Although e.DIGITAL #774 patent are issued non-final rejection, but such non-final rejections are not uncommon in the re-examination procedure and are far from over. e.DIGITAL will certainly file a response to non-final rejection, and if the USPTO still decide to issue a Final rejection and invalidates e.DIGITAL patent, then e.DIGITAL can possibly appeal to the Board of Patent Appeals and Interferences by filing a notice of appeal, and then to the Court of Appeals for the Federal Circuit.

It is customary 60 days for e.DIGITAL to reply to the non-final rejection of its patents in the re-examination initiated byinfringer(s).

Here is the patent office regulation for response time for re-examination replies -

MPEP § 2263 Time for Response

A shortened statutory period of 2 months will be set for response to Office actions in re-examinations, except where the reexamination results from a court order or litigation is stayed for purposes of reexamination, in which case the shortened statutory period will be set at 1 month. See MPEP § 2286. Note, however, that this 1-month policy does NOT apply to the 2-month period for the filing of a statement under 37 CFR 1.530, which 2-month period is set by 35 U.S.C. 304.

The examiner examines the patent in light of the prior art patents or printed publications submitted in the re-examination request. He can issue actions and final actions that are like rejections and final rejections. The patent owner replies to an action like he would reply to a rejection with remarks and amendments. A final rejection closes the prosecution. To avoid the invalidation of the patent (or at least of a part of its claims) the patent owner may use the appeal procedure .

Appeal

35 U.S.C. 134 says: "An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the administrative patent judge to the Board of Patent Appeals and Interferences" by filing a notice of appeal. Then the applicant must file an appeal brief as described in 37 CFR 1.192.

The reasoning is as follows. The USPTO makes many decisions of a discretionary nature which the applicant may feel deny him the patent protection to which he is entitled. The differences of opinion on such matters can be justly resolved only by prescribing and following judicial procedures. Where the differences of opinion concern the denial of patent claims because of prior art or material deficiencies in the disclosure set forth in the application, the questions thereby raised relate to the merits, and appeal procedure within the Office and to the courts is handled by a Board of Patent Appeals and Interferences (BPAI) which includes the Director, the Commissioner for Patents, the Commissioner for Trademarks, and administrative patent judges appointed by the Director. If they do not relate to the merits the questions thereby raised are petition-able matters for the Commissioner of Patents.