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Unaddressed Traversal from Prevous Response


While required to do so, Examiners sometimes do not respond to arguments presented in a previous Response. When the Examiner does not "answer the substance" of such arguments, Applicant may choose to assert that the outstanding Office Action is improper. If the outstanding Office Action is non-final, Applicant may also note that a next Action cannot be made final. However, if the outstanding Office Action is final, Applicant may request that the finality of the Office Action be withdrawn. The following is an example of a scenario where the outstanding Office Action is non-final.

Example Argument

In the previous Office Action dated [DATE], claims X and Y were rejected under [REJECTION] as allegedly being [REJECTION GROUNDS]. In a Response thereto filed on [DATE], Applicants traversed the rejection via argument. The outstanding Office Action stated on page [PAGE NUMBER] that “Applicant’s arguments with respect to claims X and Y have been considered but are moot in view of the new ground(s) of rejection.” [Often, when a previous art-based rejection was overcome, a non-art-based rejection, or an art-based rejection citing new art for one feature, but failing to address arguments to another feature rejected on the same grounds, such language will appear in the outstanding Office Action even though all arguments are not actually moot. Regardless, the arguments below apply so long as any arguments are not addressed.] Applicants presume that the “new ground(s)” indicated in the Office Action refers to [FEATURE NEW GROUNDS PERTAIN TO].

However, the outstanding Office Action again rejected claims X and Y under [REJECTION] as allegedly being [REJECTION GROUNDS] without responding to the clear traversal presented in Applicants’ previous Response filed [DATE]. This failure to answer the substance of Applicants’ arguments renders the Office Action incomplete as to all matters, as is required by 37 C.F.R. § 1.104(b). Further, MPEP § 707.07(f) states that “[i]n order to provide a complete application file history and to enhance the clarity of the prosecution history record, an examiner must provide clear explanations of all actions taken by the examiner during prosecution of an application” (emphasis added). “Where the applicant traverses any rejection, the examiner should, if he or she repeats the rejection, take note of the applicant’s argument and answer the substance of it” (Id., emphasis added). “The examiner must address all arguments which have not already been responded to in the statement of the rejection” (MPEP § 707.07(f), Examiner Note 1).

In the present case, the outstanding Office Action essentially repeated the rejections presented in the previous Office Action and failed to address Applicant’s clear traversals. In fact, none of Applicant’s arguments were specifically addressed in the outstanding Office Action [Include the current sentence if this is true]. Further, failure to specifically respond to Applicant’s arguments renders the Office Action arbitrary and capricious, and therefore invalid under the Administrative Procedure Act (5 U.S.C. § 706), a standard to which all Actions by the USPTO must adhere (see Dickenson v. Zurko, 527 U.S. 150 (1999)).

Applicants respectfully request that the Examiner address the substance of Applicants’ arguments in the next Office Action. Further, Applicants respectfully note that at least because the outstanding Office Action is incomplete under 37 C.F.R. § 1.104(b) and does not meet the requirements of MPEP § 707.07(f), a next Action in this case cannot be made final [If the Office Action is final, include statement requesting that the finality be withdrawn].