application is a nonprovisional application of a provisional application, not a continuation, division, or continuation-in-part of the provisional application.

At any time before the patenting or abandonment of or termination of proceedings on his or her earlier nonprovisional application, an applicant may have recourse to filing a continuation in order to introduce into the application a new set of claims and to establish a right to further examination by the primary examiner. A continued prosecution application (CPA) under 37 CFR 1.53(d)   (available only for design applications), however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c)  is granted in the prior application. In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d)  if the prior nonprovisional application is a design application that is complete as defined by 37 CFR 1.51(b).

Thank you.

[mersenne]

Hi Weng.  Congratulations on your first-action allowance!

You don't have to file a continuation on that application, but you might want to.  If you plan to sell or license the patent, then your customer may want to have slightly different claims from what you have allowed.  If there is an active application going, they can present the claims they want and try to get them.  If you don't have an application going, then they can't do that, which means that they might be less interested in your patent (or unwilling to buy it at all).

Therefore, a patent plus an active application is more valuable than a patent alone.

If filing a continuation will put you out of Micro status, then you're out of Micro status now -- your next application will be Small Entity, no matter what.  So this is not a significant difference.

You can file a continuation but not pay filing fees.  You will get a notice to pay fees in a few weeks, and then you have up to 6 months to pay.  So you can have a continuation active for 7-8 months for no money at all.  If you sell/license during that time, then the new owner will have to deal with it.  If you don't sell before then, you can decide at the deadline whether you want to pay or not.

Therefore, filing a continuation seems to make sense, because it does not cost anything but it may increase the value of your invention, at least for 6-8 months.

Hope this helps.

[Weng Tianxiang]

Hi David,

Thank you for your advice.

I filed an amendment to the first Office action within 3 days after notification mailing data without many considerations for the suggestions made by the Examiner.

My new plan is to make as few changes as possible to do a 2nd amendment to the 1st amendment to the first Office action to try to avoid filing a continuation.

So I would like to know how many changes to the amendment will be accepted before its being issued and what is the boundary to trigger a continuation filing after a Quayle action is a first Office action.

Is the fact that no new matters are added enough to be accepted before issuing?

The first Office action says in status 4): "Since the application is in allowance except formal matters, prosecution as to the merit is closed according to ...".

What does  "Prosecution on the merits is closed" mean?

For example, does it mean that any text changes unrelated to the claim objections (in my case: 107 claim objections) are treated as unacceptable?

Weng

[Weng Tianxiang]

Hi everyone ,

I need your comments on whether or not my following word change would touch the boundary for my first Office action with a Quayle action to file a continuation of application.

I know that you cannot represent my Examiner, but at least you must have such experiences on how to deal with the situation that is what I urgently want to understand.

Before changing:
constructing a second part of the circuit, the second part guaranteeing that each output register of the at least one output register owns an output register state machine, and the output register state machine comprising three states:

As Evillost indicated, guaranteeing is a poor wording, a vulnerable attack point by potential infringers.

New words by myself:

constructing a second part of the circuit, the second part of the circuit guaranteeing that comprising at least one output register state machine, each output register of the at least one output register [[owns]] solely owning an output register state machine of the at least one output register state machine, and the output register state machine comprising three states:

It is the only place which may touch red line to force me to file a continuation of  application. I don't want to file the continuation of application. If it touches the red line, I prefer abandoning the change.

Your comments will be greatly appreciated.

Weng

[lazyexaminer]

No one can really answer whether the examiner will enter this amendment. A Quayle action is for when the claims are allowable but the examiner wants you to fix informalities, objections. To me that is stuff like typos and clear errors. Cleaning up the claim scope isn't really that. The examiner might legitimately think that your amendment is changing the scope enough so that further searching is required, and if that's the case they won't enter it. But they might.

And if you want to change the claims no matter what, why are we talking about a continuation application? It seems like an RCE fits better here. You can file an RCE until you pay the issue fee. 

[Weng Tianxiang]

Hi lazyexaminer,

Your comment is great valuable and it is what I want!

"It seems like an RCE fits better here. You can file an RCE until you pay the issue fee. "

My English understanding:

1. I can file the 2nd amendment first, no matter whether it will be allowed or not, and let the Examiner determine if he will allow the entry at his discretion.

2. After he refuses I can file a RCE for the examination to continue and pay the RCE fee.

3. I must not pay the issue fee to make it a patent if the Examiner continues to issue a patent.

Is it right?

Weng

[lazyexaminer]

My English understanding:

1. I can file the 2nd amendment first, no matter whether it will be allowed or not, and let the Examiner determine if he will allow the entry at his discretion.

2. After he refuses I can file a RCE for the examination to continue and pay the RCE fee.

3. I must not pay the issue fee to make it a patent if the Examiner continues to issue a patent.

Is it right?

Weng

Hi Weng,

Ok I see now that you filed a 1st amendment and want to file a 2nd amendment. I am assuming the 1st amendment fixes all the problems from the Quayle and the 2nd changes the language and that is what you would prefer.

