Applicants sometimes file letters with continuation (“child”) applications. We briefly touched on this topic in August. Back then, we mentioned the Applicant in Hakim v. Cannon Avent, 479 F.3d 1313 (Fed. Cir. 2007), filed a continuation application with a letter explaining the claims had been broadened.
Letters also are submitted with continuation applications to present arguments distinguishing the claims over the references of record in the parent application. This situation frequently occurs when the continuation application pursues claims rejected during prosecution of the parent application.
For example, assume a final Office Action rejects valuable claims in the parent application as obvious over a combination of references. The Applicant could present arguments against the combination. However, as explained below, Examiners are procedurally discouraged from finding after-final arguments persuasive.
The Applicant could appeal the rejection. However, Appeals are expensive and time-consuming.
Another option is to amend the claims anyway and file a Request for Continued Examination (RCE). An Applicant might prefer this option, because US prosecution is open-ended, unlike Japanese or Indian prosecution, for example. So, by amending the claims, the Applicant is one step closer to obtaining an allowance.
The Applicant later might file a continuation application to pursue the rejected, valuable claims. A letter presenting arguments against the combination of references can be submitted with the continuation application. Submitting such a letter provides a few benefits to the Applicant.
First, the letter argues the patentability of the continuation claims preemptively. So, the Applicant does not need to wait for an Office Action to issue in the child application. The preemptive argument can save time by advancing the child prosecution effectively to the reply to the parent’s final Office Action. The Applicant does not need to wait for the child application’s first Office Action, which otherwise might mirror the parent’s final Office Action.
Next, the letter effectively delays the filing of an RCE in the child application by at least one Office Action. Specifically, suppose the Examiner finds Applicant’s reply to the final Office Action unpersuasive. In that case, Applicant must file an RCE to continue prosecution with the Examiner. In contrast, by submitting a letter with a continuation application, an unpersuasive argument should result in merely a non-final Office Action.
Finally, the Examiner is in an improved position to find Applicant’s arguments persuasive. For example, first consider Applicant’s arguments in the reply to the parent final Office Action. Let’s assume these arguments are sufficient to overcome the rejection but not place the application in condition for allowance. In this situation, the Examiner receives 0.0 counts for writing the new Office Action. Clearly, the Examiner does not want to write a new Office Action for 0 counts. So, an Examiner might try to find Applicant’s arguments unpersuasive.
In contrast, in the child application, the Examiner will receive 1.25 counts for considering Applicant’s letter and claims. To be clear, the increased counts arise from the continuation, not the letter. Still, the Applicant is not penalized for finding the arguments in the letter persuasive. Thus, the arguments are presented in a more efficient context.
If Modal can assist you with a continuation application, please contact us.