It is intended that the second Office action in the reexam proceeding, which follows the decision ordering the reexam, will be a final Office action in accordance with the guidelines set forth in MPEP §706.07(a).
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The examiner and the patent owner should identify and develop all issues prior to the final Office action.
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Normally a shortened statutory period of two*months is given for response to a final Office action. SeeMPEP §2272. *See MPEP §2263 for exceptions.
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A “patentability review conference” consisting of three people will be convened to review a final action before it is issued.
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A patentability review conference is also convened just prior to issuing a Notice of Intent to Issue Reexamination Certificate
A timely first response to a final rejection will automatically result in a one month extension of the shortened statutory period (if a notice of appeal has not yet been filed).
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If the advisory action is delayed, the time period should be extended, e.g., by an additional month, to provide the patent owner with sufficient time to respond. The response period may not be extended to run beyond the six-month statutory period.
If Office action is adverse in any respect, patent owner must reply and request reconsideration or further examination with or without an amendment.
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Substance of the Response
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Request for reconsideration of position must be in writing and distinctly and specifically point out each supposed error in examiner’s action (general allegations inadequate).
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Patent owner will normally be given two monthsto respond
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Amendments must be in compliance with 37 CFR §§1.530(d)-(k) and 1.943. See37 CFR §1.941.