It is possible the examiner enters both and allows the whole thing.

It is more likely IMO that the examiner enters the 1st amendment and declines to enter the 2nd. The 1st apparently takes care of all the formalities and the 2nd just isn't necessary from the examiner's point of view, the examiner isn't going to want to examine new claims at this point if you've already fixed the problems.  So you would probably* get a notice of allowance entering the 1st amendment only.

At that point, you have your normal time period to pay the issue fee. Before paying the issue fee you can file an RCE with amendment 2. See 37 CFR 1.114. This basically starts the case over and the examiner will have to enter amendment 2.

The negative (beside the RCE fee) is you pretty much have a patent and you are giving it up to try and improve your claims. Maybe you get a new allowance right after your RCE, or maybe it takes a few years to get back to this point (or maybe you never do).

*I suppose you could get an advisory action explaining why the case is not yet allowable if amendment 1 doesn't quite fix everything. The examiner could also change course completely, decide the claims are not allowable, and reopen prosecution and issue a non-final rejection instead. In that case they should enter amendment 2, as prosecution is reopened.

[Weng Tianxiang]

Hi lazyexaminer,

Another very important lesson is learned!

"It is more likely IMO that the examiner enters the 1st amendment and declines to enter the 2nd. "

It is most likely to happen.

"The 1st apparently takes care of all the formalities and the 2nd just isn't necessary from the examiner's point of view."

I disagree. Here is the reason.

In the first Official Action, the Examiner generated about 20 claim objections where a "the" is requested to be changed to a 'a', or a "the" must be deleted.

Here is an example in Claim 1:
•   an idle state: the idle state indicates that [[the]] [[an]] owner output register is empty on a current cycle;

The text in red is requested by the Examiner to change and was made in my 1st amendment.

The reason I used "the owner output register" in original claim 1 is to say that "the owner output register" has a precedent "an output register" defined before. If "the owner output register" is changed to "an owner output register" it means I introduce a new subject that has no precedent and has no relationship with the precedent "an output register", that is not my original wish and may cause a bigger trouble.

So a much better and full solution is "[[the]] [[an]] owner output register of the at least one output register", not simply to change "the" to 'a'. So a 2nd amendment is really needed.

"the examiner isn't going to want to examine new claims at this point if you've already fixed the problems. "

You are right. I said the reason for a 2nd amendment, but it doesn't justify me to change other parts.

Can "an output register" be used as a precedent for later words "the owner output register?"

I really need you to explain.

"*I suppose you could get an advisory action explaining why the case is not yet allowable if amendment 1 doesn't quite fix everything. "

I will describe the above reasons in my 2nd amendment in remarks part and let the Examiner decide if my reasoning is right. The less communication, the faster for prosecution.

"The examiner could also change course completely, decide the claims are not allowable, and reopen prosecution and issue a non-final rejection instead. In that case they should enter amendment 2, as prosecution is reopened."

That is my best hope.

While I am posting and learning from you, I hold my 2nd amendment filing. I hope to get as much as possible valuable instructions. But what would happen if my 2nd amendment is filed after the Examiner allows the issue?

Thank you very much!

Weng

[lazyexaminer]

Well, if you actually do have a good reason for amendment 2, and if you think that amendment 1 is not quite solving the examiner's objections (or created new problems) then it might be worthwhile to file it and explain all that, explain why amendment 2 is necessary. In that case the examiner would perhaps agree with your reasoning, enter everything and just allow everything.

So, if you do want the text of amendment 2, I would file it and explain why it is either better solving the examiner's objections or why it is solving problems that amendment 1 caused.

I cannot say for sure what the result will be here. Antecedent basis issues are very fact specific and I do not want to get into the specifics on an issue that is currently pending before the Office.

In any event, if the examiner does not decide to enter your amendment 2 you will still have an opportunity to file an RCE as mentioned above. "But what would happen if my 2nd amendment is filed after the Examiner allows the issue?" If the examiner issues an allowance, entering #1 and not #2, you would have 3 months to pay the issue fee. Instead of paying the issue fee you can file an RCE with amendment 2 and amendment 2 will then be entered, prosecution is reopened, and the examiner will examine amendment 2. Again, the negative is you have to pay a fee to file an RCE, and you are pulling your case out of issuance and prosecution is restarted. You may get another quick allowance, but you never know.

[Weng Tianxiang]

Hi lazyexaminer,

Your explanations are of great value to me!

But I am sorry that you don't explain the antecedent basis. So I have to search for it further.

The antecedent basis issue is extremely important for an inventor to fully understand.

OK, I will file my 2nd amendment today without any delay.

You may save me $2,000 if thing goes in the best way:

In my case RCE fee = $800 + $40*28 = $1,920 in small entity, because my application has 48 claims, a very stupid thing I have done.

Next time I will never claim more than 20 claims. I now know only independent claims have any values and all dependents have no value at all. No court cases and judgments are involved in any dependent claims.

Thank you very much.

Weng