Using the USPTO’s Policy of Compact Prosecution Against It

The Policy of “Compact” Prosecution

Patent prosecution before the U.S. Patent Office is conducted under a policy of “compact” prosecution. Under this policy, prosecution of an application is generally designed to conclude with the Examiner’s consideration of one response to one non-final Office Action. That is, a second Office Action, responding to an applicant’s reply to a first Office Action, is usually final, unless an applicant places the application in condition for allowance. Stated goals of this policy of “compact” prosecution are to provide applicants with prompt and complete examination of their applications. To achieve these goals, the policy imposes specific obligations on Examiners. As the Office itself has explained, “[t]he Office’s policy of compact prosecution requires that both examiners and applicants provide the information necessary to raise and resolve the issues related to patentability expeditiously.” (Official Gazette of 07 November 2003).

The Office’s Obligations

A first Office Action on the merits should ordinarily identify every issue that stands between the applicant and allowance of the application. (See The Manual of Patent Examining Procedure (MPEP) §707.07(g)). And, the Office Action should do so by presenting the best case against patentability. (See, for example, MPEP §§2164.04 and 2106II). In theory, this provides an applicant with the opportunity to respond to each issue so that, if each issue is successfully rebutted or otherwise addressed, the application would be condition for allowance. Conversely, if the applicant not successful, the application should be in condition for appeal. A failure to provide the best case such that a new rejection, new art, and/or expanded arguments are required in a subsequent Office Action generally precludes the finality of that subsequent Office Action. (See MPEP §706.07(a)). In practice, this prevents piecemeal prosecution of the application, which the MPEP instructs should be avoided. (MPEP §707.07(g)).

The obligations imposed on Examiners by the U.S. Patent Office’s policy of compact prosecution have important practical ramifications. Firstly, in each Office Action, each claim should be reviewed for compliance with every statutory requirement for patentability, even if one or more claims are found to be deficient with respect to some statutory requirement. Additionally, whenever practicable, an Office Action should indicate how rejections may be overcome and how objections and informalities may be resolved. The rationale is that a failure to follow this approach can lead to unnecessary delays in the prosecution of the application. (See, for example, MPEP §2106II).

Examples of Using the Policy of Compact Prosecution

These obligations can be of strategic value in prosecution and should not be discounted. The following are just a few examples of ways an applicant may use them.

1. If the Office action merely asserts that claims are not enabled

Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under the first paragraph of 35 U.S.C. §112 are respectfully requested.

In the event that the Office maintains this enablement rejection, Applicant respectfully requests, in accordance with the principles of compact prosecution, that the Office articulate, one the record and with specificity sufficient to support a prima facie case of non-enablement, the factual basis on which it is alleged that it would be beyond the level of ordinary skill in the widget art to make and use the claimed invention without undue experimentation. (MPEP §2164.01).

2. If the Office action applies the cited art only against the independent claims

Lastly, it is noted that the Office Action fails to specifically address even the expressly recited features of the pending dependent claims. Under the Office’s policy of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. (MPEP §707.07(g)). It is submitted that the present application is not sufficiently informal, does not present an undue multiplicity of claims, or exhibit a misjoinder of inventions, so as to reasonably preclude a complete action on the merits. Thus, it is submitted that the Office’s failure constitutes a failure to expeditiously provide the information necessary to resolve issues related to patentability that prevents the Applicant from, for example, presenting appropriate patentability arguments and/or rebuttal evidence. (See The Official Gazette Notice of November 7, 2003). Additionally, it is submitted that the Office’s failure needlessly encourages piecemeal prosecution, which is to be avoided as much as possible. (MPEP §707.07(g)). Accordingly, in the event that the Office maintains the rejection of any of the dependent claims, Applicant respectfully requests, in the interests of compact prosecution, that the Office apply art against each feature of each rejected dependent claim, on the record, and with specificity sufficient to support a prima facie case of anticipation (or obviousness).

3. If the Office action makes only a general allegation that a claim feature is taught (or suggested) by cited art

An Office Action contends that a claim feature is taught by a patent to Smith but does not identify where/how the feature is taught. And, a careful review of that patent, however, reveals no such teaching. An appropriate response might be:

The Office Action contends that Smith teaches the aforementioned feature of “a widget” of independent claim 1. (Office Action, page 3). This contention is respectfully traversed.

Initially, it is noted that the Office has not identified where in Smith an alleged anticipatory teaching is to be found. Additionally, FIG. 1 of Smith, cited by the Office Action in support of the contentions that Smith teaches the features that immediately precede and follow the subject feature of “a widget,” as well as the written disclosure associated with that FIG. 1, are silent as to the subject feature. Still further, Applicant has carefully reviewed the remainder of patent to Smith, and finds no teaching of “a widget.” Thus, for at least this reason, Smith cannot anticipate independent claim 1.

Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. §102 are respectfully requested.

In the event that the Office maintains the rejection of independent claim 1 under 35 U.S.C. §102, Applicant respectfully requests that the Office, in the interests of compact prosecution, identify on the record and with specificity sufficient to support a prima facie case of anticipation, where in the Smith patent the subject feature of independent claim 1 of “a widget” is alleged to be taught.