Applicant is granted petition to stop Examiner from reopening prosecution, but Examiner ignores decision

Takeaway: An Applicant pursued an appeal, only to have the Examiner reopen prosecution not once, but twice. After the second reopening, the Applicant filed a petition requesting that the Examiner be ordered to respond with an Answer. The petition was granted, but the Examiner ignored it and reopened prosecution a third time. The Applicant petitioned again, the petition was granted, and this time the case went on to appeal. Three years after the Applicant filed the first Appeal Brief, the Board reached a decision that affirmed some rejections and reversed others. (Appl. 10/419,934, available through Public PAIR.)

Details:
Application of Torris
Appl. No. 10/419,934
Technology Center 3700

An Applicant filed a medical device application with claims directed to a needle assembly and methods of assembly. On the first Final Office Action, the Applicant filed a Notice of Appeal and Pre-Appeal Conference Request. In response, the Examiner reopened prosecution with a Non-Final Office Action and a new ground of rejection. The Examiner switched to from obviousness to anticipation (using the same base reference) and explained his claim interpretation.

The Applicant amended claims to distinguish ("neck adaptable to fixed retain a needle hub"), and the Examiner maintained the anticipation rejection in a Final Office Action. The Examiner explained that the reference was "capable of adapting (of becoming or being made suitable) to a particular situation or use."

The Applicant filed a Notice of Appeal, simultaneously filing an Appeal Brief. The Examiner reopened prosecution again with another Non-Final Office Action that included the same rejections. The Office Action indicated that prosecution was reopened in order to "greater explain Examiner's claim interpretation and rejection."

The Applicant filed another Appeal Brief to reinstate the appeal, along with a Petition to the Director under 1.181(a)(3) ("supervisory authority"). The Petition requested "the Group Director to order the examiner to respond with an Examiner's Answer so that this case may be forwarded to the Board of Appeals for adjudication" in light of the facts presented with the Petition. The Applicant then briefly laid out the prosecution history.

The Petition was granted in less than three weeks. The Petition Decision noted that the record showed "a prolonged prosecution in this case" and that the Examiner had reopened prosecution twice. The Petition instructed the Examiner "to timely set up an appeal conference" and "to conclude the examination of the application as soon as possible." The Petition forwarded the application to the SPE for consideration of Appeal Brief. The Petition indicated that the Applicant should direct any inquiry about the decision to a designated Special Programs Examiner.

The Examiner then reopened prosecution again. In another Non-Final Rejection, the Examiner indicated that prosecution was reopened "to place a new prior art rejection on the claims." In this case, another anticipation rejection, but using a different reference.

The Applicant responded by filing an Appeal Brief to reinstate the appeal, and another 1.181(a)(3) Petition. The Petition again requested the Group Director to order the examiner to respond with an with an Answer and to forward the case to the BPAI. Once again, the petition laid out the facts of the prosecution history.

In less than 30 days, the Director granted the second Petition. The Petition Decision repeated much of the same language before about prosecution being prolonged and reopened multiple times. The Petition once again instructed the Examiner "to timely set up an appeal conference". This time, the Petition specifically gave the Examiner a time limit, instructing him to "conclude the examination within three months of the date of the filing of the Appeal Brief."

This time the Examiner complied, mailing an Examiner's Answer within 15 days of the second petition. The Applicant did not file a Reply Brief.

The BPAI issued a decision almost two years after the Answer, affirming some rejections and reversing others. The Applicant took the allowable claims. The patent issued about 6 months after the appeal decision.

My two cents: I'm impressed that the Applicant went to the trouble of filing a petition. I'm also encouraged that the Petition office responded so quickly. And of course annoyed that the Examiner ignored the first petition decision.

Interesting that the Director characterized this as "prolonged prosecution". I've seen a lot worse, in my own cases and in others I blog about. My personal record for seeing reopened prosecution is four times: after my fourth appeal brief, the Examiner finally sent a Notice of Allowance. Endless rounds of non-final Office Actions is another a form of prolonged prosecution which I see from time to time. 


This sort of petition is not a lot of money, in fees or in attorney time. But there is a cost. And it doesn't stop the clock, so you have to pursue the appeal at the same time. And based on other types of petitions I've seen, the petition process is rarely useful because the decision usually doesn't come in time.

Still, a petition feels right on principle. If the finality of an Office Action is improper, you have to give in or petition. Same with refusal to enter evidence/amendment, restrictions, drawing objections, and a host of other improper Examiner actions. If you never fight these things, then it stands to reason that Examiners will keep doing them.