After reply by applicant or patent owner (§ 1.111 or § 1.945) to a non-final action and any comments by an inter partes reexamination requester (§ 1.947), the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945, with or without amendment, unless such Office action indicates that it is made final (§ 1.113) or an appeal (§ 41.31 of this title) has been taken (§ 1.116), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949) or a right of appeal notice (§ 1.953).
[69 FR 49999, Aug. 12, 2004]
Notes of Decisions
Lear, Inc. v. Adkins (1969)
scotus · cites it 2×
“[7] Adkins actually amended his application a third time before he made the amendment which gained the approval of the Patent Office.”
In Re: Brandt (2018)
cafc
“§ 134 ; 37 C.F.R. §§ 1.112 , 1.113. As is the case here, if the examiner issues a Final Office Action, the applicant can appeal those twice-rejected claims to the Board, or alternatively seek continued examination.”
Presidio Components Inc. v. American Technical Ceramics Corp. (2010)
casd
“However, just like its name implies, the First Office Action is only a preliminary determination by the USPTO — it is not a “final” action, and the examiner could still change his decision or completely reverse it before issuing the final action.”
Medtronic, Inc. v. Catalyst Research Corp. (1982)
mnd
“See 37 C.F.R. § 1.112 . As in the case of the Hermann patent, even if the presumption of validity was weakened or destroyed by this Office Action, substantial evidence of nonobviousness was presented, and the Court concludes that the Schneider patent is nonobvious.”
Dresser Industries, Inc. v. Ford Motor Co. (1981)
txnd
“See 37 C.F.R. § 1.112 . After Dresser responds, the application will remain on the examiner’s docket for an indeterminent period pending further examination.”
Mikkilineni v. Stoll (2010)
cafc
“” 37 C.F.R. § 1.112 . When the examiner issues a final rejection Mikkilineni may appeal to the Board of Patent Appeals and Interferences (“Board”).”
Annotations are extracted automatically from the opinions in the
Syfert caselaw corpus and ranked by authority, recency, and
treatment. Dots show Syfertize treatment of the citing case itself.