Noonan: David Boundy at Cantor Fitzgerald alerted us here at Patent Docs about the provisions of M.P.E.P. § 710.06 (see "Procuring Patent Prosecution from the Present PTO"). Mr. Boundy shares some additional points with Patent Docs readers.
By David Boundy --
MPEP § 710.06 requires a showing of "error," not just disagreement. MPEP § 710.06 is best thought of as a way to seek correction of purely procedural errors that can be corrected by a new Office Action. I try not to use it to seek correction of substantive errors that are readily appealed. MPEP § 710.06 is applicable where the Office Action is silent, or is required to cite "substantial evidence" but instead relies on pure examiner argument, or uses reasoning other than the reasoning set forth in the MPEP. Examples -
- the Office Action is silent on comparison of a claim limitation to any reference - if the Office Action makes a showing but it's wrong, appeal;
- you made a request for substantial evidence under 37 C.F.R. § 1.104(d)(2) and the examiner failed to reply at all;
- the Office Action omits one or more showings that are required by MPEP or other law, for example, omits at least one of the three showings required by MPEP §§ 2143-2143.03;
- the Office Action asserts "inherency" with no showing based on "fact and/or technical reasoning"
- the Office Action failed to "Answer All Material Traversed";
- the MPEP states a legal test that "must" be applied, and the examiner improvises something else;
- the Office Action relies on a definition that lacks any legitimate "reason" that would be consistent with "broadest reasonable interpretation," especially if you provided a dictionary, and the examiner stands on nothing more than personal opinion;
- the Office Action gives a "broadest reasonable interpretation" to a reference - remind the examiner that claims are given their broadest reasonable interpretation, but references must be read "fairly." Ask for an Action that analyzes the reference under the correct standard;
- any "because I said so" argument from an Examiner unsupported by evidence.
The second major use of MPEP § 710.06 is analogous to a contention interrogatory to draw out a position when the examiner is playing "hide the ball." Generally, if an Office Action doesn't contain enough information to help you identify a clear issue for appeal, you should request a replacement. For example, many Office Actions - even final ones - analyze issues at 30,000 feet, so that you can't tell what the source of the disagreement is, let alone determine whether the appropriate reply is a claim amendment, a declaration on a fact, or appeal. Such instances include where the examiner leaves you unable to decipher his position is, unable to discern whether the disagreement is -
- claim interpretation?
- the content of the reference?
- some other fact - typically secondary considerations?
- whether the reference is or is not prior art
- the applicable law?
- application of the law to the facts?
Then (analogous to when you can't precisely identify the "clear issue for appeal") send the Action back and force the examiner to articulate a position in sufficient detail that you can identify the precise disagreement and respond. If the Board is going to impose very tight page limits on appeals, the examiner has to give you a clear indication of exactly where you disagree, so you don't have to appeal all possible issues. You're not required to read an examiner's mind; don't let yourself be put in that position.
Your § 710.06 paper must make a clear showing of "error," by referring to the particular examiner requirement that was breached, and showing the particular breach. This is important. (a) It keeps you from wasting your credibility on judgment call issues that should be resolved by appeal. (b) It also gives the examiner a very clear target to meet: you know how frustrating it is to respond to an incomplete paper, and you should not inflict that pain on an examiner.
Finally, note that MPEP § 710.06 may be invoked more than a month after the original paper, but the reset time will be shorter.
Noonan: Thanks, David. We note that although an applicant can invoke the provisions of M.P.E.P § 710.06 more than one month after the mailing date of the Office Action, doing it within the one-month date results in a full 6-month statutory time period for response (avoiding any inadvertent docketing mistakes).
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